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 § 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 7, 20, 25-26, 28-29, and 31-32 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Schouten et al. (US 20190270266) (of record).
Regarding claim 1, Schouten discloses a method for manufacturing a continuous strip in a tire manufacturing line, wherein the tire manufacturing line comprises at least one conveying unit (Figs. 1-4: 30, 40, 41, 42, 43, 44, 45, 46) for conveying the continuous strip (Figs. 1-4: 9) along a conveyance path through the tire manufacturing line, wherein the method comprises the steps of: a) operating the tire manufacturing line in a tire manufacturing mode (Figs. 1-4) ([0057]); b) controlling the at least one conveying unit to convey the continuous strip in a conveyance direction along the conveyance path in the tire manufacturing mode (Figs. 1-4) ([0057]); c) switching over at least a part of the tire manufacturing line, including the at least one conveying unit, from the tire manufacturing mode to an interruption mode ([0026], [0058]: wherein the strip is held stationary, i.e., interruption mode); and d) controlling the at least one conveying unit in the interruption mode to repeatedly move the continuous strip back-and-forth in the conveyance direction and a retraction direction opposite to the conveyance direction along the conveyance path ([0026], [0058]: wherein the strip is held stationary, i.e., interruption mode, and the dancer roller 43 is moved in direction D for buffering the strip, i.e., moving back-and-forth).
Regarding claim 2, Schouten further discloses the at least one conveying unit, in step c), is controlled to stop moving the continuous strip along the conveyance path ([0026], [0058]: wherein the strip is held stationary, i.e., interruption mode).
Regarding claim 7, Schouten further discloses the continuous strip is moved back-and-forth in step d) over a first distance in the conveyance direction and a second distance in the retraction direction ([0026], [0058]: wherein any amount of movement in either direction, as disclosed, will necessarily result in a first distance and a second distance).
Regarding claim 20, Schouten further discloses the at least one conveying unit comprises a first conveying unit (Figs. 1-4: 30, 40, 41, 42, 43, 44, or 45) and a second conveying unit (Figs. 1-4: 40, 41, 42, 43, 44, 45, or 46) located downstream of the first conveying unit along the conveyance path.
Regarding claim 25, Schouten further discloses the at least one conveying unit comprises conveyor rollers (Figs. 1-4: 30, 40, 41, 42, 43, 44, 45, 46).
Regarding claim 26, Schouten further discloses the tire manufacturing line comprises an extruder (Fig. 10: 102) for extruding the continuous strip, wherein the at least one conveying unit comprises a shrink conveyor (Figs. 1-4, 10: 30) for receiving the continuous strip (Figs. 1-4, 10: 9) from said extruder (Fig. 10: 102) ([0054]-[0056], [0072], [0074]).
Regarding claim 28, Schouten further discloses the at least one conveying unit comprises a festooner (Fig. 10: 101) ([0030], [0072]).
Regarding claim 29, Schouten further discloses the tire manufacturing line comprises at least one downstream station (Figs. 1-4: C) downstream of the at least one conveying unit, wherein the at least one downstream station is controlled to hold the continuous strip stationary in the conveying direction along the conveyance path in the interruption mode ([0026]: wherein the strip is held stationary, i.e., interruption mode, at the cutting station C).
Regarding claims 31-32, Schouten further discloses the continuous strip is a cordless strip or a cord-reinforced strip ([0014]: wherein the strip may be one with or without cords).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 8-11 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schouten et al. (US 20190270266) (of record) as applied to claim 1 above, and optionally further in view of Schouten et al. (ES 2837397, see machine translation) (“Schouten II”) (of record).
Regarding claim 8, Schouten discloses that the strip is repeatedly moved back-and-forth, and the strip is moved back-and-forth over the first distance in the conveyance direction and the second distance in the retraction direction. Accordingly, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the back-and-forth movement over the second distance may be done in a limited number of ways: (1) equal to the first distance for each repetition of the back-and-forth movement of the continuous strip; or (2) varied from the first distance for each repetition of the back-and-forth movement of the continuous strip. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Optionally, Schouten discloses that the strip is repeatedly moved back-and-forth for buffering or dancing, and while Schouten discloses the movement as “dancing” ([0026], [0058]), another publication of the same invention disclosed by Schouten II discloses that the movement is “oscillating” ([0031], [0065]). In other words, the back-and-forth movement is recognized as oscillating. Accordingly, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the back-and-forth movement over the second distance may be done in a limited number of ways: (1) equal to the first distance for each repetition of the back-and-forth movement of the continuous strip; or (2) varied from the first distance for each repetition of the back-and-forth movement of the continuous strip. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Regarding claims 9-11, Schouten discloses that the strip is repeatedly moved back-and-forth, and the strip is moved back-and-forth over the first distance in the conveyance direction. Accordingly, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the back-and-forth movement over the first distance may be done in a limited number of ways: (1) by keeping the first distance constant between repetitions of the back-and-forth movement of the continuous strip; or (2) by varying the first distance between repetitions of the back-and-forth movement of the continuous strip. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Furthermore, one of ordinary skill in the art would further recognize, or alternatively find obvious, that, if varied, the back-and-forth movement over the first distance may be done in a limited number of ways: (1) by being incrementally varied between repetitions of the back-and-forth movement of the continuous strip; or (2) by being constantly or uniformly varied between repetitions of the back-and-forth movement of the continuous strip. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Optionally, Schouten discloses that the strip is repeatedly moved back-and-forth for buffering or dancing, and while Schouten discloses the movement as “dancing” ([0026], [0058]), another publication of the same invention disclosed by Schouten II discloses that the movement is “oscillating” ([0031], [0065]). In other words, the back-and-forth movement is recognized as oscillating. Accordingly, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the back-and-forth movement over the first distance may be done in a limited number of ways: (1) by keeping the first distance constant between repetitions of the back-and-forth movement of the continuous strip; or (2) by varying the first distance between repetitions of the back-and-forth movement of the continuous strip. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Regarding claims 13-14, Schouten discloses that the strip is repeatedly moved back-and-forth for buffering or dancing. Optionally, while Schouten discloses the movement as “dancing” ([0026], [0058]), another publication of the same invention disclosed by Schouten II discloses that the movement is “oscillating” ([0031], [0065]). In other words, the back-and-forth movement is recognized as oscillating. Accordingly, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the buffering/dancing/oscillating/back-and-forth movement may be done in a limited number of ways: (1) periodic motion; or (2) non-periodic motion. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Claim(s) 1-2, 7-14, 16, 18, 20, 25, 29, and 31-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (JP 06226880, see machine translation) (of record) and optionally Schouten et al. (US 20190270266) (of record) and/or Schouten et al. (ES 2837397, see machine translation) (“Schouten II”) (of record).
Regarding claim 1, Hayashi discloses a method for manufacturing a continuous strip in a tire manufacturing line, wherein the tire manufacturing line comprises at least one conveying unit for conveying the continuous strip (Fig. 1: 10, 11, 12) along a conveyance path through the tire manufacturing line (Fig. 1), wherein the method comprises the steps of: a) operating the tire manufacturing line in a tire manufacturing mode ([0005]-[0006], [0008], [0013]-[0014], [0019]-[0020], [0026]); b) controlling the at least one conveying unit to convey the continuous strip in a conveyance direction along the conveyance path in the tire manufacturing mode; c) switching over at least a part of the tire manufacturing line, including the at least one conveying unit, from the tire manufacturing mode to an interruption mode ([0008]-[0009], [0020]-[0021], [0026]); and d) controlling the at least one conveying unit in the interruption mode to move the continuous strip back-and-forth in the conveyance direction and a retraction direction opposite to the conveyance direction along the conveyance path ([0005], [0008], [0026]).
Hayashi further discloses that moving the strip back-and-forth at the time of cutting prevents the strip tip from shifting or wrinkling, and even if there is slippage the length can be measured accurately and a ply can be obtained without any variation ([0008]-[0009]). In other words, moving the strip back-and-forth allows for accurate measuring of the strip, as well as the prevention of shifting and wrinkles. While Hayashi does not expressly recite that the back-and-forth movement is repeated, case law holds that mere reversal of movements and rearrangement of parts are obvious modifications. See MPEP 2144.04. Accordingly, it would have been obvious to repeatedly move the continuous strip back-and-forth in the conveyance direction and a retraction direction opposite to the conveyance direction along the conveyance path as needed. Repeating such movement constitutes no more than a routine optimization of a known technique to achieve its intended purpose. Moreover, repeating a known step to enhance its intended effect has been recognized as an obvious matter of design choice where no new or unexpected result is produced. Therefore modifying Hayashi to perform repeated back-and-forth movement would have yield predictable results and is considered obvious.
Optionally, Schouten also discloses a method for manufacturing a continuous strip in a tire manufacturing line (see rejection above), wherein the strip is held stationary at a cutting station (i.e., interruption mode) so that the strip may be moved back-and-forth for buffering ([0026], [0058]). In other words, it is known in the tire strip conveyance art to convey a strip to a cutting station, as in Hayashi, and stop to hold the strip stationary (i.e., interruption mode), as in Hayashi, and buffer (i.e., repeatedly move back-and-forth) the strip while in the interruption mode. Moreover, the method of Schouten has the advantage of positioning the strip accurately with respect to the output member and cutting device ([0033]-[0036]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify the back-and-forth movement of Hayashi to be repeated as is generally known in the similar art for the advantages discussed above, as taught by Schouten.
Additionally or alternatively, Schouten II is another publication of the same invention disclosed by Schouten, wherein the repeated buffering back-and-forth movement is recognized as oscillating so as to separate the incoming continuous strip from the stationary front end within the feed assembly (i.e., manufacturing line) ([0031], [0065]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify the back-and-forth movement of Hayashi to be repeated as is generally known in the similar art for the advantages discussed above, as taught by Schouten II.
Regarding claim 2, Hayashi further discloses the at least one conveying unit, in step c), is controlled to stop moving the continuous strip along the conveyance path ([0009], [0016], [0021]).
Additionally, Schouten further discloses the at least one conveying unit, in step c), is controlled to stop moving the continuous strip along the conveyance path ([0026], [0058]: wherein the strip is held stationary, i.e., interruption mode).
Regarding claim 7, Hayashi further discloses the continuous strip is moved back-and-forth in step d) over a first distance in the conveyance direction and a second distance in the retraction direction ([0008]-[0009], [0020]-[0021], [0026]).
Additionally, Schouten further discloses the continuous strip is moved back-and-forth in step d) over a first distance in the conveyance direction and a second distance in the retraction direction ([0026], [0058]: wherein any amount of movement in either direction, as disclosed, will necessarily result in a first distance and a second distance).
Regarding claim 8, Hayashi discloses that the strip is repeatedly moved back-and-forth, and the strip is moved back-and-forth over the first distance in the conveyance direction and the second distance in the retraction direction. Accordingly, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the back-and-forth movement over the second distance may be done in a limited number of ways: (1) equal to the first distance for each repetition of the back-and-forth movement of the continuous strip; or (2) varied from the first distance for each repetition of the back-and-forth movement of the continuous strip. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Regarding claims 9-11, Hayashi discloses that the strip is repeatedly moved back-and-forth, and the strip is moved back-and-forth over the first distance in the conveyance direction. Accordingly, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the back-and-forth movement over the first distance may be done in a limited number of ways: (1) by keeping the first distance constant between repetitions of the back-and-forth movement of the continuous strip; or (2) by varying the first distance between repetitions of the back-and-forth movement of the continuous strip. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Furthermore, one of ordinary skill in the art would further recognize, or alternatively find obvious, that, if varied, the back-and-forth movement over the first distance may be done in a limited number of ways: (1) by being incrementally varied between repetitions of the back-and-forth movement of the continuous strip; or (2) by being constantly or uniformly varied between repetitions of the back-and-forth movement of the continuous strip. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Regarding claim 12, Hayashi further discloses that the first distance is moved back a predetermined distance in order to accurately measure the strip without causing wrinkles, shifting, or variations ([0005], [0008], [0019], [0025]-[0026]). In other words, the first distance is considered to be a result-effective variable that will affect the accuracy and uniformity of the strip conveyance. Accordingly, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for the first distance. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the first distance as needed and desired in order to improve the accuracy and uniformity of the strip conveyance.
Moreover, although Hayashi discloses an example wherein the first distance is 30 mm (i.e., 3 cm) ([0019]), this is merely a preferable example and does not explicitly limit the disclosure to such a limitation. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123.
Regarding claims 13-14, Hayashi discloses that the strip is repeatedly moved back-and-forth Accordingly, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the buffering/dancing/oscillating/back-and-forth movement may be done in a limited number of ways: (1) periodic motion; or (2) non-periodic motion. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Regarding claim 16, Hayashi further discloses the back-and-forth movement of the continuous strip in step d) is controlled automatically ([0005], [0008], [0019], [0026]: wherein the distance moved is predetermined in response to a certain measurement/trigger without any human intervention, i.e., automatic).
Regarding claim 18, Hayashi further discloses the tire manufacturing line is switched over from the tire manufacturing mode to the interruption mode in response to measurements detected by measuring rollers (i.e., an interruption signal) ([0015], [0019]-[0020]).
Regarding claim 20, Hayashi further discloses the at least one conveying unit comprises a first conveying unit (Fig. 1: 3A) and a second conveying unit (Fig. 1: 3B) located downstream of the first conveying unit along the conveyance path.
Regarding claim 25, Hayashi further discloses the at least one conveying unit comprises conveyor rollers (Fig. 1).
Optionally, Schouten further discloses the at least one conveying unit comprises conveyor rollers (Figs. 1-4: 30, 40, 41, 42, 43, 44, 45, 46).
Regarding claim 29, Hayashi further discloses the tire manufacturing line comprises at least one downstream station (Fig. 1: 6) downstream of the at least one conveying unit (Fig. 1: 3A, 3B), wherein the at least one downstream station is controlled to hold the continuous strip stationary in the conveying direction along the conveyance path in the interruption mode ([0021]).
Optionally, Schouten further discloses the tire manufacturing line comprises at least one downstream station (Figs. 1-4: C) downstream of the at least one conveying unit, wherein the at least one downstream station is controlled to hold the continuous strip stationary in the conveying direction along the conveyance path in the interruption mode ([0026]: wherein the strip is held stationary, i.e., interruption mode, at the cutting station C).
Regarding claims 31-32, Hayashi further discloses the strip is a ply ([0008]). While Hayashi does not expressly recite if the ply does or does not comprise cord reinforcements, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the ply may be provided in a limited number of ways: (1) as a cordless strip; or (2) as a cord-reinforced strip. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B).
Optionally, Schouten further discloses the continuous strip is a cordless strip or a cord-reinforced strip ([0014]: wherein the strip may be one with or without cords).
Allowable Subject Matter
Claims 3-4, 6, 15, 19, 21, 23-24, 27, and 30 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 reasons for indicating allowable subject matter in the 04/14/2026 Nonfinal Rejection are maintained.
Response to Arguments
Applicant's arguments filed 07/10/2026 have been fully considered but they are not persuasive.
On pages 6-7 of the Remarks, Applicant argues that the buffering action of the dancer roller disclosed by Schouten does not equate to the claimed “repeatedly” moving back-and-forth step. Applicant argues “[t]he claimed solution is to keep the strip in continuous, repeated motion to prevent it from settling and deforming” and Schouten “explicitly ties the dancer roller's function to the moment of cutting” such that “[t]he purpose of the dancer roller (43) is to manage the continuous feed of the strip ("incoming continuous strip") while its leading end is temporarily paused ("held stationary") so that the knife can make a cut. This is a micro-pause within an otherwise active and ongoing manufacturing process. It is not a line stoppage or a period of general inactivity. The buffering action is a direct consequence of the cutting action.” Applicant argues “Schouten's dancer roller performs a buffering function to manage slack in the strip during the cutting process when the leading end is held stationary for the cut. This is part of the normal, active operational cycle. Schouten does not teach or suggest repeatedly moving the strip back- and-forth during a line stoppage or period of inactivity for the purpose of preventing deformation. In fact, the purpose of a dancer roller in Schouten is to smoothly manage tension by moving to one position (buffering) and then another (releasing) in a controlled sequence to facilitate the cutting process. Repeatedly moving the dancer roller back-and-forth during the stationary phase would defeat its purpose. It would not be buffering in a controlled way but would instead be actively creating cycles of high tension and slack in the strip at the most critical moment of the process. This uncontrolled state is the opposite of what is needed for a high-precision cutting operation.” Applicant further argues “the single act of buffering slack during a cut is not the same as the continuous, periodic rocking motion as claimed, which is intended to solve a different technical problem (preventing deformation during downtime).”
These arguments are not found to be persuasive. The examiner notes that the claim limitations recite the steps of “a) operating the tire manufacturing line in a tire manufacturing mode; b) controlling the at least one conveying unit to convey the continuous strip in a conveyance direction along the conveyance path in the tire manufacturing mode; c) switching over at least a part of the tire manufacturing line, including the at least one conveying unit, from the tire manufacturing mode to an interruption mode; and d) controlling the at least one conveying unit in the interruption mode to repeatedly move the continuous strip back-and-forth in the conveyance direction and a retraction direction opposite to the conveyance direction along the conveyance path.” There is no claim limitation for how long the interruption mode is to last, there is no claim limitation for how many times the repeated movement is to occur or for how long or to what extent the back-and-forth movement is to occur, and there is no claim limitation excluding a step of cutting. The only requirements in the claim language are for a manufacturing mode, followed by at least part of the manufacturing line going to an interruption mode, with undefined boundaries and no further requirements or steps, wherein during the interruption mode the conveying unit repeatedly moves the continuous strip back-and-forth in the conveyance direction and a retraction direction opposite to the conveyance direction along the conveyance path. Applicant’s argument that the “micro-pause within an otherwise active and ongoing manufacturing process … is not a line stoppage or a period of general inactivity” is not considered persuasive because the timing of the interruption mode is not claimed, nor does Schouten disclose it as a micro-pause even if it were claimed. It does not matter for how long the strip is held stationary, thereby interrupting the conveyance of the strip, only that it is and that during that interruption there is back-and-forth repeated movement of the strip in the conveyance direction. Additionally, the claim language only requires that at least a part of the tire manufacturing line is stopped, not that the entire manufacturing line has to be stopped. Schouten clearly discloses stopping at least part of the manufacturing line. As discussed in the detailed rejection above, Schouten discloses a manufacturing mode that conveys a continuous strip that is then stopped to hold the strip stationary (i.e., interruption mode as it is stationary and the manufacturing line is stopped/interrupted), and during the stationary hold (i.e., interruption mode) the strip is repeatedly moved back-and-forth in the conveyance direction and a retraction direction opposite to the conveyance direction along the conveyance path using a dancer/oscillating roller that buffers the strip.
Furthermore, Applicant’s argument that “Schouten does not teach or suggest repeatedly moving the strip back-and-forth during a line stoppage or period of inactivity for the purpose of preventing deformation” is not found to be persuasive. As noted above, the prior art of record discloses all of the current claim limitations as discussed in the detailed rejection above. The reasoning or use in the prior art references does not need to be the same or identical to those discovered by Applicant so long as there is some teaching, suggestion, or motivation to make the combination, which the prior art references provide.
Moreover, Applicant’s argument that “[r]epeatedly moving the dancer roller back-and-forth during the stationary phase would defeat its purpose” is not considered to be persuasive, because Schouten expressly discloses a dancer roller that moves during the stationary phase ([0026], [0058]), wherein a dancer roller is known in the art to move back-and-forth as discussed above. Thereby, it is not clear why Applicant is arguing the purpose would be defeated when the reference discloses the claimed movement.
The statement “[i]t would not be buffering in a controlled way but would instead be actively creating cycles of high tension and slack in the strip at the most critical moment of the process. This uncontrolled state is the opposite of what is needed for a high-precision cutting operation” is counselor’s opinion. Applicant has not provided any factual support or evidence for this statement, and thus it is attorney argument. Attorney arguments cannot take the place of evidence where the asserted relationship involves technical properties of materials. See MPEP 716.01(c)(II), 2145(I). Additionally, the examiner notes that there is no claim limitation requiring there to be any control or pattern or rhythm to the back-and-forth movement, only that the strip move back-and-forth repeatedly.
The examiner further notes that the claim language merely requires “to repeatedly move the continuous strip back-and-forth in the conveyance direction and a retraction direction opposite to the conveyance direction along the conveyance path.” As the conveyance direction in Schouten is along the strip path (Fig. 4: P), and the dancer roller (Fig. 4: 43) moves back-and-forth along the same direction (Fig. 4: D), the strip is necessarily moved as well along with the roller. The claim language does not expressly exclude moving only a portion of the strip back-and-forth. Schouten discloses a roller that is placed at a bend in the strip, wherein the roller moves a portion of the strip back-and-forth along the conveyance and retraction directions. The claim limitations do not require any particular steps or structure to how the strip is moved along the conveying unit or what constitutes the conveying unit, and thus does not exclude the conveying unit and how it moves the strip back-and-forth in Schouten.
While Applicant’s arguments pertaining to Schouten may be persuasive enough to distinguish the claimed invention from Schouten, these arguments are not commensurate in scope with the current claims. It is recommended that Applicant considers amending the claim language further so as to be commensurate in scope with the arguments made regarding the distinguishing features of the claimed invention over Schouten as noted by the examiner in the comments above.
On page 7 of the Remarks, Applicant argues “[t]he Examiner contends it would have been obvious to a person of ordinary skill to repeat this movement, citing it as a ‘routine optimization’ or an obvious design choice, pointing to Schouten/Schouten II as showing that oscillating movements for buffering are generally known.” However, as Applicant does not make any further arguments as to why routine optimization would not be obvious in view of the Schouten/Schouten II references, the point is not considered persuasive.
On page 8 of the Remarks, Applicant argues “Hayashi's back-and-forth movement is a discrete, single sequence performed once per cut. Its stated purpose is to "unstick the ply from the cutter" and "separate the cut end of the ply adhering to the cutter base" to ensure an accurate measurement for the next cut. This is fundamentally different from the present invention's purpose of preventing deformation during an idle state. A person of ordinary skill, faced with the problem of preventing strip deformation during a line stoppage, would not have been motivated to look at Hayashi's or Schouten's cutting-cycle mechanisms and modify them. Those mechanisms solve problems related to active cutting and material feed (unsticking, buffering slack). They do not address, recognize, or suggest a solution for the problem of material settling and deforming during prolonged inactivity.”
As discussed above, Applicant’s argument that the prior art does “not address, recognize, or suggest a solution for the problem of material settling and deforming during prolonged inactivity” is not found to be persuasive. As noted above, the prior art of record discloses all of the current claim limitations as discussed in the detailed rejection above. The reasoning or use in the prior art references does not need to be the same or identical to those discovered by Applicant so long as there is some teaching, suggestion, or motivation to make the combination, which the prior art references provide.
Furthermore, Applicant argues that “Hayashi's back-and-forth movement is a discrete, single sequence performed once per cut,” but does not address how it would not have been obvious to duplicate Hayashi’s movements, or how optionally Schouten and Schouten II were relied upon to modify Hayashi so as to duplicate the movements. Instead, Applicant argues that the prior art does not achieve the same solution to the same problem as the claimed invention, which is not found to be persuasive for the reasons discussed above.
On page 8 of the Remarks, Applicant argues “[o]ne could even argue the prior art teaches away. Both Hayashi and Schouten describe their movements as integral parts of an efficient, high-accuracy cutting cycle. Modifying this cycle to include a continuous, repeated oscillation during a line stoppage is unrelated to that goal and would not have been an obvious path for an artisan seeking to improve the cutting process itself.”
The examiner notes that "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." MPEP 2141.02(VI). Applicant argues that the prior art teaches away, but has not shown that modifications to the prior art are criticized, discredited, or otherwise discouraged solutions. Instead Applicant merely argues that modifying the cutting cycle of the prior art “to include a continuous, repeated oscillation during a line stoppage is unrelated” the goal “of an efficient, high-accuracy cutting cycle.” This is not found to be persuasive to actually show a teaching away in the prior art.
On page 8 of the Remarks, Applicant argues “[t]he Examiner's argument relies on hindsight. It is only with knowledge of your invention that one might think to adapt the prior art movements for this new purpose of a specific control strategy for an "interruption mode" (a line stoppage), a scenario distinct from the "tire manufacturing mode" where the prior art movements occur.”
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner refers again to the detailed rejection above, as well as to the discussion above, as to how (where there are modifications to the prior art based on a 35 USC 103 rejection and not a 35 USC 102 rejection) the prior art of record discloses each claim limitation and a reason for any modification made.
On pages 8-9 of the Remarks, Applicant argues “in the § 103 rejection, equates the ‘dancing’ movement from Schouten with the ‘oscillating’ movement from the machine translation of Schouten II. The Examiner states, ‘In other words, the back-and-forth movement is recognized as oscillating’ … This line of reasoning is flawed because it relies on an imprecise, generic translation of a specific technical term of art. Schouten (US 2019/0270266 A1) is an English-language publication. Schouten II (ES 2837397) is the corresponding Spanish patent from the same family, describing the identical invention. The Examiner is relying on a machine translation of this document. In the authentic English text of Schouten, the component in question is consistently and specifically identified as a "dancer roller" … This roller is described as moving in a ‘dancing direction’ for the express purpose of ‘buffer[ing] a length of the continuous strip’ … In the art of handling webs or strips of material, a ‘dancer roller’ is a well-known component with a specific function: to take up and release slack to maintain tension, typically during intermittent start-stop operations like cutting. The Spanish text of Schouten II uses the term ‘rodillo oscilante’ … which literally translates to ‘oscillating roller.’ However, the term ‘oscillating roller’ is far more generic than the original term ‘dancer roller’. It could describe any roller that simply moves back and forth for any reason (e.g., for agitation, spreading material, etc.). The translation from the specific ‘dancer roller’ to the generic ‘oscillating roller’ loses the critical context of why the roller is moving. The movement is not just any oscillation; it is a ‘dancing’ motion dictated by the need to buffer material during a cutting cycle. The Examiner's argument rests on the idea that Schouten teaches a general principle of ‘oscillation’ that a person of ordinary skill would feel free to adapt for other purposes, such as preventing material deformation during a line stoppage. However, Schouten does not teach a general principle of oscillation. It teaches the specific use of a dancer roller to solve the specific problem of buffering slack during a cutting operation. A person of ordinary skill, seeking to solve the problem of material deformation during a prolonged interruption, would understand Schouten's disclosure as being limited to its stated purpose. They would not be motivated to take a component designed for active-cycle buffering and re-purpose it as a means to continuously rock the strip back-and-forth during a period of inactivity. Therefore, the Examiner's reliance on ‘oscillating’ is an over-broadening of the prior art's disclosure due to an imprecise machine translation. The authentic English text of Schouten clearly limits the disclosure to a ‘dancer roller’ performing a ‘dancing’ motion for buffering. This context undermines the Examiner's motivation argument for the § 103 rejection, as it confines the prior art's teaching to a different problem and solution than that of your claimed invention.”
Applicant’s arguments directed to the translations of the terms in the prior art are not found to be persuasive. The examiner notes that both Schouten and Schouten II are patents from the same family with the same figures and nearly the same disclosures with slightly different terminology, and Schouten II was merely relied upon to reinforce that the disclosure in Schouten of a dancer roller would be known to be an oscillating (i.e., back-and-forth) movement. Applicant argues that the translation of Schouten II is imprecise, but in the previous rejection the examiner relied upon Schouten II to disclose the same roller as in Schouten was clearly intended to be an oscillating roller. Applicant has also argued that the roller of Schouten II is an oscillating roller. Applicant argues that the “translation from the specific ‘dancer roller’ to the generic ‘oscillating roller’ loses the critical context of why the roller is moving,” but does not explain why or how. Applicant does not explain how “dancing” is different from “oscillating,” or why two references from the same patent family having the same figures and essentially the same disclosures are so different that the dancing roller of Schouten would not be an oscillating roller as in Schouten II. Moreover, Applicant does not explain why a “dancing” movement would not move back-and-forth. A dancing roller is clearly required to move (i.e., to “dance”), and Schouten clearly illustrates the back-and-forth arrow motion (Fig. 4: D) of the dancer roller (Fig. 4: 43), which is further supported by the description of the same roller having the same disclosure and illustrations in Schouten II as being oscillating.
Moreover, Applicant argues that the dancing motion in Schouten is different from the oscillating motion in Schouten II because Schouten discloses buffering the strip during a cutting cycle. Schouten discloses “a leading end of the continuous strip is held stationary at the cutting line during cutting, wherein the one or more guide members comprises a dancer roller that is movable in a dancing direction for buffering the incoming continuous strip with respect to the stationary leading end of the continuous strip during said cutting. Said dancer roller can effectively buffer a length of the continuous strip within the feeding assembly, e.g. when the continuous strip is temporarily held stationary by the feeding member at the cutting line during cutting” ([0026]), and Schouten II discloses “a front end of the continuous strip is held stationary on the cutting line during cutting, where the one or more guide elements comprise an oscillating roller that is movable in an oscillation direction to separate the incoming continuous strip from the stationary front end of the continuous strip during cutting. This oscillating roller can effectively separate a length of the continuous strip within the feed assembly, for example, when the continuous strip is temporarily held stationary by the feed element on the cutting line during cutting” ([0031]). One of ordinary skill in the art before the effective filing date of the claimed invention would have recognized, or at least found obvious, that Schouten and Schouten II disclose the same structure and movements in different terms, and thereby would have found it obvious that the dancing roller of Schouten would oscillate (i.e., move back-and-forth) as disclosed in Schouten II.
Additionally, it is not clear how the translation relied upon by the examiner is imprecise because the examiner noted that the translation of Schouten II discloses an oscillating roller, and Applicant is arguing that “Schouten II uses the term ‘rodillo oscilante’ … which literally translates to ‘oscillating roller.’” Thereby, it appears based on Applicant’s argument, that the examiner and Applicant are relying on the same translation of the term.
The statement “the term ‘oscillating roller’ is far more generic than the original term ‘dancer roller’. It could describe any roller that simply moves back and forth for any reason (e.g., for agitation, spreading material, etc.). The translation from the specific ‘dancer roller’ to the generic ‘oscillating roller’ loses the critical context of why the roller is moving. The movement is not just any oscillation; it is a ‘dancing’ motion dictated by the need to buffer material during a cutting cycle” is counselor’s opinion. Applicant has not provided any factual support or evidence for this statement, and thus it is attorney argument. Attorney arguments cannot take the place of evidence where the asserted relationship involves technical properties of materials. See MPEP 716.01(c)(II), 2145(I). Applicant has not provided any evidence or explanation as to how or why a dancing roller is different from an oscillating roller.
Furthermore, Applicant’s argument that “[t]he Examiner's argument rests on the idea that Schouten teaches a general principle of ‘oscillation’ that a person of ordinary skill would feel free to adapt for other purposes, such as preventing material deformation during a line stoppage” is misinterpreted. The examiner relied on Schouten to show that during a period of stopping the manufacturing line to cut the strip, the strip is moved back-and-forth/oscillated. The examiner did not suggest that the general principle of oscillation would cause a person of skill in the art to adapt it for other purposes “such as preventing material deformation during a line stoppage.” Moreover, the examiner again notes the reasoning or use in the prior art references does not need to be the same or identical to those discovered by Applicant so long as there is some teaching, suggestion, or motivation to make the combination, which the prior art references provide. Thus, the prior art does not need to teach “preventing material deformation during a line stoppage.”
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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