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
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) 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over D'Souza et al, USP 9,505,179 in view of Hyde et al, USP 7,834,899.
Regarding claim 1, D'Souza teaches a method of making a rolled absorbent paper product (fibrous core, see abstract) comprising:
Advancing a substrate in a machine direction (see figures 17-20), the substrate comprising cellulose fibers (see column 4) with a first circular edge to a second circular edge (see figure 15) and an inner radial surface and an outer radial surface (see figures 2 and 15) with a first surface and a an opposing second surface (see figures 15-19), a first longitudinal edge and second opposing longitudinal edge separated by the cross direction (see figure 15 and 17);
a visible indicia (see figure 15) in the inner radial surface (see figure 15) the visible indicia being substantially parallel with the first circular edge (see figure 15) and a length of absorbent paper product wound onto the tube (see figure 2 and column 5 lines 5-10). D'Souza teaches the use of number or letters as the indica (see figure 15) that are capable of being read by a machine (see discussion above).
D’Souza further teaches helically winding the substrate to form a tube wherein the first surface of the substrate defines an inner radial surface of the tube and the second surface of the substrate defines an outer circumferential surface of the tube (see figures);
bonding (adhesive, item 50) the second surface proximate to the first longitudinal edge and the first surface approximate the second opposing longitudinal edge, and wherein the first and second longitudinal edges extend along a helix angle being substantially equal to the angle Φ (see figure 15); and
winding a length of absorbent paper product onto the tube (see figure 10).
D'Souza explicit teaches the use and positioning of the visual indicia, but D'Souza does not explicitly state that the indicia is a bleached cellulose fiber. D'Souza teaches multiple methods of forming the indicia (printing, embossing, and others) but is silent to the use of bleaching cellulose fibers from a laser.
In the same field of endeavor, Hyde teaches a method of laser marking paper substrates for identification purposes (see abstract). Hyde teaches that the laser marking will change the color of the exposed surface to create a long lasting with a reaction (see claim 1).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the laser marking system of Hyde in the tube production method of D'Souza for the benefit of marking the paper-based substrate with a known process to change the color of the substrate to produce trackable markings. This would have been a simple substitution of one known element for another (ink printing to laser marking) with a high expectation of success.
In regards to claims 2-3 and 5, D'Souza and Hyde teach the positioning and placement of the visual indicia (Hyde even going as far as saying the level of accuracy can be 50- 100 microns column 5 lines 38-41), but are silent to the specific placement in terms of distance from the edge and width of the indicia and such.
The shape and size of the indicia are a matter of aesthetic design choice. As it has been indicated that the function of the visual indicia is to be able to be seen by the operator, as long as that function is achieved there is no patentable difference between eh placement or width of the indicia. Both D'Souza and Hyde discus how to form, angle, and place the indicia exactly where they are desired. Therefore, the average artisan has both the ability and direction to place and size the visual indicia in the placement and size as desired to be seen by the operator.
See ln re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (Claim was directed to an advertising display device comprising a bottle and a hollow member in the shape of a human figure from the waist up which was adapted to fit over and cover the neck of the bottle, wherein the hollow member and the bottle together give the impression of a human body. Appellant argued that certain limitations in the upper part of the body, including the arrangement of the arms, were not taught by the prior art. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.).
Claim(s) 4 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over D'Souza et al, USP 9,505,179 in view of Hyde et al, USP 7,834,899in view of Howarth et al, US Patent Publication 2011/0146912.
Regarding claim 4, D’Souza and Hyde are silent as to the wavelength and particulars of the laser and speed of operation.
In the same field of endeavor of using lasers to mark substrates, Howarth teaches that the laser comprises a CO2 laser [0148] at a wavelength of from about 9.6 um to about 10.8 um (10.6 [0148]) to effectively mark the paper-based material.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the conventional laser settings as taught by Howarth in the D’Souza/Hyde settings for the benefit of utilizing a known and conventional setting to arrive at a predictable end result of marking the paper based substrates for the same intended use as the primary reference is merely silent as to what these settings are.
Regarding claims 7-11, Howarth remains as applied above and further teaches the claimed speed of the laser application [0147-0148].
Howarth teaches the print head speed of the laser as well as the act of matching the linear speed of the substrate and holding the print head constant as an alternative. A range of values for the linear speed of the substrate is not given but instead a singular example of 1.27 m/sec is provided in [0145].
The Examiner states that the example provided of a linear speed of 1.27 m/sec will read on the claimed limitation of “about 1.5 m/sec.” Alternatively, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize a basic engineering parameter such as the operational speed and power density as there is not a provided benefit to the claimed range of about 1.5 to about 2.0 and the act of optimizing a known parameter is well within the ability of the average artisan.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over D'Souza et al, USP 9,505,179 in view of Hyde et al, USP 7,834,899 and in further view of Blok et al, USP 6,253,995.
Regarding claim 6, D'Souza and Hyde both teach the use of paper, but is silent on the specific term of Kraft paper. D'Souza is completely silent on if the paper or paperboard is Kraft of not. It simply states that any conventional type can be utilized in a brown, bleached, virgin, or modified format. It is clear from the reading that the type of paper utilized is not a key component as any conventional paper or paperboard can be utilized to produce the desired fibrous core. Hyde explicitly teaches that the desired substrate is paper (see claims as well as column 4 line 29). Lines 26-30 of column 4 detail that the goal is to utilize the energy form the laser light to create a chemical reaction in the paper creating a mark.
To show that Kraft paper is conventionally what is utilized in these otherwise unstated references, Blok is presented.
Blok teaches that Kraft paper is utilized in either its bleached or unbleached form to provide higher quality printing of indica due to the stretching of the fibers at the smaller levels to produce a better final product (column 5 lines 13-30).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize Kraft as the paper taught in D'Souza, as Blok explicitly teaches that this will provide a known advantage of producing a higher quality paper with an indica.
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.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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