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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/14/26 has been entered.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 30-32, 34-36, 39, 40, and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al.(US Publication 2009/0255640) in view of Mitsunari et al.(JP 2007-136861).
Morin et al. disclose an apparatus and method of making tissue paper comprising a first embossing roll(132) and a first anvil roll(134) which emboss a first ply, a second embossing roll(122) and a second anvil roll(124) which emboss a second ply, and a marrying roll(142) where the marrying roll and the first embossing roll are turning in opposite directions.(Figure 3) The first embossing roll has a number of teeth that contact the marrying roll through the plies and bond them together in a nested arrangement.(Figure 1C, [0035]) Morin et al. shows pre-embossing one of the plies, but it also discloses that it is possible to not pre-emboss the plies.[0067] The reference does not disclose the embossing rolls are heated. Mitsunari et al. discloses that it is known to heat embossing rolls to provide a clear pattern.(machine translation) It would have been obvious to one of ordinary skill at the time of filing to heat the embossing rolls of Morin et al. to insure a clear embossed pattern is formed as suggested by Mitsunari et al. While the references do not disclose the speed, one in the art would understand that since the structures are the same as applicant, they would be able to process sheets at the same speeds as applicant’s device.
Regarding claim 32, an adhesive unit(15) applies adhesive to the tips of the first ply before bonding.
Regarding claim 36, the first anvil roll, second embossing roll, and marrying roll all rotate in one direction and the second anvil roll and the first embossing roll rotate in the opposite direction since two rolls with a nip rotate in opposite directions to move the ply through the nip.(Figure 3)
Regarding claim 39 and 40, Mitsunari et al. discloses heating the rolls to 40-140C.
Regarding claim 43, Morin et al. does not disclose a wetting unit.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. and Mitsunari et al. as applied to claim 30 above, and further in view of Sauter et al.(US Publication 2010/0183850).
The references cited do not disclose the specifies of the adhesive application roll. Sauter et al. discloses anilox roller which transfer adhesive to the application roll are known in the tissue paper making arts.[0019] It would have been obvious to one of ordinary skill at the time of filing to use an anilox roller with pit shaped depressions to transfer adhesive to the application roller since such rollers are well known and conventional in the tissue paper material arts as shown for example by Sauter et al.[0019]
Claim(s) 37 and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. and Mitsunari et al. as applied to claim 30 above, and further in view of Stefani(US Patent 10,654,239).
Regarding claims 37 and 38, the references cited do not disclose the specifics of the heights of the embossments of the two plies or the presence of multiple different height protuberances on each embossing roll. Stefani discloses that typical pattern heights are 1.1 -2 mm in height for the taller protuberances and shorter for smaller ones with both rolls having tall and short protuberances.(Col. 7, ll. 7-18; Figure 7) It would have been obvious to one of ordinary skill at the time of filing to make protuberances on both embossing rolls of Morin et al. and Mitsunari et al. have different heights since Stefani discloses this is a known tissue paper pattern thus combining prior art elements according to known methods to achieve predictable results.
Regarding claim 38, while Stefani does not disclose which embossing roll has higher protuberances, one in the art would appreciate that either roll could have taller protuberances since three are only three options, they are the same height on both rolls, the first roll have higher ones, and the second roll has higher ones, thus it is within the ability of one of ordinary skill in the art to choose from a finite number of predictable solutions with a reasonable expectation of success absent unexpected results.
Claim(s) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. and Mitsunari et al. as applied to claim 30 above, and further in view of Pieroni et al.(US Publication 2023/0146893).
The references cited above do not disclose applying moisture to the plies before embossing. Pieroni et al. discloses applying moisture before the sheets reach the embossing unit to improve bonding.([0157]; Figure 8A) It would have been obvious to one of ordinary skill at the time of filing to apply moisture to the plies before embossing since this will improve bonding as taught by Pieroni et al.[0157] While the reference does not disclose the amount of water applied, one in the art would appreciate that the amount of water applied is within the ability of one of ordinary skill in the art to determine absent unexpected results.
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. and Mitsunari et al. as applied to claim 30 above, and further in view of Techlin(US Patent 9,248,147).
The references cited do not disclose rolling up the paper or what it is rolled on, though one in the art would understand that based on the desired product, it would be formed into a roll. Techlin discloses a mandrel on which bathroom tissue is rolled up that is axially elastic so it can replace cardboard cores.(Col. 1, ll. 6-9; Col. 7, ll. 62- Col. 8, ll. 3) It would have been obvious to one of ordinary skill at the time of filing to roll the plies of Morin et al. and Mitsunari et al. onto an axially elastic mandrel which can be removed since this would replace cardboard cores as taught by Techlin(Col. 7, ll. 62- Col. 8, ll. 3)
Claim(s) 45-47, 49, 50, 53, 54, 56, and 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. and Mitsunari et al. as applied to claim 30 above, and further in view of Hill et al.(US Publication 2010/0021696) and McNeil(US Publication 2012/0244241)
The references cited do not disclose the basis weights of the plies used. Hill et al. discloses that typical paper used has a basis weight of 8-30 g/m2.[0004] It would have been obvious to one of ordinary skill at the time of filing to use plies with a basis weight of 8-30 g/m2 since Hill et al. discloses this is a typical weight for tissue papers used for making this type of product.[0004] The references cited also do not disclose the sped of the process. McNeil discloses that embossing devices can run at 300 m/min or more.[0008] It would have been obvious to one of ordinary skill at the time of filing to run the device of Morin et al., Mitsunari et al. and Hill et al. at 300 m/min or more because McNeil shows that similar devices can run at such speeds and the faster a device is run, the more product is made in a given amount of time.
Regarding claim 46, the first anvil roll, second embossing roll, and marrying roll all rotate in one direction and the second anvil roll and the first embossing roll rotate in the opposite direction since two rolls with a nip rotate in opposite directions to move the ply through the nip.(Figure 3)
Regarding claim 47, while the references cited do not disclose applying adhesive to both plies, whether to apply it to one or both plies is within the ability of one of ordinary skill in the art to determine absent unexpected results, there being only two options, applying it to one ply or applying it to both plies.
Regarding claim 53 and 54, Mitsunari et al. discloses heating the rolls to 40-140C.
Regarding claim 56, Morin et al. does not disclose a wetting unit.
Regarding claim 57, while the references cited do not disclose a load, that would have been within the ability of one of ordinary skill in the art to determine absent unexpected results as both the reference and the applicant are making similar products using similar apparatus.
Claim(s) 48, 51, and 52 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al., Mitsunari et al., Hill et al. and McNeil as applied to claim 45 above, and further in view of Sauter et al.(US Publication 2010/0183850).
Regarding claim 48, the references cited do not disclose the specifies of the adhesive application roll. Sauter et al. discloses anilox roller which transfer adhesive to the application roll are known in the tissue paper making arts.[0019] It would have been obvious to one of ordinary skill at the time of filing to use an anilox roller with pit shaped depressions to transfer adhesive to the application roller since such rollers are well known and conventional in the tissue paper material arts as shown for example by Sauter et al.[0019]
Regarding claims 51 and 52, Sauter et al. discloses the conventionally tissue products are made with wet creped paper(WCP)[0002] It would have been obvious to one of ordinary skill at the time of filing to use wet creped paper as the plies in Morin et al., Mitsunari et al., Hill et al. and McNeil since this is well-known and conventional as the type of material used to make this type of product as shown for example by Sauter et al.[0002]
Regarding claim 52, Morin et al. discloses the first ply can be made of a plurality of plies.(claim 48)
Claim(s) 55 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al., Mitsunari et al., Hill et al. and McNeil as applied to claim 30 above, and further in view of Pieroni et al.(US Publication 2023/0146893).
The references cited above do not disclose applying moisture to the plies before embossing. Pieroni et al. discloses applying moisture before the sheets reach the embossing unit to improve bonding.([0157]; Figure 8A) It would have been obvious to one of ordinary skill at the time of filing to apply moisture to the plies before embossing since this will improve bonding as taught by Pieroni et al.[0157] While the reference does not disclose the amount of water applied, one in the art would appreciate that the amount of water applied is within the ability of one of ordinary skill in the art to determine absent unexpected results.
Claim(s) 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al., Mitsunari et al., Hill et al. and McNeil as applied to claim 30 above, and further in view of Stefani(US Patent 10,654,239).
The references cited do not disclose the specifics of the heights of the embossments of the two plies or the presence of multiple different height protuberances on each embossing roll. Stefani discloses that typical pattern heights are 1.1 -2 mm in height for the taller protuberances and shorter for smaller ones with both rolls having tall and short protuberances.(Col. 7, ll. 7-18; Figure 7) It would have been obvious to one of ordinary skill at the time of filing to make protuberances on both embossing rolls of Morin et al. and Mitsunari et al. have different heights since Stefani discloses this is a known tissue paper pattern thus combining prior art elements according to known methods to achieve predictable results.
Claim(s) 30 and 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dettori et al.(US Patent 10,696,004) in view of Morin et al. and Mitsunari et al.(JP 2007-136861).
Dettori et al. disclose an apparatus and method of making tissue paper comprising a first embossing roll(5) and a first anvil roll(11) which emboss a first ply, a second embossing roll(7) and a second anvil roll(15) which emboss a second ply, and a marrying roll(41) where the marrying roll and the first embossing roll are turning in opposite directions.(Figure 6A) The first embossing roll has a number of teeth that contact the marrying roll through the plies and bond them together in a nested arrangement.(Figure 6B) The reference does not disclose conveying the embossed first and second plies while separated to the marrying roll nip. Morin et al. discloses it is known in general in the embossing arts to convey the first and second embossed web separately to the marrying nip.(Figure 3) It would have been obvious to one of ordinary skill at the time of filing to transport the first and second embossed web to the marrying roll b\nip while spaced apart from each other since this is well-known and conventional in the embossing arts as shown for example by Morin et al.(Figure 3) The references do not disclose the embossing rolls are heated. Mitsunari et al. discloses that it is known to heat embossing rolls to provide a clear pattern.(machine translation) It would have been obvious to one of ordinary skill at the time of filing to heat the embossing rolls of Morin et al. and Dettori et al. to insure a clear embossed pattern is formed as suggested by Mitsunari et al. While the references do not disclose the speed, one in the art would understand that since the structures are the same as applicant, they would be able to process sheets at the same speeds as applicant’s device.
Response to Arguments
Applicant's arguments filed 4/16/26 have been fully considered but they are not persuasive.
Regarding applicant’s argument that the cited art fails to disclose the claimed speed, only the art rejection of the apparatus does not have a reference referring to the claimed speed, because the speed is a method limitation. McNeil(cited in the method rejection) clearly indicates that speeds of 300-600 m/min are known in the embossing arts. The apparatus must only be capable of use at that speed which is why the reference is not used in the rejection of the apparatus.
Regarding applicants’ argument that the apparatus is configured to process at a given speed and the rejection doesn’t include that, examiner continues to believe that if the structures are the same, the apparatus would be capable of running at the claimed speed. There is no structural difference. This is not a method claim. This simply requires a device capable of running at that speed.
The synergy of the speeds etc. would be best addressed towards the rejection of the method claim, which applicant does not seem to be referring to as he repeatedly states there is no teaching of the speed while the method rejection has a reference which is directed to the speed. The rejection of the method claim includes a reference(McNeil) teaching that similar devices can run at such speeds. One in the art would appreciate that the faster the equipment is run the more product is made, which is a reason to run it at 300 m/min or more as taught by McNeil. Applicant’s own specification indicates they MAY work synergistically together. MAY does not mean that is what happens. There is no evidence it would not work well together at lower speeds. If applicant provided evidence that the claimed combination only worked well together at high speeds(and that such high speeds are not the normal speeds such devices are run at), this might overcome the art rejection of the method particularly if further elements that further distinguish the structure were added, but not the apparatus, because the actual speed the apparatus is working is not part of the apparatus. That only has to do with how quickly the rolls are turned etc. which has to do with the motors. Right now, it appears applicant is arguing that adding heating to the embossing rolls to Morin, which is the ONLY change required to meet the structure of the claims, makes them only work at speeds that are already known in the art(per McNeil). Examiner does not see how this is unexpected, that the device could work at known speeds in the art. Applicant is stating other improvements but has no evidence and is not claiming the improved ranges. Considerably more evidence and more claiming of properties would be required or unexpected results. Additionally, McNeil et al. even states that 600 m/min is a more preferred operating speed but that there are problems at that speed, implying the 300 m/min referred to previously is more common.[0008] It is also noted that Picchi et al.(US Publication 2020/0324506) also implies that processing speeds of 500-600 m/min are known in the embossing arts.[0084]
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BARBARA J MUSSER whose telephone number is (571)272-1222. The examiner can normally be reached 7:30-4:30 M-Th; 7:30-3:30 second Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BARBARA J. MUSSER
Primary Examiner
Art Unit 1746
/BARBARA J MUSSER/Primary Examiner, Art Unit 1746
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