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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 17/758,343, PCT/EP2021/051295, EPO 20153462.5, and EPO 20153939.2 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed applications do not disclose in claim 2 “wherein the adhesive coating is a water-based colloid” and in claim 3 “wherein the adhesive coating is selected from the group consisting of soy-based adhesives, linseed oil-based adhesives and starch-based adhesives” (Emphasis added). Accordingly, claims 2, 3, and 16 are not entitled to the benefit of the prior applications (and have an effective filing date of 4/14/2025).
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.
Claim 3 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fransen et al. (U.S. Patent Application Publication 2023/0039678).
Regarding claim 3, Fransen discloses a method of producing a cellulose-based product (103,700), wherein the method comprises the steps of: (i) providing at least two layers including one first (104a) and one second (104b) layer, and wherein said first (104a) and second layer (104b) each comprise cellulose fibers, and wherein at least one side of said first (104a) and/or said second (104b) layer is pre-treated with an adhesive coating, (ii) arranging said at least two layers including the one first (104a) and the one second (104b) layers in a superimposed relationship to each other in a forming mold (102) of a form press (101), thereby generating a stack (104) of said at least two layers including the one first (104a) and the one second (104b) layers, wherein said first (104a) and second (104b) layers are oriented within the stack (104) such that said at least one pre-treated side of said respective first (104a) and/or second (104b) layer is facing towards the superimposed layer, and (iii) form pressing said stack (104) of at least two layers including the one first (1 04a) and the one second (104b) layers in a forming mold (102) at a forming temperature of at least 50oC up to a forming end-pressure of at most 1100 MPa, into a cellulose-based product (103, 700) of a predetermined shape and a single layer configuration, characterized in that in said step (iii) said layers including said one first (104a) and said one second (104b) layers are moveable with respect to each other until said forming end-pressure is reached and regarding claim 3 wherein the adhesive coating is selected from the group consisting of soy-based adhesives, linseed oil-based adhesives (Paragraphs 0009-0012 and see further MPEP 2133.01 and Priority above).
Claim Rejections - 35 USC § 102/103
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.
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 15 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hutzelmann (EP 2862710 and see also the machine translation).
Regarding claim 15, Hutzelmann (Figures 1-4 and Pages 2 and 3 of the machine translation) discloses at least a tableware (Figure 1) of a product of a formed shape and a single layer (i.e. individual layers adhered into a single layer) configuration comprising one first paper layer (3) and one second paper layer (4 or 2) stacked/superimposed with an adhesive (i.e. “According to the invention, it is very advantageous if an adhesion promoter, adhesive, a plastic layer or the like is provided between two successive fibrous layers.”) therebetween. As to the limitations of “cellulose-based” and “cellulose fibers”, Hutzelmann teaches the layers are formed of paper comprising fibers wherein it is considered paper is inherently understood by one of ordinary skill in the art as cellulose-based on cellulose fibers or wherein it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the paper layers taught by Hutzelmann are cellulose-based on cellulose fibers as it is extremely well known and well understood by one of ordinary skill in the art paper comprising fibers is conventionally and predictably cellulose-based comprising cellulose fibers.
As to the limitation in claim 15 of “manufactured according to the method of claim 1”, claim 15 is directed to a product-by-process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. Once the examiner provides a rationale (see the description of Hutzelmann above) tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product (See MPEP 2113).
Claim Rejections - 35 USC § 103
Claims 2 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Fransen in view of Kemmish (U.S. Patent 5,711,842) and optionally further Aylesworth (U.S. Patent 11,141,702).
Fransen is described above in full detail.
Regarding claims 2 and 16, Fransen teaches the adhesive coating is a water-based dispersion or emulsion that is biodegradable and/or recyclable (Paragraph 0012). Fransen does not expressly teach the adhesive coating is a water-based colloid. Fransen (Paragraphs 0011, 0042, and 0049) teaches the adhesive coating may be any coating having adhesive properties known to the person skilled in the art so that the adhesive coating allows the layers to remain movable with respect to each other until said forming end pressure is reached (generally the forming end pressure set to a value of 1 MPa to 1100 MPa at a temperature in the range of 30oC to 300oC). It is well understood by one of ordinary skill in the art adhesive coating composition that is biodegradable and useful for a wide range of applications (e.g. bonding paper, card, etc.) is a water-based latex (having a size range from 0.1 µm to 2.0
µ
m, see Column 3, lines 41-44, wherein a size range of 0.1 µm to about 1 µm is well understood by one of ordinary skill in the art as a colloid having a particle size between that of a solution and a suspension including as optionally evidenced by Aylesworth, Column 7, lines 13-29) subject to an end pressure in the range of 500 to 10000 psig (3.45 MPa to 69 MPa) and optionally heat treatment (in the range of 120 to 190oC) to set the adhesive as evidenced by Kemmish (Column 1, lines 5-8 and Column 3, lines 56-57 and Column 4, lines 1-21). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the adhesive coating taught by Fransen is a water-based colloid (having a particle size of 0.1 µm to about 1 µm) that is biodegradable and requires an end pressure is reached to then set as a simple substitution of an adhesive known to the person skilled in the art and consistent with that taught by Fransen to yield the predictable result of bonding the layers as evidenced by Kemmish and optionally further Aylesworth.
Claims 2, 3, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Fransen in view of Bogardy (U.S. Patent 5,589,528).
Fransen is described above in full detail.
Regarding claims 2, 3, and 16, Fransen teaches the adhesive coating is a water-based dispersion or emulsion that is biodegradable and/or recyclable (Paragraph 0012). Fransen does not expressly teach the adhesive coating is a water-based colloid. Fransen (Paragraphs 0011, 0042, and 0049) teaches the adhesive coating may be any coating having adhesive properties known to the person skilled in the art so that the adhesive coating allows the layers to remain movable with respect to each other and solidifies upon bonding and builds an adhesive layer. It is well understood by one of ordinary skill in the art adhesive coating that is biodegradable, low-cost, environmentally safe, has superior handling and application quality and a broad range of industrial applicability (e.g. bonding paper, paperboard, etc.) is a water-based colloid (that is soy-based or starch-based) applied as a hot melt coating to wet out the surfaces and upon cooling forms a bond capable of holding surfaces being joined together until further evaporation causes a bond which is stronger than the surfaces being joined as taught by Bogardy (Column 2, lines 56-64 and Column 3, line 3 and Column 4, lines 4-6 and 22-25 and 48-51 and Column 5 lines 13-24). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the adhesive coating taught by Fransen is a water-based colloid (that is starch-based) that is biodegradable and upon cooling forms a bond and builds an adhesive layer as a simple substitution of an adhesive known to the person skilled in the art and consistent with that taught by Fransen to yield the predictable result of bonding the layers as evidenced by Bogardy and further including that is low-cost, environmentally safe, has superior handling and application quality and a broad range of industrial applicability.
Claims 1, 4-12, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hutzelmann in view of Larsson et al. (WO 2019/209160).
Regarding claim 1, Hutzelmann (Figures 1-4 and Pages 2-4 of the machine translation) discloses a method of producing a paper-based product (Figure 1), wherein the method comprises the steps of: (i) providing at least two layers including one first (3) and one second (4 or 2) layer, and wherein the first and second layer each comprise fibers, and an adhesive (i.e. “According to the invention, it is very advantageous if an adhesion promoter, adhesive, a plastic layer or the like is provided between two successive fibrous layers.”), (ii) arranging the at least two layers including the one first and the one second layers in a superimposed relationship to each other in a forming mold of a form press (molding for deep drawing the layers), thereby generating a stack of the at least two layers including the one first and the one second layers, wherein the first and second layers are oriented within the stack such that the adhesive is therebetween, and (iii) form pressing (deep drawing) the stack of at least two layers including the one first and the one second layers into a paper-based product of a predetermined shape and a single layer (i.e. individual layers adhered into a single layer) configuration.
As to the limitations in claim 1 of “a cellulose-based product” and “wherein said first (104a) and second layer (104b) each comprise cellulose fibers”, Hutzelmann teaches the layers are formed of paper comprising fibers wherein it is considered paper is necessarily understood by one of ordinary skill in the art as cellulose-based on cellulose fibers or wherein it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the paper layers taught by Hutzelmann are cellulose-based on cellulose fibers as it is extremely well known and well understood by one of ordinary skill in the art paper comprising fibers is conventionally and predictably cellulose-based comprising cellulose fibers or alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the fibers of the layers taught by Hutzelmann are cellulose fibers as are the conventional and predictable fibers for the product as evidenced by Larsson (see Page 1, lines 8-20).
As to the limitations in claim 1 of “wherein at least one side of said first (104a) and/or said second (104b) layer is pre-treated with an adhesive coating” and “said at least one pre-treated side of said respective first (104a) and/or second (104b) layer is facing towards the superimposed layer” and claim 9, Hutzelmann teaches “According to the invention, it is very advantageous if an adhesion promoter, adhesive, a plastic layer or the like is provided between two successive fibrous layers.”. Hutzelmann does not expressly teach when the adhesive is applied. However, Hutzelmann further teaches “In this case, the plastic may also be designed as a plastic layer extruded onto the paper layers, for example.”. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in Hutzelmann at least one side of the first and/or the second layer is pre-treated with an adhesive coating (the at least one pre-treated side of the respective first and/or second layer thus facing towards the superimposed layer and wherein at least one side of the first and the second layer is pre-treated with an adhesive coating is regarding 9 wherein the coating is applied with the same or a varying thickness to at least one side of each of the layers) as is nothing more than choosing from the finite number of predictable solutions for applying the adhesive (i.e. the adhesive is applied necessarily in either the providing step (i) or in the arranging step (ii)) with a reasonable expectation of success (including as evidenced by Hutzelmann the layers may be pre-treated, i.e. “In this case, the plastic may also be designed as a plastic layer extruded onto the paper layers, for example.”).
As to the limitations in claim 1 of “in a forming mold (102) at a forming temperature of at least 50°C up to a forming end-pressure of at most 1100 MPa” and “characterized in that in said step (iii) said layers including said one first (104a) and said one second (104b) layers are moveable with respect to each other until said forming end-pressure is reached” and claim 8, Hutzelmann teaches the layers are loosely superimposed and joined together during the form pressing, i.e. “A further advantageous embodiment of the method according to the invention is that the layers are joined together during molding. This can also be loosely superimposed or not yet endfest interconnected layers interconnect without an additional process step would be necessary.” and including loosely clamped or held to allow slipping during the form pressing to limit the local strain and prevent possible damage, i.e. “It has proved extremely advantageous according to the invention if the layers are loosely clamped or held during molding. This allows slipping when forming.” and “By a corresponding embodiment of the thermoforming station, the elongation can be distributed over a wider range, even with smaller radii. Especially is through a controlled slippage of material limits the local strain and thus prevents possible damage to the material structure. This controlled slipping can be achieved by a loose clamping, which is accompanied by a force limitation of the clamping.”. Hutzelmann is silent as to the forming temperature (teaching heating the processing tools without the specific temperature) and end-pressure (teaching pressing without the specific end-pressure). It is known in the same art conditions to form the layers into the predetermined shape and a single layer configuration in a forming mold (12) comprise a forming temperature range of 100 oC to 300 oC and a pressure of at least 1MPa and preferably 4-20 MPa as taught by Larsson (Figure 1 and Page 3, lines 4-11 and Page 21, lines 11-13). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention step (iii) form pressing the stack as taught by Hutzelmann is in a forming mold at a forming temperature of at least 50°C (and including regarding claim 8 wherein the forming mold is heated to a forming temperature of from 50°C to 200°C) up to a forming end-pressure of at most 1100 MPa as are the conventional and predictable conditions to form the layers into the predetermined shape and a single layer configuration as evidenced by Larsson (it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close see MPEP 2144.05) and further in step (iii) the layers including the one first and the one second layers are moveable with respect to each other (including at least interior the edge of the layers) until the forming end-pressure is reached as the layers are loosely superimposed and not yet joined prior to form pressing and are loosely clamped or held so that a controlled slippage of the layers limits the local strain and thus prevents possible damage to the layers during form pressing as taught by Hutzelmann.
It is further noted the limitation the “layers are movable with respect to each other until said forming end-pressure is reached” only requires the layers are capable of moving with respect to each other until the forming end-pressure is reached, i.e. are not pre-laminated wherein the layers taught by Hutzelmann for example see “A further advantageous embodiment of the method according to the invention is that the layers are joined together during molding. This can also be loosely superimposed or not yet endfest interconnected layers interconnect without an additional process step would be necessary.” are not pre-laminated, and does not expressly and positively require the layers move with respect to each other until the forming end-pressure is reached.
Regarding claim 4, Hutzelmann does not expressly teach the area weight of the adhesive coating wherein the adhesive coating functions to adhere the first and second layers. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the area weight of the adhesive coating taught by Hutzelmann as modified by Larsson is determined as that which is sufficient to adhere the first and second layers, e.g. the area weight of the coating ranges from 0.5 to 50 gsm of the first and/or second layer, as is the function of the coating, it being noted there is no evidence of record that the claimed range is critical and Hutzelmann does not teach away from the claimed range (see MPEP 2144.05).
Regarding claims 5-7, Hutzelmann does not expressly teach the first and/or second layer comprise one or more additives that are altering the mechanical, hydrophobic, oleophobic, haptic, or aesthetic properties of the cellulose-based product. It is known in the same art as taught by Larsson (Page 4, line 12 to Page 5, line 5) the first and/or second layer comprise one or more additives that are altering the mechanical, hydrophobic, oleophobic, etc. properties of the cellulose-based product wherein the first and/or second layer are constituted by 70 to 99.9 % dry wt cellulose fibers and 0.1 to 20 % dry wt of the one or more additives, wherein the one or more additives are selected from starch compounds, etc., and wherein the one or more additives are added to the first and/or second layer prior to step (i). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the first and/or second layer as taught by Hutzelmann as modified by Larsson comprise one or more additives (and regarding claim 5 wherein the first and/or second layer are constituted by 50 to 90 % dry wt cellulose fibers and 10 to 50 % dry wt of the one or more additives, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close see MPEP 2144.05, and regarding claim 6 wherein the one or more additives are starch compounds, etc. and regarding claim 7 wherein the one or more additives are added to the first and/or second layer prior to step (i)) to alter the mechanical, hydrophobic, oleophobic, etc. properties of the cellulose-based product as taught by Larsson.
Regarding claims 10 and 12, Hutzelmann does not expressly teach the area weight of the first and second layers. It is known in the art the weight of the layers is used for controlling the properties of the product which may differ between different types of products as taught by Larsson (Page 5, lines 19-27) wherein exemplary weights include 50 to 2000 gsm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention each of the first and second layers taught by Hutzelmann as modified by Larsson has an area weight determined to control the properties of the product which may differ between different types of products, e.g. regarding claim 10 an area weight ranging from 50 to 2000 gsm and regarding claim 12 wherein the total weight of the at least two layers including the one first and the one second layers is in the range of 650 to 2200 gsm, as taught by Larsson, it being noted there is no evidence of record that the claimed range is critical and Hutzelmann and Larsson do not teach away from the claimed range (see MPEP 2144.05) and further in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Regarding claim 11, the stack taught by Hutzelmann as modified by Larsson as set forth above comprises or consists of 2 to 10, e.g. 2, first and second layers.
Regarding claim 14, Hutzelmann does not expressly teach the stack comprises one or more additional layers, which comprise 2 to 5% dry wt of thermoplastic reinforcing fibers having a melting temperature below the forming temperature. It is known in the same art the stack comprises one or more additional layers, which comprise 2 to 5% dry wt of thermoplastic reinforcing fibers having a melting temperature below the forming temperature to even further vary or alter the properties of the cellulose product as taught by Larsson (Page 30, lines 3-16). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the stack taught by Hutzelmann as modified by Larsson further comprises one or more additional layers, which comprise 2 to 5% dry wt of thermoplastic reinforcing fibers having a melting temperature below the forming temperature to even further vary or alter the properties of the cellulose product as taught by Larsson.
Regarding claim 15, Hutzelmann as modified by Larsson above teach at least a cellulose-based tableware manufactured according to the method of claim 1.
Claims 2 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hutzelmann and Larsson as applied to claims 1, 4-12, 14, and 15 above, and further in view of Kemmish and optionally further Aylesworth.
Regarding claims 2 and 16, Hutzelmann as modified by Larsson above teach all of the limitations in claims 2 and 16 except for a specific teaching the adhesive coating is a water-based colloid. Hutzelmann is not limited to any particular adhesive suggesting “The invention has for its object to produce a trough-shaped part of the type mentioned largely from renewable resources.” and “The polymer layer can also consist of renewable raw materials, such as PLA or the like.”. Kemmish and Aylesworth are described above in full detail. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the adhesive coating taught by Hutzelmann as modified by Larsson is a water-based colloid (having a particle size of 0.1 µm to about 1 µm) that requires an end pressure is reached to then set not only as a simple substitution of an adhesive known to the person skilled in the art to yield the predictable result of bonding the layers (that are loosely superimposed and joined together during the form pressing and including loosely clamped or held to allow slipping during the form pressing to limit the local strain and prevent possible damage as taught by Hutzelmann) as evidenced by Kemmish and optionally further Aylesworth but that is biodegradable.
Claims 2, 3, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hutzelmann and Larsson as applied to claims 1, 4-12, 14, and 15 above, and further in view of Bogardy.
Regarding claims 2, 3, and 16, Hutzelmann as modified by Larsson above teach all of the limitations in claims 2, 3, and 16 except for a specific teaching the adhesive coating is a water-based colloid. Hutzelmann is not limited to any particular adhesive suggesting “The invention has for its object to produce a trough-shaped part of the type mentioned largely from renewable resources.” and “The polymer layer can also consist of renewable raw materials, such as PLA or the like.”. Bogardy is described above in full detail. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the adhesive coating taught by Hutzelmann as modified by Larsson is a water-based colloid (that is soy-based or starch-based) that upon cooling forms a bond as a simple substitution of an adhesive known to the person skilled in the art to yield the predictable result of bonding the layers (that are loosely superimposed and joined together during the form pressing and including loosely clamped or held to allow slipping during the form pressing to limit the local strain and prevent possible damage as taught by Hutzelmann) as evidenced by Bogardy and further including that is that is biodegradable, low-cost, environmentally safe, has superior handling and application quality and a broad range of industrial applicability.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hutzelmann and Larsson as applied to claims 1, 4-12, 14, and 15 above, and further in view of Netravali et al. (U.S. Patent Application Publication 2011/0052881).
Regarding claim 3, Hutzelmann as modified by Larsson above teach all of the limitations in claim 3 except for a specific teaching the adhesive coating is soy-based. Hutzelmann is not limited to any particular adhesive suggesting “The invention has for its object to produce a trough-shaped part of the type mentioned largely from renewable resources.” and “The polymer layer can also consist of renewable raw materials, such as PLA or the like.”. Netravali teaches a thermoset soy based adhesive (in a water-based dispersion) from renewable resources that is biodegradable, non-toxic and environmentally friendly used to adhere paper in a stack that is formed/thermoformed (Paragraphs 0002, 0013, 0014, 0072, 0082, 0085, 0091, and 0096-0098). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the adhesive in the adhesive coating taught by Hutzelmann as modified by Larsson is the thermoset soy based adhesive taught by Netravali not only as a simple substitution of one known adhesive to yield predictable results but that is from renewable resources (as is consistent with that suggested by Hutzelmann), biodegradable, non-toxic and environmentally friendly.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hutzelmann and Larsson as applied to claims 1, 4-12, 14, and 15 above, and further in view of Edwards et al. (U.S. Patent Application Publication 2016/0221742).
Regarding claim 13, Hutzelmann as modified by Larsson above teach all of the limitations in claim 13 except for a specific teaching a surface of the cellulose-based product is coated with a finish. It is known in the art a surface of the cellulose-based product is sprayed with a barrier finish and a sealant finish to create a moisture/oxygen barrier for shelf life stability and to provide hermesicity as taught by Edwards (Abstract and Paragraphs 0080 and 0084). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention a surface of the cellulose-based product taught by Hutzelmann as modified by Larsson is sprayed with a barrier finish and a sealant finish to create a moisture/oxygen barrier for shelf life stability and to provide hermesicity as taught by Edwards.
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 and 3-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,285,932. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of U.S. Patent No. 12,285,932 fully encompass claims 1 and 3-15 of the instant application.
Claims 2 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,285,932 in view of Kemmish and optionally further Aylesworth. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of U.S. Patent No. 12,285,932 fully encompass claims 2 and 16 of the instant application but for a specific teaching the adhesive coating is a water-based colloid. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the adhesive coating is a water-based dispersion that is biodegradable and/or recyclable as taught by claims 1-16 of U.S. Patent No. 12,285,932 is a water-based colloid (having a particle size of 0.1 µm to about 1 µm wherein a colloid is a type of dispersion) that is biodegradable and requires an end pressure is reached to then set as a simple substitution of an adhesive known to the person skilled in the art to yield the predictable result of bonding the layers as evidenced by Kemmish (described above in full detail) and optionally further Aylesworth (described above in full detail).
Claims 2 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,285,932 in view of Bogardy. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of U.S. Patent No. 12,285,932 fully encompass claims 1 and 3-15 of the instant application but for a specific teaching the adhesive coating is a water-based colloid. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the adhesive coating is a water-based dispersion that is biodegradable and/or recyclable as taught by claims 1-16 of U.S. Patent No. 12,285,932 is a water-based colloid that is biodegradable and upon cooling forms the bond as a simple substitution of an adhesive known to the person skilled in the art to yield the predictable result of bonding the layers as evidenced by Bogardy and further including that is low-cost, environmentally safe, has superior handling and application quality and a broad range of industrial applicability.
Conclusion
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746
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