DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections – 35 U.S.C. § 112
The following is a quotation 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.
Claim 7 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. § 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 7 recites the limitation “wherein the rotational axis of each of the more than two grinding rollers and corresponding support rollers are inclined relative to the substrate transport direction and relative to an adjacent rotational axis of an adjacent grinding roller and corresponding support roller to effect minimal sagging or wrinkling of the substrate supported by respective inclined grinding rollers and corresponding support rollers during the roll-to-roll process.” This limitation is new matter because the specification does not describe this function; specifically, this limitation as written suggests that it is the inclined nature of the grinding and support rollers that effects the sagging or wrinkling of the substrate. This appears to be new matter because the specification only states that the “sagging or wrinkles of the substrate” is affected by the use of support rollers with grinding rollers to support the substrate (Spec. ¶ 0043) and is silent about any contribution to this function due to the inclined aspect of the rollers. Applicant’s citation to the specification (Reply at 5-6, citing US 20220274223 A1 ¶¶ 0044, 0050, and 0051 (which corresponds to Spec. ¶¶ 0043, 0049, 0050)) does not support Applicant’s position. For example, the discussion in Spec. ¶¶ 0049-0050 about the shifting of the substrate during grinding (and “non-uniform and unstable” grinding action) has nothing to do with the use of support rollers and is not related to the “sagging or wrinkles of the substrate” discussion in Spec. ¶ 0043. Applicant appears to be improperly combining two separate, different concepts together, resulting in new matter. Examiner suggests replacing the end portion of the claim at “roller to effect...” with --roller, wherein the support are configured to prevent sagging or wrinkling of the substrate--.
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.
Claim 7 is 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 7 recites the limitation “wherein the rotational axis of each of the more than two grinding rollers and corresponding support rollers are inclined relative to the substrate transport direction and relative to an adjacent rotational axis of an adjacent grinding roller and corresponding support roller to effect minimal sagging or wrinkling of the substrate supported by respective inclined grinding rollers and corresponding support rollers during the roll-to-roll process.” As discussed in the § 112(a) rejection above, this limitation is new matter. The specification does not describe how the recited incline of the grinding rollers and support rollers is capable of affecting the sagging or wrinkling of the substrate. Further, it is unclear what this limitation means because it is unclear to a person of ordinary skill in the art how the recited incline of the grinding rollers and support rollers (as opposed to the mere presence of support rollers) is capable of affecting the sagging or wrinkling of the substrate (also see discussion in the § 112(a) rejection above). For examination purposes, this limitation is interpreted as best understood.
Claim Rejections – 35 U.S.C. § 103
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 C.F.R. § 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.
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.
Mitobe in view of McElroy
Claims 1-7 are rejected under 35 U.S.C. § 103 as being unpatentable over JP 07266208 A (“Mitobe”) (citations are to the translation filed 06/24/2024) in view of US 2617223 A (“McElroy”).
Mitobe pertains to a grinding machine (Abstr.; Figs. 1-4; ¶ 0001). McElroy pertains to a surface grinding/scouring machine (Figs. 1-2; 1:1-2:17). These references are in the same field of endeavor.
Regarding claim 1, Mitobe discloses a substrate surface grinding apparatus for grinding a surface of a substrate transported throughout grinding by a roll-to-roll process (Figs. 1-4, grinder M is capable of the performing the recited action; Examiner notes that this is a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)),
the substrate surface grinding apparatus comprising:
a grinding device including more than two grinding rollers configured to grind a surface of a substrate throughout transporting and grinding (Figs. 1-4, grinder M has grinding rollers 2A, 2B, 2C for grinding surfaces CB and CF of substrate C; ¶ 0006; Examiner notes that the words “throughout”, “transporting” (or “transport”), and the phrase “throughout transporting and grinding” do not appear in the specification. The use of this phrase in context of this limitation appears to simply mean that two grinding rollers are capable of grinding a substrate as the substrate is being transported and grinded. To the extent the intended meaning is something different or narrower, this may give rise to a rejection under 35 U.S.C. § 112(a) for new matter);
and a substrate support member including more than two support rollers configured to support the substrate traversing in a substrate transport direction (Figs. 1-4, conveyor belt M3, support rollers 4A, 4B, 4C, “transport direction” is direction G shown in Fig. 2),
wherein a rotational axis of each of the more than two grinding rollers and more than two support rollers is disposed to be inclined relative to the substrate transport direction and relative to an adjacent rotational axis of a respective adjacent grinding roller and adjacent support roller (Figs. 1-4, the rotational axis of each grinding roller 2B/2C and each support roller 4B/4C is inclined relative to the transport direction G and to the rotational axis of an adjacent grinding roller and adjacent support roller; ¶ 0006, “rotary grindstone 2B is laterally provided so as to be inclined at a predetermined angle with respect to the G direction which is the conveying direction, and the rotary grindstone 2C is laterally provided so as to be inclined in the opposite direction to the rotary grindstone 2B”; see discussion below re “of each of the more than two grinding rollers”),
and wherein respective rotational axes of each respective adjacent grinding roller and adjacent support roller is symmetrically disposed at a same angle with respect to a virtual line perpendicular to the substrate transport direction (Figs. 1-4, grinding roller 2B and support roller 4B are symmetrically disposed (perpendicularly to transfer direction G) at a same angle to adjacent grinding roller 2C and adjacent support roller 4C; ¶ 0006, “the rotary grindstone 2B is laterally provided so as to be inclined at a predetermined angle with respect to the G direction which is the conveying direction, and the rotary grindstone 2C is laterally provided so as to be inclined in the opposite direction to the rotary grindstone 2B”; see discussion below re “of each adjacent grinding roller”).
Mitobe does not explicitly disclose:
wherein a rotational axis of each of the more than two grinding rollers and more than two support rollers is disposed to be inclined relative to the substrate transport direction and relative to an adjacent rotational axis of a respective adjacent grinding roller and adjacent support roller,
and wherein respective rotational axes of each respective adjacent grinding roller and adjacent support roller is symmetrically disposed at a same angle with respect to a virtual line perpendicular to the substrate transport direction.
However, the Mitobe/McElroy combination makes obvious this claim.
McElroy discloses:
wherein a rotational axis of each of the more than two grinding rollers...is disposed to be inclined relative to the substrate transport direction and relative to an adjacent rotational axis of a respective adjacent grinding roller... (Figs. 1-2, the rotational axis of each grinding roller 16 is inclined relative to the transport direction as shown (Fig. 1, near reference 19) and to the rotational axis of an adjacent grinding roller),
and wherein respective rotational axes of each respective adjacent grinding roller...is symmetrically disposed at a same angle with respect to a virtual line perpendicular to the substrate transport direction (Figs. 1-2, grinding rollers 16 are symmetrically disposed (perpendicularly to transfer direction) at a same angle to each adjacent grinding roller; 3:71-4:19, 6:21-40, describing the angular configuration of grinding rollers 16 (transfer direction is shown as 90° or 270°)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of McElroy with Mitobe by adding additional rollers as taught by McElroy (e.g., adding two more roller sets like 2B/4B and 2C/4C, directly after the last roller (to the left of roller 2C/4C)), which would meet the limitations recited. To be clear, Mitobe discloses all of the limitations of claim 1 except it only explicitly discloses two sets of grinding and support rollers (2B/4B and 2C/4C) that are inclined as claimed; Mitobe’s third set of grinding and support rollers (2A/4A) is not inclined. McElroy is relied upon for the concept of having additional rollers in the recited inclined configuration (even though McElroy does not explicitly disclose inclined support rollers). This modification would have been obvious to a person of ordinary skill in the art because even though Mitobe discloses only two symmetrically angled grinding/support roller sets (2B/4B and 2C/4C) and a third perpendicular grinding/support roller set (2A/4A), the additional roller sets in this proposed modification would ensure a more complete grinding result (e.g., subsequent roller sets would grind and smooth out any surface imperfections left by the preceding roller sets), and/or provide for a faster grinding operation (e.g., the feed rate could be faster when using more grinding/support roller sets) (McElroy 6:21-56, “every portion of the surface of each panel 20 would be scoured at at least four angles...The brushes of groups 20 and 30 would repeat the angular incidence of the brushes of groups 25 and 26”; 6:57-7:6, “The variety of angles of impingement, all of them oblique to the axis of transport, results in a superior product...gives assurance that, for practical purposes, all portions of the wood surface are adequately treated.”; see 1:32-17). Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to modify Mitobe to duplicate roller sets 2B/4B and 2C/4C in order to have more than two grinding/support roller sets in a symmetrically angled arrangement (e.g., adding two more roller sets like 2B/4B and 2C/4C, directly after the last roller (to the left of roller set 2C/4C)) because this is mere duplication of parts. Applicant states no novel or unexpected result due to having more than two grinding and support rollers in the claimed arrangement. In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced”); MPEP § 2144.04(VI)(B).
Regarding claim 2, the Mitobe/McElroy combination makes obvious the substrate surface grinding apparatus of claim 1 as applied above. Mitobe further discloses wherein a surface of the substrate has a resin layer disposed thereon, and the grinding device is configured to remove at least a portion of the resin layer (¶ 0002, “A magnetic card...made of paper or resin.”; Figs. 1-4, grinder M is capable of removing at least a portion of a resin layer on a surface of a substrate; Examiner notes that this limitation is a recitation of intended use, as the claimed invention is a “substrate surface grinding apparatus” and not a system including the grinding apparatus and a substrate. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)).
Regarding claim 3, the Mitobe/McElroy combination makes obvious the substrate surface grinding apparatus of claim 1 as applied above. Mitobe further discloses wherein the substrate support member is a transfer belt configured to support the substrate (Figs. 1-4, conveyor belt M3; ¶ 0006).
Regarding claim 4, the Mitobe/McElroy combination makes obvious the substrate surface grinding apparatus of claim 1 as applied above. As modified, the Mitobe/McElroy combination makes obvious wherein: the more than two support rollers are respectively disposed to face the more than two grinding rollers, where the more than two support rollers and more than two grinding rollers are configured to receive the substrate therebetween (Mitobe Figs. 1-4, support rollers 4B/4C face and are aligned with grinding rollers 2B/2C respectively, the rollers are configured to receive a substrate therebetween; ¶ 0008, “The rotary grinding wheels...2B and 2C for grinding the front face CF are provided in parallel with the rotary grinding wheels...4B and 4C and symmetrically with respect to the telephone card C”; Examiner notes that the phrase “disposed to face” is broad).
Regarding claim 5, the Mitobe/McElroy combination makes obvious the substrate surface grinding apparatus of claim 4 as applied above. As modified, the Mitobe/McElroy combination makes obvious wherein a rotational axis of each of the more than two support rollers is arranged to correspond to the rotational axis of each of the more than two grinding rollers that respectively faces each of the more than two support rollers (Mitobe Figs. 1-4, support rollers 4B/4C face and are aligned with grinding rollers 2B/2C respectively, and the rotational axes of support rollers 4B/4C correspond to the rotational axes of grinding rollers 2B/2C; ¶ 0008, “The rotary grinding wheels...2B and 2C for grinding the front face CF are provided in parallel with the rotary grinding wheels...4B and 4C and symmetrically with respect to the telephone card C”).
Regarding claim 6, the Mitobe/McElroy combination makes obvious the substrate surface grinding apparatus of claim 1 as applied above. As modified, the Mitobe/McElroy combination makes obvious wherein the rotational axis of a first grinding roller of the more than two grinding rollers is symmetrically disposed with respect to a virtual line perpendicular to a transfer direction of the substrate to a second grinding roller of the more than two grinding rollers that is adjacent to the first grinding roller (Mitobe Figs. 1-4, grinding roller 2B is symmetrically disposed (perpendicularly to transfer direction G) to adjacent grinding roller 2C; ¶ 0006, “the rotary grindstone 2B is laterally provided so as to be inclined at a predetermined angle with respect to the G direction which is the conveying direction, and the rotary grindstone 2C is laterally provided so as to be inclined in the opposite direction to the rotary grindstone 2B”).
Regarding claim 7, the Mitobe/McElroy combination makes obvious the substrate surface grinding apparatus of claim 1 as applied above. Mitobe further discloses wherein the rotational axis of each of the more than two grinding rollers are inclined relative to the substrate transport direction and relative to an adjacent rotational axis of an adjacent grinding roller to effect minimal sagging or wrinkling of the substrate during the roll-to-roll process (Figs. 1-4, support rollers 4B/4C face and are aligned with grinding rollers 2B/2C respectively, and the rotational axes of support rollers 4B/4C correspond to the rotational axes of grinding rollers 2B/2C, where grinding roller 2B and support roller 4B are inclined relative to transfer direction G and to adjacent grinding roller 2C and support roller 4C, and where the support rollers and grinding rollers work together to reduce sagging and wrinkling of a substrate during the roll-to-roll grinding process; ¶ 0008, “The rotary grinding wheels...2B and 2C for grinding the front face CF are provided in parallel with the rotary grinding wheels...4B and 4C and symmetrically with respect to the telephone card C”; see § 112(a) and (b) rejections).
This claim limitation is met as discussed in claim 1 in light of the added grinding rollers. To the extent the correct interpretation of this limitation requires support rollers (see § 112(a) and (b) rejections), the obviousness rationale further includes that which was discussed for claims 4 and 5.
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 1-7 pending. Claims 1-7 are rejected.
Drawings – The objection to the drawings (Fig. 2) is withdrawn in view of Applicant’s amendment.
Claims – The § 112(a) and (b) rejections of claim 7 are sustained.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive.
With respect to the obviousness rejection of claim 1, Examiner disagrees with Applicant’s characterization of McElroy’s disclosure, including Applicant’s assertion that McElroy is not analogous art (Reply at 7-9). Despite their differences, both Mitobe and McElroy pertain to grinding machines using grinding rollers (Mitobe Abstr.; Figs. 1-4; ¶ 0001; McElroy Figs. 1-2; 1:1-2:17). Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981); MPEP § 2145(III). As discussed above, McElroy is relied upon as a grinding machine that uses more than two grinding rollers arranged in a symmetrical inclined configuration (McElroy Figs. 1-2; 1:1-2:17). The combination of McElroy with Mitobe, along with the cited case law (Harza, 274 F.2d at 669, 671; MPEP § 2144.04(VI)(B) demonstrates that the duplication of Mitobe’s roller sets (2B/4B and 2C/4C) would have been obvious.
Additionally, Applicant’s arguments for the alleged deficiencies of the Mitobe/McElroy combination are not persuasive. Examiner disagrees with these assertions and notes that the specification contains no evidence regarding grinding/feed speeds and surface finish roughness. To the extent Applicant’s invention has benefits beyond those of devices having similar structural elements (e.g., like Mitobe), actual evidence of secondary considerations (e.g., commercial success, long felt need, failure of others, skepticism of others, copying) would be required for further consideration. MPEP § 2145; see MPEP §§ 716.01-06. It should be noted that attorney argument cannot take the place of actual evidence. MPEP §§ 716.01(c)(I)-(II).
With respect to Applicant’s § 112(a) and (b) arguments (Reply at 5-6), see discussion in the respective rejections above. Applicant’s remaining arguments are conclusory and are not persuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 C.F.R. § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866)217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800)786-9199 (IN USA OR CANADA) or (571)272-1000.
/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723