DETAILED ACTION
As of the Response to Restriction Requirement filed on May 26, 2026, claims 35 – 54 are pending. Claims 1 – 34 have been canceled. Claims 38 – 40 , 50 – 54 have been withdrawn from consideration.
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, Species I-A-3, Species I-B-2, Species I-C-3, Species-I-D-2 in the reply filed on May 26, 2025 is acknowledged.
The election requirement of Species I-C is withdrawn.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The title is objected. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 35, 36, 37, 42 – 44, 49 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Spender et al. WO 2020/056124 A1 (of record, hereinafter “Spender”).
Regarding claim 35, 36:
Spender is directed inter alia to a barrier coating and a cellulosic material product (Abstract; [0006], Claim 15) comprising: an oil-resistant coating comprised of prolamine [plant protein] and polyol fatty acid ester(s), and a substrate such as a cellulose-based substrate; and a method of forming such barrier coatings and cellulosic material products. Spender discloses that their method comprises: contacting a cellulose-based substrate material with a barrier coating composition ([0013], [00118], [00127]); and drying [heating] the coated substrate at e.g. a temperature between 80 – 150°C ([00130]).
Regarding claim 37:
Spender discloses that the prolamine-polyol fatty ester composition may be dissolved in acids such as acetic acid or lactic acid [carboxylic acids], mixtures with water, and alcohols such as ethanol ([0032]).
Regarding claim 42, 49:
Spender discloses an example embodiment comprising: coating an unbleached a base/substrate with Zein® (prolamine protein), PFAE (fatty acid ester), and sucrose fatty acid esters, absent any shellac and absent any sol or sol-gel. ([0006], [00201], [00218] – [00222]).
Regarding claim 43:
Spender discloses that the coating composition can be applied by dipping ([00130]).
Regarding claim 44:
Spender discloses that the coatings may be dried under heat lamps [IR heating devices] ([00198]).
Regarding claim 48:
Spender discloses that the composition may further comprise dyes and/or pigments ([00127]).
Claim(s) 35 – 37, 41 – 44, 48 – 49 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Gabor et al. US 2010/0330384 A1 (hereinafter “Gabor”).
Regarding claims 35, 36, 37, 41, 42, 43:
Gabor is directed to methods of treating/coating cellulosic materials with fungi-derived or artificial hydrophobins [proteins] in order to protect cellulosic materials from absorbing or attack by water and/or moisture [water resistant and/or impermeable] (Abstract; [0003], [0029]). Gabor discloses that their method comprises: obtaining hydrophobins by inter alia isolating hydrophobins from natural sources/fungi ([0003], [0029]); coating the cellulosic material in a formulation comprising the hydrophobins and a solvent such as water with methanol ([0046], [0038] – [0042]) by e.g. immersion [soaking or dipping] ([0046]); and drying [heating] the coated cellulosic material at elevated temperature [with heat] ([0049] – [0050]).
Regarding claim 44:
The coating can be dried using an infrared radiator [IR heating device] ([0050]).
Regarding claims 48 and 49:
The formulation that is coated onto the cellulosic material may include e.g. carboxylic acids or ammonia [pH-sensitive material], dyestuffs [dyes], buffer systems [pH-sensitive material] ([0044]). Likewise Gabor is silent with regards to the presence of e.g. polysaccharides and plasticisers.
Claim Rejections - 35 USC § 103
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.
Claims 45 – 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gabor as applied to claims 35 – 37, 41 – 44, 48 – 49 above, and further in view of Taguchi US 20100058609 A1 (hereinafter “Taguchi”).
Regarding claims 45, 46, 47:
Gabor does not expressly teach that the heating of the coated product comprises heating the coated product comprises heating to a first temperature for a first period of time, then heating the coated product to a second temperature for a second period of time; that the first temperature is higher than or lower than the second temperature by the recited degree.
In analogous arts, Taguchi is directed to an apparatus and operation method for drying the high-boiling point solvent or solvent mixture (Abstract; [0021] – [0025]). Taguchi discloses an apparatus comprising a drying apparatus 20 comprising a first drying section 32 that is an air dryer, a second drying section 30 that is an atmosphere drying section, and third drying section 40 that is an air dryer ([0059], Fig. 1). As disclosed by Fig. 6 and Fig. 7, the first and third drying sections may e.g. operate at a temperature of 120° for a drying time of 30 seconds [heating for a period of from 5 seconds to 1 hour, meeting claim 45]; and the second drying section may operate at a temperature of e.g. 90°C for , thus at a temperature difference of 30°C. Taguchi discloses that breaking down the drying step into zones, including a section with an atmosphere with a solvent with lower boiling point that is also present in the applied coating, helps prevent quality deterioration and thermal decomposition from overexposure to a high temperature while also minimizing drying time ([0013]).
The Examiner notes that Gabor discloses that the solvent may be mixtures of different solvent species, e.g. methanol and water ([0041]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Gabor by drying the solution over different time periods at different temperatures, wherein there is a difference in temperature in time periods, with drying times of e.g. 30 seconds because Taguchi teaches that breaking down drying into separate heating steps with differences helps prevent quality deterioration and thermal decomposition from overexposure to a high temperature while also minimizing drying time.
Claims 45 – 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spender as applied to claims 35, 36, 37, 42 – 44, 49 above, and further in view of Taguchi US 20100058609 A1 (hereinafter “Taguchi”).
Regarding claims 45 – 47:
Spender does not expressly teach that the heating of the coated product comprises heating the coated product comprises heating to a first temperature for a first period of time, then heating the coated product to a second temperature for a second period of time; that the first temperature is higher than or lower than the second temperature by the recited degree.
The disclosure of Taguchi as discussed above in the rejection of the claims over Gabor in view of Taguchi also apply to the present rejection, mutatis mutandis.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Spender by drying the solution over different time periods at different temperatures, wherein there is a difference in temperature in time periods, with drying times of e.g. 30 seconds because Taguchi teaches that breaking down drying into separate heating steps with differences helps prevent quality deterioration and thermal decomposition from overexposure to a high temperature while also minimizing drying time.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
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