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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-7, and 10-24 are rejected under 35 U.S.C. 103 as being unpatentable over SCA (DE 202007006100) as evidenced by Hannecard (Hardness Specifications for Roller Covering. Published April 2020.)
SCA teaches a marriage roller (5) comprising: a core (5c), an intermediate layer (5b) mounted on the core, and an outer layer (5a) positioned about the intermediate layer and defining an outer surface of the marriage roller, wherein the outer layer has a higher hardness than the intermediate layer, and wherein the outer layer and the intermediate layer are formed from rubber (See Figures; [0008]; [0029]; [0038]). The marriage roller reads on the instantly claimed process roller. The intermediate layer and outer layer read on the instantly claimed inner ring and outer ring, respectively, such that they collectively form a roller cover structure as claimed. The marriage roller rotates about the inner core as the outer layer mates with an embossing roller (1a) such that two paper webs (10,20) are brought together in a nip between the marriage roller and the embossing roller (See Fig. 1; [0051]-[0054]). The embossing roller and paper webs read on the instantly claimed mating roller and at least one fibrous structure, respectively.
Regarding the P&J hardness ratio between the intermediate layer and the outer layer, SCA teaches an embodiment in which the outer layer has a Shore A hardness of 95 and the intermediate layer has a shore A hardness of 75 (See [0053]). Hannecard provides a chart which compares Shore A values and P&J values. Shore A hardness of 95 corresponds to a P&J hardness of 10-15, and Shore A hardness of 75 corresponds to a P&J hardness of 60-65. These values satisfy the instantly claimed relationship.
Examiner notes that the earliest date associated with the Hannecard references is 04/21/2020, which does not antedate the effective filing date of the instant application. In certain circumstances, references cited to show a universal fact, such as the characteristics and properties of a material or a scientific truism, need not be available as prior art before the effective filing date of applicant’s claimed invention (See MPEP 2124). The hardness scales of Hannecard show relative hardness values of different scales, which are scientific values that do not change with time.
Regarding the thickness ratio between the intermediate layer and the outer layer, SCA discloses that the thickness of the outer layer and the intermediate layer may each lie in the range of 3 to 30 mm (See [0037]). Within this range, there are many values which satisfy the instantly claimed relationships. Since the claimed ranges substantially overlap those claimed, a prima facie case of obviousness exists.
Regarding the limitation “wherein the P&J hardness ratio and the thickness ratio are selected to increase a width of the nip, wherein the width of the nip is measured based on a constant force of 1500 lbf applied for one second to the process roller,” the motivation for selecting particular materials and dimensions for the roller and the conditions under which a particular dimension of the roller is measured are immaterial to the structure of the roller itself. Since the roller structure is taught by SCA, the claim is met regardless of the particular reasoning for selecting roller materials/dimensions and the conditions under which such dimensions are measured.
Regarding claims 2-3, SCA discloses synthetic rubber such as nitrile rubber (NBR) for the intermediate layer and outer layer (See [0038]-[0039]).
Regarding claim 5, SCA teaches an embodiment in which the outer layer has a Shore A hardness of 95 and the intermediate layer has a shore A hardness of 75 (See [0053]), both of which are less than 80 shore D hardness (See Table of Hannecard).
Regarding claims 6 and 7, the embodiment described in paragraph [0053] meets the claimed P&J hardness ranges claimed, as detailed above.
Claim 10 recites the process roller of claim 1, which is taught by SCA for the same reasons detailed above. Examiner notes that the hardness and thickness relationships are similar to claim 1 but recited more broadly in claim 10. Therefore the relationships above with respect to claim 1 also meet claim 10. Claim 10 also recites a mating roller or belt which forms a nip with the process roller. The embossing roller (1a) of SCA reads on the instantly claimed mating roller.
Regarding the limitation “…so to increase the width of the nip, wherein the width of the nip is measured based on a constant force of 1500 lbf applied for one second to the process roller,” the invention of SCA includes a roller having the same structure as the claimed roller using identical materials and performing the same function. The motivation for selecting particular materials and dimensions for the roller and the conditions under which a particular dimension of the roller is measured are immaterial to the structure of the roller itself. Since the roller structure is taught by SCA, the claim is met regardless of the particular reasoning for selecting roller materials/dimensions and the conditions under which such dimensions are measured.
Regarding claim 11, SCA discloses synthetic rubber such as nitrile rubber (NBR) for the intermediate layer and outer layer (See [0038]-[0039]).
Regarding claims 12-13, SCA teaches an embodiment in which the outer layer has a Shore A hardness of 95 and the intermediate layer has a shore A hardness of 75 (See [0053]). Hannecard provides a chart which compares Shore A values and P&J values. Shore A hardness of 95 corresponds to a P&J hardness of 10-15, and Shore A hardness of 75 corresponds to a P&J hardness of 60-65. These values satisfy the relationship in claim 12 and the specific hardness values in claim 13.
Regarding claim 14, the invention of SCA includes a roller having the same structure as the claimed roller using identical materials and performing the same function. Absent any evidence to the contrary, it is reasonable to conclude that the roller of SCA would perform in an identical manner to the claimed roller since they are made of the same materials, have the same structure, and are utilized in the same process.
Regarding claim 15, SCA teaches a method comprising: providing the embossing roller, providing the marriage roller such that it forms the nip with the embossing roller, the marriage roller including the same structure detailed above with respect to claims 1 and 10, applying adhesive to the paper webs, and passing the paper webs through the nip so as to press the paper webs together (See Fig. 1; [0046]-[0047]; [0053]-[0054]; [0060]).
Regarding claim 16, the invention of SCA includes a marriage roller having the same structure as the claimed process roller using identical materials and performing the same function. It is reasonable to conclude that the roller of SCA would deform in substantially the same manner as the claimed roller since they are made of the same materials, have the same structure, and are utilized in the same process.
Regarding claim 17, SCA discloses synthetic rubber such as nitrile rubber (NBR) for the intermediate layer and outer layer (See [0038]-[0039]).
Regarding claims 18-20, SCA teaches an embodiment in which the outer layer has a Shore A hardness of 95 and the intermediate layer has a shore A hardness of 75 (See [0053]). Hannecard provides a chart which compares Shore A values and P&J values. Shore A hardness of 95 corresponds to a P&J hardness of 10-15, and Shore A hardness of 75 corresponds to a P&J hardness of 60-65. These values satisfy all ranges and ratios recited in claims 18-20.
Regarding claim 21, the invention of SCA includes a marriage roller having the same structure as the claimed process roller using identical materials and performing the same function. It is reasonable to conclude that the roller of SCA would deform and conform in substantially the same manner as the claimed roller during operation since they are made of the same materials, have the same structure, and are utilized in the same process.
Regarding claim 22, the roller of SCA would perform in an identical manner to the claimed roller since they are made of the same materials, have the same structure, and are utilized in the same process, as detailed above. Any deformation and corresponding increase in nip width necessarily increases the amount of time that the paper webs are pressed within the nip, since the paper webs must travel the full width of the nip during pressing.
Regarding claim 23, SCA teaches increasing machine speeds (See [0006]; [0057]).
Regarding claim 24, SCA teaches an embodiment in which the outer layer has a Shore A hardness of 95 and the intermediate layer has a shore A hardness of 75 (See [0053]). Hannecard provides a chart which compares Shore A values and P&J values. Shore A hardness of 95 corresponds to a P&J hardness of 10-15, and Shore A hardness of 75 corresponds to a P&J hardness of 60-65. Values within these ranges provide a ratio between 4:1 and 6:1, which substantially overlaps the instantly claimed range. In cases where the claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists.
Response to Arguments
Applicant's additional arguments filed 01/07/2026 have been fully considered but are not persuasive.
Applicant argues that the SCA reference provides the instantly claimed roller structure to remedy undesirable effects stemming from relatively soft marriage rollers and/or large embossing nips. Applicant attempts to distinguish the instantly claimed invention from that of SCA by stating that the instantly claimed roller is provided with the same structure not to decrease nip width, but rather to increase the nip width, which is the exact opposite of the SCA reference. This argument is not persuasive because any change in nip width—whether an increase or a decrease—requires that there be some initial nip width as basis for comparison. Therefore a pressing roller may increase a nip width in the manner of the instantly claimed invention when compared with a relatively rigid roller that does not easily deform, while the same identical pressing roller may decrease a nip width when compared to a relative soft roller that deforms more easily. The difference lies not in the pressing roller itself, but only in the roller to which it is compared. So while the effects on nip width are opposite, there is no difference in the structure of the pressing roller itself. Applicant has not shown that there is any material difference between the roller of SCA and the instantly claimed roller. Applicant attempts to define the structure of the roller by reciting the motivation for choosing particular materials and dimensions as well as conditions under which such dimensions may be measured. These recitations are immaterial to the structure of the roller itself and do not patentably distinguish the claimed roller from that of SCA.
Applicant argues that SCA teaches away from increasing the nip width. Examiner respectfully disagrees. Since any change in the nip width is a comparison to a base roller, the teaching of SCA that increased nip size may be problematic does not apply when a different base roller is utilized for comparison.
Applicant argues that the nip width is not compared to a tangential contact with no compression/deformation, but rather to a base sample provided in Table 1. Examiner agrees. However this showing is insufficient to overcome the previously applied rejection because it establishes a different basis for comparison in the instant case but does not provide any difference in structure between the instantly claimed roller and that of SCA.
Applicant argues that an increased nip with of the claimed roller would render the roller of SCA unsatisfactory for its intended purpose of decreasing nip width. Examiner respectfully disagrees because the only difference between the claimed roller and that of SCA is the basis for comparison rather than the roller itself, as detailed above.
Applicant argues that the roller of SCA lacks the structural features described in claim 21. Examiner respectfully disagrees. The features referred to by the Applicant describe how the roller deforms in a particular application. These features are not solely directed to the structure of the roller itself, but are deformation characteristics which depend on the particular application such as pressing force, embossing pattern and depth, embossing roller hardness, speed, etc. The limitations therefore describe an intended use of the apparatus rather than any particular structure of the apparatus itself. Similar to the issues with nip width being a relative property, the deformation and conformation described in claim 21 are not a property of the process roller alone but are directly dependent on other factors which vary depending on a particular application, such as pressure applied, materials being embossed, embossing pattern/height, speed, etc. Therefore the claimed properties describe an intended use of the process roller but do not positively recite any additional structure for the process roller itself.
Applicant argues that the Examiner does not provide any reasoning as to why the roller taught by SCA would behave in the same manner described in claim 21 and therefore has not established a prima facie case of obviousness. Examiner respectfully disagrees. Examiner has explained how each element of the pressing roller is taught or rendered obvious in the prior art, as detailed above. It is reasonable to conclude that the roller of SCA would deform and conform in substantially the same manner as the claimed roller when utilized in the same application since they are made of the same materials, have the same structure, and are utilized in the same process. Applicant has shown no structural difference in the claimed roller which would account for any different deformation or conformation behavior when put to use in any particular application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARSON GROSS whose telephone number is (571)270-7657. The examiner can normally be reached Monday-Friday 9am-5pm Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CARSON GROSS/Primary Examiner, Art Unit 1746