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 .
This Office Action is in response to the applicant’s RCE filing on 03/09/2026.
Claims 1-24 are pending and examined below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/09/2026 has been entered.
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 1-24 are 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1 lines 7-9, the phrase “after stacking the second roll on the first roll, arranging a lengthwise direction of the inner end of the first roll substantially perpendicular to a lengthwise direction of the outer end of the second roll” renders claim 1 to be non-complying with the written description requirement because the features appears to be new matter. On page 3 paragraph 13 of the Specification, the second longitudinal end of the second supply unit is disclosed to be “positioned for adhering to the adhesive layer of the connecting member of the first supply unit when the release layer is released therefrom. The first supply unit is then stacked on the second supply unit” (emphasis added). The Specification as originally filed does not disclose stacking the second roll on the first roll, and then arranging the lengthwise direction of the inner end of the first roll. Therefore, the feature is considered new matter.
Claims 2-22 and 24 are dependent of claim 1 and include all the same limitations.
Regarding claim 23 lines 1-2, the phrase “the inner end of the first roll is arranged as a free end” renders claim 23 to be non-complying with the written description requirement because the features appears to be new matter. On page 3 paragraph 13 of the Specification, the second longitudinal end of the second supply unit is disclosed to be “positioned for adhering to the adhesive layer of the connecting member of the first supply unit when the release layer is released therefrom. The first supply unit is then stacked on the second supply unit”. The Specification does not disclose stacking the second roll on the first roll thereby arranging the inner end of the first roll as a free end. Therefore, the feature is considered new matter.
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 23 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 pre-AIA the applicant regards as the invention.
Regarding claim 23 lines 1-2, the phrase “the inner end of the first roll is arranged as a free end outside the second roll” renders claim 23 vague and indefinite because it is unclear what is implied by call the inner end of the first roll a “free end”. It is unclear what additional features the inner end of the first roll has that renders it a “free end”. Does the inner end of the first roll not have adhesive that render it a free end, not being attached to the connecting member that render it a free end, or not being connected to the second roll that render it a free end. For examining purposes, the phrase is interpreted as “the inner end of the first roll is arranged as a connectable end outside the second roll”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 24 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 24 lines 2-3, the phrase “the interior layers of the second roll and the first roll are unwound automatically and continuously due to the spliced connection” renders claim 24 to be of improper dependent form because it is unclear how this feature further limits the subject matter. Claim 24 is dependent of claim 1, and claim 1 discloses the material is converted into “low-density dunnage so as to unwind interior layers of second roll and the first roll that are chained together”. It is unclear what additional features claim 24 is introducing that further limit the subject matter of claim 1.
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.
Claims 1, 3, 5, 10-12, 14-16, and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over reference Shaw et al. (2008/0076653) in view of references Abba et al. (6,702,212), Beck et al. (9,790,302), and Helton (6,007,016).
Regarding claim 1, Shaw et al. disclose a method of loading a dunnage mechanism (10), said method comprising the steps of:
pulling an inner end (204) of a first roll (20) of elongated web material (202) from said first roll (20); and
feeding the inner end (204) of the first roll (20) into the dunnage machine (10),
wherein the dunnage machine (10) is configured to convert the material (202) into low-density dunnage (30).
(Figure 1, 3 and Page 2 paragraph 19, 21)
However, Shaw et al. do not disclose stacking a second roll on the first roll, removing a connecting member from a release layer, or affixing the connecting member of the second roll to the inner end of the first roll, and do not disclose the inner end of the first roll is oriented generally perpendicularly to the outer end of the second roll.
Abba et al. disclose a method comprising the steps of:
stacking a second roll (35) on a first roll (37) with the inner end (19) extending between the first (37) and second (35) rolls;
after staking the second roll (35) on the first roll (37), arranging the inner end (19) of the first roll (37) adjacent to the outer end (21) of the second roll (35);
affixing the outer end (21) of the second roll (35) to the inner end (19) of the first roll (37) to splice the outer end (21) of the second roll (35) to the inner end (19) of the first roll (37); and
feeding the inner end of the second roll (35) into the processing machine (38).
(Figure 5 and Column 4 lines 7-13, Column 4 lines 65-67 through Column 5 lines 1-4, Column 5 lines 36-37)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Shaw et al. by incorporating the steps of stacking and affixing as taught by Abba et al., since column 1 lines 14-19 of Abba et al. states such a modification would prevent the need of shutting down the dunnage machine to position more material.
In column 5 lines 36-37 of Abba et al., the second roll is disclosed to be spliced to the first roll after the second roll is stacked onto the first roll. Therefore, Shaw et al. in view of Abba et al. is interpreted to disclose the outer end of the second roll to the inner end of the first roll are accessible for splicing after the second roll is stacked on the first roll.
Beck et al. disclose a method comprising the steps of:
removing a connecting member (see figure 1 below) from a release layer (4),
wherein the connecting member (see figure 1 below) is disposed at the outer end (11) of a second roll (13), and
wherein the release layer is disposed on the outer layer (12) of the second roll (13); and
affixing the connecting member (see figure 1 below) of the second roll (13) to the leading end of a first roll.
(Figure 2 and Column 2 lines 64-67, Column 3 lines 15-24)
[AltContent: textbox (Base Member)][AltContent: arrow][AltContent: textbox (Connecting Member)][AltContent: arrow][AltContent: rect][AltContent: rect][AltContent: textbox (Beck et al.)]
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It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Shaw et al. and Abba et al. by incorporating the connecting member as taught by Beck et al., since column 1 lines 26-35 of Beck et al. states such a modification would allow the outer end of the roll to be connected to the outer layer of said roll prior to affixing to another roll.
Helton discloses a supply arrangement comprising material (107) that turns 90 degrees as the material extends from the outer diameter of a first supply unit (101A) to the inner diameter of a second supply unit (101B). (Figure 4-6 and Column 2 lines 29-37, Column 4 lines 25-37)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Shaw et al. and Abba et al. by incorporating the perpendicular orientation as taught by Helton, since column 1 lines 51-53 of Helton states such a modification would allow for higher density of supply arrangement.
When modifying Shaw et al. in view of Abba et al., Beck et al., and Helton, the connecting member is interpreted to extend from the outer end of the second roll across the longitudinal edge of the inner end of the first roll, and the lengthwise direction of the outer end of the second roll is interpreted to be substantially perpendicular to the lengthwise direction of the second portion of the inner end of the first roll.
Regarding claim 3, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose a sticker (Beck et al. – 1) comprising the connecting member (Beck et al. – see figure 1 above) and a base member (Beck et al. – see figure 1 above) onto the second roll (Abba et al. – 35) such that the base member (Beck et al. – see figure 1 above) is adhered to the outer end (Abba et al. – 21) of the second roll (Abba et al. – 35) and the connecting member is adhered to an outer layer of the second roll (Abba et al. – 35) adjacent to the second end (Abba et al. – 21) of the second roll (Abba et al. – 35). (Abba et al. – Column 4 lines 65-67 through Column 5 lines 1-4) (Beck et al. – Figure 2)
Regarding claim 5, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the removing a connecting member step further comprises releasing or lifting one end of the connecting member (Beck et al. – see figure above). (Beck et al. – Column 2 lines 64-67, Column 3 lines 60-67)
Regarding claim 10, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the step of stacking the second roll (Abba et al. – 35) on the first roll (Abba et al. – 37) in a vertical direction. (Abba et al. – Figure 2 and Column 5 lines 36-43)
Regarding claim 11, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the steps of:
pulling an inner end (Abba et al. – 19) of the second roll (Abba et al. – 35) from the second roll (Abba et al. – 35);
removing a second connecting member (Beck et al. – see figure 1 above) disposed at the outer end of a third roll (Abba et al. – Figure 2) of an elongated web of the paper material from a second release layer (Beck et al. – 4) disposed on the outer layer of the third roll (Abba et al. – Figure 2); and
affixing the second connecting member (Beck et al. – see figure 1 above) of the third roll (Abba et al. – Figure 2) to the inner end (Abba et al. – 19) of the second roll to pull the inner end (Abba et al. – 19) of the second roll (Abba et al. – Figure 2) into the dunnage machine (Shaw et al. – 10).
(Abba et al. – Figure 2 and Column 3 line 14)
Regarding claim 12, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the step of stacking the third roll (Abba et al. – Figure 2) on the second roll (Abba et al. – 35) with the inner end (Abba et al. – 19) of the second roll (Abba et al. – 35) extending between the second and third rolls. (Abba et al. – Figure 2, 5)
Regarding claim 14, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the step of feeding an inner end (Abba et al. – 19) of the second roll (Abba et al. – 35) into the dunnage machine (Shaw et al. – 10). (Shaw et al. – Figure 1) (Abba et al. – Figure 5)
Regarding claim 15, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the step of feeding the inner end (Abba et al. – 19) of the first roll (Abba et al. – 37) into the dunnage machine (Shaw et al. – 10) after the second roll has been consumed by the dunnage machine (Shaw et al. – 10). (Shaw et al. – Figure 1) (Abba et al. – Figure 5 and Column 2 lines 58-60)
Regarding claim 16, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the step of pulling an inner end (Abba et al. – 19) of the second roll (Abba et al. – 35) axially from the center of the second roll (Abba et al. – 35) in an upward direction. (Shaw et al. – Figure 1) (Abba et al. – Figure 5)
Regarding claim 18, when modifying Shaw et al., Abba et al., Beck et al., and Helton to have the outer end of the second roll extend across the longitudinal edge of the inner end of the first roll, the outer end of the second roll would have to overlap the inner end of the first roll.
Therefore, Shaw et al. modified by Abba et al., Beck et al., and Helton is interpreted to disclose the outer end (Abba et al. – 21) of the second roll (Abba et al. – 35) is configured to overlap the inner end (Abba et al. – 19) of the first roll (Abba et al. – 37) when the connecting member (Beck et al. – see figure 1 above) is affixed to the inner end (Abba et al. – 19) of the first roll (Abba et al. – 37). (Abba et al. – Figure 5) (Helton – Figures 4-5)
Regarding claim 19, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose second roll (Abba et al. – 35) is rolled in a rolled direction, and the connecting member (Beck et al. – see figure 1 above) is affixed with the outer end (Abba et al. – 21) of the second roll (Abba et al. – 35) extending in the rolled direction. (Beck et al. – Figure 2)
Regarding claim 20, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the steps of stacking the second roll (Abba et al. – 35) on the first roll (Abba et al. – 37) with the inner end (Abba et al. – 19) in a vertical end-to-end manner, wherein the rolled direction is in a horizontal direction, and wherein the inner end (Abba et al. – 19) of the first roll (Abba et al. – 37) extends in a vertical direction. (Helton – Figures 4-5)
Regarding claim 21, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the claimed invention as stated above but do not disclose the outer end of the second roll overlaps a longitudinal edge of the connecting portion of the inner end of the first roll.
It would have been obvious to the person of ordinary skill in the art to have outer end of the second roll overlap a longitudinal edge of the connecting portion of the inner end of the first roll, since it has been held that rearranging the parts of an invention involves only routine skill in the art. [MPEP 2144.04 (VI-C)]
On page 12 paragraph 53, the outer end of the upper unit is disclosed to overlap the inner end of the lower unit or be disposed adjacent to the inner end of the lower unit. The Specification as originally filed does not disclose any criticality for the claimed feature. Therefore, it would have been prima facie obvious to modify Shaw et al., Abba et al., Beck et al., and Helton to obtain the invention as specified in claim 1, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
Regarding claim 22, Beck et al. disclose a method comprising the steps of:
removing a connecting member (see figure 1 above) from a release layer (4),
wherein the connecting member (see figure 1 above) is disposed at the outer end (11) of a second roll (13), and
wherein the release layer is disposed on the outer layer (12) of the second roll (13); and
affixing the connecting member (see figure 1 above) of the second roll (13) to the leading end of a first roll.
(Figure 2 and Column 2 lines 64-67, Column 3 lines 15-24)
When modifying Shaw et al. and Abba et al. in view of Beck et al., the connecting member is located adjacent to the outer layer of the second roll. After affixing the connecting member to the first roll and stacking the second roll on top the first roll, the outer end of the second roll, along with the connecting member, is understood to still be adjacent to the outer layer of the second roll. Therefore, Shaw et al. modified by Abba et al., Beck et al., and Helton are interpreted to disclose the connecting member that splices the outer end of the second roll to the inner end of the first roll is visible when the first and second rolls are stacked.
Regarding claim 23, Abba et al. disclose the second roll is stacked on the first roll before the outer end (21) of the second roll (35) is spliced the inner end (19) of the first roll (37). (Column 5 lines 36-37) This implies that the outer end of the second roll and the inner end of the first roll are accessible after the second roll is stacked onto the first roll.
Therefore, Shaw et al. modified by Abba et al., Beck et al., and Helton is interpreted to disclose, after stacking the second roll on the first roll, the inner end of the first roll is arranged as a connectable end outside the second roll for splicing to the second roll.
Regarding claim 24, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the interior layers of the second roll (Abba et al. – 35) and the first roll (Abba et al. – 37) are unwound automatically and continuously due to the spliced connection. (Shaw et al. – Page 2 paragraph 21) (Abba et al. – Column 6 lines 14-22)
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over reference Shaw et al. (2008/0076653) in view of references Abba et al. (6,702,212), Beck et al. (9,790,302), and Helton (6,007,016) as applied to claim 3 above, and further in view of reference Konig et al. (2006/0093775).
Regarding claim 4, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the claimed invention as stated above but do not disclose the step of lifting another release layer from the base member.
Konig et al. disclose a substrate comprising: an adhesive; and a release layer applied over the adhesive, wherein the release layer is removed from the adhesive before the substrate is employed for substrate’s intended bonding application. (Page 1 paragraph 11)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the sticker of Beck et al. by incorporating the another release layer as taught by Konig et al., since page 1 paragraph 11 states such a modification would allow protection of the adhesive and to prevent unwanted sticking.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over reference Shaw et al. (2008/0076653) in view of references Abba et al. (6,702,212), Beck et al. (9,790,302), Helton (6,007,016), and Konig et al. (2006/0093775) as applied to claim 4 above, and further in view of reference Weinberg (7,255,764).
Regarding claim 8, Shaw et al. modified by Abba et al., Beck et al., Helton, and Konig et al. disclose the claimed invention as stated above but do not disclose the step of lifting a grasping portion of the sticker.
Weinberg disclose a sticker comprising: a connecting member (9); a base member (6); and a grasping portion (8). (Figure 3 and Column 3 lines 14-19)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the sticker of Beck et al. by incorporating the grasping portion as taught by Weinberg, since column 2 lines 37-42 of Weinberg states such a modification would allow for manual separation of the outer end of the roll from the surface of the roll.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over reference Shaw et al. (2008/0076653) in view of references Abba et al. (6,702,212), Beck et al. (9,790,302), and Helton (6,007,016) as applied to claim 5 above, and further in view of reference Weinberg (7,255,764).
Regarding claim 6, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the claimed invention as stated above but do not disclose the step of releasing or lifting one end of the connecting member to release an adhesive layer from the release layer.
Weinberg disclose a sticker comprising: a connecting member (9); a base member (6); and a grasping portion (8), wherein the sticker is configured to connect the outer end of the roll to the surface of the roll, and wherein the connecting member is released or lifted to disconnect the sticker form the surface of the roll. (Figure 3-5 and Column 3 lines 14-19)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the sticker of Beck et al. by incorporating the grasping portion as taught by Weinberg, since column 2 lines 37-42 of Weinberg states such a modification would allow for manual separation of the outer end of the roll from the surface of the roll.
In column 2 lines 21-22 of Weinberg, after the connecting member is released or lifted, the connecting member is attached to a web that is running out. When modifying Beck et al. in view of Weinberg, an adhesive layer is interpreted to be released from the release layer in order to allow the connecting member to be attached to the preceding roll.
Regarding claim 7, Shaw et al. modified by Abba et al., Beck et al., Helton, and Weinberg disclose the step of adhering the adhesive layer to the inner end (Abba et al. – 19) of the first roll (Abba et al. – 37). (Abba et al. – Figure 5 and Column 4 lines 7-13) (Weinberg – Column 2 lines 21-22)
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over reference Shaw et al. (2008/0076653) in view of references Abba et al. (6,702,212), Beck et al. (9,790,302), and Helton (6,007,016) as applied to claim 1 above, and further in view of reference Harding (6,887,329).
Regarding claim 9, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the claimed invention as stated above but do not disclose at least one transverse end at the second roll being free of the connecting member.
Harding disclose a roll (630) comprising an outer end (650), wherein a sticker (631) is applied to the outer end (650) allowing at least one transverse end (670) of the outer end (650) to be free of the sticker (631). (Figure 20, 20D and Column 13 lines 64-66, Column 14 lines 12-21, 30-35)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the sticker of Beck et al. by incorporating the size of the sticker to be smaller than the width of the roll as taught by Harding, since column 14 lines 35-38 of Harding states such a modification would allow lateral tolerance for the operator to apply the sticker to the outer end.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over reference Shaw et al. (2008/0076653) in view of references Abba et al. (6,702,212), Beck et al. (9,790,302), and Helton (6,007,016) as applied to claim 11 above, and further in view of reference Coppus et al. (2004/0142806).
Regarding claim 13, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the claimed invention as stated above but do not disclose the first and second roll form a first stack and the third roll forms a second stack.
Coppus et al. disclose a supply of stock material (18) comprising a plurality of adjacent stacks (61-65). (Figure 5 and Page 3 paragraph 33) Coppus et al. also disclose a supply of stock material (18) comprising a plurality of stacks (190) placed one atop of other. (Figure 10 and Page 5 paragraph 49) Coppus et al. disclose the features of several embodiment may be combined as desired. (Page 6 paragraph 66)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the rolls of Abba et al. by incorporating adjacent stacks as taught by Coppus et al., since such a modification would allow for machine to process even more material without stopping the machine, thereby making the overall method more desirable.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over reference Shaw et al. (2008/0076653) in view of references Abba et al. (6,702,212), Beck et al. (9,790,302), and Helton (6,007,016) as applied to claim 1 above, and further in view of reference Blythe (5,480,060).
Regarding claim 17, Shaw et al. modified by Abba et al., Beck et al., and Helton disclose the claimed invention as stated above but do not disclose a stabilizer configured to compress the first and second rolls.
Blythe discloses a stabilizer (24) configured to compress a roll (20). (Figure 4, 6 and Column 3 lines 42-47)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Shaw et al. and Abba et al. by incorporating the stabilizer as taught by Blythe, since column 3 lines 60-61 of Blythe states such a modification would eliminate the roping problem associated with initial dispensing of material from the roll.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over reference Shaw et al. (2008/0076653) in view of references Walker (3,889,891), Abba et al. (6,702,212), Beck et al. (9,790,302), and Helton (6,007,016).
Regarding claim 1, Shaw et al. disclose a method of loading a dunnage mechanism (10), said method comprising the steps of:
pulling an inner end (204) of a first roll (20) of elongated web material (202) from said first roll (20); and
feeding the inner end (204) of the first roll (20) into the dunnage machine (10),
wherein the dunnage machine (10) is configured to convert the material (202) into low-density dunnage (30).
(Figure 1, 3 and Page 2 paragraph 19, 21)
However, Shaw et al. do not disclose stacking a second roll on the first roll, removing a connecting member from a release layer, or affixing the connecting member of the second roll to the inner end of the first roll, do not disclose the winding direction of the first roll and the second roll are the same, and do not disclose the inner end of the first roll is oriented generally perpendicularly to the outer end of the second roll.
Walker disclose a method comprising the steps of:
stacking a second roll (14) on a first roll (14) with the inner end (32) extending between the first (14) and second (14) rolls; and
affixing the outer end (30) of the second roll (14) to the inner end (32) of the first roll;
after the second roll is depleted, feeding the inner end of the first roll (14) into an article handling apparatus.
(Figure 3 and Column 1 lines 13-15, Column 3 lines 13-18)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Shaw et al. by incorporating the steps of stacking and affixing as taught by Walker, since column 6 lines 36-39 of Walker states such a modification would prevent the need of shutting down the machine to position more material.
However, Shaw et al. modified by Walker do not disclose, after staking the second roll on the first roll, arranging the inner end of the first roll adjacent to the outer end of the second roll.
Abba et al. disclose a method comprising the steps of:
stacking a second roll (35) on a first roll (37) with the inner end (19) extending between the first (37) and second (35) rolls; and
affixing the outer end (21) of the second roll (35) to the inner end (19) of the first roll (37) to splice the outer end (21) of the second roll (35) to the inner end (19) of the first roll (37),
wherein the second roll (35) is spliced to the first roll (37) either before or after the second roll (35) is stacked on the first roll (37).
(Figure 5 and Column 4 lines 7-13, Column 4 lines 65-67 through Column 5 lines 1-4, Column 5 lines 36-37)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Shaw et al. and Walker by substituting the spicing step after the stacking step as taught by Abba et al., since column 5 lines 36-37 of Abba et al. states the splice after the stacking would work equally well at connecting the second roll to the first roll, thereby rendering the substitution to have predictable results.
Beck et al. disclose a method comprising the steps of:
removing a connecting member (1) from a release layer (4),
wherein the connecting member (1) is disposed at the outer end (11) of a second roll (13), and
wherein the release layer is disposed on the outer layer (15) of the second roll (13); and
affixing the connecting member (1) of the second roll (13) to the leading end of a first roll.
(Figure 2 and Column 2 lines 64-67, Column 3 lines 15-24)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Shaw et al. and Walker by incorporating the connecting member as taught by Beck et al., since column 1 lines 26-35 of Beck et al. states such a modification would allow the outer end of the roll to be connected to the outer layer of said roll prior to affixing to another roll.
Helton disclose supply arrangement comprising material (107) that turns 90 degrees as the material extends from the outer diameter of a first supply unit (101A) to the inner diameter of a second supply unit (101B). (Figure 4-6 and Column 2 lines 29-37, Column 4 lines 25-37)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Shaw et al. and Abba et al. by incorporating the perpendicular orientation as taught by Helton, since column 1 lines 51-53 of Helton states such a modification would allow for higher density of supply arrangement.
When modifying Shaw et al. in view of Walker, Beck et al., and Helton, the connecting member is interpreted to extend from the outer end of the second roll across the longitudinal edge of the inner end of the first roll, and the lengthwise direction of the outer end of the second roll is interpreted to be substantially perpendicular to the lengthwise direction of the second portion of the inner end of the first roll.
Regarding claim 2, Shaw et al. modified Walker, Beck et al., and Helton disclose the elongated web of the paper of the first roll (Walker – 14) is rolled in first winding direction, and the elongated web of paper of the second roll (Walker – 14) is rolled in second winding direction, wherein stacking the second roll (Walker – 14) on the first roll (Walker – 14) with the inner end (Walker – 32) extending between the first and second rolls (Walker – 14) comprising stacking the second roll (Walker – 14) on the first roll (Walker – 14) so that the second winding direction matches the first winding direction. (Walker – Figure 3)
Response to Arguments
The amendments filed on 03/09/2026 have been entered. Claims 1-24 are pending and examined below.
In response to the arguments of the rejections under 35 U.S.C. 103 with reference Shaw et al. (2008/0076653) in view of references Abba et al. (6,702,212), Beck et al. (9,790,302), and Helton (6,007,016), Examiner finds the arguments not persuasive.
Applicant states:
In particular, in Abba, splicing is carried out in an in-line (not perpendicular) arrangement, in a manner that enables twisting to be rectified during feeding (see, e.g., column 4, lines 65 to column 5, line 12 of Abba).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In this case, Abba et al. is not relied upon for the teaching of having the material turn 90 degrees as the material extends from the outer diameter of the first roll to the inner diameter of the second roll. Abba et al. is relied upon for the teaching of stacking the second roll on the first roll, arranging the inner end of the first roll adjacent to the outer end of the second roll after staking the second roll on the first roll, and splicing the outer end of the second roll to the inner end of the first roll. Helton is relied upon for the teaching of having the material turn 90 degrees as the material extends from the outer diameter of the first roll to the inner diameter of the second roll.
When modifying Shaw et al. in view of Abba et al., Beck et al., and Helton, the inner end of the first roll is interpreted to be arranged substantially perpendicular to the outer end of the second roll, and the connecting member is interpreted to connect the outer end of the second roll to the inner end of the first roll to splice the second roll to the first roll so that the lengthwise direction of the outer end of the second roll is substantially perpendicular to the lengthwise direction of the second portion of the inner end of the first roll.
Applicant states:
However, in Helton, a tape winding machine includes the tape protectors 201A-C that aid in routing each tape portion 107A to the core 103, wherein each successive tape portion 107A is folded and routed to the core 103 before (not after) all of the multiple roll segments 101A, 101B, and 101C are stacked, e.g., as shown in FIGS. 4-6 of Helton.
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. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Helton is not relied upon for the teaching of connecting the material to a core before stacking the roll segments. Helton is relied upon for the teaching of having the material turn 90 degrees as the material extends from the outer diameter of the first roll to the inner diameter of the second roll. Helton does not disclose the teaching of turning the material 90 degrees can only be used if the material is connected to a core before stacking the roll segments, nor disclose the teaching of turning the material 90 degrees can only be incorporated into other system that include a core.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In this case, Helton is not relied upon for the teaching of stacking the second roll on the first roll, nor relied upon for the teaching of splicing the second roll to the first roll. Helton is relied upon for the teaching of having the material turn 90 degrees as the material extends from the outer diameter of the first roll to the inner diameter of the second roll. Abba et al. is relied upon for the teaching of stacking the second roll on the first roll, arranging the inner end of the first roll adjacent to the outer end of the second roll after staking the second roll on the first roll, and splicing the outer end of the second roll to the inner end of the first roll.
When modifying Shaw et al. in view of Abba et al., Beck et al., and Helton, the inner end of the first roll is interpreted to be arranged substantially perpendicular to the outer end of the second roll, and the connecting member is interpreted to connect the outer end of the second roll to the inner end of the first roll to splice the second roll to the first roll so that the lengthwise direction of the outer end of the second roll is substantially perpendicular to the lengthwise direction of the second portion of the inner end of the first roll.
Applicant states:
Regarding new claim 23, which recites "after stacking the second roll on the first roll, the inner end of the first roll is arranged as a free end outside the second roll for splicing to the second roll," in Abba, when the coils 35, 37 are stacked, splicing occurs in an in-line arrangement, and it is apparent that the central end 19 (cited as the "inner end" of a first roll) is not arranged as a free end due to being connected via the in-line arrangement.
It should be pointed out that the feature of “the inner end of the first roll is arranged as a free end” is considered new matter. On page 3 paragraph 13 of the Specification, the second longitudinal end of the second supply unit is disclosed to be “positioned for adhering to the adhesive layer of the connecting member of the first supply unit when the release layer is released therefrom. The first supply unit is then stacked on the second supply unit”. The Specification does not disclose stacking the second roll on the first roll thereby arranging the inner end of the first roll as a free end.
The feature “the inner end of the first roll is arranged as a free end outside the second roll” also renders claim 23 vague and indefinite because it is unclear what is implied by calling the inner end of the first roll a “free end”. It is unclear what additional features the inner end of the first roll has that renders it a “free end”. Does the inner end of the first roll not have adhesive that render it a free end, not being attached to the connecting member that render it a free end, or not being connected to the second roll that render it a free end. For examining purposes, the phrase is interpreted as “the inner end of the first roll is arranged as a connectable end outside the second roll”.
Abba et al. disclose the second roll is stacked on the first roll before the outer end (21) of the second roll is spliced the inner end of the first roll. (Column 5 lines 36-37) This implies that the outer end of the second roll and the inner end of the first roll are accessible after the second roll is stacked onto the first roll. Therefore, Shaw et al. modified by Abba et al., Beck et al., and Helton is interpreted to disclose, after stacking the second roll on the first roll, the inner end of the first roll is arranged as a connectable end outside the second roll for splicing to the second roll.
Applicant states:
Regarding new claim 24, which recites that "in feeding the inner end of the second roll into the dunnage machine, the interior layers of the second roll and the first roll are unwound automatically and continuously due to the spliced connection," which is not possible if Shaw is modified in view of Helton, at least because in Helton, each successive tape portion 107A is folded and routed to the core 103, where it is secured (see, e.g., column 5, lines 1-15 of Helton).
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. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Helton is not relied upon for the teaching of connecting the material to a core before stacking the roll segments. Helton is relied upon for the teaching of having the material turn 90 degrees as the material extends from the outer diameter of the first roll to the inner diameter of the second roll. Helton does not disclose the teaching of turning the material 90 degrees can only be used if the material is connected to a core before stacking the roll segments, nor disclose the teaching of turning the material 90 degrees can only be incorporated into other system that include a core.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In this case, Helton is not relied upon for the teaching of automatically feeding the interior layers of the second roll and the first roll into the dunnage machine. Helton is relied upon for the teaching of having the material turn 90 degrees as the material extends from the outer diameter of the first roll to the inner diameter of the second roll. Shaw et al. is relied upon for the teaching of feeding the interior layer of a roll into the dunnage machine. Abba et al. is relied upon for the teaching of having the interior layers of the second roll and the first roll unwound automatically and continuously due to the spliced connection.
When modifying Shaw et al. in view of Abba et al., Beck et al., and Helton, the inner end of the second roll is interpreted to be fed into a dunnage machine, wherein the interior layers of the second roll and the first roll are unwound automatically and continuously due to the spliced connection.
Conclusion
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/PATRICK B FRY/Examiner, Art Unit 3731 May 30, 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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