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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 11th, 2026 has been entered.
Response to Amendment
Amendments to the claims received on February 11th, 2026 have been entered. Claims 1, 13, and 20-21 have been amended and claims 2-3, 6, 19, and 22 have been canceled.
Response to Arguments
Applicant’s arguments, see pages 9-17, filed February 11th, 2026, with respect to the rejection of claims 1, 13, and 20-21 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection is made in view of Yu Chen (U.S. Patent No. 10,961,070 B2) and in further view of Acker Sr., et al. (U.S. Patent No. 3,431,613 A).
While it was deemed unnecessary by the examiner, the previously relied on references have been substituted for the prior art presently cited in order stray from any confusion the applicant may have regarding relating arts. The prior art reference of Yu Chen (U.S. Patent No. 10,961,070 B2) discloses a paper roll dispenser for crumpled paper. While an expandable slit sheet material is not mentioned in the primary art reference, the recitation of said expandable slit sheet material is absent structural differences between a claim and a prior art material or article, a recitation of the claimed material or article’s intended use cannot alone patentably distinguish the claimed invention from the prior art. See MPEP 2114 I-II, citing, e.g., Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). Thus, if the prior art structure is capable of performing the intended use, as Yu Chen is, it meets the claim. See MPEP 2111.02 II, citing In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In this instance, Yu Chen discloses a similar material for similar purposes of aiding in packaging. Both the claimed material and the cited material require an expansion of sorts. Yu Chen relies on the expansion of crumpled paper as opposed to slitted paper. Yu Chen also discloses similar arrangements to that of the presented invention. Thus, the limitation of an expandable slit sheet material is not relied on for the apparatus as a whole to function.
Furthermore, the secondary reference of Acker Sr., et al. provides an apparatus for dispensing and creating an expandable slit sheet material having roller arrangements similar to that of the presented application. Combination of both Yu Chen and Acker Sr., et al. would be obvious to one skilled in the art as the teachings of Acker Sr., et al. are limitations provided after the main scope of applying constant spring force onto a roll, which is taught by the primary reference, and the one skilled in the art merely apply the elements after the dispensing portion. The Office Action has been updated below.
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.
Claims 1, 4-5, 7, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yu Chen (U.S. Patent No. 10,961,070 B2).
Regarding claims 1 and 20, Yu Chen discloses a dunnage conversion apparatus for dispensing a cushioning wrap material from a roll of expandable sheet material having an expandable sheet material in an unexpanded state (Fig. 1; Col. 2, Ln. 18-22, paper roll dispenser 100), the apparatus comprising a frame (Fig. 1; Col. 2, Ln. 23-27, frame 11) having a supply support for supporting the roll of expandable sheet material for rotation about a central axis (Fig. 1-2; Col. 2, Ln. 35-43, erect frame 12 supporting roll 24) as the expandable sheet material is pulled from the roll of expandable sheet material (Col. 3, Ln. 20-32).
Yu Chen further discloses the apparatus comprising a tensioning device including (Fig. 1-2; Col. 2, Ln. 44-50, press plate 30 corresponding to a tensioning device) a friction member abutting the roll of expandable sheet material (Fig. 1-2; Col. 2, Ln. 44-50, hold-down strip 33 corresponding to a friction member), and at least one constant force spring secured to the frame and the friction member (Fig. 1-2; Col. 2, Ln. 44-50, elastic member 32 corresponding to a constant force spring), and wherein the friction member extends across an entire length or more of the roll of expandable sheet material in a direction of the central axis (Fig. 1-2 depicting the hold-down strip 33 extending along a length of the roll).
Yu Chen further discloses the constant force spring being configured to bias the friction member toward the roll of expandable sheet material in a direction perpendicular to the central axis to cause the friction member to apply a rotational resistance on the roll of expandable sheet material as the expandable sheet material is pulled away from the roll of expandable sheet material and the roll of expandable sheet material decreases in diameter (Fig. 1-2; Col. 3, Ln. 8-20; Col. 3, Ln. 62-64 - Col. 4, Ln. 1-2).
Finally, Yu Chen also discloses wherein the tensioning device is operable to constantly and automatically apply the rotational resistance on the roll of expandable sheet material as the roll of expandable sheet material decreases in diameter, the rotational resistance causing the expandable sheet material to expand from the unexpanded state to an expanded state as the expandable sheet material is pulled from the roll of expandable sheet material to form the cushioning wrap material (Fig. 1-2; Col. 3, Ln. 8-32).
The recitation of an expandable slit sheet material is absent structural differences between a claim and a prior art material or article, a recitation of the claimed material or article’s intended use cannot alone patentably distinguish the claimed invention from the prior art. See MPEP 2114 I-II, citing, e.g., Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). Thus, if the prior art structure is capable of performing the intended use, as Yu Chen is, it meets the claim. See MPEP 2111.02 II, citing In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In this instance, Yu Chen discloses a similar material for similar purposes of aiding in packaging. Both the claimed material and the cited material require an expansion of sorts. Yu Chen relies on the expansion of crumpled paper as opposed to slitted paper. Yu Chen also discloses similar arrangements to that of the presented invention. Thus, the limitation of an expandable slit sheet material is not relied on for the apparatus as a whole to function.
Regarding claim 4, Yu Chen discloses wherein the friction member has friction member supports pivotably mounted to the frame, and a bar member mounted to the friction member supports, the bar member extending parallel to and contacting the roll of expandable sheet material (Fig. 1-2; Col. 2, Ln. 44-50, interactive member 31 corresponding to friction member supports).
Regarding claim 5, Yu Chen discloses wherein the at least one force spring is secured to the frame at a first end thereof and is secured to the friction member at a second end thereof (Fig. 1-2; Col. 2, Ln. 44-50, elastic member 32 secured to the frame 12 and secured to the hold-down strip 33 via the interactive member 31).
Regarding claim 7, Yu Chen discloses wherein the at least one force spring is configured to bias the friction member against the roll of expandable sheet material such that the bar member constantly abuts the roll of expandable sheet material as the roll of expandable sheet material decreases in diameter (Fig. 1-2; Col. 3, Ln. 8-20; Col. 3, Ln. 62-64 - Col. 4, Ln. 1-2).
Claims 8-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yu Chen (U.S. Patent No. 10,961,070 B2) as applied to claims 1, 4-5, 7, and 20 above, and further in view of Acker Sr., et al. (U.S. Patent No. 3,431,613 A).
Regarding claims 8-10, and 15-17, Yu Chen fails to disclose a pair of powered gripping rollers. However, Acker, Sr., et al. teaches further comprising a pair of powered gripping rollers, mounted downstream of the roll of expandable slit sheet material and the tensioning device, and configured to engage the expandable slit sheet material and pull the expandable slit sheet material from the roll of expandable slit sheet material, wherein the pair of powered gripping rollers are biased toward one another and are configured to receive the expandable slit sheet material therebetween (Fig. 1-2; Col. 23, Ln. 63-70, lower and upper roller 18, 20 corresponding to a pair of powered gripping rollers).
Therefore, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to incorporate a pair of gripping rollers since the examiner takes Official Notice of the equivalence of the crumpled paper device 50 of Yu Chen and the lower and upper roller 18, 20 of Acker, Sr., et al. for their use of providing a gripping force to the material as it is being extracted in the art and the selection of any of these own equivalents to grip the material as it is being extracted would be within the level of ordinary skill in the art. See MPEP 2144.06. In this instance, the crumpled paper device of Yu Chen is disclosed to provide a compressive force (Col. 3, Ln. 20-32, crumpled paper device 50), and as such, the lower and upper roller of Acker, Sr., et al. compresses the material as it is being pulled.
Regarding claims 11 and 18, Yu Chen discloses further comprising a cutting device for cutting the cushioning wrap material after a desired length of expandable sheet material has been pulled away from the roll of expandable sheet material and a desired length of cushioning wrap material has been formed (Fig. 1-2; Col. 3, Ln. 25-32, blade 544).
Regarding claim 12, Yu Chen fails to disclose the cutting device being disposed downstream the powered rollers. However, Acker, Sr., et al. teaches wherein the cutting device is mounted downstream of the roll of expandable slit sheet material, the tensioning device, and the pair of powered rollers (Fig. 1-2; Col. 3, Ln. 25-32, blade 544). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a cutting device downstream to provide a means for detaching the material after tensioning and desired length is produced. Such a feat would merely take one skilled in the art as the cutting device is used for post processing of the material thus any incorporation may be provided after a set assembly.
Regarding claims 13-14 and 21, Yu Chen discloses a dunnage conversion apparatus for dispensing a cushioning wrap material from a roll of expandable sheet material having an expandable sheet material in an unexpanded state (Fig. 1; Col. 2, Ln. 18-22, paper roll dispenser 100), the apparatus comprising a frame (Fig. 1; Col. 2, Ln. 23-27, frame 11) having a supply support for supporting the roll of expandable sheet material for rotation about a central axis as the expandable sheet material is pulled from the roll of expandable sheet material (Fig. 1-2; Col. 2, Ln. 35-43, erect frame 12 supporting roll 24).
Yu Chen discloses the claimed invention except for the plurality of pre-expansion rollers. However, Acker, Sr., et al. teaches a plurality of pre-expansion rollers extending parallel to and spaced apart from the central axis, the plurality of pre-expansion rollers forming a serpentine path through which the expandable slit sheet material passes as the expandable slit sheet material is pulled away from the roll of expandable slit sheet material, the pre-expansion rollers extending across an entire width of the serpentine path (Fig. 9; Col. 3, Ln. 6-26, tensioning bar 38, roller 40, and roller 48 corresponding to pre-expansion rollers).
Acker, Sr., et al. further teaches wherein the plurality of pre-expansion rollers cause the expandable slit sheet material to expand from the unexpanded state to a pre-expanded state as the expandable slit sheet material passes through the serpentine path, thereby reducing an amount of stretching force required to cause the expandable slit sheet material to expand to the expanded state to form the cushioning wrap material, and wherein when in the pre-expanded state the expandable sheet material is not expanded beyond its elastic limit (Fig. 9-11; Col. 8, Ln. 8-32, wherein the rollers expand the material to a predetermined amount).
Therefore, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention as taught by Acker, Sr., et al., in combination with dunnage conversion apparatus from Yu Chen as such a modification would provide a constant tension to the material while dispensing without fully expanding the material beyond its limit in order to maintain proper protection to the items covered by said material. Such a feat would merely take one skilled in the art as pre-expansion rollers are disposed at an end of the assembly and thus any incorporation may be provided after said assembly.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references refer to dunnage dispensing devices (some supply expandable sheet materials and others utilize similar materials). The cited references refer to assemblies and apparatuses which utilize a friction bar-like structure to apply a constant pressure on the roll as it is being dispensed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERMIA E MELIKA whose telephone number is (571)270-5162. The examiner can normally be reached Monday-Thursday 8:00 AM - 6:00 PM.
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ERMIA E. MELIKA
Examiner
Art Unit 3654
/ERMIA E. MELIKA/ Examiner, Art Unit 3654
/ROBERT W HODGE/ Supervisory Patent Examiner, Art Unit 3654