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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” “Disclosed are/is,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claim 6 objected to because of the following informalities: the unit of pressure (kP) is unknown, should be changed to –kPa--. Appropriate correction is required.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/887,258 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope overlaps and the dependent claims of the reference application recite the missing limitation(s) of the independent claim, e.g., the impregnation with alkaline peroxide (see claim 7 for example), the cleaning (see claim 8) etc., and the addition of the alkaline peroxide in several stages is obvious to one of ordinary skill in the art and known1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/988,999 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope overlaps and the dependent claims of the reference application recite the missing limitation(s) of the independent claim, e.g., the impregnation with alkaline peroxide (see claim 5 for example), the cleaning (see claim 12) etc., and the addition of the alkaline peroxide in several stages is obvious to one of ordinary skill in the art and known2. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-26 of U.S. Patent No. 12,146,262. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope overlaps. Note that the process steps of the current application are broader than that of the reference application and thus the claims of the reference application could be used to reject the claims of the current application. Note also that the dependent claims of reference application are the same or at the very least in eth scope than eth dependent claims of the current application.
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 (i.e., changing from AIA to pre-AIA ) 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 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 are rejected under 35 U.S.C. 103 as being unpatentable over Eklund et al., (hereafter Eklund), US Patent 3,620,911 in view of Hurter et al., (hereafter Hurter), US patent No. 6,302,997 and further in view of Xu, WO 2005/042830 Al (all of them cited in the IDS filed on January 16, 2025).
With regard to claims 1, 3-4 and 8, Eklund teaches a method of making a non-woody pulp including the steps of, (see column 1, lines 60-75 and column 4, lines 4-9 for the optional bleaching ):
a) providing a non-wood material;
b) cutting the non-wood material; (the material is pre-cut before being employed in the process. The material is manually cut; see example 1 on column 4, lines 40-42);
c) compressing and macerating the cut material; (the shredding of the wet non-woody material);
d) impregnation of the bagasse with a caustic solution; (the dewatering and impregnation with an alkali metal hydroxide);
e) Cooking the impregnated bagasse to extract the fibers;
f) Optionally Bleaching the fiber/pulp.
The primary reference fails to explicitly teach the use of Asparagaceae family of the non-woody plants, but teaches that other non-wood can be used; see column 2, lines 1-5. However, Hurter teaches that pulps can be made using sugar cane (bagasse) and other non-wood plants including Hesperaloe; see table on column 1, lines 25 through 33 and column 5, lines 31-36. Therefore, using Hesperaloe in the process taught by Eklund would have been obvious to one of ordinary skill in the art, since he/she would have reasonable expectation of success if such non-wood plan were used to make papermaking pulps as suggested by Hurter. The other difference is the mechanical pulping step of the impregnated bagasse, since Eklund uses a chemical process. However, the use of mechanical processing steps instead of a chemical cooking to obtain the pulp is considered an obvious design choice, since such processes are known in the art as evidenced by Hurter; column 3, lines 39-52 and Xu that teaches a chemical-mechanical pulping with a refiner flown line treatment as the ones claimed; see abstract and the Summary of the invention expanding from page 2 through page 3. Xu also teaches the multiple addition of alkaline peroxide, which includes sodium hydroxide, hydrogen peroxide and a stabilizer, such as a silicate, DTPA, EDTA, NTA, etc.; see abstract, figure 1, paragraphs 1-3 of the “Detailed Description of the Invention” on page 6 and paragraph bridging pages 12 and 13, which teaches chelating agents and silicates as stabilizers.
Regarding to claim 2, Xu teaches the addition of alkaline peroxide at multiple stages, see above, and teaches different compositions, e.g., different amounts of the compounds that comprises the alkaline peroxide, in each stage; see claims 11 and 12. However, optimizing the amounts/concentration of the different materials/compounds in a composition is within the level of ordinary skill in the art and considered obvious, absent a showing of unexpected results.
With regard to claim 5, Xu teaches the use of screw presses; see for example page 9, second full paragraph, and teaches compression ratio of 4:1 that falls within the claimed ratio; see 2nd full paragraph on page 14 “Chemical Impregnation” section.
With regard to claims 6-7, Xu teaches temperature and pressure within the claimed range, i.e., at least 80 ºC; see page 7, end of the first full paragraph and teaches the use of a refiner operating at pressure falling within the claimed range, since Xu teaches that the refiner operates at pressure higher that 45 psi (310 kPa) at the high pressure refiner and lower than 45 psi (310 kPa) at the low pressure refiner; see page 8, lines 1-9.
Regarding to claim 9, Xu teaches 45 minutes or more of impregnation time before the start of the refining; see 2nd and 3rd full paragraphs on page 14, which teaches 30 minutes in the chemical impregnation and 15 minutes or more of impregnation in the refining. Therefore, increasing the impregnation dwell time is within the level of ordinary skill in the art.
With regard to claim 10, the washing, thickening and bleaching are common operations in pulping, as disclosed by Hurter on column 2, lines 13-37, column 9, line 45 through column 10, line 44. Therefore, washing/thickening after bleaching and adding another alkaline peroxide to the bleached pulp would have been obvious to one of ordinary skill in the art, since it is well-known in the art and also suggested by Xu; see the background of the invention on page 1, which teaches that “When compared to a peroxide post-bleaching process, applying alkaline peroxide before refining has a tendency to give a higher bulk at a given tensile strength for some hardwood species, such as North American aspen.” This statement evidences that it is well-known to apply peroxide to a bleached pulp, i.e., post treated.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Method of Making Non-Wood Pulp a Dispersible Non-Wood Pulp.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 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 on 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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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 See for example Xu, WO 2005/042830 Al, shown below.
2 See for example Xu, WO 2005/042830 Al, shown below.
Prosecution Insights