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 .
This is the initial Office action based on application number 18/362492 filed July 31, 2023. Claims 1-18 are currently pending and have been considered below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: the adjustment device in claim 1 and the control device in claim 18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. A review of the specification has found that the adjustment device can correspond to an eccentric shaft, plunger or wedge (par. 47), however no discussion whatsoever of the structure of this control device.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 6-8, 10-11 and 17-18 are 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.
Claims 6-8, 10-11 and 17 all recite “preferred” ranges in the claims, which render the claim indefinite because it is not clear if the scope of the claims is reduced to the preferred ranges, or if those are simply optional limitations. See MPEP 2173.05(d). For the purposes of examination, the preferred ranges will be understood to be optional.
Claim 12 recites the limitation "the dry content of the paper or board" in claim 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 13 and 14 recite the limitation "the starch" in claim 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the angle α" in claim 1. There is insufficient antecedent basis for this limitation in the claim.
In claim 18, the claim limitation “control device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no discussion in the disclosure as filed whatsoever of any control device. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
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 1-8, 10 and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Davydenko et al. (US 2021/0189660) in view of Takahashi et al. (US 5,873,940).
Regarding claim 1: Davydenko et al. discloses a device for treating a paper web (13) using two curtain coating dies (1.1, 1.2) applying a treatment substance (2.1, 2.2) to two applicator rolls (7, 8) respectively which create a press nip (N) therebetween to coat respective sides of the paper web (13) with the treatment substance (2.1, 2.2) previously applied to the rolls (7, 8) via the curtain coating dies (1.1, 1.2), where different substances (2.1, 2.2) can be supplied to the dies (1.1, 1.2) depending on the current process (pars. 36-40, 44, figure 1). Davydenko et al. further discloses that it is known to adjust the slot width of the discharge nozzle of curtain coaters, in a range of 0.2 to 1.5mm (pars. 6-7), and that the applicator rolls (7, 8) can be controlled to enable a sump (par. 30), but does not explicitly disclose that the dies (1.1, 1.2) of its invention have a slot adjustment mechanism including an electrically and/or mechanically actuable adjusting device applied to the exit slot of the dies (1.1, 1.2) which controls the die width to be between 100 and 500 microns for a film mode or 0.5 to 2mm for a sump mode.
However, Takahashi et al. discloses a similar coating die (21) having an improved adjusting means (30, 50, 70) capable of mechanically, electrically, or pneumatically adjusting the slot width (D) of the outlet (4a) to values between 0.1 and 3 mm, or 100 microns to 3mm, in increments of a few microns (col. 4 lines 12-60, figures 1-3 and 5-6). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an adjusting means like that of Takahashi et al. for the dies (1.1, 1.2) of Davydenko et al. such they can operate in a thin film mode at the low end of the range (100 microns) or a sump mode at the high end of the range (2-3mm) because Takahashi et al. discloses that this is a much more precise mechanism for adjusting slot width as the adjustment means can be controlled over the entire length of the die (col. 2 lines 1-40).
Regarding claim 2: Davydenko et al. and Takahashi et al. disclose the above apparatus in which the slot adjustment means (30, 50, 70) can include a mechanically operated bolt (11) (Takahashi et al. figures 1-2) or an electrically actuated heater changing the size of the bolt (73) (Takahashi et al. col. 6 lines 28+, figure 6).
Regarding claim 3: Davydenko et al. discloses that the position of the dies (1.1, 1.2) can be changed in the X direction, relative to the rolls (7, 8) (par. 44, figure 1).
Regarding claim 4: Davydenko et al. discloses that the dies (1.1, 1.2) can be moved horizontally in the X direction but also vertically (par. 44) such that it is capable of maintaining the same curtain height in any mode (figure 1).
Regarding claim 5: Davydenko et al. discloses that at least one of the rolls (8) is a controlled deflection roll (par. 27) which is another way of saying deflection compensation roll (i.e., an S-roll).
Regarding claim 6: Davydenko et al. discloses that the rolls (7, 8) can have a diameter of between 400 and 1800mm (par. 46), encompassing the claimed range.
Regarding claim 7: Davydenko et al. discloses that both rolls (7, 8) have a coating cover with a hardness of less than 30 P&J (par. 40), and further discloses that rolls having a hardness of 1-5 P&J are also known to be used in this art (par. 20) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a roll coating cover with a hardness of 0 to 5 P&J because Davydenko et al. shows that this is a known result effective variable for the art (pars. 20-21) and routine optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Regarding claim 8: Davydenko et al. discloses that at least one of the rolls (8) is a controlled deflection roll (par. 27) which is another way of saying deflection compensation roll (i.e., an S-roll), and further discloses that both rolls (7, 8) have a coating cover with a hardness of less than 30 P&J (par. 40). Still further, Davydenko et al. discloses that rolls having a hardness of 1-5 P&J are also known to be used in this art (par. 20) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a roll coating cover with a hardness of 5 to 30 P&J because Davydenko et al. shows that this is a known result effective variable for the art (pars. 20-21, 28) and routine optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Regarding claim 10: Davydenko et al. discloses that the line load of the nip (N) can be between 20kN/m and 200kN/m (par. 40).
Regarding claim 12: Davydenko et al. fails to explicitly disclose the dry content of the paper web (13). However, limitations regarding the material being worked on by an apparatus do not impart patentability to the apparatus claim (MPEP 2115). In the instant case, the apparatus of Davydenko et al. is capable of using a web (13) of paper with dry content of more than 90%.
Regarding claim 13: Davydenko et al. discloses that the treatment substance (2.1, 2.2) is a starch and has a volumetric flow in the range of 4 l/(min*m) to 30 l/(min*m), overlapping the claimed ranges for both modes (par. 42).
Regarding claim 14: Davydenko et al. discloses that the starch substance (2.1, 2.2) is discharged from the dies (1.1, 1.2) having a solids content of between 10% and 40%, overlapping the claimed ranges for both modes (par. 37). Further, Davydenko et al. discloses that different layers can be controlled to have different solids content (par. 47) such that different starches having different solids content are used for different modes.
Regarding claim 15: Davydenko et al. discloses that the starch substance (2.1, 2.2) has a viscosity of between 20 to 500 mPa s (par. 42).
Regarding claim 16: Davydenko et al. discloses that the starch substance (2.1, 2.2) has a temperature between 55 and 99 degrees Celsius (par. 42).
Regarding claim 17: Davydenko et al. discloses that the angle of impingement of the curtains (2.1, 2.2) in any mode can be anywhere between -90 degrees and 45 degrees from vertical (par. 41, figure 1).
Regarding claim 18: Davydenko et al. and Takahashi et al. disclose that the position of the slot outlet (4a) is controlled via the adjusting means (30, 50, 70), actuated by additional control means such as wrench or electrical heater (Takahashi et al. figures 1, 6), and that the die heads (1.1, 1.2) can be moved horizontally and vertically by means (Davydenko et al. par. 44) which would be a control device. Davydenko et al. and Takahashi et al. fail to explicitly disclose that these actuators are controlled by the same control device, but it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to integrate all of the various actuators in order to automate the process because integration of parts and automation of an otherwise manual activity are not considered to be patentable advances (MPEP 2144.04).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Davydenko et al. and Takahashi et al. as applied to claims 1-8, 10 and 12-18 above and further in view of Justus (US 3,080,847).
Regarding claim 9: Davydenko et al. discloses a pair of collecting troughs (9.1, 9.2) which have a funnel shape (par. 46, figure 1), but fails to provide any specific details about the troughs beyond the location shown in the drawings, and therefore fails to explicitly disclose that they are formed laterally of the nip. However, Justus discloses a similar web coating apparatus having two opposing overflow troughs (82) which can be described as funnels, the troughs (82) being arranged laterally of the treatment nip N2 on either end thereof (col. 4, lines 42-52, figures 1-2). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use overflow troughs arranged laterally from the nip as taught by Justus for the apparatus of Davydenko et al. because Justus teaches that material from the nip will occasionally overflow regardless, and this allows one to catch and reuse that material (col. 4 lines 42-52).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Davydenko et al. and Takahashi et al. as applied to claims 1-8, 10 and 12-18 above and further in view of Huovila (WO 9837275).
Regarding claim 11: Davydenko et al. discloses that high web speed is desirable (par. 3) but fails to explicitly disclose any ranges for web speed. However, Huovila discloses a similar web coating apparatus using a pond (7) (which is a sump) of treatment fluid at a nip between rollers (1, 2), and teaches that the web speed for such an apparatus can be between 300-2500 m/min, further defining the range as between 400 to 1000 m/min for a board and 900 and 2200 m/min for a paper web (page 11, figure 1). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a web speed like that of Huovila or even optimize it further to be between 250 and 2000 m/min because Huovila teaches that this web speed is a result effective variable which is determined by things like pond size and vibrations in the pond liquid (page 2), and routine optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN A KITT whose telephone number is (571)270-7681. The examiner can normally be reached M-F 9am-5pm.
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/S.A.K/
Stephen KittExaminer, Art Unit 1717
3/19/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717