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
Applicant’s amendment filed 10/3/2025 has been entered.
Claims 24-32, 34-42 and 44-48 remain pending.
Claims 33 and 43 have been cancelled.
Claims 49-50 are new and now also pending.
Claim Interpretation
Per Page 58, lines 4-6 the term “about” is interpreted as the value, plus or minus 15%.
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 24-32, 37-39, 41, 42, and 44-50 are rejected under 35 U.S.C. 103 as being unpatentable over Goodrich (US Patent 5,782,735), in view of Miyawaki (JP 2019-150934A- see attached PDF for translation and Paragraph numbering of the translation).
Regarding Claim 24, Goodrich discloses a method for making expandable slit sheet material (2010; Figure 19), comprising:
a) forming an expandable slit sheet material (2010) by pressing a rotary die member (8110; Figure 17) having an array of blades (8111; Figure 18) against an anvil member (8112) with a sheet of material (8104) between said die member (8110) and said anvil (8112) so that said sheet of material is cut by said blades (8111) to form an array of slits (2014, 2016; Figure 19; Col 13, lines 53-61);
wherein said sheet of material (2010) is a recyclable paper sheet having a paper weight of between 25 pounds per 3,000 square feet and 70 pounds per 3,000 square feet (Col 4, lines 33-35 and Col 15, lines 25-31 disclose recycled paper comprising weights between 30-70 lbs/300ft sq.),
wherein said array of slits (2014, 2016) includes staggered rows of slits (as shown in Figure 19; Col 14, lines 55-57) that expand into generally hexagonal cells (2026; Figure 20) upon pulling of the recyclable paper sheet (2010) in a machine direction (Col 15, lines 1-13),
wherein each of said slits (2014, 2016) within said array of slits has a width of less than 0.6 inches and extends transverse to the machine direction (Col 10, lines 35-41 describes ½” slits which extend transverse to machine direction “B” and “C” as shown in Figure 20).
However, Goodrich does not disclose the forming step including providing an intermediary material layer surrounding said anvil such that during said pressing of the die member having said array of blades against said anvil member with said sheet of material between said die member and said anvil so that said sheet of material is cut by said blades to form an array of slits, said blades also pass through said sheet of material and penetrate said intermediary material layer, wherein said intermediary material layer is between about 0.25 mil and 50 mil thick.
Attention can be brought to the teachings of Miyawaki which includes another die cutting system (100; Figure 1) including a die cylinder (110) and an anvil cylinder (120) wherein the anvil cylinder (120) comprises an anvil cover (130; see Figures 3-6) positioned on the anvil cylinder (120) and thereby forming an intermediary material layer, wherein the anvil cover (130) is comprised of a resin sheet (Para. 0022) comprising a thickness of .1mm (Para. 0027; .1mm is about 4 mil) such that the blade (113) of the die cylinder (110) penetrates the intermediary layer/anvil cover (130) but does not contact the anvil (120; Para. 0028), wherein the intermediary material layer (130) is formed of a material of sufficient softness that said blades penetrate into said intermediate material layer (130; see Para. 0011, 0027-0028).
Providing covers/blankets onto cylinders/rollers in cutting systems such that the blades/teeth can clearly pass through the workpiece has been well-known in the art of cutting, slitting, etc. It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have incorporated an intermediary material layer comprising the thickness as taught by Miyawaki onto the anvil of Goodrich as by providing such a cover, the blade can clearly pass through the workpiece and penetrate the layer without contacting the anvil and thereby preventing damage to the blade and further with such an embodiment of cover poor cutting can be prevented due to resin material as taught by Miyawaki (Paras. 0008, 0011, 0028).
Regarding Claim 25, Goodrich, as modified, Miyawaki discloses the method as recited above wherein said intermediary material layer (130) is a plastic (see Para. 0008, 0010, 0028 disclose “PET resin”).
Regarding Claim 26, Goodrich, as modified, Miyawaki discloses said intermediary material layer (130) is attached to said anvil member (120) with an adhesive (Para. 0023).
Regarding Claims 27-31, Goodrich, as modified, Miyawaki discloses said intermediary material layer (130) is .1mm (about 4 mil) thick which falls between the claimed ranges.
Regarding Claim 32, Goodrich, as modified, Miyawaki discloses said intermediary material layer (130) is formed from a plastic material (see Para. 0008, 0010, 0028 disclose “PET resin”).
Regarding Claim 37, Goodrich, as modified, Miyawaki discloses said blades (8111; Figure 18 of Goodrich) align with respective grooves formed in the intermediary material layer (130 of Miyawaki) upon rotation of said rotary die member (8110 of Goodrich; note that when the blades penetrate the layer 130 as shown in Figure 6 of Miyawaki, the blades must be aligned, for at least a small period of contact time, with the formed grooves; note the alternative 103 rejection above).
Regarding Claim 38, Goodrich, as modified, Miyawaki discloses the step of removing and replacing the intermediary material layer (130 of Miyawaki) with a new intermediary material layer to re-set a relationship between the blades (8111 of Goodrich) and grooves created within the intermediary material layer (130 of Miyawaki; see Para. 0016 of Miyawaki which discloses replacing the cover and it is noted that when replaced, subsequent grooves will be created; note the alternative 103 rejection below).
Regarding Claim 39, Goodrich, as modified, Miyawaki discloses a method of
A) forming a male and female die pair (8108 including 8110, 8112; Figures 17-18) for making expandable slit sheet paper (2010) by:
providing a rotary first male die member (8110) having an array of blades (8111) for forming an array of slits (2014, 2016; Figure 19) within a paper sheet to form an expandable slit sheet paper (2010; Col 13, lines 53-61);
pressing said first male die member (8110) against a second member (8112; Col 13, lines 54-61 disclose a nip between the members to cause such interaction; further note the modification below in which the blades would readily press into an anvil cover), said second member (8112) having a rigid member (“hard anvil 8112”; Col 13, lines 60-61); and
B) using said male and female die member (8110, 8112) to form the array of slits (2014, 2016; Figure 19) within said paper sheet to form said expandable slit sheet paper (2010; Col 13, lines 53-61),
wherein said sheet of material (2010) is a recyclable paper sheet having a paper weight of between 25 pounds per 3,000 square feet and 70 pounds per 3,000 square feet (Col 4, lines 33-35 and Col 15, lines 25-31 disclose recycled paper comprising weights between 30-70 lbs/300ft sq.),
wherein said array of slits (2014, 2016) includes staggered rows of slits (as shown in Figure 19; Col 14, lines 55-57) that expand into generally hexagonal cells (2026; Figure 20) upon pulling of the recyclable paper sheet (2010) in a machine direction (Col 15, lines 1-13),
wherein each of said slits (2014, 2016) within said array of slits has a width of less than 0.6 inches and extends transverse to the machine direction (Col 10, lines 35-41 describes ½” slits which extend transverse to machine direction “B” and “C” as shown in Figure 20).
However, Goodrich does not disclose the second member (8112) having an intermediary material layer along a peripheral side of said rigid member (8112) facing said first die member (8110), such that said blades penetrate said intermediary material layer and create an array of corresponding female die holes, whereby the second member is formed to a female die member, and withdrawing said blades from said corresponding female die holes.
Attention is brought to Miyawaki which includes another die cutting system (100; Figure 1) including a die cylinder/first die member (110) comprising blades (113) and an anvil cylinder (120) wherein the anvil cylinder (120) comprises an anvil cover (130; see Figures 3-6) positioned on the anvil cylinder (120) and thereby forming an intermediary material layer (130), wherein the anvil cover/intermediary material layer (130) is comprised of a resin sheet (Para. 0022) comprising a thickness of .1mm (Para. 0027; .1mm is about 4 mil) such that the blade (113) of the die cylinder (110) penetrates the intermediary layer/anvil cover (130) but does not contact the anvil (120; Para. 0028), wherein the intermediary material layer (130) is along a peripheral side of the rigid anvil member (120) facing the first die member (110), such that blades (113) penetrate said intermediary material layer (130) and create an array of corresponding female die holes, whereby the second member is formed to a female die member (120, 130 form a female die member), and withdrawing said blades (113) from said corresponding female die holes (formed in 130; note Paras. 0027-0028 disclose the blades penetrating the cover and therefore holes would be readily formed in the material; note the alternative 103 rejection below in view of Maida).
Providing covers/blankets onto cylinders/rollers in cutting systems such that the blades/teeth can clearly pass through the workpiece has been well-known in the art of cutting, slitting, etc. It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have incorporated an intermediary material layer comprising the thickness as taught by Miyawaki onto the anvil of Goodrich as by providing such a cover, the blade can clearly pass through the workpiece without contacting the anvil and thereby preventing damage to the blade and further with such an embodiment of cover poor cutting can be prevented due to resin material as taught by Miyawaki (Paras. 0008, 0011, 0028).
Regarding Claim 41, Goodrich, as modified, discloses the expandable slit sheet paper (2010) includes an array of slits (2014, 2016) with a width of between about 0.2 to 0.45 inches direction (Col 10, lines 35-41 describes ½” slits which is about .45 in).
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Regarding Claim 42, Goodrich, as modified, discloses the expandable slit sheet paper (2010) includes an array of slits (2014, 2016) with a spacing between rows of slits of about 1/8 inch or less (Col 10, lines 35-41 discloses such spacing).
Regarding Claim 44, Goodrich, as modified, Miyawaki discloses that said holes of said female die holes (formed in 130) are formed such as to correspond substantially to the shape and size of the respective blades (blades 113; note that the holes that are formed will readily attain the shape and size of the blade given the non-elastic nature of the IM material 130 of Miyawaki per Para. 0028; further note the 103 rejection below in view of Maida).
Regarding Claim 45, Goodrich, as modified, Miyawaki disclose said intermediary material layer (130) plasticly deforms upon penetration of said blades (113) such that said holes of said female die holes are formed such as to correspond substantially to the shape and size of the respective blades (blades 113; note that the holes that are formed will readily attain the shape and size of the blade given the non-elastic nature of the IM material 130 of Miyawaki per Para. 0028; further note the 103 rejection below in view of Maida).
Regarding Claim 46, Goodrich, as modified, Miyawaki disclose the respective female die holes (formed in 130) formed within the intermediary material layer IM (130) have a width substantially corresponding to a width (BWm) of a corresponding blade upon penetration and withdrawal of the single respective blade B (blades 113; note that the holes that are formed will readily attain the shape and size of the blade given the non-elastic nature of the IM material 130 of Miyawaki per Para. 0028; further note the 103 rejection below in view of Maida).
Regarding Claim 47, Goodrich, as modified, discloses the recyclable paper sheet is a kraft paper sheet (Col 4, lines 33-35 and Col 15, lines 25-31).
Regarding Claim 48, Goodrich, as modified, discloses the recyclable paper sheet is a kraft paper sheet (Col 4, lines 33-35 and Col 15, lines 25-31).
Regarding Claim 49, Goodrich, as modified, Miyawaki discloses said blades (8111; Figure 18 of Goodrich) align with respective grooves formed in the intermediary material layer (130 of Miyawaki) upon rotation of said rotary die member (8110 of Goodrich; note that when the blades penetrate the layer 130 as shown in Figure 6 of Miyawaki, the blades must be aligned, for at least a small period of contact time, with the formed grooves; note the alternative 103 rejection below).
Regarding Claim 50, Goodrich, as modified, Miyawaki discloses the step of removing and replacing the intermediary material layer (130 of Miyawaki) with a new intermediary material layer to re-set a relationship between the blades (8111 of Goodrich) and grooves created within the intermediary material layer (130 of Miyawaki; see Para. 0016 of Miyawaki which discloses replacing the cover and it is noted that when replaced, subsequent grooves will be created; note the alternative 103 rejection below).
Claims 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Goodrich (US Patent 5,782,735), hereinafter referred to as Goodrich 5782’, in view of Miyawaki (JP 2019-150934A- see attached PDF for translation and Paragraph numbering of the translation), as applied to Claim 24, and in further view of Goodrich (US PGPUB 2016/0067938), hereinafter referred to as Goodrich 2016’.
Regarding Claim 34, Goodrich 5782’, as modified by Miyawaki, discloses several features of the claimed invention but fails to explicitly disclose said blades have a maximum width (BWm) at a location that penetrates a sheet of material of less than 40 mils.
Attention is brought to the teachings of Goodrich 2016’ which includes several different blade arrangements (Figures 15-18) that are utilized with cutting dies, wherein the width of the blades are at a maximum of 30 mils (see “width of knife .03” in Figure 15).
It would have been obvious to one of ordinary skill at the time the invention was effectively filed to have embodied the blades of Goodrich 5782’ to comprise the width of Goodrich 2016’ since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Further, note that dependent on the length of the slit desired, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have incorporated a blade width corresponding to the desired slit length.
Regarding Claims 35-36, Goodrich 5782’, as modified by Miyawaki, discloses several features of the claimed invention but fails to explicitly disclose the claimed blade configurations including (of Claim 35) blades have an angle alpha of less than 35 degrees, (Claim 36) said blades have a bevel on both sides of the blade.
Attention is brought to the teachings of Goodrich 2016’ which includes several different blade arrangements (Figures 15-18) including blades having an angle alpha of less than 35 degrees (see blade 1604 where blade 1602 comprises a 90° at “(E)” and 45° at “(B)” and therefore the angle of the blade 1604 since it is of a wider bevel will be less than 135°; see Para. 0132; further see Figure 15 and blades “1” through “5” which clearly comprise such angles), blades that have a bevel on both sides of the blade (1600, 1700, 1800), blades that have a bevel on only one side of the blade (1602, 1604, 1702, 1704), and blades that have a bevel angle theta of greater than 55 degrees (note “(C)” of blade 1604 is greater than the 45° of “(B)” in blade 1602; further see Figure 15 and blades “1” through “5” which clearly comprise such angles).
At the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have modified the blades of Goodrich 5782’ to comprise any of the blade configurations claimed and as taught by Goodrich 2016’ because Applicant has not disclosed that any specific blade configuration provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with blade arrangement (8111) of Goodrich 5782’ because the blade arrangement will readily produce an expandable slit sheet material.
Therefore, it would have been an obvious matter of design choice to modify Goodrich 5782’ to obtain the invention as specified in the claim and disclosed by Goodrich 2016’.
Further it is noted that Goodrich 2016’ outlines that dependent on the desired wedge effect and expansion, the configuration including the angles of the bevel is changed accordingly (see Para. 0128-0131). It would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to embody the blades of Goodrich 5782’ to comprise any of the blade configurations claimed and taught by Goodrich 2016’ , since it has been held that discovering an optimum value (i.e. angle values) of a result effective variable (result of expansion due to different slit configurations) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations. MPEP 2144.05 (II-B)
Claims 37-42, 44-46 and 48-50 are rejected under 35 U.S.C. 103 as being unpatentable over Goodrich (US Patent 5,782,735), in view of Miyawaki (JP 2019-150934A- see attached PDF for translation and Paragraph numbering of the translation), in further view of Maida (US Patent 5,647,257- cited in IDS).
Alternatively regarding Claims 37-38 and 49-50, assuming arguendo, in which the Examiner does not concede to, that the anvil cover (130) of Miyawaki, incorporated into Goodrich would not readily result in said blades aligning with respective grooves formed in the intermediary material layer upon rotation of said rotary die member and removing and replacing the intermediary material layer (130) with a new intermediary material layer (i.e. Para. 0016 of Miyawaki) would not re-set a relationship between the blades and grooves created within the intermediary material layer, attention can be brought to the teachings of Maida.
Maida teaches another method for making expandable sheet material (10; Figure 1) which includes operating a rotary die cutting assembly (50; Figures 6-8) comprising an upper rotary die member (52) and a lower rotary die member (54), wherein blades (56) of the upper rotary die member (52) align with respective grooves (54a) formed in a material (of 54) of the lower rotary die member (54) upon rotation of said upper and lower rotary die members (52, 54; Col 6, lines 27-33 and 46-52).
Further Maida teaches the lower rotary die member (54) includes an intermediate material layer/cover (Col 6, lines 34-43) which is removed and replaced with a new intermediary material layer (see Col 5, lines 48-50 which notes the removable cover) which re-sets a relationship between the blades (56) and grooves (54a) created within the intermediary material layer (of 54; Col 6, lines 27-33 and 46-52; note that when the “removable cover” is removed and replaced which can be at least implied during normal operation, the alignment will be reset when the blades 56 create the grooves 54a as disclosed in Col 6, lines 46-52).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have further modified the method of Goodrich such that the blades form and align with grooves in the intermediary layer (i.e. of Miyawaki) and such alignment can be reset when the layer is replaced as taught by Maida. By utilizing such a relationship between the blades and the grooves, there is no need to make preformed recesses/grooves and assemble the rotary die members such that the blades and grooves align as necessary at the desired times as taught by Maida (Col 6, lines 46-52).
Alternatively regarding Claim 39, assuming arguendo, that the anvil cover (130) of Miyawaki, incorporated into Goodrich would not readily form die holes as claimed, in which the examiner does not concede to, attention can be brought to Maida which includes another die cutting assembly (30; Figure 3) which includes an upper die member (34) and a lower die member (32) which includes a rigid member (platen 40) and an intermediary material layer (42) which is formed with an array of corresponding female die holes (32a) by blades (36) of the upper die member (34) to form a female die member (32; Col 4, lines 56-67). Maida further teaches a similar arrangement utilized in a rotary die cutting assembly (50; Figures 6-8) comprising an upper rotary die member (52) and a lower rotary die member (54) which comprises an intermediate material (cover per Col 6, lines 34-43), wherein blades (56) of the upper rotary die member (52) align with and form respective grooves (54a) formed in an intermediate material (of 54) of the lower rotary die member (54) upon rotation of said upper and lower rotary die members (52, 54; Col 6, lines 27-33 and 46-52).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have further modified the method of Goodrich such that the blades form holes in the intermediary layer (taught by Miyawaki) to form a female die member as taught by Maida as such a forming of the female die member would better facilitate movement of the blades completely through the workpiece as taught by Maida (Col 4, lines 44-52).
Regarding Claims 41-42 and 48, refer to the previous 103 rejection of Goodrich, in view of Miyawaki.
Regarding Claim 40, Goodrich, as modified, Maida discloses wherein said step of pressing is performed either
a) without a sheet of paper between said first male die member and said second member (32, 34) such as to be prior to forming of any expandable slit sheet paper, or
b) with a sheet of paper between said first male die member and said second member (32, 34) such as to concurrently form an initial expandable slit sheet paper with said sheet of paper concurrently with formation of the male and female die pair (32, 34) of said first male die member and said second female die member (Col 4, lines 56-67 discloses such formation may occur with or without a paper therebetween).
Regarding Claims 44-46, assuming the arguendo outlined above that Miyawaki would not readily disclose the formation of female die holes, given the formation of the holes (32a; Figure 3) of Maida (Col 4, lines 56-67), it can be at least implied that the dimensions of the recesses (32a) will readily resemble the dimensions of the blade.
Response to Arguments
Applicant's arguments filed 10/3/2025 have been fully considered but they are not persuasive.
In response to Applicant’s arguments on Page 9 of “REMARKS” that:
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Examiner respectfully asserts that the 102 and 103 rejections outlined above are all proper prior art rejections which render the claimed invention unpatentable.
Further, Examiner respectfully asserts that Goodrich clearly discloses expandable slit sheet paper as shown as “2010” in Figure 19 which is expanded in Figure 20 and as outlined in the rejections above. Further, as outlined above, Examiner respectfully asserts that the prior art references outlined above disclose and/or render obvious each claimed feature.
In response to Applicant’s arguments on Pages 9-11 of “REMARKS” that:
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Examiner respectfully asserts it has been held that one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references. In re Keller, 208 USPG 871 (CCPA 1981). See MPEP 2145 (IV). In this instance, Miyawaki is merely relied upon for teaching an intermediate layer on an anvil structure so that the blade can clearly pass through the workpiece and penetrate the layer without contacting the anvil and thereby preventing damage to the blade. The specific manner in which the cover of Miyawaki interacts with the blade thereof would not preclude on in possession of Goodrich from incorporating an intermediate layer in view of the teachings of Miyawaki that would function with the blades of Goodrich.
Further, it has been held that: 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). In this instance, Miyawaki is merely relied upon for teaching an intermediate layer on an anvil structure and it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have incorporated such a layer into Goodrich so that the blade can clearly pass through the workpiece and penetrate the layer without contacting the anvil and thereby preventing damage to the blade.
Further, it is noted Maida is incorporated in alternative rejections of Claims 37, 38, 39, and 48-50 to further address the limitations pertaining to the blades and alignment/formation of grooves/holes in the intermediate layer. In such rejection, Miyawaki is relied upon for the general teaching of the intermediate layer whereas Maida is relied upon for the teaching of forming the holes within an intermediate layer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See “Notice of References Cited”.
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 JOSHUA G KOTIS whose telephone number is (571)270-0165. The examiner can normally be reached Monday - Thursday 6am-430pm.
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/JOSHUA G KOTIS/Examiner, Art Unit 3731 10/30/2025