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 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.
Claim(s) 1, 3, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over (JP2020194028 A) herein referred to as ‘028 in view of Yamada (US4587855 A1).
Regarding claim 1, ‘028 teaches a rigidity level detection apparatus provided in a sheet manufacturing apparatus that manufactures a sheet by performing compression shaping of a defibrated material of a fiber-containing material and configured to detect a rigidity level of the sheet (pg. 4 paragraph 12) comprising:
a transport unit that includes a pair of transport rollers and transport the sheet;
transports the sheet (70) that includes a pair of transport rollers and transports the sheet (pg. 4 paragraph 2);
a press unit (92) having a press member that deforms the sheet by pressing the sheet in a direction intersecting with a transport direction of the sheet while the sheet is transported by the transport unit (pg. 5 paragraphs 10-12);
a detection unit (96) having a sensor that detects a reaction forces exerted from the deformed sheet to the two first rollers and the three second rollers (pg. 5 paragraph 10-11); and
and a processor (10) that determines the rigidity level of the sheet based on a detection value from the sensor (S117).
‘028 does not explicitly disclose the press member having two first rollers provided at a first surface side of the sheet and the three second rollers provided at a second surface side of the sheet, the two first rollers and the three second rollers pressing the sheet at positions displaced from each other in the transport direction. ‘028 discloses the pressing member can be any shape (pg. 5 paragraph 12).
Further, analogous art, Yamada, depicts two rollers (2,3) that press the sheet at positioned displaced from each other in the transport directions in figure 6. . MPEP 2144.04 VI discloses The court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated at least one second roller provided at a second surface side of the sheet, and the first roller and the second roller press the sheet at positions displaced from each other in the transport direction as taught by Yamada into the apparatus taught by '028 since it’s conventionally well known and duplication of parts is a prima facie evidence of obviousness.
Regarding claim 3, Yamada further discloses a hinge attached to each roller in figure 6 that supports the roller individually. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated support portions since that is within the skillset of one ordinary skill in the art. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007). Yamada further teaches the detection unit detects the reaction force exerted to at least one of the first support portion and second support portion (column 6 lines 35-47).
Regarding claim 6, wherein the determination unit ranks the rigidity level of the sheet in a plurality of levels, the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable (JP2020194028 A) herein referred to as ‘028 in view of Yamada (US4587855 A1), as applied to claim 1, in view of Oguchi (US2019/0100877 A1).
Regarding claim 4, ‘028 does not explicitly disclose wherein the sheet manufacturing apparatus has a shaping unit that performs compression shaping of the defibrated material and a cutting unit that cuts the sheet of a belt shape shaped by the shaping unit, and the rigidity level detection apparatus is disposed between the shaping unit and the cutting unit. However, analogous art, Oguchi, discloses a sheet forming device (20) that forms the sheets from the web [0133] and a cutting device (21) and the rigidity level detection (7) apparatus is disposed between the shaping unit and the cutting unit [0223]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have included a shaping unit and cutting device and the rigidity level detection apparatus is disposed between the shaping unit and the cutting unit as taught by Oguchi into the apparatus taught by ‘028 based on design needs and to enable the required stiffness of the final product [0023]. Further, MPEP 2144.04 states the mere rearrangements of elements without modification of the operation of the device involves only routine skill in the art.
Regarding claim 5, wherein a speed of transport by the transport unit is substantially same as a transport speed of the sheet supplied from the shaping unit, the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable (JP2020194028 A) herein referred to as ‘028 in view of Yamada (US4587855 A1), as applied to claim 1, in view of Tsuchiya et al (US 2013/0223857 A1).
‘028 does not explicitly disclose wherein the sensors include at least one first force sensor that detects the reaction forces exerted from the deformed sheet to the two first rollers, and at least one second force sensor that detects the reaction forces exerted from the deformed sheet to the three second rollers. However, analogous art, Tsuchiya et al, discloses force sensor 301 to detect variation resistance and rigidity [0145]. Further, MPEP 2144.04 VI In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) discloses the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have duplicated the force sensors taught by Tsuchiya into the apparatus taught by ‘028 since it have been held that a mere duplication of working parts of a device involves only routine skill in the art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, and 3-5 a provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4 and 7 of copending Application No. 18,619,253 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications discloses:
Claim 1 (similar to claim 1 in ‘254) a rigidity level detection apparatus provided in a sheet manufacturing apparatus that configured to detect a rigidity level of the sheet, comprising: a transport unit that transports the sheet; a press unit having a press member that deforms the sheet by pressing the sheet in a direction intersecting with a transport direction of the sheet while the sheet is transported by the transport unit; a detection unit having a sensor that detects a given position on the sheet moved in the transport direction by deforming; and a determination unit that determines the rigidity level of the sheet based on a detection value from the sensor. Further, the claim limitation discloses wherein the press member has at least one first roller provided at a first surface side of the sheet and at least one second roller provided at a second surface side of the sheet, and the first roller and the second roller press the sheet at positions displaced from each other in the transport direction which is similar to claim. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant independent claim 1 is a species of copending independent claim 1. It is clear that all of the elements of claims 1 of reference application 18, 619,253 are found in claim 1 of this instant application. It has been held that the generic invention is "anticipated” by the “species". See MPEP 804 Section II (B).
Claim 3 (same as claim 4 in ‘254) wherein the sheet manufacturing apparatus has a shaping unit that performs compression shaping of the defibrated material and a cutting unit that cuts the sheet shaped by the shaping unit into a belt shape, and the given position is an end portion of the sheet cut by the cutting unit, the end portion being upstream in the transport direction.
Claim 4 (same as claim 5 of ‘254) wherein a speed of transport by the transport unit is substantially same as a transport speed of the sheet supplied from the shaping unit.
Claim 7 (same as claim 6 of ‘254) wherein the determination unit ranks the rigidity level of the sheet in a plurality of levels
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments have been considered but are moot in light of the newly cited references (JP2020194028 A) herein referred to as ‘028.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754