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 § 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.
Claim 24 is 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.
Regarding claim 24, claim 24 recites the limitation “the series of debossments” in l. 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 24 depends on claim 13. Claim 13 is the independent claim and does not recite debossments in any context. However, claim 23 is noted for reciting a series of debossments and thus may have been the intended claim for antecedent basis. If this is the case, the examiner recommends revision of claim 24 to depend on claim 23.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 13, 15, 17, 19, 21, 23, and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thomas (US 3,862,205 A).
Regarding claim 13, Thomas disclose a method for making a multi-ply paper product comprising (for making a “composite sheet”: e.g. Fig. 1 – 13; Col. 1, l. 39, to Col. 5, l. 44);
obtaining at least a first tissue base sheet and a second tissue base sheet (“upper creped paper tissue web” 12, 12’ and “lower creped paper tissue web” 13, 13’: e.g. Fig. 3, 9; Col. 3, ll. 7 – 13; Col. 4, ll. 30 – 33);
embossing the first tissue base sheet with an emboss pattern (using “combining rolls” 10, 11: e.g. Fig. 1 – 13; Col. 1, l. 39, to Col. 5, l. 44) comprising;
at least one continuous linear or curvilinear emboss element comprising a long dimension and a short dimension (e.g. Fig. 1 – 13; Col. 1, l. 39, to Col. 5, l. 44), the at least one continuous emboss element having a base, a top, and sidewalls, wherein the height of the at least one continuous linear or curvilinear emboss element is measured from the base to the top, and the length and width are measured across the base in the long dimension and the short dimension, respectively (e.g. Fig. 1, 3, 6 – 9, 12, 13; Col. 1, l. 39, to Col. 5, l. 44); and
a set of discontinuous emboss elements that project upward from the top of the at least one continuous linear or curvilinear emboss element, wherein the discontinuous emboss elements have side walls that are coextensive with the sidewalls of the continuous linear or curvilinear emboss element (e.g. Fig. 1 – 13; Col. 1, l. 39, to Col. 5, l. 44).
For the sake of clarity, Thomas’ Fig. 1 – 7 and 9 – 13 relate to using embossing rolls to product continuous linear (i.e. rectilinear) emboss elements whereas alternative embodiments Thomas discloses in relation to Fig. 8 produce a continuous curvilinear emboss element (e.g. Fig. 1 – 13; Col. 1, l. 39, to Col. 5, l. 44). Additionally, since Thomas’ embossing rolls are structured such that a tissue base sheet prior to embossing is forced into the grooves of the embossing rolls (e.g. Col. 3, ll. 44 – 46), it is observed the discontinuous emboss elements have coextensive sidewalls with the at least one continuous linear or curvilinear emboss element.
Regarding claim 15, in addition to the limitations of claim 13, the method Thomas discloses further comprises plying the first base sheet to another base sheet using an adhesive applied along the top of a plurality of the discontinuous emboss elements in the set (e.g. Fig. 1 – 13; Col. 2, ll. 46 – 49, 56 – 64; Col. 3, ll. 10 – 13; Col. 3, l. 64, to Col. 5, l. 13).
Regarding claim 17, in addition to the limitations of claim 15, Thomas discloses the product is a two-ply product (e.g. Fig. 1, 3, 6; Col. 3, ll. 4 – 13; Col. 3, l. 64, to Col. 4, l. 15; Col. 4, ll. 26 – 30), wherein the first base sheet is plied to the second base sheet by adhesive applied along the top of a plurality of the discontinuous emboss elements in the set (e.g. Fig. 1 – 13; Col. 2, ll. 46 – 49, 56 – 64; Col. 3, ll. 10 – 13; Col. 3, l. 64, to Col. 5, l. 13).
Regarding claim 19, in addition to the limitations of claim 17, Thomas discloses the first base sheet has an outside surface constituting a top surface of the product and an opposing inside surface facing the interior of the product; wherein the second base sheet has an outside surface constituting a bottom surface of the product and an opposing inside surface facing the interior of the product; and wherein the first base sheet is plied to the second base sheet such that the emboss pattern on the first base sheet protrudes towards the interior of the product (e.g. Fig. 1, 3, 6; Col. 3, l. 4, to Col. 4, l. 15).
Regarding claim 21, in addition to the limitations of claim 13, Thomas discloses the discontinuous emboss elements in the set are, e.g., dashes (as formed when using an “upper combining roll” 10 with “protuberances” 17 between “land areas” 18 and a “lower combining roll” 11 with “recesses” 21 and “land areas” 22, wherein the “protuberances” 17, “recesses” 21, and “land areas” 18, 22 are formed at least in part in a rectangular shape: e.g. Fig. 2, 4 – 7, 10 – 13; Col. 3, ll. 14 – 37).
Regarding claim 23, in addition to the limitations of claim 13, Thomas discloses the discontinuous emboss elements in the set are separated by a series of debossments (as would result from using “rolls” 10, 11 with “ribs” 15, 19 and “protuberances” 17 on the “ribs” 15 are separated by “land areas” 18 and “land areas” 22 on “ribs” 19 are separated by “recesses” 21: e.g. Fig. 1, 2, 4, 5, 10, 11; Col. 3, II. 4 – 58).
Regarding claim 24, in addition to the limitations of claim 13, Thomas discloses the debossments have a height of, e.g., about 0.005 inches (e.g. Col. 3, II. 54 – 55).
Such a height is understood to result from the height of projections and recesses in Thomas' embossing rolls (e.g. Col. 3, II. 54 – 55) in view of the base sheet being forced into grooves of the embossing rolls (e.g. Col. 3, II. 44 – 46).
Thomas' height lies within the claimed range.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 14 and 26 – 29 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas as applied to claim 13 above, and further in view of Schulz (US 5,269,983 A).
Regarding claim 14, although Thomas is not explicit as to the embossing being accomplished using a resilient-rigid emboss configuration, this feature would have been obvious in view of Schulz.
Thomas discloses a rigid-rigid emboss configuration (both combining rolls are disclosed as metal: e.g. Col. 3, ll. 4 – 7) but does not explicitly limit their method thereto.
Schulz discloses rigid-rigid emboss configurations are not as good for softening tissue base sheets as compared to a resilient-rigid emboss configuration (comparing steel to steel configurations relative to rubber to steel configurations generally and providing a method useful for improving softness: e.g. Col. 1, l. 50, to Col. 9, l. 34).
Accordingly, to improve softness of Thomas’ product, it would have been obvious to accomplish the embossing using a resilient-rigid emboss configuration as Schulz suggests.
Regarding claim 26, although Thomas does not explicitly state the product is a rolled paper product, Schulz notes tissue products are typically provided as packaged rolls as a means of being useful for household needs (e.g. Col. 1, ll. 15 – 31).
Given Thomas’ products made by the method of claim 13 are tissue products because of comprising tissue base sheets, it would have been obvious to make Thomas’ product as a rolled paper product to be useful for household needs as Schulz suggests.
Regarding claim 27, in addition to the limitations of claim 13, Thomas discloses the product is a two-ply paper product (e.g. Fig. 1, 3, 6; Col. 3, ll. 4 – 13; Col. 3, l. 64, to Col. 4, l. 15; Col. 4, ll. 26 – 30).
Although Thomas does not explicitly mention the two-ply paper product is a two-ply rolled paper product, Schulz notes tissue products are typically provided as packaged rolls as a means of being useful for household needs (e.g. Col. 1, ll. 15 – 31).
Given Thomas’ products made by the method of claim 13 are tissue products because of comprising tissue base sheets, it would have been obvious to make Thomas’ product as a rolled paper product to be useful for household needs as Schulz suggests.
Regarding claim 28, in addition to the limitations of claim 27, Thomas discloses the product is a paper towel product (e.g. Col. 1, ll. 5 – 7).
Regarding claim 29, in addition to the limitations of claim 27, as noted in the 35 U.S.C. 102(a)(1) rejection of claim 13, the product is a tissue product per the use of tissue base sheets.
While Thomas does not specifically state the product is a toilet tissue product, Schuh discloses toilet tissue products, Thomas does disclose paper towel products (e.g. Col. 1, ll. 5 – 7), which Schulz identifies as an equivalent use of tissue products to paper towels (e.g. Col. 1, ll. 15 – 17).
Accordingly, it would have been obvious to provide Thomas’ tissue product as a toilet tissue product in order provide Thomas’ advantages (such as appearance: e.g. Col. 1, l. 66, to Col. 2, l. 1) in other products.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Thomas as applied to claim 15 above, and further in view of Espinosa (US 2013/0327487 A1).
Regarding claim 16, although Thomas is not explicit as to the adhesive is applied to less than all of the discontinuous emboss elements, Espinosa discloses applying the adhesive to less than all of a set of discontinuous emboss elements as it allows for a sufficient bond to be established between tissue base sheets while allowing movement between the base sheets to improve drape and softness (e.g. ¶ [0126]).
Accordingly, to improve drape and softness as Espinosa suggest, it would have been obvious to have Thomas’ method apply the adhesive to less than all of the discontinuous emboss elements.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Thomas as applied to claim 17 above, and further in view of Espinosa.
Regarding claim 18, although Thomas is not explicit as to the adhesive is applied to less than all of the discontinuous emboss elements in the set, Espinosa discloses applying the adhesive to less than all of a set of discontinuous emboss elements as it allows for a sufficient bond to be established between tissue base sheets while allowing movement between the base sheets to improve drape and softness (e.g. ¶ [0126]).
Accordingly, to improve drape and softness as Espinosa suggest, it would have been obvious to have Thomas’ method apply the adhesive to less than all of the discontinuous emboss elements in the set.
Claims 22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas as applied to claim 13 above.
Regarding claim 22, in addition to the limitations of claim 13, Thomas discloses the discontinuous emboss elements in the set are, e.g., dashes (as formed when using an “upper combining roll” 10 with “protuberances” 17 between “land areas” 18 and a “lower combining roll” 11 with “recesses” 21 and “land areas” 22, wherein the “protuberances” 17, “recesses” 21, and “land areas” 18, 22 are formed at least in part in a rectangular shape: e.g. Fig. 2, 4 – 7, 10 – 13; Col. 3, ll. 14 – 37).
Although Thomas does not specifically state an aspect ratio of the discontinuous emboss element is at least 1.1, Thomas notes the discontinuous emboss elements in the embossed paper product correspond to sites where adhesive is applied to join base sheets together (e.g. Col. 3, II. 47 – 58; Col. 3, I. 64, to Col. 4, I. 25). Additionally, Thomas notes coverage area of adhesive may be reduced in order to produce a more flexible sheet (e.g. Col. 4, II. 16 – 19), i.e. coverage area of adhesive may be increased in order to produce a less flexible sheet. Accordingly, for a given width of a continuous emboss element and therefore also a given width of a discontinuous/discrete emboss element (e.g. Fig. 1, 2, 4, 5, 10, and 11 depict embodiments wherein the widths are the same), it follows the aspect ratio of the discontinuous emboss element may be optimized in order for the embossed paper product to have a desired level of flexibility. It is observed that a rectangular discontinuous emboss element as Thomas discloses implicitly has an aspect ratio of at least 1, wherein an aspect ratio of exactly 1 mathematically is a square.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Therefore, it would have been obvious to provide the discontinuous emboss element(s) with an aspect ratio of at least 1.1 in order to provide an embossed paper product with the desired flexibility.
Regarding claim 25, although Thomas does not specifically state a ratio between the depth of the emboss element of the curvilinear element and the depth of the emboss of the discontinuous element, Thomas does note the depth of the emboss of the discontinuous element is “quite shallow” in comparison to the depth of the emboss of the curvilinear element in order to minimize distortions at the edges of webs when forced into the shape of the discontinuous emboss element (e.g. Col. 3, II. 50 – 54). Based on the shape of the “rolls” 10, 11 Thomas depicts for producing the embossed paper product, it is understood that excessively large depth of the emboss of the discontinuous element in comparison to the depth of the emboss of the curvilinear element is undesirable in that the base sheet being embossed will break during the embossing process due to the large deviations. Accordingly, one of ordinary skill in the art would have been motivated to determine a suitable ratio between the depth of the emboss element of the curvilinear element and the depth of the emboss of the discontinuous element which is large enough to avoid such deviations.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Therefore, it would have been obvious to modify the embossed paper product so that the ratio between the depth of the emboss element of the curvilinear element and the depth of the emboss of the discontinuous element to be from about 2 to about 5 in order to ensure embossing of the base sheet can occur without breakage of the base sheet.
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As noted in the Notice of Allowance mailed 28 February 2024 in Application No. 17/552,635 (i.e. the parent application to the instant application), Thomas does not disclose the coefficient of friction of the top surface of the product is greater than the coefficient of friction of the bottom surface of the product, nor does Thomas suggest why this feature should be present.
Moreover, Thomas’ embodiments use the same shape for the embossing rolls used to carry out the embossing in the method have essentially the same shape.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Since the tissue base sheets are formed by the same process and same apparatus, without other description, Thomas’ top and bottom surfaces would have been expected to exhibit the same properties, including the coefficient of friction.
Schuh (US 2006/0286885 A1) mentions different coefficients of friction on either side of a paper product (e.g. Fig. 25; ¶ [0058]) but discloses an emboss pattern different from that required of claim 13 as well as that Thomas discloses. Accordingly, it cannot be said that Schuh’s coefficients of friction can be applied to Thomas to render claim 13 obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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