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 Amendment
The amendment and response filed on October 06, 2025 has been entered. Claims 1-2, 5-8, 10-11, 13, 16-23, 25-26, and 29 are pending.
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claims 1-2, 5-6, 10-11, 17-18, 20-23, 25-26, and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2006-290356.
Regarding claim 1, JP ‘356 discloses an expanding material, comprising a sheet of material defining a plane in a pretensioned form and having an axial direction and a transverse direction that is orthogonal to the axial direction, the sheet of material having a plurality of slits arranged in a plurality of rows of slits each having transverse length that is perpendicular to a tension axis, wherein each of the slits in a row are spaced in a transverse direction from directly adjacent slits in the row to form an axial beam, wherein the axial beam extends between slits in adjacent rows, wherein the plurality of slits include a repeating pattern of compound slits each having more than two terminal ends. As shown in Figure 1, the plurality of slits form a square section bound by directly adjacent transverse portions of slits which are perpendicular to a tension axis and axial extensions of the adjacent axial portions on directly adjacent opposing slits. Specifically, the slit configuration illustrated in Figure 1 matches the slit configuration the claimed embodiment illustrated in Figures 3A and 3B of the present invention.
Regarding claim 2, Figure 3 of JP ‘356 illustrates an embodiment wherein the material is rotated greater than 45 degrees when tension is applied.
Regarding claim 5, Figure 1 of JP ‘356 illustrates an embodiment wherein the slit pattern extends through one or more edges of the material.
Regarding claim 6, the sheet material of JP ‘356 can be paper, a non-woven material, or a polymer film (pg 4, lines 9-10).
Regarding claims 10 and 11, Figure 1 of JP ‘356 illustrates an embodiment wherein the slits have a transverse length that is perpendicular to the tension axis and the slits are offset from each other in adjacent rows.
Regarding claim 17, JP ‘356 discloses a die capable of forming the plurality of slits (pg 2, last line).
Regarding claims 18, 20, and 21, JP ‘356 discloses that the expanding material can be used as a packaging material comprising one or more barrier sheets or formed into an envelope (pg 4, lines 33-35).
Regarding claim 22, JP ‘356 discloses that the slits can be formed by molding (pg 2, last paragraph).
Regarding claims 23 and 25-26, the Figures of JP ‘356 illustrate that when tension is applied the material expands which results in a two-dimensional structure being formed into a three-dimensional structure.
Regarding claim 29, as shown in Figure 1, the plurality of slits include a repeating pattern of compound slits each having more than two terminal ends the axial beam width is less than a transverse dimension between axial extensions of the adjacent axial portions on directly adjacent opposing slits. Specifically, the slit configuration illustrated in Figure 1 matches the slit configuration the claimed embodiment illustrated in Figures 3A and 3B of the present invention.
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 7-8, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006-290356.
JP ‘356 does not disclose the thickness and thickness to slit length ratio of the sheet material. However, thickness of the sheet material would be a result effective variable. That is, the thickness of the sheet material will determine various properties of the sheet material, including the tensile strength, tear-ability, and cushioning properties resulting after expansion of the sheet. It would have been obvious to one of ordinary skill in the art to have selected a thickness and thickness to slit length ratio within the presently claimed ranges, motivated by the desire to obtain an expandable sheet having desired tensile strength properties.
Claims 1-2, 5-8, 10-11, 13, 16-18, 20-23, 25-26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006-290356 in view of Tesch (US Patent No. 3,655,501).
For claims 1-2, 5-8, 10-11, 16-18, 20-23, 25-26, and 29, this is an alternative rejection to the above rejections over JP ‘356 alone. As set forth in the previous Office actions, Tesch, which is also directed to the expandable sheet material art, discloses a web carrier having a plurality of slits. Tesch discloses that various possibilities exist with respect to the application of slits (col 2, lines 59-61) and different arrangements of slit shapes, sizes, and patterns lead to different properties (col 3, lines 15-53; col 4, lines 21-28). For example, Tesch illustrates a repeating pattern of compound slits having more than two terminal ends, i.e., Figures 27 and 33. It would have been obvious to the one of ordinary skill in the art to have alternated the slit pattern of the expandable sheet material of JP ‘356, motivated by the desire to obtain an expanded sheet having desired expansive characteristics.
Regarding claim 13, Tesch discloses embodiments wherein the slit shape and/or orientation varies in adjacent rows. It would have been obvious to the one of ordinary skill in the art to have used varied slit shapes and/or orientations, as disclosed in Tesch, in the expanding material of JP ‘356, motivated by the desire to obtain an expanded sheet having desired expansive characteristics.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2006-290356 in view of Goodrich (US Pub 2018/0370702 A1).
JP ‘356 does not disclose an expanding material in a roll configuration. Goodrich discloses that it is well known in the expandable material art to form the expandable material in roll form (Fig 5). It would have been obvious to one of ordinary skill in the art to have formed the expandable material of JP ‘356 as modified by Tesch in roll form in order to provide a conventional means for storage and shipping of the material.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2006-290356 in view of Tesch (US Patent No. 3,655,501) and Goodrich (US Pub 2018/0370702 A1).
JP ‘356 as modified by Tesch does not disclose an expanding material in a roll configuration. Goodrich discloses that it is well known in the expandable material art to form the expandable material in roll form (Fig 5). It would have been obvious to one of ordinary skill in the art to have formed the expandable material of JP ‘356 as modified by Tesch in roll form in order to provide a conventional means for storage and shipping of the material.
Response to Arguments
The provisional nonstatutory double patenting rejection set forth in the previous Office action of June 05, 2025 is withdrawn. Applicant’s arguments with respect to the previous prior art rejections have been considered but are moot because the new ground of rejection. The arguments presented state that JP ‘356 in view of Tesch fails to disclose the claimed slit configuration, but does not address the obviousness position that Tesch different arrangements of slit size, shape and patterns would yield predictable different expansion properties.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 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 mailing date of this final action.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781