DETAILED ACTION
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 47, 52-54, and 77-81, are rejected under 35 U.S.C. 103 as being unpatentable over Goodrich et al. (US 5,667,871) in view of Shim (KR 20-0151350) (See NPL for English Translation).
In respect to claims 47 and 81, Goodrich et al. disclose an expandable slit sheet paper comprising: an expandable slit sheet paper (Fig. 6) that is configured to expand in thickness when stretched to form expanded cells (Fig. 3); said expandable slit sheet paper may be rolled into a generally cylindrical roll (Col. 4, 23-24); a width between 4 and 15.25 inches can be readily inferred by dimensions of the slits and slit spacing: the slit width may be 0.70” and the width of the lands (equivalent to slit spacing) may be 0.25” (for a hexagonal configuration); there may be 5 slits across a width portion and 7 slit spacings (6 with two additional ½ spacings on each end) (Col. 15, 24-28; Fig. 1), which amounts to a total width of 5 x 0.70” + 7 x .25” = 5.25”.
Goodrich et al. disclose that the expandable slit sheet papers may be arranged in a stack (Fig. 2), but do not disclose an apparatus for fixing the stack (e.g. to a vertical surface), however, Shim teaches a securement device comprising: a rigid fixture including a mounting plate 30 and a plurality of pins 20 extending from the mounting plate and a connector (e. nail) (Fig. 1) which allows the rigid fixture to attach to a support surface (Fig. 2); a similar stack of paper sheets 11 is provided which through-holes 13 proximate a first edge of the stack, being arranged to receive respective ones of the plurality of pins (Abstract; Fig. 1). It would have been obvious to provide the expandable slit sheet paper stack taught in Goodrich et al. with a securement device as taught by Shim to provide a means to securely hang the stack of detachable sheets for detachment (Abstract).
Although Goodrich et al. in view of Shim do not teach that the expandable slit sheet paper is “manually expandable without an expansion device by having a user manual [sic] grasp and pull a distal end of said expandable slit sheet paper”, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997). (MPEP 2114). The disclosed expandable slit sheet paper being held in the device taught in Goodrich et al. would behave in this fashion.
The product taught by Goodrich et al. in view of Shim is configured to be attached to a vertical or horizontal support surface (with the vertical surface being explicitly taught). With attachment to a vertical surface, a first side of the mounting plate faces the vertical surface with the plurality of pins 20 extending from the second (opposite) side outwardly away from the vertical surface (Fig. 2). In this configuration, the distal ends of the plurality of pins are configured to be freely exposed to receive the stack of slit sheet papers which the mounting plate connected to the vertical surface. The same product is configured to be connected to a horizontal surface as well (see structure vs. function case law, above).
In respect to claim 52, Goodrich et al. disclose 60# Kraft paper (Col. 2, 31).
In respect to claim 53, Goodrich et al. disclose a 0.50” slit, 0.1875” land length, and 0.125” row spacing width which are approximately 0.45”, 0.17”, and 0.11”, respectfully.
In respect to claim 54, Goodrich et al. disclose that the slits are “about one half inch long”, where “about” means a deviation below 0.5”.
In respect to claim 77-79, Shim further teaches that the connector is adjustable e.g. differential placement of a screw.
In respect to claim 80, Goodrich in view of Shim do not teach that securement device is made from metal, however, providing metal in lieu of plastic is obvious, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
In respect to the withdrawal of claims 82-84, withdrawn as being drawn to a non-elected invention via original presentation are “traversed”, however, there are no arguments presented. Thus, there is no persuasive argument against their withdrawal. Although newly cited Harris discloses these claims, however the first search was drawn only to the apparatus and not a method and/or combination of attaching the apparatus.
Applicant’s arguments with respect the claims have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
It is noted however that the arguments against Norris would be germane to the Harris rejection, namely “[Shim] is merely a structure for supporting detachable sheets of paper. In substantial contrast, the present invention is directed to a support structure for “expandable slit sheet paper”. In response to applicant's argument that “the presently claimed structure, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, the usage of a supporting structure is in itself obvious in the containment and dispensing of any stack of detachable sheets of paper i.e. to secure a pad of detachable sheets for easy detachment of the uppermost sheet. This teaching is independent of the nature of the detachable sheet itself. The realization that the securement may additionally be useful for the expansion of slit sheet paper, while attached to a support surface is “another advantage” that flows naturally from the teaching of Goodrich et al. in view of Shim, as a means to secure a stack of detachable sheets to a support surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637