DETAILED ACTION
The communication dated 02/12/2026 has been entered and fully considered. Claims 1-8 are pending. Claims 1 and 7 are amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/12/2026 has been entered.
Response to Arguments
Applicant argues that prior art does not teach the amended claim 1 and 7 limitations making the claim and all dependent claims allowable.
Applicant’s arguments with respect to claim(s) 1 and 7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The Examiner notes that no new matter is added to the amended claims. HIRASAWA teaches a method of making toilet paper (tissue paper) [0095] with a softening agent that has an oil component [0174]. HIRASAWA also teaches the application of glue onto a glue roll (Yankee roll) [0194]. HIRASAWA does not teach the thickness of glue applied. GRIGORIEV teaches the application of adhesive to a Yankee roller and the creping of the adhesive with tissue [abstract]. GRIGORIEV further teaches an exemplary embodiment where the creping adhesive on the Yankee dryer has a thickness of 1 nanometers to 1000 micrometers [0044] (equivalent to 0.001 µm to 1000 µm). This range encompasses the range of the instant claim of “forming, on a surface of a Yankee dryer, a coating film having a thickness of 1µm to 3.5 µm by applying a glue onto the surface of the Yankee dryer” and “creping the tissue paper from the surface of the Yankee dryer”. GRIGORIEV further teaches the dimensions of the creping adhesive can be adjusted with the dimensions of the sensors of the Yankee can [0044]. GRIGORIEV teaches that adhesive formulations can improve the final product quality and papermaking process control [0006]. It would be obvious to one skilled in the arts at the time of invention to apply the known coating technique of GRIGORIEV to the known Yankee of HIRASAWA to produce an affective adhesive layer. One would be motivated to combine the art based on the improved final product quality and papermaking process control as taught by GRIGORIEV. See MPEP 2144.05(I).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). However, if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus. Id. See also In re Baird, 16 F.3d 380, 383, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (“[a] disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds.”); MPEP § 2144.08; and subsection III.D below for an additional discussion on consideration of prior art disclosures of a broad range.
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 1, 3-5, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over HIRASAWA (US 20130323453 A1) in view of LI (US 20110297343 A1), HISAMI (JP 2006044674 A ESPACENET Machine Translation), and GRIGORIEV (US 20130245158 A1).
For claim 1, HIRASAWA teaches a method of making toilet paper (tissue paper) [0095] with a softening agent that has an oil component [0174]. This teaches the limitation of “Tissue paper, comprising: a softener”. HIRASAWA further teaches the longitudinal direction tensile strength of 300 to 900cN/25mm [0152]. This teaches the limitation of “wherein the tissue paper has a dry tensile strength of 200 cN/25 mm or greater and 400 cN/25 mm or less in a longitudinal direction”. HIRASAWA further teaches the tissue is creped [0001]. This teaches the limitation of “; and creping the tissue paper on the Yankee dryer.”
HIRASAWA also teaches the application of glue onto a glue roll (Yankee roll) [0194]. HIRASAWA does not teach the amount of glue applied. LI teaches the production of tissue paper like HIRASAWA [0060]. LI also teaches the use of a glue as an adhesive layer applied by a roller press sizing or calendar sizing like HIRASAWA [0067]. LI teaches the glue is applied at a rate of 1 to about 20 kg/ton [0067]. This range encompasses the instant claim range of “and wherein the tissue paper is produced by: applying a glue onto a rotating Yankee dryer surface in an amount of 1 kg to 4 kg of glue per ton of the tissue paper” LI teaches the advantage of the invention is the reduced use of harmful chemicals in production [0020]. It would be obvious to one skilled at the time of invention to modify the art of the HIRASAWA with the glue application rate of LI to produce an effective tissue. One would be motivated to combine the art based on the added benefit of the reduction of harmful chemicals as taught by LI.
HIRASAWA does not teach the compressive ability of the paper. HIRASAWA teaches the basis weight of the sheet should be between 10 gsm and 25 gsm [0148]. HIRASAWA also notes that, “A basis weight less than 10 g/m.sup.2 is preferable from the viewpoint of improving the paper in softness but makes it difficult to provide a sufficient strength properly for practical use” [0148]. HISAMI teaches a similar paper with softener [0030]. HISAMI further teaches that a low basis weight is preferred but “a basis weight of 10 g/m (NER11) or less cannot provide sufficient cushioning” [0029] similar to what is taught by HIRASAWA. HISAMI also teaches the compression work of the paper is at least 0.15 J/m2 (equivalent to 150 mJ) [0009]. This range overlaps the range of the instant claim of “and the tissue paper has a spherical compression work of 300 mJ or lower”. This teaches the instant claim. See 2144.05(I). HISAMI teaches a soft material is preferred to provide a good cushion when compressed [0018]. It would be obvious to one skilled in the arts at the time of invention to modify the basis weight of HIRASAWA with the similar structure taught by HISAMI to produce a soft compressive ability. One would be motivated to combine the art based on the improved softness with compressive ability taught by HISAMI.
Regarding the film thickness, HIRASAWA teaches a method of making toilet paper (tissue paper) [0095] with a softening agent that has an oil component [0174]. HIRASAWA also teaches the application of glue onto a glue roll (Yankee roll) [0194]. HIRASAWA does not teach the thickness of glue applied. GRIGORIEV teaches the application of adhesive to a Yankee roller and the creping of the adhesive with tissue [abstract]. GRIGORIEV further teaches an exemplary embodiment where the creping adhesive on the Yankee dryer has a thickness of 1 nanometers to 1000 micrometers [0044] (equivalent to 0.001 µm to 1000 µm). This range encompasses the range of the instant claim of “forming, on a surface of a Yankee dryer, a coating film having a thickness of 1µm to 3.5 µm by applying a glue onto the surface of the Yankee dryer” and “creping the tissue paper from the surface of the Yankee dryer”. GRIGORIEV further teaches the dimensions of the creping adhesive can be adjusted with the dimensions of the sensors of the Yankee can [0044]. GRIGORIEV teaches that adhesive formulations can improve the final product quality and papermaking process control [0006] . It would be obvious to one skilled in the arts at the time of invention to apply the known coating technique of GRIGORIEV to the known Yankee of HIRASAWA to produce an affective adhesive layer. One would be motivated to combine the art based on the improved final product quality and papermaking process control as taught by GRIGORIEV. See MPEP 2144.05(I).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). However, if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus. Id. See also In re Baird, 16 F.3d 380, 383, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (“[a] disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds.”); MPEP § 2144.08; and subsection III.D below for an additional discussion on consideration of prior art disclosures of a broad range.
For claim 3, HIRASAWA, LI, HISAMI, and GRIGORIEV teach the tissue paper according to claim 1, as above. HISAMI teaches a compression test recovery rate of at least 50% [0016]. This range is within the range of the instant claim “the wherein the tissue paper has a proportional limit displacement rate of 40% or higher”.
For claim 4, HIRASAWA, LI, HISAMI, and GRIGORIEV teaches the tissue paper according to claim 1, as above. HISAMI teaches a compression test recovery rate of at least 50% [0016] at a load of 5kPa on a 2cm2 circular area (equivalent to 100cN) [0034]. The recovery rate is the amount height regained after compression relative to the height prior to compression [0009]. This means the permanent displacement of the sheet is 50% or less at the load of 100cN. This value would be expected to increase with load. One would expect the value to further increase within the range of the instant claim “wherein the tissue paper has a permanent displacement rate of 21% or higher at 150 cN”.
For claim 5, HIRASAWA, LI, HISAMI, and GRIGORIEV teach the tissue paper according to claim 1, as above. HISAMI teaches a compression test recovery rate of at least 50% [0016] at a load of 5kPa on a 2cm2 circular area (equivalent to 100cN) [0034]. The recovery rate is the amount height regained after compression relative to the height prior to compression [0009]. This means the permanent displacement of the sheet is 50% or less at the load of 100cN. This value would be expected to increase with load. One would expect the value to further increase within the range of the instant claim “wherein the tissue paper has a permanent displacement rate of 30% or higher and 60% or lower at 250 cN”.
For claim 7, HIRASAWA, LI, HISAMI, and GRIGORIEV teach a method to produce the tissue paper according to claim 1, as above. HIRASAWA teaches the production of the sheet starts with a pulp slurry, adding chemicals (softener), and depositing the materials onto a wire to form a wet paper web [0143]. This teaches the limitation of “A method for manufacturing the tissue paper of claim 1, the method comprising: a paper making step of performing papermaking using a pulp slurry to which the softener is added, to make a wet paper web”. HIRASAWA teaches a drying step with a Yankee dryer to dry the paper. This teaches the limitation of “a drying step of drying the wet paper web using a Yankee dryer, to make dry paper”. HIRASAWA further teaches the paper is peeled using a creping doctor blade [0144] and the addition of glue [0214]. This teaches the limitation of “and a peeling step of peeling the dry paper from the Yankee dryer using a creping doctor wherein a glue is applied on a surface of the Yankee dryer”.
HIRASAWA also teaches the application of glue onto a glue roll (Yankee roll) [0194]. HIRASAWA does not teach the amount of glue applied. LI teaches the production of tissue paper like HIRASAWA [0060]. LI also teaches the use of a glue as an adhesive layer applied by a roller press sizing or calendar sizing like HIRASAWA [0067]. LI teaches the glue is applied at a rate of 1 to about 20 kg/ton [0067]. This range encompasses the instant claim range of “and wherein the tissue paper is produced by: applying a glue onto a rotating Yankee dryer surface in an amount of 1 kg to 4 kg of glue per ton of the tissue paper” LI teaches the advantage of the invention is the reduced use of harmful chemicals in production [0020]. It would be obvious to one skilled at the time of invention to modify the art of the HIRASAWA with the glue application rate of LI to produce an effective tissue. One would be motivated to combine the art based on the added benefit of the reduction of harmful chemicals as taught by LI.
Regarding the film thickness, HIRASAWA teaches a method of making toilet paper (tissue paper) [0095] with a softening agent that has an oil component [0174]. HIRASAWA also teaches the application of glue onto a glue roll (Yankee roll) [0194]. HIRASAWA does not teach the thickness of glue applied. GRIGORIEV teaches the application of adhesive to a Yankee roller and the creping of the adhesive with tissue [abstract]. GRIGORIEV further teaches an exemplary embodiment where the creping adhesive on the Yankee dryer has a thickness of 1 nanometers to 1000 micrometers [0044] (equivalent to 0.001 µm to 1000 µm). This range encompasses the range of the instant claim of “forming, on a surface of a Yankee dryer, a coating film having a thickness of 1µm to 3.5 µm by applying a glue onto the surface of the Yankee dryer” and “creping the tissue paper from the surface of the Yankee dryer”. GRIGORIEV further teaches the dimensions of the creping adhesive can be adjusted with the dimensions of the sensors of the Yankee can [0044]. GRIGORIEV teaches that adhesive formulations can improve the final product quality and papermaking process control [0006] . It would be obvious to one skilled in the arts at the time of invention to apply the known coating technique of GRIGORIEV to the known Yankee of HIRASAWA to produce an affective adhesive layer. One would be motivated to combine the art based on the improved final product quality and papermaking process control as taught by GRIGORIEV. See MPEP 2144.05(I).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). However, if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus. Id. See also In re Baird, 16 F.3d 380, 383, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (“[a] disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds.”); MPEP § 2144.08; and subsection III.D below for an additional discussion on consideration of prior art disclosures of a broad range.
For claim 8, HIRASAWA, LI, HISAMI, and GRIGORIEV teach the tissue paper according to claim 7, as above. HIRASAWA teaches the addition of polyamide-based resin [0154] and can be applied to the wet paper [0160]. The examiner understands the addition of the same material meets the limitation of the instant claim regardless of the additive intended purpose. This teaches the limitation of “wherein the glue contains a polyamide-based resin”.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over HIRASAWA (US 20130323453 A1) in view of LI (US 20110297343 A1), HISAMI (JP 2006044674 A ESPACENET Machine Translation) and GRIGORIEV (US 20130245158 A1) as evidenced by NIHS (https://jpdb.nihs.go.jp/jp14e/14data/Part-II/Liquid_Paraffin.pdf).
For claim 2, HIRASAWA, LI, HISAMI, and GRIGORIEV teach the tissue paper according to claim 1, as above. HIRASAWA teaches the use of oily softeners [0174] to increase smoothness without much effect on strength when used in small amounts [0178] . HIRASAWA teaches the softener composition includes other functional chemicals [0171] that include an oily component [0174]. HIRASAWA also teaches the functional chemical is used at 0.01 to 22% [0171]. This range encompasses the instant claim. One would be motivated to optimize the range of oils used to balance strength retention and softness. This teaches the limitation of “wherein the softener contains an oil content by 0.1% by mass or Greater and 0.25% by mass or less in the softener”. HIRASAWA teaches the oily component used can be liquid paraffin [0174]. Paraffin is soluble in diethyl ether and can be extracted by it, as evidenced by NIHS (https://jpdb.nihs.go.jp/jp14e/14data/Part-II/Liquid_Paraffin.pdf). This teaches the limitation of “the oil content being extractable with diethyl ether”.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over HIRASAWA (US 20130323453 A1), LI (US 20110297343 A1), HISAMI (JP 2006044674 A ESPACENET Machine Translation) and GRIGORIEV (US 20130245158 A1) in view of WANG (US 20190136459 A1).
For claim 6, HIRASAWA, LI, HISAMI, and GRIGORIEV teach the tissue paper according to claim 1, as above. Though HIRASAWA teaches a soft sheet is preferred [0003], HIRASAWA does not teach the sheet roughness or relative peak to valley height. WANG teaches the production of a tissue [0001] with softeners [0052] like HIRASAWA. WANG further teaches the fibrous structure has a knuckle roughness of less than 5µm [0088]. Knuckle roughness is a measure of the average height difference between peaks [0040 and 0252] like the instant claim. This teaches the limitation of the instant claim of “wherein the tissue paper has an arithmetic mean height of 3 µm or greater and 7µm or less”. WANG further teaches the improved texture helps the softness and compressibility [0003]. It would be obvious to one skilled in the arts at the time of invention to modify the soft tissue of HIRASAWA with the surface texture of WANG. One would be motivated to combine the art based on the improved softness with compressive ability taught by WANG.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748