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.
Claims 1-15 are 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 claims 1 and 11, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 4-6 each recite the limitation "the backing roll" in either line 1 or 2. There is insufficient antecedent basis for this limitation in the claims.
Further regarding claim 4, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 5, 7-11, and 14-15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Boegli et al. (US 2024/0343013). Regarding claim 1, Boegli et al. disclose “a roll assembly (Figure 2) for producing non-destructively embossed barrier paper for air-tight and water vapor-tight sealing of packages, in particular for use as an inner package (abstract, paragraph 10), comprising: a first embossing roll (item 201); and a second embossing roll (item 202); wherein a nip (Figure 2c) for feeding through and embossing the barrier paper is formed between the first embossing roll and the second embossing roll (Figures 2a and 2c); wherein at least one of the embossing rolls has a plurality of embossing elements (paragraph 31), wherein the embossing elements have on their upper face, an edge surrounding the embossing element with an edge radius (Rx) of 1 µm to 1000 µm (Figure 5, paragraphs 115-116).” Regarding claim 2, Boegli et al. further disclose “wherein the at least one embossing roll having the plurality of embossing elements is designed as a male die and the embossing elements extend away from the roll surface as embossing elevations (Figures 2c, 4, and 5).” Regarding claim 5, Boegli et al. further disclose “wherein the backing roll of the embossing roll having the plurality of embossing elevations is designed as a female die, wherein the backing roll has a plurality of recesses formed in the roll surface, which are arranged complementarily to the embossing elevations extending away from the roll surface (Figures 2c, 4, and 5, paragraph 114).” Regarding claim 7, Boegli et al. further disclose “wherein the embossing height (Hp) and/or embossing depth (Tp) of the embossing elements is up to 200 µm (paragraphs 3 and 27).” Regarding claim 8, Boegli et al. further disclose “wherein the first and/or the second embossing roll have/has an average surface roughness (Rz) of 1 to 50 µm (paragraph 136: Examiner notes that even though the roughness described by paragraph 136 is not disclosed as Rz, the range disclosed overlaps the recited range regardless of the type of roughness disclosed).” Regarding claim 9, Boegli et al. further disclose “wherein the embossing elements in an axial direction (X) of the embossing roll each have a length (Lr) of greater than 0.1 mm (paragraph 2).” Regarding claim 10, Boegli et al. further disclose “wherein the embossing elements in a circumferential direction (Y) of the embossing roll each have a width (Br) of greater than 0.1 mm (paragraph 2).” Regarding claim 11, Boegli et al. disclose “a method for producing non-destructively embossed barrier paper for air-tight and water vapor-tight sealing (abstract, paragraph 10) of cigarette packages (paragraph 149), in particular for use as an inner liner, with a roll assembly according claim 1, comprising the steps: feeding a barrier paper web through the nip of the roll assembly (abstract, Figure 2); forming an embossed pattern in the barrier paper as the barrier paper web is fed through the nip (abstract, Figure 2).” Regarding claim 14, Boegli et al. further disclose “wherein the paper thickness (Sp) of the barrier paper is 20 µm to 500 µm (paragraph 115).” Regarding claim 15, Boegli et al. further disclose “wherein the embossed pattern has an embossing height (HPM) of up to 50 µm (paragraph 27).”
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6, 11, and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boegli et al. (US 2017/0282635) (hereinafter, ‘635) in view of Boegli et al. (US 2024/0343013). Regarding claim 1, ‘635 discloses “a roll assembly for producing non-destructively embossed barrier paper for air-tight and water vapor-tight sealing of packages, in particular for use as an inner package (paragraphs 1, 16, and 20), comprising: a first embossing roll (item 21); and a second embossing roll (item 22); wherein a nip for feeding through and embossing the barrier paper is formed between the first embossing roll and the second embossing roll (Figure 57); wherein at least one of the embossing rolls has a plurality of embossing elements (paragraph 31),” but fails to disclose “wherein the embossing elements have on their upper face, an edge surrounding the embossing element with an edge radius (Rx) of 1 µm to 1000 µm.” However, Boegli et al. disclose a similar structure wherein the radius of curvature of the edge of the sidewalls of the embossing element is greater than 15 µm (paragraph 116, Figure 5) in order to reduce the shear stress during the embossing (paragraph 120), prevent fractures in the in the area of contact (paragraph 115), and/or emboss without damaging the paper (paragraph 6). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to set the edge radius of the edge of the embossing element in ‘635 to greater than 25 µm in order to reduce the shear stress during the embossing, prevent fractures in the in the area of contact, and/or emboss without damaging the paper. Regarding claim 2, ‘635 further discloses “wherein the at least one embossing roll having the plurality of embossing elements is designed as a male die and the embossing elements extend away from the roll surface as embossing elevations (Figure 50).” Regarding claim 3, ‘635 further discloses “wherein the at least one embossing roll having the plurality of embossing elements is designed as a female die and the embossing elements extend into the roll surface as recesses (paragraph 95).” Regarding claim 4, ‘635 further discloses “wherein the backing roll of the embossing roll having the plurality of embossing elements has a smooth roll surface without embossing elements (paragraph 106), wherein the roll surface of the backing roll is made of steel or of an elastic material, such as rubber, for example (paragraph 21).”
Regarding claim 5, ‘635 further discloses “wherein the backing roll of the embossing roll having the plurality of embossing elevations is designed as a female die, wherein the backing roll has a plurality of recesses formed in the roll surface, which are arranged complementarily to the embossing elevations extending away from the roll surface (Figures 2c, 4, and 5, paragraph 114).” Regarding claim 6, ‘635 further discloses “wherein the backing roll of the embossing roll having the plurality of recesses is designed as a male die, wherein the backing roll has a plurality of embossing elevations facing away from the roll surface, which are arranged complementarily to the recesses extending into the roll surface (paragraph 95).” Regarding claim 11, ‘635 discloses “a method for producing non-destructively embossed barrier paper for air-tight and water vapor-tight sealing of cigarette packages (paragraphs 1, 16, and 20) in particular for use as an inner liner, with a roll assembly according claim 1 (see the rejection of claim 1 above), comprising the steps: feeding a barrier paper web through the nip of the roll assembly (Figure 60a); forming an embossed pattern in the barrier paper as the barrier paper web is fed through the nip (Figure 60a).” Regarding claim 14, ‘635 further discloses “wherein the paper thickness (Sp) of the barrier paper is 20 µm to 500 µm (paragraph 17).” Regarding claim 15, ‘635 further discloses “wherein the embossed pattern has an embossing height (HPM) of up to 50 µm (paragraph 84).”
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boegli et al. and ‘635, further in view of Heiskanen et al. (US 2019/0040582). Regarding claims 12 and 13, ‘635, as modified, discloses all that is claimed, as in claim 11 above, but fails to disclose any features of the barrier paper, leaving the choice up to one having ordinary skill in the art. That is, ‘635, as modified, fails to disclose “wherein the barrier paper has a fiber thickness (DF) of up to 100 µm” or “wherein the barrier paper has a fiber length (LF) of up to 3 mm.” Heskanen et al. disclose a paper used for the inner liner of cigarette packages which has fibers which have a thickness of greater than 20 µm and a length of up to 3 mm (paragraphs 36 and 43). It has been held that selection based upon a suitability for an intended purpose is prima facie obvious. See MPEP §2144.07. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the paper of Heskanen et al. in ‘635, as modified, because it has been shown in the art to be suitable for the intended purpose.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA D ZIMMERMAN/ Primary Examiner, Art Unit 2853
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