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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 10, 2026 has been entered.
Response to Amendment
Applicant’s amendment to the claims filed April 10, 2026 has been entered. Claim 1 is currently amended. Claims 14 and 15 remain withdrawn from further consideration. Claims 1-13 are under examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 12, the claim recites a range for “the tolerance amount”. In view of the current amendment to claim 1, it is unclear what the range is now actually signifying and how it connects with what is set forth in claim 1. It appears clear in claim 1 that when the temperature is “outside a predefined tolerance amount” the now recited “slip/stick effect occurs” to such an extent that this produces a “wavy form” in the extruded sheet such that the sheet needs to be “discharged as scrap”. From this starting point in claim 1, it is not clear whether the values within the range set forth in claim 12 are defining a temperature difference range wherein the product is scrap or a temperature difference range wherein the product is not scrap.
If the recited temperature difference range is describing a range where the product is scrap when the temperature difference is within the recited range, it is unclear why a temperature above the upper limit of the recited range would not also be scrap. For example, if a scrap causing slip/stick effect occurs when the temperature deviates by 10 K, it seems that such an effect would also occur at values above 10 K. Said differently, if a deviation of 10 K is problematic, it also seems that a larger deviation would be problematic.
In the other scenario, if the recited temperature difference range is describing a range where the product is not scrap when the temperature difference it is within the recited range, it is unclear why a temperature below the lower limit of the recited range would not also be acceptable (not scrap) material. For example, if a scrap causing slip/stick effect does not occur at 0.5 K or 1 K, it seems that a smaller temperature deviation would also produce an acceptable/prime (not scrap) material. Said differently, if 0.5 K or 1 K is not problematic, it also seems that a smaller deviation would not be problematic.
Based on these questions, it is unclear how the recited range is to be understood in the claim. Appropriate correction and clarification are required.
It is further noted that the instant specification appears to teach that any temperature deviation from the setpoint/nominal temperature creates some slip/stick effect and that any slip/stick effect other than that produced at the setpoint temperature is shorter or longer “than intended” and that this creates, to some extent, a difference in waviness/”wavy form” in the product from the setpoint waviness/tolerable waviness. From this, the slip/stick effect is understood by the examiner in view of the specification (e.g. paragraphs [0012] and [0034] of the published application) to be an intrinsic property that results from the recited temperature difference absent further specificity and resolution of this question regarding temperature tolerance.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Morino (JP 2020093404) in view of McGee et al. (GB 2282985) and either one of Kumar et al. (US 2018/0243800) or Kumar et al. (US 2019/0247891).
Regarding claim 1, Morino teaches and suggests a method of separating scrap produced during the manufacture of polymeric sheets, which would be suitable for covering a surface of a room (Figure 1 (G) (GS); paragraphs [0002], [0003]), in which a polymeric material is fed to a calender comprising a plurality of temperature-controlled calender rollers (paragraphs [0020]-[0027]; paragraphs [0002], [0022], [0023] – “polymeric materials such as rubber materials and plastic materials”); an actual temperature of at least one calender roller is measured, the actual temperature is compared with a nominal temperature provided for this calender roller (paragraphs [0028]-[0039]; Figure 2 – showing variation around a desired/suitable/nominal temperature; Figure 1 (12)) (14)); and in the case that a difference between the actual temperature and the nominal temperature is outside a predefined tolerance amount, a part of a, which can be particular endless, semi-finished product exiting the calender is discharged as scrap (paragraphs [0009]-[0011], [0014], [0016], [0017], [0018], [0034], [0037], [0059], [0061]; Figure 2 – showing an abnormality outside of an acceptable tolerance; e.g. “0.2°C or more” – paragraph [0037]; Figure 2 – showing a peak increase of about 0.5°C to 98.8 °C above the previous average temperature of about 98.3 °C during the 0-1 second window and a peak decrease of about 0.7°C to 97.6 °C below the previous average temperature of about 98.3 °C).
Morino teaches that the purpose of the process is to use direct/actual measurements of the temperatures of the calendering rolls and to control those temperatures or maintain those within a suitable range (i.e. nominal temperatures) to suppress variation in product thickness (paragraphs [0002], [0003], [0033], [0034], [0036] and [0037]) because it is recognized that excessive or out of control surface temperatures result in undesired sheet thickness variation (paragraphs [0006]-[0009], [0036[ and [0037]). While Morino is understandably interested in keeping temperature variation low so that good product having a desired and uniform thickness is maintained (paragraph [0039]), it is also clear in Morino that an “anomalous temperature increase’ (paragraph [0037]) may result in the opposite of “stable production of high-quality sheets with reduced thickness variation” (paragraph [0041]). “When a peak due to an unusual temperature rise is confirmed…it is determined that there is an abnormality” (paragraph [0059]) and normal operation of the process is stopped or adjusted until the abnormality is resolved. It is clear from the teaching of Morino that if the temperature increase/variation is larger than a recognized acceptable amount of temperature increase/variation, that the quality of the product is in jeopardy (smaller temperature increase/variations) or has already been compromised (larger temperature increases/variations) such that the product is no longer within specification (paragraphs [0036], [0037], [0039], [0041] and [0059]).
While Morino teaches the material is provided as a polymeric material in sheet form (paragraphs [0002], [0003], [0022] and [0041]; Figure 1 (G) (GS)), Morino does not explicitly teach how this polymeric material is provided.
However, McGee et al. teach an analogous method that includes calendering a polymeric sheet material wherein the material fed to the calender is provided as an extrudate of an extruder (Abstract; page 1, line 11-page 2, line 10; Figure 1).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Morino and McGee et al. and to have extruded the polymeric material to form an extrudate ready to be fed to the calender in the method of Morino, as suggested by McGee et al., for the purpose, as suggested by McGee et al. of providing a sheet form material to the calender in an art recognized suitable and continuous manner.
Morino et al. do not explicitly teach tracking the material after it has experienced a temperature abnormality based on the product’s conveying speed through the process so that the appropriate material can be separated by a separating device when the material reaches the separating location. However, each of Kumar et al. ‘800 (paragraphs [0056], [0063], [0081], [0098], [0101], and [0111]; Figure 1 (105)) and Kumar et al. ‘891 (Figure 1 (105); Figure 2; paragraph [0053]) teach analogous methods wherein material that has been identified as being scrap (e.g. corresponding to an abnormality) is tracked based on the product’s conveying speed through the process so that the material can be separated by a separating device when the material reaches the separating location.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Morino et al. and either one of Kumar et al. ‘800 or Kumar et al. ‘891 to have tracked the material after it has experienced a temperature abnormality based on the product’s conveying speed through the process so that the material can be separated by a separating device when the material reaches the separating location as claimed in the method of Morino et al., as suggested by either one of Kumar et al. ‘800 or Kumar et al. ‘891, for the purpose, as suggested by the references, of effectively removing the material that has experienced the temperature abnormality and therefore no longer has desired sheet properties while not removing material that still has desired sheet properties and while facilitating removal of the abnormal material at a suitable location along the processing direction.
Having identified the material as being off-spec/scrap based on the direct temperature reading, one having ordinary skill in the art would have recognized that only the off-spec/scrap material would need to be removed/separated and that utilizing line speed or system residence time or tracking the feed front of the material would be a straightforward manner of keeping tabs on it so that it could be effectively segregated at an appropriate time/location along the production line. While this determination is reasonably understood to be a routine expedient in view of the teaching of Morino et al. alone, each of Kumar et al. ‘800 and Kumar et al. 891 further flesh out the idea and one having ordinary skill in the art would have had a reasonable expectation of success when attempting to incorporate the relied upon teaching of the Kumar et al. references in the method of Morino et al.
As to claim 2, Morino teach and suggest not processing the material normally after a temperature abnormality has been detected, including not continuing to process the material in the process (paragraphs [0059] and [0061]), but do not teach operating a smoothing unit as claimed. However, McGee et al. further teach an additional roll (9) can be utilized in the process to facilitate production of the sheet and a conveyor for transporting the calendered sheet is utilized and that the sheet is then provided with a plastic film (page 1, line 1-page 3, line 15; page 9, lines 18-32; Figure 1; Figure 7; Figure 8 (93) (94) (95) (96) – the rolls utilized to apply the film are understood to be a smoothing unit).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Morino and McGee et al. and to have further processed the material of Morino with the downstream equipment of McGee et al., for the purpose, as suggested by the references, of producing a suitable sheet material having dimensions and properties for a desired application. In the combination, it is further suggested that any low-quality material of Morino would no longer be processed in the same manner as the high-quality product once a temperature abnormality or adhesion abnormality has been detected (paragraphs [0059] and [0061]) in the calendering rolls (e.g. the rolls of Morino generally correspond with rolls (7) and (8) in McGee et al.) This suggests not smoothing the material with the additional rollers shown in Figure 7 and 8 of McGee et al., because one having ordinary skill in the art would have found it prima facie obvious to not apply an additional film to the surface of a known scrap/waste sheet material due to the extra cost required for no additional gain. With the teaching of Morino, the sheet is recognized as scrap before reaching the film application unit suggested by McGee et al. and one having ordinary skill equipped with this knowledge would not waste the film by applying it to a known scrap sheet.
As to claim 3, Morino teaches that the identification can take place exclusively on the basis of the measured actual temperature of the calender roll (paragraphs [0028]-[0041]; Figure 1 (12); paragraph [0062] – adhesion detection with sensor (24) is not required).
As to claims 4-8, McGee et al. further teach cutting/separating the endless product (page 2, lines 5-9), edge cutting the product (page 2, lines 5-9; Figure 10), and recycling/crushing/grinding the material as claimed (page 8, line 17-page 9, line 17; page 10, line 28-page 11, line 11).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Morino and McGee et al. and to have performed the additional processing steps as claimed on the material of Morino, as suggested by McGee et al. for the purpose, as suggested by McGee et al. of providing a product having a size and dimension suitable for an intended use and to recover he scrap material for future use. In the combination, each and every limitation of the claimed invention is taught or suggested. Tracking the location of the identified scrap material of Morino in the process is understood to be a routine expedient.
As to claim 9, Morino teaches the temperature is determined at an outer side of the roller (Figure 1 (12)).
As to claims 10-12, Morino teaches and suggests several measuring points and measuring of multiple rollers (paragraphs [0009], [0010], [0011], [0014], [0016], [0017], [0020]-[0041], [0054]). Further, duplicating the measurement either for redundancy or to measure the temperature of more locations of the roll(s), would have been prima facie obvious in order to have more reliable information and/or to identify variations at other locations of the roll(s).
As to claim 13, Morino suggest and render prima facie obvious cooling as claimed (Figure 1 (GS); paragraph [0022]).
Response to Arguments
Applicant’s arguments filed April 10, 2026 have been fully considered, but they are not persuasive. Applicant argues that Morino is directed to “a straightforward thermal effect” with the goal of “the suppression of thickness variation by maintaining roller temperatures within a defined range” rather than “a qualitatively different physical phenomenon: unplanned slip/stick effects caused by temperature deviation outside the tolerance amount”. This argument is not persuasive.
Generally, the examiner agrees that Morino as set forth in the combination performs their method to suppress thickness variation and does not explicitly discuss the slip/stick phenomenon. As such, it may be argued that the combination of prior art references is performing the same claimed and disclosed steps on the same claimed and disclosed materials for a different stated reason than applicant. However, the fact that the inventors have 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.
As an initial matter, paragraph [0012] of the published application states that “waviness of the semi-finished product can be traced back to the actual temperature of the calender rolls deviating from a certain nominal temperature”. In the instant application, this waviness is defined as happening when there is a temperature deviation from the setpoint by even relatively small amounts (e.g. paragraph [0034]; see section 112b rejection above). Since claim 12 necessarily further limits claim 1, this means that the temperature deviation at which the “waviness” intrinsically happens in claim 1 is at an even lower temperature deviation than that which has been set forth in claim 12. Since, Morino sets forth a temperature deviation of “0.2°C or more” in paragraph [0037] and illustrates temperature deviations of about 0.5 °C above the average temperature at the upper peak and temperature deviations of about 0.7 °C below the average temperature at the lower peak (Figure 2 – showing a peak increase of about 0.5 °C to 98.8 °C above the previous average temperature of about 98.3 °C during the 0-1 second window and a peak decrease of about 0.7 °C to 97.6 °C below the previous average temperature of about 98.3 °C), it follows from a technical and rational basis that the same claimed effects (“a slip/stick effect” as claimed which produces “a wavy form” to the required extent) would result from the same claimed temperature deviation because the same temperature deviation occurs.
The examiner agrees that Morino explicitly discusses thickness variation/producing a uniform thickness and does not explicitly discuss “slip/stick” effects as argued. However, the combination of references performs the same claimed and disclosed process steps on the same claimed and disclosed materials and the process in the combination experiences the same claimed and disclosed temperature deviation outside the same claimed and disclosed “predefined tolerance amount”. It therefore follows that the same claimed effects and physical properties would be produced (“a slip/stick effect” that produces “a wavy form”) to the required extent set forth in the claims.
While the combination of prior art references may be performing the same claimed and disclosed steps on the same claimed and disclosed materials for a different reason than applicant, 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).
As to the argument that the secondary references do not supply the missing limitations directed to the “slip/stick effect” and therefore do not remedy the deficiencies of Morino. The examiner submits Morino is not deficient as argued for the reasons set forth above.
As such, it is submitted claim 1 would need to be further amended to overcome the prima facie case of obviousness. Similarly, it is submitted that claim 12 would need to be further amended to overcome the section 112b rejection.
As to the argument regarding the rejection of claim 2, applicant argues that the laminating rolls in McGee are different than a “smoothing unit” because the purpose is to provide an additional film to the surface with heat and pressure instead of geometrically smoothing the sheet surface itself. This argument is not persuasive. The sheet is exposed to heat and pressure during the lamination with the rollers set forth in the applied prior art. This is capable of smoothing the sheet to the extent required by the claim and the rollers are reasonably understood to be “a smoothing unit” absent further specificity in the language of the claim itself. Similarly, the argument that the smoothing unit “operates immediately downstream of the calender” is not a limitation set forth in the claim. It is not proper for the examiner to read limitations from the specification into the claim (see MPEP 2111 and 2111.01 II – “It is improper to import claim limitations from the specification”). As such, the rolls in Figures 7 and 8 as set forth in the rejection are still reasonably understood to form a smoothing unit. Further, it is not clear that there are any steps that occur after calendaring and prior to laminating in Figures 7 and 8. As such, these are also reasonably understood to be immediately downstream absent further evidence to the contrary or persuasive arguments. Further still, roll (9) (Figure 1) is also cited in the rejection and this roll is immediately downstream of the calender formed by rolls (7) and (8). For each of these reasons, it is submitted the claim would need to be further amended to overcome the prima facie case of obviousness.
As to the teaching of the Kumar references, applicant argues the references are directed to detecting individual objects that are tracked as a function of conveyor speed instead of tracking the speed of a continuous endless profile and this requires different knowledge of conveying speed and distance traveled. Related, applicant argues against the examiner’s usage of the word “routine expedient” and argues that what is claimed amounts to a “fundamentally different algorithmic approach, tailored to the unique characteristics of a continuous extrusion and calendaring line”. This argument is not persuasive.
The Kumar references track the scrap material that has been previously identified based on the conveying speed through the process. This provides a teaching and suggestion to one having ordinary skill in the art to track the location of identified scrap based on the conveying speed of the material through the process. From this suggestion, it follows that one would have fount it prima facie obvious to adapt it to a continuous process (e.g. a sheet process) from a discrete/batch/non-continuous process. Converting batch processing steps into continuous processing steps generally only requires ordinary skill in the art (see MPEP 2144.04 V E – “Making continuous”). In this case, the idea of tracking the identified scrap material through the process until reaching a convenient separating location is suggested by the prior art and applying this suggestion to a continuous process, such as that set forth in Morino does not appear to require an inventive step. The suggestion is to track the location of the scrap based upon the line speed of the process. Tracking the line speed in a continuous process generally corresponds with the approach of tracking the line speed of a conveyor (e.g. encoders, speeds of rotation, etc). Further, as one having ordinary skill in the art would recognize, tracking the line speed in a continuous process is routine (e.g. for tracking production rates, matching equipment/unit operations, etc.). The suggestion provided by Kumar is to take tracked line speed and use it to track the location of the scrap material for separation. The teaching of Kumar is understood to be applicable. In combination with Morino, the argued limitation is understood to remain prima facie obvious.
As to the argument that there is no motivation to combine the references to arrive at the claimed invention based on the “specific causal mechanism – slip/stick-induced waviness – that is absent from all cited references”, the examiner points to the previous discussion. While it is true that the “specific causal mechanism” is not explicitly discussed in the applied art, the rejection is understood to remain proper for the reasons set forth above. Further, it is noted that a proper rejection does not need to address the same technical problem for the reasons set forth above. Absent further specificity, it is submitted claim 1 would need to be further amended to overcome the prima facie case of obviousness. Similarly, it is submitted that claim 12 would need to be further amended to overcome the section 112b rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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