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 .
Response to Board of Appeal Decision
This Office Action is being issued following a Board of Appeal Decision (4/8/26) , the decision to re-open prosecution after the Decision rendered by the Board has been approved by the Technology Center Director:
/JONATHAN C TEIXEIRA MOFFAT/Group Director TC 3700
Jonathan Moffat
Director Technology Center 3700
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
the phrase/feature - - a portion of the HME material/cellulose-containing paper around the edge of each perforation protrudes from the surface of the HME material/ cellulose-containing paper - - (claims 11 and 43) is not clear how only a portion around the edge of each perforation protrudes from the surface. The specification does not provide a reference number for the portion of the edge of the perforation or indicate in any figure this “portion” feature is shown. The instant specification recites: “a portion of the HME material around the edge of each perforation may protrude from the surface of the HME material. For example, about 25%, about 50% or about 75% of the HME material around the edge of each perforation may protrude” (page 6, lines 21-25). It is not clear how only a portion of the material around the edge of a perforation can protrude (i.e. 25%, 50%, 75%, etc.).
the claimed phrase “A heat and moisture exchange device” in claims (26 and 46) is not clear what this device is limited to since the specification does not provide any reference number for the “heat and moisture exchange device” and the drawings do not show a heat and moisture exchange device. Presumably the “device” is a respirator or mask with a HME medium. The instant specification recites:
“Respiratory gas may be passively heated and humidified prior to inhalation using HME devices comprising an HME medium” (page 1, lines 16-18)…The HME device preferably comprises a housing defining a heat and moisture exchange chamber containing the HME medium. The housing may further comprise two ports communicating between the heat and moisture exchange chamber and the exterior of the device. Each port preferably comprises standard connectors, such as Luer tapers, that are compatible with conventional breathing lines and associated apparatus. The ports are preferably located at opposite ends of the chamber and the chamber preferably has a greater transverse cross-sectional area than the ports (page 9, lines 19-26)…The housing may comprise a sampling port for sampling gas in the chamber, which preferably includes a valve or closure for preventing gas flow through the sampling port during normal operation of the HME device” (page 10, lines 1-9)
Examiner contends this device should be shown and it is not clear how the HME medium is clearly arranged in this device and is not clear if this device is a mask, respirator, ventilation machine or some other device that filters air/fluids. Also as claimed “device” could be rollers or any machine device the material is on/connected to. The drawings do not make up for this deficiency either.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the portion around the edge of each perforation that protrudes from the surface of the HME material/ cellulose-containing paper and the heat and moisture exchange device, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11, 26, and 43-46 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the entire edge of each perforation may protrude from the surface of the HME material, such that the protrusions may be substantially in the form of a cone or pyramid with the perforation located at their apex (page 6, lines 25-28), does not reasonably provide enablement for a portion of the HME material/cellulose-containing paper around the edge of each perforation protrudes from the surface of the HME material/ cellulose-containing paper and what the heat and moisture exchange device is. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. Claims 11 and 43 recite - - a portion of the HME material/cellulose-containing paper around the edge of each perforation protrudes from the surface of the HME material/ cellulose-containing paper - - It is not clear how only a portion around the edge of each perforation protrudes from the surface. The specification does not provide a reference number for the portion of the edge of the perforation or indicate any figure this “portion” feature is shown. The instant specification recites: “a portion of the HME material around the edge of each perforation may protrude from the surface of the HME material. For example, about 25%, about 50% or about 75% of the HME material around the edge of each perforation may protrude” (page 6, lines 21-25). It is not clear how only a portion of the material around the edge of a perforation can protrude (i.e. 25%, 50%, 75%, etc.). With respect to the heat and moisture exchange device as discussed above/supra the specification does not clearly indicate what the and the heat and moisture exchange device is. The drawings do not make up for this deficiency either.
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 48-49 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 48 is not clear if claim 48 is intended to be a multiple dependent claim or which claim(s) it depends from since claim 48 recites “of Claim 22” and also recites “according to Claim 1”.
Claim 49 is rejected based on its dependency to claim 48.
Claim Rejections - 35 USC § 102
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 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) 1-2, 4-5, 7, 9, 15, 21, 42-43, and 45-47, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BIAGIOTTI (ITPI20090010 A1).
Regarding claims 1-2 and 9, BIAGIOTTI discloses heat and moisture exchange material (10, figs. 1-3) comprising: a cellulose-containing paper (pure cellulose or mixtures having cellulose and waste paper pulp in any proportion, page 2, last paragraph lines 7-8, page 6 lines 25-31) having a plurality of discrete protrusions (11 and 13, page 6, lines 8-29) extending from at least part of one surface of the cellulose-containing paper (figs. 1-3), wherein each protrusion (11 and 13) is completely surrounded by substantially non-protruding cellulose-containing paper (protrusions 11 and 13 completely surrounded see figs. 1-3), wherein each protrusion (11 and 13) comprises a perforation (15 and 16) in the cellulose-containing paper (claim 2, “ruptures and/or openings at the top” page 5, lines 1-3, page 6, figs. 1-6, lines 17-39).
Regarding claims 43, BIAGIOTTI discloses heat and moisture exchange material (10, figs. 1-3) comprising a plurality of discrete protrusions (11 and 13, page 6, lines 8-29)) extending from at least part of one surface of the heat-and moisture exchange (HME) material (pure cellulose or mixtures having cellulose and waste paper pulp in any proportion, page 2, last paragraph lines 7-8, page 6 lines 25-31), wherein each protrusion (11/13) is completely surrounded by substantially non-protruding HME material (2, figs. 1-3); wherein each protrusion comprises a perforation (15 and 16) in the HME material; and wherein a portion of the HME material around the edge of each perforation protrudes from the surface of the HME material (conical walls, fig. 2) that protrudes from the surface (page 6, figs. 1-6, lines 17-39).
Regarding claims 4-5, BIAGIOTTI discloses the protrusions do not span the entire width of the cellulose-containing paper (see fig. 6 showing edges with no protrusions) wherein the protrusions are hemispherical, frustoconical, cylindrical, pyramidal, cuboid, hemicylindrical or any combination of these (hemispherical/conical, figs. 1-2 or pyramidal, fig. 3, page 6, lines 25-28, page 7, lines 14-17).
Regarding claims 7 and 45-47, BIAGIOTTI discloses the protrusions are distributed regularly on the surface of the cellulose- containing paper, wherein each of the plurality of discrete protrusions have a same shape (figs. 1-5) and a plurality of directly overlying, unsupported layers (20) of the heat and moisture exchange material (page 7, lines 30-33 and page 8, lines 1-9 figs. 1-10). BIAGIOTTI also discloses having any desired pattern and any number desired with perforations “few per cm2”, claim 1, page 4, lines 29-31, page 6, lines 35-37, page 7, lines 19 21, figs. 1-3 and 6).
Regarding claims 15 and 42, BIAGIOTTI discloses the cellulose-containing paper further comprises natural fibres, or synthetic fibres, or any combination thereof (pure cellulose or from pulp containing pulp and waste paper pulp in any proportion, page 2, last paragraph lines 7-8, page 6 lines 25-31), wherein the cellulose-containing paper is porous (openings 15 and 16 make the paper porous, claim 2, page 6, figs. 1-6, lines 17-39)..
Regarding claim 21, BIAGIOTTI discloses the discrete protrusions (11 and 13) extend from at least a part of two opposing surfaces (figs. 1-4) of the cellulose-containing paper (see figs. 1-4 showing protrusions on one or two surfaces and with one or two smooth layers 20).
Claim(s) 43-46 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Curro et al. (US 4629643 A).
Regarding claims 43 and 45-46, Curro et al. discloses heat and moisture exchange material/medium (web 110, fig. 5) comprising a plurality of discrete protrusions (120) extending from at least part of one surface of the heat-and moisture exchange (HME) material (planar microapertured web 110, col. 10, lines 28-31) wherein each protrusion is completely surrounded by substantially non-protruding HME material; wherein each protrusion comprises a perforation (microaperture/volcano-shaped aperture 125 – for softer and increased pliability, figs. 3-5) in the HME material; and wherein a portion of the HME material around the edge of each perforation protrudes from the surface of the HME material (“volcano-shaped aperture 125” - shown with “irregularly shaped petals 126 about its periphery” with “petal-shaped edges 128”) that protrudes from the surface (col. 10, lines 1-27, figs. 3-5). ). Also, A heat and moisture exchange device (rolls 502/505, forming device roll 705, fig. 8) comprising the heat and moisture exchange medium according to Claim 22 (rolls are a device as shown comprises the material (110) also see U.S.C. 112 issues above for “heat and moisture exchange device” confusion).
Regarding claims 44, Curro et al. discloses the perforations (aperture 125) are cuts in the HME material (figs. 3 and 5 show cuts) that partially surround a region of the HME material, such that said region of HME material forms a flap (126, fig. 3) extending from the surface of the HME material (figs. 3-5).
Claim(s) 43-46 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mansson et al. (US 20070218248 A1).
Regarding claims 43 and 45-46, Mansson et al. discloses heat and moisture exchange material/medium (1) comprising a plurality of discrete protrusions (6) extending from at least part of one surface of the heat-and moisture exchange (HME) material (tissue paper), wherein each protrusion (conical walls 6 [0019]) is completely surrounded by substantially non-protruding HME material (2, fig. 2); wherein each protrusion comprises a perforation (5) in the HME material; and wherein a portion of the HME material around the edge of each perforation protrudes from the surface of the HME material (conical walls 6) that protrudes from the surface ([0019], claims 1-3 and 12, figs. 1-3). Also, A heat and moisture exchange device (rolls 9 and 13-20, fig. 4) comprising the heat and moisture exchange medium according to Claim 22 (rolls are a device as shown comprises the material (1) also see U.S.C. 112 issues above for “heat and moisture exchange device” confusion)
Mansson et al. states: “protruding areas of fibres is produced by providing a pattern of holes in said ply and mechanically forcing an area of paper around each hole out of the plane of said ply…at least one ply has such a pattern of protrusions [0011]… pattern of holes 5 having conical walls 6 protruding out of the plane of the middle ply 2 [0019] … to enhance the wet properties of such protrusions, wet strength additives or the like is preferably be added to the paper” [0021]
Regarding claims 44, Mansson et al. discloses the perforations (5) are cuts in the HME material (“mechanically forcing an area of paper around each hole” which is a forced cut, see jagged edges in fig. 3, [0011]) that partially surround a region of the HME material (fig. 3), such that said region of HME material forms a flap (jagged edges form flaps, fig. 3) extending from the surface of the HME material (fig. 3). Also, note applicant’s specification discloses the cuts are formed from mechanically forcing an area of paper (page 6, lines 30-33, page 23, lines 30-33).
Claim(s) 1-7, 15, 18-19, 21-24, 26, 42, and 48-49 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGuire et al. (US 6254965 B1).
Regarding claims 1-2, and 19, McGuire et al. discloses a heat and moisture exchange material (10) comprising: cellulose-containing paper (col. 17, lines 10-14, claim 1, figs. 1-9) having a plurality of discrete protrusions (12/13, col. 8, lines 20-27)) extending from at least part of one surface of the cellulose-containing paper, wherein each protrusion is completely surrounded by substantially non-protruding cellulose-containing paper, wherein the protrusions (col. 8, lines 20-27) are formed from the cellulose-containing paper (claim 1) and the heat and moisture exchange material is in the form of elongate strips (14, “elongated web” col. 4, lines 50-67, col. 8, lines 20-27, col. 17 lines 10-15, claim 1, figs. 1-9).
Regarding claims 3, 6 and 18, McGuire et al. discloses the regions of the cellulose-containing paper from which each protrusion is formed has a maximum dimension of between 0.4 mm and 5.0 mm (max .76 mm, col. 17, lines 26-29, figs. 1-9), wherein the protrusions protrude from the surface of the cellulose-containing paper by between 0.1 mm and 1.0 mm (1mm, col. 17, lines 38-42 or .152mm col. 23, lines 30-34) the cellulose-containing paper has a thickness of between 0.01 mm and 1.0 mm (.025mm thick, col. 17, lines 44-49, figs. 1-9).
Regarding claims 4-5, McGuire et al. discloses the protrusions do not span the entire width of the cellulose-containing paper (figs. 3-5 and 10 shows edges with no protrusions). wherein the protrusions are hemispherical, frustoconical, cylindrical, pyramidal, cuboid, hemicylindrical or any combination of these (“any three-dimensional shape” col. 8, lines 20-22, frustum shapes - circular, quadrilateral, polygon shapes, col. 8, lines 30-44, convex polygonal shapes col. 19, lines 58-67, figs. 1-5 and 8-11).
Regarding claims 7, McGuire et al. discloses the protrusions are distributed regularly on the surface of the cellulose- containing paper (nesting with gaps/unsupported layers, col. 1, lines 38-67, col. 5, lines 49-67, col. 6, lines 1-67, col. 7, lines 1-50, col. 8, lines 20-67, col. 10, lines 37-67, col. 11, lines 1-2, col. 20, lines 1-9, figs. 1-3).
Regarding claims 15 and 42, McGuire et al. discloses the cellulose-containing paper further comprises natural fibres, or synthetic fibres, or any combination thereof, wherein the cellulose-containing paper is porous, (col. 17, lines 10-14, claim 1, figs. 1-9).
Regarding claim 21, McGuire et al. discloses the discrete protrusions (12) extend from at least a part of two opposing surfaces (15/17) of the cellulose-containing paper (see top surface and surfaces 15, 17, figs. 5 and 8-9).
Regarding claims 22-24 and 26, McGuire et al. discloses a heat and moisture exchange medium comprising the heat and moisture exchange material, wherein the heat and moisture exchange medium comprises a plurality of overlying layers of the heat and moisture exchange material (10) according to claim 1 (“deformable material” - liquid permeable col. 17, lines 10-25, wipes, cloths, sponges, pads that absorb liquid col. 24, line 30-43, also paper cellulose sheet material (10) will exchange moisture col. 17 lines 10-15, claim 1, nesting of layers), wherein the heat and moisture exchange medium is in the form of a coil of the heat and moisture exchange material (10- “deformable material” - liquid permeable col. 17, lines 10-25, wipes, cloths, sponges, pads that absorb liquid col. 24, line 30-43, also paper cellulose sheet material (10), claim 1, coil/wound on mandrel col. 4, lines65-67, col. 5, lines 1-10). Also, A heat and moisture exchange device (180, fig. 13) comprising the heat and moisture exchange medium according to Claim 22 (device shown comprises the material (10) also see U.S.C. 112 issues above for “heat and moisture exchange device” confusion).
Regarding claim 48-49, McGuire et al. discloses a plurality of directly overlying, unsupported layers of the heat and moisture exchange material (paper cellulose sheet material 10 col. 17 lines 10-15, claim 1), wherein the plurality of directly overlying, unsupported layers of the heat and moisture exchange material are arranged in a coil (coil/wound on mandrel col. 4, lines65-67, col. 5, lines 1-10 nesting will gaps/unsupported layers wound onto rolls without nesting/unsupported, col. 5, lines 49-67, col. 6, lines 1-7, col. 15, lines 39-50).
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.
Examiner notes claim 9 is rejected above under 35 USC 102, alternatively claim 9 and claim 10 based on its dependency to claim 9 is/are rejected under 35 U.S.C. 103 as obvious over McGuire et al. (US 6254965 B1) in view of BIAGIOTTI (IT PI20090010 A1).
Regarding claims 9-10, McGuire et al. discloses the regions of the cellulose-containing paper from which each protrusion is formed has a maximum dimension of between 0.4 mm and 5.0 mm (max .76 mm, col. 17, lines 26-29, figs. 1-9), wherein the protrusions protrude from the surface of the cellulose-containing paper by between 0.1 mm and 1.0 mm (1mm, col. 17, lines 38-42 or .152mm col. 23, lines 30-34) the cellulose-containing paper has a thickness of between 0.01 mm and 1.0 mm (.025mm thick, col. 17, lines 44-49, figs. 1-9) and McGuire et al. also teaches the protrusions are hollow protrusions 12, abstract, col. 4, lines 50-64, col. 13, lines 57-60, col. 15, lines 28-31, hollow frustums col. 10, lines 22-39).
McGuire et al. fails to explicitly disclose each protrusion comprises a perforation in the cellulose-containing paper and the protrusions have perforations with a maximum dimension of between 0.4 mm and 5.0 mm.
BIAGIOTTI teaches having heat and moisture exchange material (10, figs. 1-3) comprising: a cellulose-containing paper (pure cellulose or from pulp containing pulp and waste paper pulp in any proportion, page 2, last paragraph lines 7-8, page 6 lines 25-31) with protrusions (11 and 13) that comprise a perforation (15 and 16, claim 2, “ruptures and/or openings at the top” page 5, lines 1-3, page 6, figs. 1-6, lines 17-39).
Given the teachings of McGuire et al. to have hollow protrusions and the material being one inch wide (25mm) strip of material, it 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 to modify the protrusions to have perforations with a maximum dimension of between 0.4 mm and 5.0 mm, to have a more deformable material, material of desired size and/or for strength of material purposes as taught by BIAGIOTTI and since a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1995) and “mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976), 531 F.2d at 1053, 189 USPQ at 148.).
Moreover, In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim(s) 12-13, is/are rejected under 35 U.S.C. 103 as obvious over McGuire et al. (US 6254965 B1) in view of BIAGIOTTI (IT PI20090010 A1) in view of Curro et al. (US 4629643 A) and further in view of Mansson et al. (US 20070218248 A1).
Regarding claims 12-13, McGuire et al. teaches the material is HME material and the protrusions are hollow protrusions 12, abstract, col. 4, lines 50-64, col. 13, lines 57-60, col. 15, lines 28-31, hollow frustums col. 10, lines 22-39). BIAGIOTTI teaches having heat and moisture exchange material (10, figs. 1-3) comprising: a cellulose-containing paper (pure cellulose or from pulp containing pulp and waste paper pulp in any proportion, page 2, last paragraph lines 7-8, page 6 lines 25-31) with protrusions (11 and 13) that comprise a perforation (15 and 16, claim 2, “ruptures and/or openings at the top” page 5, lines 1-3, page 6, figs. 1-6, lines 17-39).
McGuire et al. modified by BIAGIOTTI fails to teach the perforations are cuts in the cellulose-containing paper that partially surround a region of the cellulose-containing paper/HME material, such that said region of cellulose-containing paper forms a flap extending from the surface of the cellulose-containing paper such that said region of HME material forms a flap extending from the surface of the HME material wherein the cut is generally C-shaped such that the flap is substantially circular.
Curro et al. teaches a heat and moisture exchange material (web 110, fig. 5) comprising a plurality of discrete protrusions (120) extending from the surface of the heat-and moisture exchange (HME) material (planar microapertured web 110, col. 10, lines 28-31) wherein each protrusion is completely surrounded by substantially non-protruding HME material; wherein each protrusion comprises a perforation (microaperture/volcano-shaped aperture 125 – for softer and increased pliability, figs. 3-5) in the HME material (col. 10, lines 1-27, figs. 3-5) and teaches the perforations (125) are cuts in the cellulose-containing paper (fig. 3) that partially surround a region of the cellulose-containing paper, such that said region of cellulose-containing paper forms a flap (126) extending from the surface of the cellulose-containing paper wherein the cut is generally C-shaped such that the flap is substantially circular (cut is generally C-shaped and substantially circular figs. 3-5).
Mansson et al. further teaches heat and moisture exchange material (1) comprising a plurality of discrete protrusions (6) extending from at least part of one surface of the heat-and moisture exchange (HME) material (tissue paper), wherein each protrusion (conical walls 6 [0019]) is completely surrounded by substantially non-protruding HME material (2, fig. 2); wherein each protrusion comprises a perforation (5) in the HME material; and wherein a portion of the HME material around the edge of each perforation protrudes from the surface of the HME material (conical walls 6) that protrudes from the surface ([0019], claims 1-3 and 12, figs. 1-3) and the perforations (5) are cuts in the HME material (“mechanically forcing an area of paper around each hole” which is a forced cut, see jagged edges in fig. 3, [0011]) that partially surround a region of the HME material (fig. 3), such that said region of HME material forms a flap (jagged edges form flaps, fig. 3) extending from the surface of the HME material (fig. 3) and wherein the cut is generally C-shaped such that the flap is substantially circular (cut is generally C-shaped and substantially circular fig. 3).
Mansson et al. states: “protruding areas of fibres is produced by providing a pattern of holes in said ply and mechanically forcing an area of paper around each hole out of the plane of said ply…at least one ply has such a pattern of protrusions [0011]… pattern of holes 5 having conical walls 6 protruding out of the plane of the middle ply 2 [0019] … to enhance the wet properties of such protrusions, wet strength additives or the like is preferably be added to the paper” [0021]
Also, note applicant’s specification discloses the cuts are formed from mechanically forcing an area of paper (page 6, lines 30-33, page 23, lines 30-33).
Given the teachings of McGuire et al./modified McGuire et al. to have hollow protrusions, it 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 to modify the protrusions to have perforations formed via cuts in the cellulose-containing paper that are partially surround a region of the cellulose-containing paper, such that said region of cellulose-containing paper forms a flap extending from the surface of the cellulose-containing paper such that said region of HME material forms a flap extending from the surface of the HME material to have a more deformable material, material of desired size and/or for strength of material purposes as taught by Curro et al. and as further taught and evidenced by Mansson et al.
Claim(s) 16-17, is/are rejected under 35 U.S.C. 103 as obvious over McGuire et al. (US 6254965 B1) in view of Prodoehl (US 20050095400 A1) and further in view of DAVIES (EP 2705949 A1).
Regarding claims 16-17, McGuire et al. teaches having a cellulose-containing paper material (col. 17, lines 10-14, claim 1, figs. 1-9) with protrusions (12/13) but fails to disclose:
the cellulose-containing paper comprises a hygroscopic material, wherein the hygroscopic material comprises polyols, hygroscopic polymers, and hygroscopic salts, or any combination thereof.
Prodoehl teaches a cellulose-containing paper that comprises a hygroscopic material [0031].
DAVIES teaches a cellulose-containing paper that comprises a hygroscopic material, wherein the hygroscopic material comprises polyols, hygroscopic polymers, and hygroscopic salts, or any combination thereof [0032-0033].
Given the teachings of McGuire et al. to have a cellulose-containing paper material with protrusions and the material being one inch wide (25mm) strip of material, it 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 to modify the cellulose-containing paper comprises a hygroscopic material, wherein the hygroscopic material comprises polyols, hygroscopic polymers, and hygroscopic salts, or any combination thereof to have a more deformable material, material of desired strength of material purposes as taught by Prodoehl and DAVIES.
Claim(s) 20 and 25, is/are rejected under 35 U.S.C. 103 as obvious over McGuire et al. (US 6254965 B1) in view of DAVIES (EP 2705949 A1).
Regarding claims 20 and 25, McGuire et al. teaches having one inch wide (25mm) strip of material (col. 23, lines 30-40) but fails to disclose:
the moisture exchange material is between 5 mm and 20 mm and the heat and moisture exchange medium is between 1.5 cm and 8.0 cm in diameter.
DAVIES teaches a moisture exchange material is between 5 mm and 20 mm and the heat and moisture exchange medium is between 1.5 cm and 8.0 cm in diameter heat and moisture exchange medium is between 1.5 cm and 8.0 cm in diameter [0048-0050].
Given the teachings of McGuire et al. to have a cellulose-containing paper material with protrusions and the material being one inch wide (25mm) strip of material, it 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 to modify the moisture exchange material is between 5 mm and 20 mm and the heat and moisture exchange medium is between 1.5 cm and 8.0 cm in diameter, to have a more deformable material, material of desired size and/or for strength of material purposes as taught by DAVIES and since a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1995) and “mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976), 531 F.2d at 1053, 189 USPQ at 148.).
Moreover, In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim(s) 8, is/are rejected under 35 U.S.C. 103 as obvious over McGuire et al. (US 6254965 B1) in view of Graff (US 20100035011 A1).
Regarding claim 8, McGuire et al. teaches having different densities the number of protrusions and how close the protrusions are to each other (col. 15, lines 10-39), teaches size and shape of the protrusions as well as desired increasing density number of protrusions for resisting deformation (col. 17, lines 35-44) but fails to disclose the density of the protrusions per cm2 is between 3 and 50.
Graff teaches a heat and moisture exchange cellulose material (absorbent paper 1, [0003-0004, 0038]) with protrusions (10, [0012, 0038] with a density of the protrusions per cm2 is between 3 and 50 (between 2 and 50 [0024], fig. 1 and also teaches having material/sheet (plies P1 and P2) that are 0.1 to 0.45 mm thick with protrusions (10) being square shape and protrusions (20) being round shaped [0060-0062], fig. 7).
Given the teachings of McGuire et al. to have a cellulose-containing paper material with the density of the protrusions per unit of area increase for deformation resistance, it 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 to modify the cellulose-containing paper with density of the protrusions per cm2 is between 3 and 50 to have a more resisting deformation and have a material of desired size and/or for strength of material purposes as taught by Graff and since a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1995) and “mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976), 531 F.2d at 1053, 189 USPQ at 148.).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-13, 15-26, 42-49 have been considered but are moot because the new ground of rejection does not rely on all new references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. This Office Action is deemed Non-Final.
Conclusion
Additional prior art considered pertinent:
Mansson et al. (US 20070218248 A1) - material (2) with protrusions
Clark et al. (US 5622734 A) – “Fibrous cellulosic material such as paper tissue may be composed of a single ply or multiple plie” with protruding members 62, 64 and 66 (figs. 1-10)
US 20040137202 A1 - plurality of embossed protrusions 74 are preferably perforated ([0023], fig. 7) and see form 892.
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/ROBERT F LONG/Primary Examiner, Art Unit 3731
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
