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
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.
Claim(s) 15-24, 26-29, and 32-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan et al. (U.S. Patent. No. 10,625,484) in view of Fuss et al. (U.S. Patent No. 5,468,556).
Regarding claim 15: Chan discloses a dunnage producing system comprising:
a material feed section configured to feed stock material into the system (Figs. 2-3, 11a & 11b; via the shown feeding section 20a’ of stock materials 12), the stock material having a row of openings extending in a longitudinal direction of the stock material, see for example (Fis. 2a-2b; via the shown holes or openings 20d and/or 20c);
a glue feed section having a dispensing nozzle configured to dispense adhesive material to the stock material (via “an adhesive applied when loading” and “An adhesive 114 can be applied at the time of connection”; inherently a use of dispensing nozzle is possible and known);
a controller configured to control the system (Fig. 16a; via motor unit 58 for controlling); and
a forming section having forming members configured to form the stock material into a predetermined shape retained by the adhesive material (Figs. 5-8; via 100).
Chan does not disclose the claimed drive belt or chain having a plurality of lugs, each of the plurality of lugs having a non-pointed shape adapted to be received by one of the openings in the stock material without damaging the stock material and to positively drive the stock material. However, Fuss discloses similar system with the use of drive belt or chain with lugs adapted to be received by one of the openings in stock materials for the purpose of driving the stock material, see for example (Figs. 14-17; via the shown small spikes/lugs 82 to encages openings on materials 76).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Chan’s system, by having and/or replacing the feeding mechanism by another with lugs, as suggested by Fuss, in order to gain better hold and grasp into the conveyed web during the conveying process (column 6, lines 33-37).
Further, it is noted that a recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
Regarding the other amended and added limitations to claim 15 referring to “without damaging the stock material”; it appears to be only an intended use limitation of the claimed lugs.
Regarding claim 16: Chan in view of Rex do not suggest the use of multiple sensing devices operativity connected to the controller, the multiple sensing devise adapted to monitor tension in the stock material. However, the Office takes an official notice that a use of sensor to “monitor tension”, is old and well known in the feeding art.
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Chan’s system, by using a tension sensor, in order control the feeding mechanism and avoid any potential jam on the device.
Regarding claim 17: Chan further comprising an unwind section (Figs. 13-13C; via rollers 106/108 is unwinding and pulling/guiding the stock materials) comprising a tension control section configured to receive the stock material (via 106/108 is receiving and controlling tension on web 20).
Regarding claim 18: Chan further comprising a compression section configured to apply compression to the predetermined- shaped stock material, (Fig. 11; via forming member 30).
Regarding claim 19: Chan further comprising a separation section configured to receive the predetermined-shaped stock material and separate the predetermined-shaped stock material at a predetermined length, see for example (Figs. 9-10; via the shown cut lines 20g/20h).
Regarding claim 20: Chain discloses that the controller controls a feed rate of the stock material through the system (inherently driving motor unit 58 is controlling the drive of the web, therefore controlling tension).
Regarding claim 21: Chain discloses that the predetermined shape comprises a tube, see for example (Fig. 11; via the shown tube shape of the web 20e).
Regarding claim 22: Chain discloses that the stock material having the row of openings extending in the longitudinal direction of the stock material (Figs. 2a-2b; via 20d) further comprises a plurality of longitudinally-spaced (via the space between the formed openings 20d and/or 20c), transversely-extending perforations and uncut portions between the longitudinally-spaced, transversely-extending perforations and opposing longitudinal edges of the sheet material (via the shown space between each formed cut 20d).
Regarding claim 23: Chain discloses that the plurality of longitudinally-spaced, transversely-extending perforations each comprise “sinusoidal perforations”, (via the shown perforations lines 20d and/or 20c).
Regarding claim 24: Chain further comprising a separation section configured to receive the stock material in the predetermined shape and separate the stock material in the predetermined shape at the “sinusoidal perforations” to produce dunnage having sinusoidal edges (via the mentioned “cutting away” portions; “a rear portion cut away”; and/or “cutting a lateral cut 20g…cutting a longitudinal cut”).
Regarding claim 26: Chain discloses that the forming members comprises one or more folding mandrels (Figs. 5-8; via the shown more than 100 member).
Regarding claim 27: Chain further comprising, prior to the material feed section, a die-cut section configured to receive undie- cut stock material and die-cut the row of openings in the undie-cut stock material (Figs. 9-10 and 14; via providing the stock material with prior cuts).
Regarding claim 28: Fuss discloses that each of the plurality of lugs engage the one of the openings in the stock material without damaging the stock material (Fig. 1; via the shown lugs 82 engage openings on web 76; “without damaging the stock material”, intended use limitations).
Regarding claim 29: Chain discloses a separation section (Figs. 9-10; via the shown perforation lines). However, using a separating roller, is very old and well known in the art.
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Chain’s separation mechanism, to be “a separating roller”, as a design choice to be made, in order to improve and easily form and achieve separation on the stock materials.
Regarding claim 32: Chain may not suggest the exact location of the claimed each opening of the row of openings extending in a longitudinal direction of the stock material comprises a circular opening positioned centrally between opposing longitudinal edges of the base material. However, since Chain suggests the claimed openings, only appears to be positioned on the side edges of the stock material, not as claimed to be “centrally”, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 33: Chain discloses that the plurality of longitudinally-spaced, transversely-extending perforations are adapted to be separated by a separation section, see for example (Figs. 2a-2b; via longitudinal perforations 20d and/or 20c longitudinally lined one after the other with separation sections between them 20f or 20e).
Regarding claim 34: Chain discloses multiple rows of openings extending in the longitudinal direction of the stock material (Fig. 2; via 20d). Having a single row of openings extending in the longitudinal direction of the stock material instead of two, would be only a matter of design choice.
Response to Arguments
Applicant’s arguments with respect to claim(s) 15-24, 26-29, and 32-34 have been considered but are moot because the new ground of rejection does not rely on the combination of the references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In light of the latest conducted interview on Dec. 02, 2025 and the filed amendment on Jan. 02, 2026, the New Ground of rejection has been issued as set forth above.
In response to applicant’s arguments that dependent claims 25 and 30 were omitted from consideration, and may be allowable. The Office draws applicant’s attention to the Restriction/Election action dated back on Dec. 23rd. 2024 and the made election on Jan. 30th., 2025; those claims were withdrawn.
Applicant argues that the applied art of Fuss ‘556 was recognized and acknowledged by the applicant in the filed specification which are overcome by aspects of the present invention. Applicant highlights that throughout the filed application noted that the claimed invention is to avoid handling of the stock material with undesirable “friction or destructive spikes” to avoid damaging of the web.
The Office draws applicant’s attention that admitted prior art are still arts could be used over the claimed invention as the claims are given the broadest reasonable meaning. When applicant admits and cite a specific prior art, not necessarily the claimed invention would overcome such art. Being that said, in the filed specification by the applicant only referring to ‘556 and providing details related to the actual article vs the claimed invention and argued upon matters are more to an apparatus. Applicant’s admission of ‘556 didn’t seem to be concerned about the means of manufacturing the dunnage material, rather the provided details and concerns were related to the actual final made dunnage materials (unrelated argument).
Applicant further argues that ‘556 is using “small spikes or pins 82”, which are very destructive spikes, while the applicant intended to avoid using such mechanism, rather uses “lugs” to avoid damage to the stock material.
The Office believes that applicant is giving too much weight to the claimed “lugs”, while no specific structures claimed supporting such term than “lugs having a non-pointed shape”, which exactly what is suggested by ‘556 (via 82 with “non-pointed shape”). Further, the Office believes that ‘556 clearly citing that “pins 82 to pass through the sheet 60 without being deformed by the upper roller”. In another ward, ‘556 indeed concerned about means to avoid damaging the stock material while being conveyed, exactly what applicant is concerned about and trying to improve (same purpose).
Applicant also argues that ‘556 shows the stock material without any opening prior to engaging with the spikes 82, only shows the opening passing spikes 82, while the claimed invention is calling for stock material with a row of openings extending in a longitudinal direction of the stock material.
The Office believes that giving the broadest meaning to the claimed invention, while claim 15 is only referring to “stock material having a row of openings” followed by “lugs…adapted to be received by one of the openings”, without any limitations referring to when or how those openings are formed. Therefore, it is maintained that ‘556 regardless to the timing of forming those openings on the stock material meet the claimed invention by showing dunnage stock materials with opening in the center section been engaged by lugs to smoothly convey the stock material safely throughout other stations.
Further, as explained above in the action; it is noted that a recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
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 SAMEH TAWFIK whose telephone number is (571)272-4470. The examiner can normally be reached Mon-Fri. 8:00 AM - 4:00 PM.
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/SAMEH TAWFIK/Primary Examiner, Art Unit 3731