DDETAILED 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 .
Examiner Notes
Claims 1-3, 5-8, 10-11, 13-14, 16-18, 21-24, 26-31, 33-34, 39, 42, 44, and 48-53 are currently pending of which claims 5, 27-31, 33-34, and 39 are withdrawn. Claim 1 has been amended and claim 19 has been cancelled and claims 49-53 are newly added.
Claim Interpretation
Please note “nominal” will be viewed as “of, being, or relating to a designed or theoretical size that may vary from the action : approximate” (definition from merriam-webster.com).
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 48, 49, 501, 52, and 53 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 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 48 recites that the second layer has a nominal thickness of about 3 mm. After reviewing the specification support for the claimed limitations were not found. The only thickness supported in the specification for the second layer is 2.93 mm, see Fig. 11.
Claim 49 recites that the total area of the micro voids is at least 45% of the total area of the macro voids. Claim 51 recites the total area of micro voids is at least 17%. Support for the total area of micro voids could not be found. Applicant points to support in Figs. 1a and 1B and paragraphs 0097 and 0098 however there does not seem to be a disclosure of micro void total area of the total area of the macro voids in these paragraphs. It if further not clear how/if the total area value can be calculated from the closed area/effective closed area values which are disclosed.
Claim 52 recites a permeability of at least 538 CFM and a total area of macro voids of about 39%. While the specification supports each of these limitations individually, the combination of an open-ended range of the permeability with total area of the macro voids does not appear to be supported. Fig. 1a and b teach a macro void total area of about 39% (calculated from subtracting ECA from 100% ‘total area’) however the permeability taught is only two specific values. Thus there does not appear to be support for every permeability value above 538 CFM and a macro void total area of about 39%.
Claim 53 recites a permeability of the first and second layer greater than 900 CFM. Support for the range claimed was not found. Applicant points to support in Figs. 1a and 1B and paragraphs 0097 and 0098, however Fig. 1a and b and the cited paragraphs are directed to a specific example and specific values for each layer. A singular value does not support the range of values as claimed.
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, 6-8, 10-11, 13-14, 16-19, 21-24, 26, 42, 44, and 49-53 are rejected under 35 U.S.C. 103 as being unpatentable over Phan et al. (US 2011/0265967) in view of Smurkoshki et al. (US 5,260,171) incorporated by reference in Phan and further in view of Trokhan et al. (US 5,334,289) herein after Trokhan ‘289.
Regarding claims 1, 11, 18, and 44, Phan discloses a papermaking belt (10a) for producing a textured product (0105), comprising a reinforcing structure (44; first layer) and a resinous knuckle pattern (42; second layer) which comprises a plurality of macro voids (46) and micro voids (40) (Fig. 3). The macro voids being on the surface of the layer impart texture into the produced product (Fig. 4-6, 0105) and the micro voids substantially limit penetration of product fibers into the micro voids (Fig. 5-6). The micro voids having a dimeter in a preferred embodiment of from about 10 to about 1000 µm (0081; about 0.01 to about 1 mm) (0081), overlapping the claimed diameter in a range of from 1 mm to 5 mm.
Phan does not expressly teach the macro voids having a diameter of 6 mm to 12 mm. However, Phan teaches that the size and shape of the macro voids are set to maximize fiber deflection (0096). Consequently, it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as diameter (size) through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Phan does not teach a permeability of the belt being at least 300 CFM or between 400 and 700 CFM as claimed in claim 11.
Trokhan ‘289, in the analogous field of papermaking belts (column 1, lines 10-15) teaches a composite belt having an air permeability in the range of about 300 to about 600 CFM (column 17, lines 10-15), overlapping the claimed permeability of at least 300 CFM in claim 1 and between 400 to 700 CFM in claim 11.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the papermaking belt of Phan to have an air permeability of about 300 to about 600 as taught by Trokhan ‘289, in order for both the reinforcing structure and composite belt to be sufficiently permeable (column 17, lines 15-20).
Regarding claim 2, Phan discloses the micro voids increase permeability of the belt (0078).
Regarding claim 3, Phan discloses the fibers stretching/bending into the macro voids (Fig. 5-6, 0096).
Regarding claim 6, Phan discloses that the second layer is made according to any of the following US patents (0090, 0114) including Smurkoshki, which teaches the framework formed of thermoplastic resin (column 22, lines 45-50)
Regarding claims 7 and 42, Phan teaches the first layer being a woven fabric, nonwoven, scrim, or net (0089).
Regarding claim 8, Phan teaches the macro and/or micro voids shaped circular, elliptical, or polygonal (Fig. 3, 0109).
Regarding claim 10, Phan teaches the second layer extending outwardly/coincident with the first layer (0092).
Regarding claim 13, Phan teaches the resinous knuckle structure joined to the reinforcing structure (e.g., second and first layer, respectively) (0071). Phan does not expressly teach that the second layer laminated to the first layer. However, the recitation of “is laminated” is product by process language. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 14, Phan teaches the second layer is a film (0017).
Regarding claim 16, Phan teaches the micro voids formed from mechanical drilling or laser (0081) and Smurkoshki teaches the drilling or laser to cut the macro voids (column 22, lines 50-55).
Please note, claim 16 includes product by process language. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 17, Phan discloses that the second layer is made according to any of the following US patents (0090, 0114) including Smurkoshki, which teaches the framework formed of thermoplastic resin (column 22, lines 45-50).
Regarding claim 21, Phan does not expressly teach the macro voids having a void volume in the range of 50 to 90 mm3. However, Phan teaches that by increasing the surface area to volume of the macro void pattern, removal of water from the web is facilitated (0097).
Hence, it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as a suitable macro void volume, through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 22, Phan does not expressly teach the micro voids having a void volume in the range of 20 to 50 mm3. However, Phan teaches that the number and density of pores in the second layer are added to provide a desired pattern of permeability for both the papermaking belt and second layer (0078).
Hence, it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as a suitable micro void volume, through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claims 23 and 24, Phan does not expressly teach a closed area or an effective closed area of about 5% to about 95% in the papermaking belt. The specification defines the “closed area” as the area that does not have any macro or micro voids and the “effective closed area” as the solid area plus micro voids (page 9). Phan teaches that the absolute void volume can be designed to optimize the hydraulic connection and maximize water removal from the embryonic web (0042). Phan further teaches that the number and density of pores (micro voids) in the second layer are added to provide a desired pattern of permeability for both the papermaking belt and second layer (0078). Given Phan teaches that the amount/volume of voids both, macro and micro, are optimizable to maximize water removal and/or permeability, and the closed area and effective closed area define areas of the fabric without voids, the closed and effective closed areas are necessarily optimizable by nature of optimizing the macro and micro void area.
There is no evidence indicating such closed area or effective closed area are critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 26, the fibers of the textured product bridge micro voids (Fig. 5 and 6).
Regarding claims 49-51, Phan teaches the micro voids and macro voids at least partially determining the permeability of the fabric (0011). Phan does not teach a total area of micro voids being at least 45% of the total area of macro voids, a total area of macro voids is about 39%, or a total area of micro voids is at least 17%. However, Phan teaches that the absolute void volume can be designed to optimize the hydraulic connection and maximize water removal from the embryonic web (0042). Phan further teaches that the number and density of pores (micro voids) in the second layer are added to provide a desired pattern of permeability for both the papermaking belt and second layer (0078). Given Phan teaches that the amount/volume of voids both, macro and micro, are optimizable to maximize water removal and/or permeability, thus it would have been obvious to have optimized the total area of micro voids to 45% of the total area of macro voids, as well as individual total areas of the macro and micro voids, as where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 52, Trokhan ‘289 teaches a composite belt having an air permeability in the range of about 300 to about 600 CFM (column 17, lines 10-15), overlapping the claimed at least 538 CFM as discussed above.
Phan does not teach a total area of macro voids is about 39%. However, Phan teaches that the absolute void volume can be designed to optimize the hydraulic connection and maximize water removal from the embryonic web (0042). Phan further teaches that the number and density of pores (micro voids) in the second layer are added to provide a desired pattern of permeability for both the papermaking belt and second layer (0078). Given Phan teaches that the amount/volume of voids both, macro and micro, are optimizable to maximize water removal and/or permeability, thus it would have been obvious to have optimized the total area of micro voids to 45% of the total area of macro voids, as well as individual total areas of the macro and micro voids, as where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 53, Trokhan ‘289 teaches the reinforcing structure having an air permeability of about 800 to about 1,400 CFM (column 17, lines 5-10) and that the composite belt has an air permeability in the range of about 300 CFM to about 600 CFM (column 17, lines 10-15). Trokhan ‘289 does not teach a suitable permeability of the framework, however Trokhan ‘289 teaches that the permeability of the reinforcing structure and the framework work together to establish the air permeability for the composite belt (column 17, lines 10-15), thus it would have been obvious to have optimized the permeability of the framework in order to achieve the required composite belt air permeability.
Claims 1-3, 6-8, 10-11, 13-14, 16-19, 21-24, 26, 42, 44, and 48-53 are rejected under 35 U.S.C. 103 as being unpatentable over Trokhan (US 4,528,239) in view of Phan et al. (US 2011/0265967) and further in view of Trokhan et al. (US 5,334,289) herein after Trokhan ‘289.
Regarding claims 1, 11, 18, and 44, Trokhan discloses a papermaking belt for producing a textured product (Fig. 8, 9), comprising a woven element (43; first layer) and a deflection member (19; second layer) which comprises a plurality of macro voids (29) (Fig. 4). The macro voids being on the surface of the layer impart texture into the produced product (Fig. 6-7, column 13, lines 50-65). The opening having a width (“e”), size of the width being optimizable based upon the other parameters of the member (column 7, lines 40-55), material being used (column 8, lines 30-35), and to influence the properties of the paper web (column 9, lines 45-50).
Consequently, it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as the macro voids nominal diameter (size) through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Trokhan does not teach the deflection member comprising micro voids which limit penetration of fibers and have a nominal diameter in a range of 1 mm to 5 mm.
Phan, in the analogous field of papermaking belts for producing a textured product (0105), teaches a reinforcing structure (44; first layer) and a resinous knuckle pattern (42; second layer) which comprises a plurality of macro voids (46) and micro voids (40) (Fig. 3). The macro voids being on the surface of the layer impart texture into the produced product (Fig. 4-6, 0105) and the micro voids substantially limit penetration of product fibers into the micro voids (Fig. 5-6). The micro voids having a dimeter in a preferred embodiment of from about 10 to about 1000 µm (0081; about 0.01 to about 1 mm), overlapping the claimed nominal diameter in a range from 1 mm to 5 mm.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the deflection member of Trokhan to include micro voids, having a diameter from about 10 to about 1000 µm, as taught by Phan to provide a continuous network region with a desired pattern of permeability (0014).
Trokhan and Phan do not expressly teach a permeability of the belt being at least 300 CFM or (between 400 and 700 CFM as claimed in claim 11).
Trokhan ‘289, in the analogous field of papermaking belts (column 1, lines 10-15) teaches a composite belt having an air permeability in the range of about 300-about 600 CFM (column 17, lines 10-15), overlapping the claimed permeability of at least 300 CFM in claim 1 and between 400 to 700 CFM in claim 11.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the papermaking belt of Phan to have an air permeability of about 300 to about 600 as taught by Trokhan ‘289, in order for both the reinforcing structure and composite belt to be sufficiently permeable (column 17, lines 15-20).
Regarding the overlapping ranges discussed above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 2, Phan discloses the micro voids increase permeability of the belt (0078).
Regarding claim 3, Trokhan discloses the fibers stretching/bending into the macro voids (Fig. 7).
Regarding claim 6, Trokhan teaches the deflection member including crosslinked resin (column 11, lines 5-20).
Regarding claims 7 and 42, Trokhan teaches the first layer being a woven fabric (column 9, lines 10-15).
Regarding claim 8, Trokhan teaches deflection conduits are hexagons (polygonal) but may have other shapes (column 7, .lines 5-10). Phan teaches the micro voids shaped circular, elliptical, or polygonal (Fig. 3, 0109).
Regarding claim 10, Trokhan teaches the second layer extending coincident with the first layer (Fig. 4).
Regarding claim 13, Trokhan teaches joining of the deflection member to the woven element (column 11, lines 5-20). Trokhan does not expressly teach that the second layer “laminated” to the first layer. However, the recitation of “is laminated” is product by process language. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 14, Trokhan teaches the second layer is a film (column 11, lines 5-15).
Regarding claim 16, Phan teaches the micro voids formed from mechanical drilling or laser (0081).
Please note, claim 16 includes product by process language. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 17, Trokhan teaches the deflection member including crosslinked resin (column 11, lines 5-20).
Regarding claim 21, Trokhan does not expressly teach the macro voids having a void volume in the range of 50 to 90 mm3. However, Phan teaches that by increasing the surface area to volume of the macro void pattern, removal of water from the web is facilitated (0097).
It would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as a suitable macro void volume, through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 22, Phan does not expressly teach the micro voids having a void volume in the range of 20 to 50 mm3. However, Phan teaches that the number and density of pores in the second layer are added to provide a desired pattern of permeability for both the papermaking belt and second layer (0078).
Hence, it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as a suitable micro void volume, through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claims 23 and 24,Trokhan teaches an open area of 35% to about 85% (column 9, lines 63-66), thus a closed area would range from 15 to 65%, overlapping the claimed closed and effective closed areas of about 5 to about 95%.
Regarding claim 26, the fibers of the textured product bridge micro voids (Phan: Fig. 5 and 6).
Regarding claim 48, Trokhan teaches the deflection member having a thickness from about 0.35 to about 3.0 mm (column 12, lines 5-15).
Regarding the overlapping ranges discussed above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 49, Phan teaches the micro voids and macro voids at least partially determining the permeability of the fabric (0011). Phan does not teach a total area of micro voids being at least 45% of the total area of macro voids. However, Phan teaches that the absolute void volume can be designed to optimize the hydraulic connection and maximize water removal from the embryonic web (0042). Phan further teaches that the number and density of pores (micro voids) in the second layer are added to provide a desired pattern of permeability for both the papermaking belt and second layer (0078). Given Phan teaches that the amount/volume of voids both, macro and micro, are optimizable to maximize water removal and/or permeability, thus it would have been obvious to have optimized the total area of micro voids to 45% of the total area of macro voids, as where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 50, Trokhan teaches a total area of deflection members of about 35 to about 85% (column 9, lines 60-65), overlapping the claimed about 39%.
Regarding claim 52, Phan does not teach a total area of micro voids of at least 17%. However, Phan teaches that the absolute void volume can be designed to optimize the hydraulic connection and maximize water removal from the embryonic web (0042). Phan further teaches that the number and density of pores (micro voids) in the second layer are added to provide a desired pattern of permeability for both the papermaking belt and second layer (0078). Given Phan teaches that the amount/volume of voids both, macro and micro, are optimizable to maximize water removal and/or permeability, thus it would have been obvious to have optimized the total area of micro voids, as where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 52, Trokhan ‘289 teaches a composite belt having an air permeability in the range of about 300 to about 600 CFM (column 17, lines 10-15), overlapping the claimed at least 538 CFM as discussed above. Trokhan teaches a total area of deflection members of about 35 to about 85% (column 9, lines 60-65), overlapping the claimed about 39%.
Regarding claim 53, Trokhan ‘289 teaches the reinforcing structure having an air permeability of about 800 to about 1,400 CFM (column 17, lines 5-10) and that the composite belt has an air permeability in the range of about 300 CFM to about 600 CFM (column 17, lines 10-15). Trokhan ‘289 does not teach a suitable permeability of the framework, however Trokhan ‘289 teaches that the permeability of the reinforcing structure and the framework work together to establish the air permeability for the composite belt (column 17, lines 10-15), thus it would have been obvious to have optimized the permeability of the framework in order to achieve the required composite belt air permeability.
Response to Arguments
Applicant’s amendments filed 08/04/2025 have been entered. The 35 U.S.C. 112(a) rejection of claim 1 is withdrawn. However, the 35 U.S.C. 112(a) rejection of claim 48 is maintained and new 35 U.S.C. 112(a) rejections have been made.
Applicants argues that there is support for “about 3 mm” in claim 48 noting that Fig. 11 is not entirely planar and 2.93 rounds up to 3.
The only support for thickness comes from Fig. 11 and the only value taught is 2.93 mm. Fig. 11 does not have a legend or scale it is not clear that the variable thickness would include a value of 3 mm as argued. The only value taught is 2.93 mm. While support for about 2.93 mm or about 2.9 would be supported from Fig. 11, there is not support for “rounding” up to 3 mm either from the specification as a whole or Fig. 11.
Applicant’s arguments that the teaching in Phan for a “desired pattern of permeability” does not support optimizing the permeability of the paper making belt has been fully considered and is persuasive. Thus, the rejections over Phan in view of Smurkoshki and Trokhan in view of Phan are withdrawn.
Applicant argues that Phan does not teach macro voids having a diameter of 6 mm to 12 mm. Applicant argues that Phan teaches a preferred mean width for domes (0111) and would not depart from these dimensions as this would undermine Phan’s goal of providing paper products with sufficient strength and resistance.
Phan does not teach what size is considered “large” to limit fiber deflection as argued and applicant has not provided any evidence that a size of 6 to 12 mm would undermine Phan’s product. Paragraph 0005 of Phan which applicant cites as teaching away from “large” size deflection conduits further cites to Rasch et al. (US 5,679,22) for example conduit shapes. The only limitation Rasch teaches for the “width” is an opening size of not less than about 45 mils (column 8, lines 50-55). While Phan teaches a preferred size, as discussed previously, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Applicant argues that the claimed industrial fabric has unexpected advantages of improving permeability, improving tensile strength of fabrics, and improved sheet hold down.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296. Briefly, the examples are directed to specific base and film fabrics and the film fabrics have a specific combination of macro and micro voids. The examples further teach a single size for the macro voids and two sizes (1 or 2 mm) for the micro voids. It is noted that minimally data points outside of the claimed range, within the claimed range, and at or proximate the claimed endpoints of the range are suggested to establish criticality of a claimed range.
Applicant argues Trokhan teaches away from any other voids in the top layer and notes that the fiber deflection of Trokhan is conducted with essentially no water removal.
While Trokhan teaches no dewatering during fiber deflection, Trokhan does not teach away from dewatering entirely. Trokhan expressly teaches dewatering through the deflection conduits (column 3, lines 30-35) as a step of the paper making process. Phan teaches that the pores facilitates efficacious dewatering (0078). Phan further teaches that the pores a placed distal from the deflection conduits and at a desired density to provide a desired pattern of permeability but preventing fiber deflection into the pores (0076-0079). A person of ordinary skill based on the disclosure of Phan would have found it obvious that inclusion of the pores facilitates dewatering in the paper making process, a step which is taught in the process of Trokhan.
Applicant argues that like Phan, Trokhan does not teach a macro pore size of 6 to 12 mm and argues that optimization in the claimed size range would decrease the strength and absorbency of Trokhan’s paper products.
As discussed above applicant has not provided any evidence that the claimed size range would have the decreased in strength and absorbency as argued. Applicant has not provided any evidence that a size of 6 mm to 12 mm would be considered a, increased size based the teachings of the prior art. Again it is noted that while Trokhan teaches a preferred width in a single embodiment, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Trokhan clearly teaches optimizing the size of the opening (column 7, lines 40-55, column 8, lines 30-35, and column 9, lines 45-50).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781