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 .
Claim Objections
Claim 13 is objected to because of the following informalities: The term PVA appears to be an abbreviation. At the first instance of use, the full name of the term should be explicitly stated followed by the abbreviation. Appropriate correction is required.
Claim 27 is objected to because of the following informalities: The term SDS appears to be an abbreviation. At the first instance of use, the full name of the term should be explicitly stated followed by the abbreviation. Appropriate correction is required.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/28/2025 has been considered by the examiner.
Specification
The substitute specification filed 12/31/2024 is acknowledged and has been approved for entry by the examiner.
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 1-10, 13-14, 17-18, 20-22, 27, 30, 32-33 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitations “the foamed fibrous structure”; and “from the group of surface-active foaming agents and polymeric foaming agents”. There is insufficient antecedent basis for these limitations in the claim. The examiner suggests amending the aforementioned phrases to read “the multi-layered foamed fibrous structure” and “from a
Claims 2-10, 13-14, 17-18, 20-22, 27, 30, 32-33 are rejected by virtue of their dependence upon and because the fail to cure the deficiencies of claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/880,283. Although the independent claim 1 of 18/880,287 and the independent claim 1 of copending Applicant 18/880,283 at issue are not identical, they are not patentably distinct from each other because application 18/880,283 claim 20 requires a hydrophobic agent which is substantially the same subject matter of independent claim 1 of copending Application No. 18/880,283 and thusly is anticipatory.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-10, 13, 17-18, 20-22, 27, 30, 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Juvonen et al. (US 2015/0284911 A1), in view of Kiiskinen et al. (US 2016/0221233 A1).
Regarding claims 1, 33, Juvonen discloses a method of producing a moldable fibrous product. The method to include the use of a molding device and having the moldable fibrous product comprise a multilayer product, see [0042], [0079], [0081] – (corresponds to in a mold, forming a multi-layered foamed fibrous structure from foamed fibrous compositions; and each layer of the multi-layered foamed fibrous structure is formed from a respective foamed fibrous composition; and a molded multi-layered fibrous product produced by the method). The composition of the moldable fibrous product to include cellulose, water, air, and a foaming agent, see [0059], [0047], [0044] – (corresponds to each of the foamed fibrous compositions comprises cellulosic fibers, water, air and a foaming agent). The method to further include a step of draining the liquid to form a web or sheet, see [0047] – (corresponds to dewatering the foamed fibrous structure to obtain a dewatered structure). And the use of a combination of foaming agents to include anionic/non-ionic surface active agents, and polyvinyl alcohols – (construed as a polymeric foaming agent), see [0076] – (corresponds to at least two different foaming agents are applied, wherein the at least two different foaming agents are selected, independently from each other, from the group of surface-active foaming agents and polymeric foaming agents).
While Juvonen discloses impregnation is accomplished through a pressing step at an elevated temperature and a draining step – (construed as forming a dewatering structure), see [0047], [0068]; it does not explicitly does not explicitly disclose hot-pressing the dewatered structure.
Kiiskinen discloses a method of forming a lightweight fibrous product. The method to include a technique of applying heat to the material, the synthetic fibers (or the surface layer thereof) will melt and achieve bonds within the material formed by the natural fibers, thus improving interfiber bonding. And the product produced can be given a hard surface by heating the surface optionally in combination with pressing, see [0058], [0060] – (construed as using a hot-pressing technique).
One of ordinary skill in the art would have been capable of applying this known “improvement” technique in the same manner to the Juvonen’s method of producing a moldable fibrous product and the results would have been predictable to one of ordinary skill in the art, namely, one skilled in the art would have readily recognized that hot-pressing the dewatered structure of Juvonen would improve the bonding of the materials, as well as providing a hard outer surface.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Juvonen’s method to include a hot-pressing step as taught by Kiiskinen to provide Juvonen’s method with the aforementioned benefits.
Regarding claim 2, as previously discussed, modified Juvonen discloses the moldable fibrous product comprises a multilayer product, see Juvonen [0042], [0079], [0081] – (corresponds to each layer of the multi-layered foamed fibrous structure is formed from a respective foamed fibrous composition).
Regarding claims 3-6, as previously discussed, modified Juvonen discloses the use of a combination of foaming agents to include anionic/non-ionic surface active agents, and polyvinyl alcohols – (construed as a polymeric foaming agent), see Juvonen [0076] – (corresponds to at least two different foaming agents are applied, wherein the at least two different foaming agents are selected, independently from each other, from the group of surface-active foaming agents and polymeric foaming agents; and each foamed fibrous composition comprises, independently from each other, at least one surface-active foaming agent and at least one polymeric foaming agent; and the foamed fibrous composition for at least one fibrous layer, comprises a surface-active foaming agent; and the foamed fibrous composition for at least one fibrous layer, comprises a polymeric foaming agent; and the foamed fibrous composition for a layer comprises both a surface-active foaming agent and a polymeric foaming agent).
Regarding claim 7, as previously discussed, modified Juvonen discloses the use of a combination of different foaming agents. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Juvonen’s method to include “at least two of the foamed fibrous compositions comprise a different set of foaming agents” since: Additionally, modified Juvonen further discloses the foaming agent may have properties such as surface activity and binding, see [0075]. Thus, one would have good reason to form any number of the layers to comprise a different set of foaming agents.
Regarding claim 8, modified Juvonen discloses the foaming agent is provided in an amount of 0.1 weight percent in the moldable fibrous product, see [0036], [0039] – (corresponds to and overlaps the claimed range of 0.1 to 50 wt% calculated from the mass of dry fibers in the foamed fibrous composition). Concerning the claimed ranges: Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the foaming agent wt% of 0.1 wt% calculated from the mass of dry fibers in the foamed fibrous composition as Juvonen suggests such an amount contributes to forming large pores. See MPEP 2144.05.
Regarding claims 9-10, 13, 32, modified Juvonen discloses the at least one polymeric foaming agent comprises at least one non-ionic polymer, wherein the at least one non-ionic polymer is polyvinyl alcohol (PVA), see Juvonen [0076]; and the at least one surface-active foaming agent comprises at least one anionic surfactant, wherein the at least one anionic surfactant is sodium dodecyl sulphate (SDS), see Kiiskinen [0043]; and at least two foaming agents comprise PVA and sodium dodecyl sulphate, see Juvonen [0076]; and Kiiskinen [0043]; and the foamed fibrous composition for at least one fibrous layer comprises a non-ionic surfactant, optionally in combination with an anionic surfactant, see Juvonen [0076].
Regarding claim 17, as previously discussed, modified Juvonen discloses the use of polyvinyl alcohol, see Juvonen [0076]; but does not explicitly disclose the amount used. However, as Juvonen discloses the claimed invention except for the amount of polyvinyl alcohol used. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an amount of 10% wt% calculated from the mass of dry fibers in said fibrous composition, since it has been' held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to select an amount of at least 10 wt% for the purpose of enabling the foam formation and additionally acting as a binder in the formed structure, see Juvonen [0075].
Regarding claim 18, as previously discussed, modified Juvonen discloses the use of non-ionic polymers and anionic surfactants, see Juvonen [0076]; but does not explicitly disclose the use amount. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a molar ratio of 5:95 to 50:50, since it has been' held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to select a molar ratio of 5:95 to 50:50 for the purpose of enabling the foam formation and additionally acting as a binder in the formed structure, see Juvonen [0075].
Regarding claim 20, modified Juvonen discloses the use of a hydrophobic plasticizer – (construed as a hydrophobic agent) provided in an amount of 10 to 30% by weight of the amount of the polymer, calculated by dry weight, see Juvonen [0039], [0041] – (corresponds to and overlaps at least 0.1 wt% calculated from the mass of dry fibers in the fibrous composition). Concerning the claimed ranges: Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the hydrophobic wt% of at least 0.1 wt% calculated from the mass of dry fibers in the foamed fibrous composition as Juvonen suggests such an amount contributes to improving the compatibility of the polymer with the fibers, particularly cellulose fibers. See MPEP 2144.05.
Regarding claims 21-22, modified Juvonen does not explicitly disclose the claimed amount of “1 to 50 wt-% of a non-ionic polymer as a foaming agent, and 0.1 to 5 wt-% of an anionic surfactant, calculated from the mass of dry fibers in the fibrous composition”. However, it has been held: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Modified Juvonen discloses the claimed invention except for the claimed amounts of non-ionic and anionic compounds. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the claimed amounts of non-ionic and anionic compounds, since it has been' held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to use the claimed amount of non-ionic polymer for the purpose of enabling the foam formation and acting as a binder; and the claimed amount of anionic surfactant for the purpose of enhancing the foam formation, see Juvonen [0075] – [0076]; Kiiskinen [0043].
Regarding claims 27, 30, modified Juvonen discloses the use of sodium dodecyl sulfate (SDS) as a surfactant, see Kiisjinen [0043] – (construed as an anionic surfactant).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Juvonen et al. (US 2015/0284911 A1), in view of Kiiskinen et al. (US 2016/0221233 A1) as applied to claim 1 above, and further in view of Hult Torron et al. (US 2026/0008251 A1).
Regarding claim 14, while modified Juvonen discloses the use of polyethylene glycol, see Kiiskinen [0043]; it does not explicitly disclose the use of polyethylene glycol dodecyl ether.
Hult Torron discloses a cellulose foam object. The object being formed of a mixture of at least two surfactants. One of the at least two surfactants is preferably a fast-acting surfactant, a suitable surfactant for this purpose is an anionic surfactant, as sodium dodecyl sulphate (SDS), see [0056]. And a co-surfactant as polyethylene glycol dodecyl ether, see [0057]. Hult Torron discloses such a surfactant mixture is fast acting and contributes to a foam being re-dispersible in water and as a result be recyclable in regular paper recycling streams, see [0056], [0059].
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Juvonen’s method to include the use of at least two foaming agents comprising polyethylene glycol dodecyl ether (Brij) and sodium dodecyl sulphate as taught by Hult Torron to provide the composition with the aforementioned benefits.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEDRICK S WILLIAMS whose telephone number is (571)272-9776. The examiner can normally be reached on Monday - Thursday 8:00am-5:00pm.
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, Katelyn Smith can be reached on 5712705545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CEDRICK S WILLIAMS/Primary Examiner, Art Unit 1749
Prosecution Insights