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
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) 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mine US 2014/0042691 (“Mine”).
Regarding claim 1, Mine disclosed a paper feeding roll, comprising:
a shaft body (4); and an elastic body layer (5), formed on an outer peripheral surface of the shaft body,
wherein a convex part (6) having a forward inclined surface (7 or 23) whose inclination increases along a paper passing direction is provided on the outer peripheral surface of the elastic body layer,
an angle of the forward inclined surface is 25° or more and 55° or less (see Figure 1B), and a ratio of a nip area to a product of a nip width and a roll surface length at a load of 500g can be 0.2 or more and 0.6 or less (see at least the Figures and paragraphs 0060-0062, 0064, 0102 discussing adjusting nip area dimensions).
Regarding claim 2, Mine disclosed a top surface (10 or 26) whose angle is smaller than the forward inclined surface of the convex part is provided at a top of the convex part (Figure 1B).
Regarding claim 3, Mine disclosed a ratio of a peripheral length of the top surface to a peripheral length of a bottom surface of the convex part is 0.05 or more and 0.3 or less (see at least Figure 1B).
Regarding claim 4, Mine disclosed the convex part has a reverse inclined surface (9 or 24) whose inclination increases along a direction opposite to the paper passing direction, and an angle of the reverse inclined surface is configured to be greater than the angle of the forward inclined surface.
Regarding claim 5, Mine disclosed the angle of the reverse inclined surface is 60° or more and 90° or less (see at least Figure 1B).
Regarding claim 6, Mine disclosed a height of the convex part is 40 μm or more and 200 μm or less (paragraph 0058).
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mine in view of JP 2003-112833 (“JP ‘833”). Mine disclosed the limitations of claim 1 as listed above but did not specify a JIS-A hardness value for the roller surface. JP ‘833 teaches a similar roller whose elastic surface has JIS-A hardness of 35° or more and 75° or less (see the attached translation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the teaching of JP ‘833 to balance abrasion resistance with an effective friction coefficient as is taught by JP ‘833 and well known in the art.
Response to Arguments
Applicant's arguments filed 8/28/26 have been fully considered but they are not persuasive.
Applicant argued that Mine failed to specify that a ratio of a nip area to a product of a nip width and a roll surface length at a load of 500g is 0.2 or more and 0.6 or less. Applicant further stresses the criticality of the range to rebut an obviousness rejection.
In response, MPEP 2114 states that while features of an apparatus may be recited structurally or functionally, the device will be held anticipated if the prior art teaches all the structural limitations of a claim. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus. Id.
Here, the Examiner concluded that the functional limitation specifying a dimensional ratio with a specific load being applied to the structure is characteristic of the structure of the prior art. The prior art teaches the claimed structure and functionally defined limitation as seen in the figures and described generally in paragraphs 0060-0062, 0064, and 0102 when discussing adjusting nip area dimensions. The burden is shifted to Applicant to establish that prior art does not possess this same characteristic. Indeed, “where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” MPEP 2114(I).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOWARD J SANDERS whose telephone number is (571)270-3096. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael McCullough can be reached at (571) 272-7805. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOWARD J SANDERS/Primary Examiner, Art Unit 3653
