DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 7/15/2026 is acknowledged.
Claims 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II-IV, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/15/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of continued examination, any limitations following the phrase “in particular” is not given any patentable weight.
Claims 2-9 are rejected based on their dependency to claim 1
Regarding claim 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 4, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 6, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 7, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of continued examination, any limitations following the phrase “in particular” is not given any patentable weight.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-9 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over EP 3633104A1, using US Patent Publication 2021/0348339 to Lindstorm as an English language equivalent.
Regarding claims 1 and 3, Lindstorm teaches A Kraft paper (see abstract) with an elongation at break in the machine direction of at least 7.5% (referred to as strain at break of up to 8.9% [0019] and claim 1) and an elongation at break in the transverse direction of at least 7.5% (referred to as strain at break in the cross direction as preferably 7-9% [0052]) the bending stiffness in the machine direction and the transverse direction being at least 50 mN (Tables 1 and 2 provide examples of greater than 50 mN); wherein the bending stiffness is determined by ISO 2493-1:2010 (see claim 1)and the elongation at break is determined by ISO 1924-3:2005 (ISO 1924-3:2011 see abstract and claim 1) and that the difference between the MD and CD of the elongation is less than 2.5% (upper limits of both are 8.9 and 9 in the preferred range and have otherwise overlapping ranges provided by the discloser).
In the alternative, if it is argued that there is not a singular example with the elongations at break being within 2.5%, it is argues that the overlapping ranges as taught do not differ by much and that one of ordinary skill in the art at the time of the invention would have found it obvious to have values of substantially the same length based on the disclosers of similar ranges.
Regarding claim 2, Lindstorm remains as applied above and further teaches a bending stiffness index in the MD of 86 (BRI MD in trial 4 in Table 2) and a BRI CD of 45.9 (in the same example and one of 57.5 in trial 1 see table 2).
Regarding claim 4, Lindstorm remains as applied above and further teaches that the grammage of the Kraft paper is preferably 95-130 [0023].
Regarding claim 5, Lindstorm remains as applied above and further teaches that the air resistance of at least 16 s Gurley (see tables) as measured by ISO 5636-5:23013 [0035].
Regarding claim 6, Lindstorm remains as applied above and further teaches that virgin pulp is used [0071]
Regarding claim 7, Lindstorm remains as applied above and further teaches the use of rosin size as a sizing agent (see example 1 [0074]). The syntax of the claim as stated above is “and/or” and the 112 renders the limitations after the in particular indefinite.
Regarding claim 8, Lindstorm remains as applied above and further teaches that the Kraft paper without including a teaching for a filler in the examples or throughout the discloser.
Regarding claim 9, Lindstorm remains as applied above and further teaches that the moister of the paper after the nip calender was 7.5% [0086].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
Prosecution Insights