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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-21 in the reply filed on 10 July 2026 is acknowledged.
Claims 22-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected windable sheet material, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10 July 2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-21 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “windable, in particular pre-bonded sheet material.” The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language (i.e. “in particular”) is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Similar language is used to claim ranges of values in claims 13-19 which recites a broader range and then “in particular” some value in that range. Claims 13-19 are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language (i.e. “in particular”) is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim limitation “device for heating” in claim 21 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Page 5, line 17 is the only recitation of “device for heating” and the only recitation of “heat” in the entire application. No specific device is described. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-12 and 18-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Trinkaus (US 20180228666 A1).
As to claim 1, Trinkaus teaches a roll assembly for finishing a windable, in particular pre-bonded sheet material (apertured substrate, see abstract and Fig 27), comprising a first and a second embossing roll (first and second rolls 8, 10 as shown in Figs 1 and 23) which form a roll nip therebetween (nip 6, see Fig 1.) for embossing the sheet material ([0063]: “The three-dimensional substrates may be apertured. Referring to FIG. 1, the three-dimensional substrates, or three-dimensional apertured substrates 2, may be created by conveying a precursor substrate 4 through a nip 6 formed between a first roll 8 and a second roll 10.”); wherein the first roll has a plurality of projections ([0066]: “FIG. 2 is a front view of a portion of an example of the first roll 8. FIG. 2A is a cross-sectional view of FIG. 2 taken about line 2A-2A. The first roll 8 may comprise a first plurality of projections 20 extending at least partially outwardly from the first radial outer surface 16.”) for producing structural elements in the sheet material ([0066] cont.: “The first plurality of projections 20 may be configured to form, or at least partially form apertures in the precursor substrate 4.”) and the second roll has a plurality of indentations ([0069]: “FIG. 3 is a front view of a portion of an example of the second roll 10. FIG. 3A is a cross-sectional view of FIG. 3 taken about line 3A-3A. The second roll 10 may comprise a second plurality of projections 36 extending at least partially outwardly from the second radial outer surface 18.”) for receiving the projections (as shown for example in Fig 4); wherein a roll nip portion formed between the first and the second embossing roll is designed to produce a border of locally bonded sheet material which surrounds the structural element at least in portions (as illustrated in Fig 27, the three-dimensional elements are at least partially surrounded by boarder regions, see Examiner’s annotated Fig 27 below. The structural elements and borders are formed by local bonding due to rolling between rollers; see Fig 24), wherein the roll nip portion has at least one first conical bonding portion (see annotated Fig 27 below), characterized in that the roll nip portion further has at least one bonding portion formed substantially in parallel with the roll axes (see annotated Fig 27 below).
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As to claim 2, Trinkaus teaches the roll assembly according to claim 1, wherein the roll nip portion has a stepped profile (the profile shown in Fig 27 is stepped because there are lower regions (at parallel and conical) and upper regions (at 129) separated by angled portions (132).).
As to claim 3, Trinkaus teaches the roll assembly according to claim 1, wherein the first conical bonding portion is formed between a conical proximal flank portion of the projections (identified near item 26 in Applicant’s Fig 7 below) and a conical mouth portion of the indentation (identified near Applicant’s item 28 in Fig 7 below) (See that Trinkaus creates corresponding structure in Fig 27, below).
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As to claim 4, Trinkaus teaches the roll assembly according to claim 1, wherein the bonding portion formed substantially parallel to the roll axes is formed between a saddle region of the projections aligned substantially parallel to the roll axes and a shoulder region of the indentation aligned substantially parallel to the roll axes (Applicant teaches the saddle region (13) and the shoulder region (14) are both on what is identified as the parallel region in Examiner’s annotated Fig 27 above. Thus Trinkaus’ structure meets this structural limitation).
As to claim 5, Trinkaus teaches the roll assembly according to claim 1, wherein the first conical bonding portion directly adjoins the bonding portion formed substantially parallel to the roll axes (the structure of Applicant’s conical bonding portion (8) is shown in Fig 7 as item 26, and the parallel portion at 27. As shown in the comparison image, Trinkaus teaches corresponding structure.).
As to claim 6, Trinkaus teaches the roll assembly according to claim 5, wherein the first conical bonding portion encloses the structural element in a ring shape (Trinkaus teaches the structures are ring shaped in Figs 2 and 3.).
As to claim 7, Trinkaus teaches the roll assembly according to claim 5, wherein the bonding portion aligned substantially parallel to the roll axes partially surrounds the first conical bonding portion in portions (as shown in Figs 7A-7G, the parallel portions may surround the conical sections in portions, not necessarily ring shapes.).
As to claim 8, Trinkaus teaches the roll assembly according to claim 1, wherein the projections are needles which are provided for producing structural elements designed as openings (projections 20 as shown in Trinkaus Fig 2A are needles and are useful for forming openings ).
As to claim 9, Trinkaus teaches the roll assembly according to claim 1, wherein the projections are embossing elevations which are provided for producing structural elements designed as elevations (Trinkaus teaches with respect to Fig 26 “densifying projections 130” used to create compressed regions or densified areas 132. See [0106].).
As to claim 10, Trinkaus teaches the roll assembly according to claim 1, wherein the roll nip portion further comprises a second conical bonding portion which is opposite the first conical bonding portion and adjoins the bonding portion formed substantially parallel to the roll axes (Trinkaus teaches projections 20 extending from roll 8 and also teaches projections 36 extending from roll 10. Between them is a parallel bonding portion), wherein the first and the second conical bonding portion extend in opposite directions away from the bonding portion formed substantially parallel to the roll axes (as shown in Fig 26, projections 120 extend down while projections 136 extend upwards).
As to claim 11, Trinkaus teaches the roll assembly according to claim 1, wherein the second roll has a plurality of embossing elevations for producing elevations in the sheet material and the first roll has a plurality of recesses for receiving the embossing elevations (see Figures 2, 2A, 3, and 3A, which chows that each roll 8, 10, has a plurality of embossing elevations and a plurality of recesses therefor.).
As to claim 12, Trinkaus teaches the roll assembly according to claim 1, wherein the second conical bonding portion is formed between a conical proximal flank portion of the embossing elevation and a conical mouth portion of the recess (as shown in Applicant’s Fig 7 and Trinkaus’ Fig 27, above, which have corresponding structures.).
As to claim 18, Trinkaus teaches the roll assembly according to claim 1, wherein an angle (a) of the first conical bonding portion to the vertical is between 10° and 18° preferably 14° (see first angle A in paragraph [0118] which is taught to be from 10 to 18 degrees in increments of 0.1 degrees, which includes 14.).
As to claim 19, Trinkaus teaches the roll assembly according to claim 10, wherein an angle (y) of the second conical bonding portion to the vertical is between 10° and 18° preferably 14° (see first angle B in paragraph [0118] which is taught to be from 10 to 18 degrees in increments of 0.1 degrees, which includes 14.).
As to claim 20, Trinkaus teaches the roll assembly according to claim 11, wherein the first conical bonding portion is aligned parallel to the second conical bonding portion (as shown in Trinkaus Fig 27, above).
As to claim 21, Trinkaus teaches the roll assembly according to claim 1, wherein a device for heating the roll surface is provided in the first and/or in the second embossing roll (The term “device for heating” invokes 112(f). No particular device is discussed in the present application. Trinkaus teaches: [0121]: “As discussed herein, the first and second rolls 8, 10 and/or the precursor substrate 4 may be heated to aid in formation of the substrate 2.” Trinkaus describes hot air blown through tunnels in the rolls 8, 10 in paragraph [0093].).
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.
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Trinkaus.
As to claim 13, Trinkaus teaches the roll assembly according to claim 1, but does not teach a roll nip thickness (D2) in the bonding portion formed substantially parallel to the roll axes is between 0.01 mm and 0.03 mm, preferably 0.02 mm.
However, Trinkaus teaches the distance between the rolls may be adjusted. See [0114]: “As such, the center-to-center distance of the first central longitudinal axis 32 of the first roll may be adjusted with respect to the second central longitudinal axis 32 of the second roll to determine the amount of compression in portions of the precursor substrate 4 between the side walls 28 and the shoulders 46. In some instances, more compression may be desired and, in other instances, less compression may be desired. The thickness of the precursor substrate 4 may also be a factor to consider in setting the center-to-center distance of the rolls 8, 10.”
Still, Trinkaus does not address the specific thickness of the nip parallel bonding portion. Applicant has not disclosed that having the thickness at this specific value solves any stated problem or is for any particular purpose. Moreover, it appears that the nip of Trinkaus, or applicant’s invention, would perform equally well with the nip thickness at any reasonable value to achieve more or less compression on the material since Trinkaus’ thickness is adjustable and is designed for use on the same kind of materials to achieve the same end products.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Trinkaus such that the nip thickness is within the range as claimed because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Trinkaus.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
As to claim 14, Trinkaus teaches the roll assembly according to claim 1, but does not teach a roll nip thickness (D1) in the first and/or in the second conical bonding portion is between 0.02 mm and 0.08 mm, preferably 0.05 mm.
However, Trinkaus teaches the distance between the rolls may be adjusted. See [0114]: “As such, the center-to-center distance of the first central longitudinal axis 32 of the first roll may be adjusted with respect to the second central longitudinal axis 32 of the second roll to determine the amount of compression in portions of the precursor substrate 4 between the side walls 28 and the shoulders 46. In some instances, more compression may be desired and, in other instances, less compression may be desired. The thickness of the precursor substrate 4 may also be a factor to consider in setting the center-to-center distance of the rolls 8, 10.”
Still, Trinkaus does not address the specific thickness of the nip conical bonding portion. Applicant has not disclosed that having the thickness at this specific value solves any stated problem or is for any particular purpose. Moreover, it appears that the nip of Trinkaus, or applicant’s invention, would perform equally well with the nip thickness at any reasonable value to achieve more or less compression on the material since Trinkaus’ thickness is adjustable and is designed for use on the same kind of materials to achieve the same end products.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Trinkaus such that the nip thickness is within the range as claimed because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Trinkaus.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
As to claim 15, Trinkaus teaches the roll assembly according to claim 1, but does not teach a height (H4) of the first conical bonding portion is between 0.2 mm and 0.6 mm, preferably 0.4 mm.
However, Trinkaus discloses photographs of material which has been rolled, and given the expected thickness of the material in the photographs, a person having ordinary skill in the art would reasonably infer that the specific heights of the components are within or at least near the range as claimed.
Still, Trinkaus does not address the specific height of the first conical portion. Yet Applicant has not disclosed that having the height at this specific value solves any stated problem or is for any particular purpose. Moreover, it appears that the configuration of Trinkaus, or applicant’s invention, would perform equally well with the claimed height at any reasonable value to achieve a given material configuration in view of Trinkaus’ diagrams and photographs of rolls designed for use on the same kind of materials to achieve the same end products.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Trinkaus such that the height of the first conical portion is within the range as claimed because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Trinkaus.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
As to claim 16, Trinkaus teaches the roll assembly according to claim 10, wherein a height (H5) of the second conical bonding portion is between 0.2 mm and 0.6 mm, preferably 0.4 mm.
However, Trinkaus discloses photographs of material which has been rolled, and given the expected thickness of the material in the photographs, a person having ordinary skill in the art would reasonably infer that the specific heights of the components are within or at least near the range as claimed.
Still, Trinkaus does not address the specific height of the second conical portion. Yet Applicant has not disclosed that having the height at this specific value solves any stated problem or is for any particular purpose. Moreover, it appears that the configuration of Trinkaus, or applicant’s invention, would perform equally well with the claimed height at any reasonable value to achieve a given material configuration in view of Trinkaus’ diagrams and photographs of rolls designed for use on the same kind of materials to achieve the same end products.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Trinkaus such that the height of the second conical portion is within the range as claimed because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Trinkaus.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
As to claim 17, Trinkaus teaches the roll assembly according to claim 1, wherein a width (B2) of the bonding portion formed substantially parallel to the roll axes is between 0.5 mm and 1 mm, preferably 0.7 mm.
However, Trinkaus discloses photographs of material which has been rolled, and given the expected thickness of the material in the photographs, a person having ordinary skill in the art would reasonably infer that the specific widths of the components are within or at least near the range as claimed.
Still, Trinkaus does not address the specific width of the parallel bonding portion. Yet Applicant has not disclosed that having the width at this specific value solves any stated problem or is for any particular purpose. Moreover, it appears that the configuration of Trinkaus, or applicant’s invention, would perform equally well with the claimed width at any reasonable value to achieve a given material configuration in view of Trinkaus’ diagrams and photographs of rolls designed for use on the same kind of materials to achieve the same end products.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Trinkaus such that the width of the parallel bonding portion is within the range as claimed because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Trinkaus.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 20 August 2026
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