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 . 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.
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 1-3, 7, 9-10, 12-15, 18-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7, 9-10, 12-15, 18-20 of U.S. Patent No. 12485640. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S Patent 12485640 is the exact same as the instant claim 1, but has an added limitation that makes the patent claim narrower. Claims 2-3, 9-10, 12-15, and 18-20, are exactly the same as the corresponding patent claims.
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.
Claim(s) 1-2, 7, 9-10, 12-15, 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kohler (U.S PG Pub 20210040696 A1).
Regarding claim 1, Kohler, drawn to the art of a method of correcting post-warp in a multi-layer product under prevailing conditions (Abstract), discloses detecting an initial warp value that is indicative of an initial degree of warpage [0096-0097]. Kohler also discloses a step of selecting a first-moisture condition setpoint based on a database correlating a plurality of moisture-conditioning setpoints to respective initial warp values and their associates post-warp values for prior products, wherein the post-warp values are indicative of the degree of warpage of the prior products, and further where the selection is based on comparing the detected initial warp value and the initial warp value in the database [0093-0094 & 0099]. Kohler also discloses adjusting a moisture content in a first layer of the multi-layer product according to the selected first moisture-conditioning setpoint [0083].
Regarding claim 2, Kohler has further disclosed detecting a post-warp value of the product and updating the database to correlate the detected post-warp and initial warp values to the selected first moisture setpoint [0096-0097 & 0099].
Regarding claim 7, Kohler discloses enhancing the degree of warpage prior to or during detecting the initial warp value [0094 & 006-0097 & 0099-0100].
Regarding claim 9, Kohler has disclosed detecting the initial warp value with a warp detection apparatus [0096].
Regarding claim 10, Kohler discloses the warp detection apparatus to be an imaging device [0096].
Regarding claim 12, Kohler has also disclosed detecting the initial warp value at a location directly downstream from a double-backer of a corrugation apparatus [0098].
Regarding claim 13, Kohler discloses a step of selecting a second moisture setpoint also based on a database, wherein the first and second setpoints are correlated together and wherein the moisture content of a second layer of the multi-layer product is adjusted based on the selected second moisture setpoint [0093-0095 & 0099].
Regarding claim 14, Kohler has disclosed using an artificial intelligence model to select the moisture setpoint, with the AI model being trained based on the database [0093-0995 & 0099-0100].
Regarding claim 15, Kohler discloses an apparatus as claimed including a moisture conditioning apparatus for adjusting a moisture content [0100], a warp detection apparatus [0096], and a non-transitory medium storing a database and a program, wherein the program comprises instructions [0110-0111], wherein the instructions are executed by a processor of an electronic device and wherein the steps are as claimed in instant claim 1 above (see claim 1 rejection above).
Regarding claim 18, Kohler discloses that the product is an uncut, unscored double-faced corrugated product [0003 & 0016]. It is also noted, however, that the instant limitation amount to an intended use or product and article worked upon limitation and does not patentably limit the apparatus or its structure (MPEP 2144 & 2115).
Regarding claim 19, Kohler teaches the warp detection apparatus to be directly downstream from a double backer in a travel direction of the corrugated board product [0096-0098].
Regarding claim 20, Kohler has disclosed a moisture sensor positioned downstream from the warp detection apparatus in a travel direction of the product, wherein the moisture sensor detects a moisture content of the product [0101].
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kohler (U.S PG Pub 20210040696 A1).
Regarding claim 3, Kohler discloses measuring the post-warp value at 24 hours or 48 hours after, which falls after 30 seconds at least [0097]. Further, Kohler discloses that the dwell time or dwell distance of a travelling web (which directly would have an effect on when values of warp are measured of the web product), has an effect on the applied moisture content to the web in a given corrugating process, thus establishing the dwell time/dwell distance and i.e. when measurements are taken, as a result effective variable [0057 & 0086]. The courts have held that it is within the purview of an ordinarily skilled artisan to routinely optimize a result effective variable in the absence of new or unexpected results (MPEP 2144.05(II)).
Allowable Subject Matter
Claims 5-6, 8, and 16-17 are 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: the prior art of record has not explicitly disclosed a first and second flotation column as claimed and the limitations pertaining to it in claims 5, 8, and 16 (claims 6 and 17 depend on claims 5 & 16, respectively). While Kohler (U.S PG Pub 20100181015A1 & U.S PG Pub 20060225830A1 (referred to hereinafter as Kohler 2 & Kohler 3, respectively)), does disclose a zero-contact roll over which the web is transported by a cushion of air, Kohler 2 & 3 has not explicitly disclosed a first and second flotation column and the limitations as pertaining to the columns as claimed in claims 5, 8, and 16.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US-20150224733-A1, US-20220267108-A1, US-20180345618-A1, US-20180244480-A1, US-20160236438-A1, US-20080077267-A1, US-20050284579-A1, US-11375124-B2, US-10858202-B1, US-10655950-B2, US-9169086-B1, US-7993081-B2, US-6630633-B1, US-5837974-A, US-5788803-A, US-5632830-A, US-5090330-A, US-4805626-A, US-4616960-A, US-4202723-A, US-3826178-A, US-20060225830-A1, US-20100181015-A1, US-6364247-B1, US-3981758-A, US-3178494-A – all drawn to corrugation apparatus and methods, as well as warp detection apparatus and methods.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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