Detailed Office Action
The communication dated 1/21/2025 has been entered and fully considered.
Claims 1-9 are pending.
Allowable Subject Matter
Claims 3 and 7-9 would be allowable if the ODP rejection was overcome.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,768,098*. Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose a continuous strip process for carbamating cellulosic paper.
*10/20/2026 expected issue date.
Claim 1 see patent claim 1.
Claim 2 see patent claim 2.
Claim 3, 7, and 8 see patent claims 1, 3, 4, and 6.
Claim 4 see patent claim 1.
Claim 5 see patent claim 3.
Claim 6 see patent claims 1, 3, 4, and 6.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP1306484 BRACEWELL, hereinafter BRACEWELL, as evidenced by Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 1 and 6, discloses producing pulp into a continuous sheet (strip) on a fourdrinier paper machine with a size press treatment with urea [abstract, claim 2-4 and 0025]. A fourdrinier machine with size press includes a wet end, press section, partial drying, coating at size press and finally drying again as evidenced by SMOOK [pg. 228 Figure 16-1 fourdrinier paper machine and pg. 283 col. 1 par. 3]. The drying in a fourdrinier machine is between heated rolls (drying cylinders/cans) [pg. 228 Figure 16-1 fourdrinier paper machine].
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.
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, 2, and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over EP1306484 BRACEWELL, hereinafter BRACEWELL, in view of Papermaking Part 2, Drying edited by KARLSSON, hereinafter KARLSSON.
As for claims 1, 2, and 4-6, BRACEWELL teaches the features as per above including producing pulp into a continuous sheet (strip) on a fourdrinier paper machine with a size press treatment with urea [abstract, claim 2-4 and 0025]. The Examiner argued that in BRACEWELLL a fourdrinier with size press was understood to wet end, press section, partial drying, coating at size press and finally drying again as evidenced by SMOOK.
Alternatively, should the applicant argue that those features are not anticipated by BRACEWEL, they are obvious over KARLSSON. KARLSSON discloses a size press that is between the dryer sections [pg. 213-214 and pg. 358 Table 4].
At the time of the invention it would be obvious to combine the known drying techniques of KARLSSON with the papermaking drying of BRACELL. The person of ordinary skill in the art would expect the dry the paper after size coating while allowing for high-speed production in the conventional fourdrinier paper machine.
As for claim 2, KARLSSON discloses heated rolls [pg. 48 Figure 6 and pg. 111]. KARLSSON discloses that a paper machine of max size is 11 meters (11,000 mm) [pg. 508 section 5.1]. Therefore KARLSSON suggest a paper machine size of 11,000 mm or less which overlaps with the instant claimed range. KARLSSON also discloses specific machines with a width of 7 to 9 m [pg. 387].
As for claim 4, KARLSSON discloses the moisture level of 3% for fine papers at the size press [pg. 358 Table 4]. Further the dryer of KARLSSON has multiple dryer sections that goes to near 0% moisture [pg. 48 Figure 6].
As for claim 5, KARLSSON shows the sheet temperature going from 60 to 130 degrees C, which falls within the claimed range [pg. 48 Figure 6].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
