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 II in the reply filed on 5/27/2026 is acknowledged.
Applicant elected Group II (claims 13-17) without traverse. Applicant has also amended the claim set on 5/27/2026 withdrawing claims 13-17.
A number of phone calls have been made for clarification without response. The Examiner is considering the remarks with the actual election to be an indication of what should be examined. In this case, the elected group is Group II, claims 13-17. With this in mind the claim set will be amended to read as claims 13-17 as originally presented with claims 1-12 and 18-19 as withdrawn.
Claims 1-12 and 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/27/2026.
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.
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) 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al, US patent Publication 2006/0112556 in view of Daly et al, USP 3,405,855.
Regarding claim 13, Nakamura teaches a method of grooving a durable transfer roll core (pipe, see claim 1 and [0009-0017]), comprising: surrounding the durable transfer roll core with a first grooving apparatus and a second grooving apparatus (see figures and [0016-0019]); and moving the first grooving apparatus around and/or along the durable transfer roll core such that a main surface of the durable transfer roll core is grooved via engagement with a first tooling section of the first grooving apparatus [0018-0026]; moving the second grooving apparatus around and/or along the durable transfer roll core [0075] such that a main surface of the durable transfer roll core is grooved via engagement with a second tooling section of the second grooving apparatus [0045-0058].
Figures 3 and 5-7 as well as the descriptions on [0018-0026] and [0045-0058] describe that the act of applying the grooves can come from the relative motion of either the pipe of the grooving apparatus as it moves in a controlled manner in a longitudinal direction and rotation controlled to provide the desired shape and pattern of the grooves in the pipe. Nakamura states that either of the pipe or the grooving device can be the section that moves or is held stationary when the other is moving (see the claims that say at least one of the pipe and groove tool is longitudinal displaced).
Nakamura further teaches that cutting tools are placed at different positions around the tooling section (see figures 3 and 4). Nakamura further teaches that the cutting tools surround multiple points around the durable transfer roll core as the durable transfer roll core travels through the tooling section [0065-0068].
Nakamura further teaches that the grooving apparatus rotates around the durable transfer roll core (circumferential rotation [0075]).
Nakamura further teaches that there are multiple grooving tools to form the desired design of the grooves. Nakamura constantly refers to the grooving device as "grooving tools."
For the sake of completion, if it were to be argued that the plurality tools were multiple grooving sections within one device, then it would be presented that the act of adding a second grooving device would be a mere duplication of parts and would be well within the ability of the average artisan to duplicate a grooving device with a high expectation of success.
Nakamura teaches that the depth and thickness of the grooves are determined through standard means [0058 and 0073] , but is silent as to any values or relationships that the width is greater than the depth. The teaching of these values as being arbitrary to the user with the showing of adjustability is a teaching that the values can be optimized based on the intent of the user. A mere optimization of an adjustable value in a known manner would be obvious to one of ordinary skill in the art at the time of the invention. A showing of unexpected results on the use of a groove that is wider than it is deep will be required to be taken into consideration.
Nakamura is focused on the creation of a grooved pipe. Nakamura does not teach the specific structure being grooved as a durable transfer roll core.
In order to show that the act of applying a grooving device to a cylindrical object is a common way to provide a desired grooved effect, Nakamura will be applied to another teaching that is directed to a transfer roll that states that any conventional method of grooving the roll is acceptable.
In the same field of endeavor of shaping a cylindrical object for industrial usage, Daly teaches that a transfer roll for the papermaking usage is desirable to have grooves cut into a provided roll through known conventional means such as cutting (see column 4 lines 15-44).
It would have been obvious to one of ordinary skill in the art that the method of forming a groove in a cylindrical pipe as taught by Nakamura would have been an advantageous way of providing the desired groove lines in a transfer roll core of a papermaking process as shown as beneficial by Daly for the benefit of providing a transfer roll with a ventilation groove as described in column 4 of daily in a known and conventional manner.
Regarding claim 14, Nakamura further teaches that the durable transfer roll core rotates as the grooving apparatus moves around or along the durable transfer roll core (see first embodiment).
Regarding claim 15, Nakamura further teaches that the grooving apparatus rotates around the durable transfer roll core (circumferential rotation [0075]).
Regarding claim 16, Nakamura further teaches that the grooving apparatus moves along the longitudinal axis of the durable transfer roll core (See figure 3).
Regarding claim 17, Nakamura further teaches that the grooving apparatus rotates around and moves along the axis of the durable transfer roll core (see figures 3 and 6-7 and [0075-0078]).
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 13-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,129,148. Although the claims at issue are not identical, they are not patentably distinct from each other because the modification of the width to depth of the groove is an obvious modification o make to the same method of grooving a roll as taught in both applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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