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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/22/2025 has been entered.
Patent Board Decision
On 1/9/2023 the applicant filed an Appeal Brief. On 1/27/2023 the applicant was notified that the Appeal Brief was defective. On 2/9/2023 the applicant filed a corrected Appeal Brief. On 6/2/2023 the examiner mailed an Examiner’s Answer to the Appeal Brief. On 11/8/2024 the Patent Trial and Appeal Board AFFIRMED the examiner on all grounds of rejection. The PTAB found the Appeal Brief to contain multiple unsupported arguments. For example, the PTAB ruled that “the Appellant does not provide any objective evidence to support the assertion that adding cellulosic fibers to Ziemer’s monomer solution would prevent a free radical polymerization reaction necessary to form Ziemer’s foam.” The PTAB further stated “A preponderance of the evidence on the record before us, therefore, supports the Examiner’s determination that it would have been obvious to one of ordinary skill in the art, in view of the relied-upon disclosures of Argy, Zhang, Passler, and Dodge, to include cellulose fibers in Ziemer’s water-absorbing composite article to improve the article’s absorbency.”
Claim Rejections - 35 USC § 103
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 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 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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over USPAP 2014/0158626 to Ziemer in view of USPN 6,346,557 to Argy, USPAP 2003/0139715 to Dodge, USPAP 2006/0246272 to Zhang, and/or USPN 4,559,243 to Passler.
Claims 1, 4, 5, 10 and 11, Ziemer discloses an absorbent foam composite sheet comprising water resistant (e.g. polyethylene) fibers, binder fibers, and foaming surfactant (see entire document including [0001], [0009]-[0011], [0046], and [0056]-[0062]).
Ziemer does not appear to mention the absorbent foam composite sheet density but Argy and Zhang disclose that it is known in the art to construct foam with a density of 0.03-0.08 (column 4, lines 22-25 and column 5, lines 39-44 of Argy) or 0.01 to 0.5 g/cc ([0051] and [0055] of Zhang) to provide a soft and flexible absorbent foam. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the absorbent foam composite sheet with the claimed density, to provide a soft and flexible absorbent foam and because is within the general skill of a worker in the art to select a foam density on the basis of the desired foam characteristics.
Ziemer does not appear to mention the absorbent foam composite comprising cellulosic fibers, or the claimed water resistant (synthetic) fiber/cellulosic fiber/binder fiber percentages, but Argy, Zhang, and Passler teach that it is known in the absorbent foam art to include cellulosic (e.g. wood pulp) fibers to improve absorbency and that the chosen fiber mixture composition is easily determinable by one skilled in the art and varied based on the intended application (see entire documents including column 2, lines 9-32 of Argy, [0089] and [0090] of Zhang, and column 2, lines 52-64 and column 4, lines 49-61 of Passler). Argy discloses that it is known in the art to include synthetic fibers in an amount of 0-20% by weight based on the desired level of reinforcement (column 3, lines 33-45), Zhang discloses that it is known in the art to include synthetic and/or natural fibers in an amount of 0-90% by weight based on the desired level of integrity and/or absorbency [0090], Passler discloses that it is known in the art to include synthetic fibers in an amount of 2-30% by weight and cellulosic fibers in an amount of up to about 50% by weight (paragraph bridging columns 3 and 4), and Dodge discloses that it is known in the art to include 30-90% by weight synthetic or wood fiber and 0-20% by weight binder ([0056] and [0059]). Therefore, it would have been obvious to one skilled in the art to include the claimed fibers in the claimed amounts to obtain an absorbent composite with improved absorbency and because the chosen fiber mixture should be easily determinable by one skilled in the art and varied based on the intended application and the desired composite characteristics.
Regarding the claimed product-by-process step of making the absorbent composite sheet from a foam precursor or slurry comprising the claimed components, Ziemer discloses that that the absorbent composite sheet can be made from a foam precursor or slurry mixture wherein the mixture is combined with a web of fibers and then the combination of the mixture and the web is polymerized ([0056]-[0064]). Ziemer discloses that the mixture can be added to the web, or the web can be added to the mixture, and that the mixture completely penetrates the web [0061]. Therefore, it is the Office’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if the applicant intends to rely on Examples in the specification or in a submitted declaration to show non-obviousness, the applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art. Plus, Ziemer discloses that the absorbent composite sheet foam precursor or slurry may contain fibers ([0021] and [0051]). Additionally, Ziemer discloses that water-absorbing composites are conventionally obtained using a precursor or slurry mixture comprising fibers [0013]. Further, Argy (column 4, line 46 through column 5, line 4 and column 6, lines 37-47) and Zhang [0093] each disclose that it is known in the art to mix all components together in a precursor or slurry as claimed.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the absorbent composite sheet of Ziemer by any suitable method, such as claimed, because it is within the general skill of a worker in the art to select a known method on the basis of its suitability and desired characteristics.
Regarding the claimed properties (e.g. binder bonding adjacent fibers at fiber contact points, the cellulosic fibers being bonded to one another by means of hydrogen bonding, and a Wet Caliper Retention greater than 60%) considering that the applied prior art discloses a substantially identical absorbent foam composite sheet in terms of structure and materials, the claimed properties appear to be inherent. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Claim 2, the absorbent foam composite has a dry caliper between about 0.5 and about 40 mm [0065].
Claim 3, the absorbent foam composite has a thickness of between about 0.5 mm and about 5 mm [0065] and may be used as an absorbent in bandaging or a diaper [0082]. Zhang and Dodge teach that bandaging and diaper absorbents conventionally have a substantially planar structure (e.g. see figures of Zhang and Dodge). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the absorbent foam of Ziemer with any suitable shape, such as claimed, based on the intended application and because it is within the general skill of a worker in the art to select a known shape on the basis of its suitability and desired characteristics.
Claim 6, the foaming agent is selected from cationic and anionic surfactants and is present in said absorbent foam composite between about 0.05 and about 5% ([0019], [0046], and the Examples).
Claim 7, the water resistant fibers comprise polymeric fibers selected from the group consisting of polyolefin, polyester, polyamide, and polylactic acid polymers [0058].
Claim 8, a wet strength additive may be added to the absorbent foam composite [0051]. The secondary references also teach the use of the claimed additive (e.g. see paragraph bridging columns 3 and 4 of Argy and [0047]-[0092] of Zhang).
Claim 9, Ziemer does not appear to mention a superabsorbent material but Zhang and Dodge discloses that it is known in the art to include a superabsorbent material to improve absorbency ([0106] of Zhang and [0006] of Dodge). Therefore, it would have been obvious to one having ordinary skill in the art top include a superabsorbent to improve absorbency.
Response to Arguments
Applicant's arguments filed 10/22/2025 have been fully considered but they are not persuasive.
The applicant asserts that the applied prior art fails to teach or suggest the claimed component amounts. The examiner respectfully disagrees. Ziemer does not appear to mention the absorbent foam composite comprising cellulosic fibers, or the claimed water resistant (synthetic) fiber/cellulosic fiber/binder fiber percentages, but Argy, Zhang, and Passler teach that it is known in the absorbent foam art to include cellulosic (e.g. wood pulp) fibers to improve absorbency and that the chosen fiber mixture composition is easily determinable by one skilled in the art and varied based on the intended application (see entire documents including column 2, lines 9-32 of Argy, [0089] and [0090] of Zhang, and column 2, lines 52-64 and column 4, lines 49-61 of Passler).
Regarding the claimed water resistant fiber amount, Argy discloses that it is known in the art to include synthetic fibers in an amount of 0-20% by weight based on the desired level of reinforcement (column 3, lines 33-45) which overlaps the claimed water resistant fiber range of 5 to 40% (claim 1) and the claimed water resistant fiber range of 20 to 40% (claim 4). In addition, Zhang discloses that it is known in the art to include synthetic fibers in an amount of 0-90% by weight based on the desired level of integrity and/or absorbency [0090]. Further, Passler discloses that it is known in the art to include synthetic fibers in an amount of 2-30% by weight (paragraph bridging columns 3 and 4) which also overlaps the claimed water resistant fiber ranges. Further still, Dodge discloses that it is known in the art to include 30-90% by weight synthetic fiber ([0056] and [0059]) which also overlaps the claimed water resistant fiber ranges.
Regarding the claimed cellulosic fiber amount, Zhang discloses that it is known in the art to include natural fibers in an amount of 0-90% by weight based on the desired level of integrity and/or absorbency [0090] which overlaps the claimed cellulosic fiber range of 30 to 45%. In addition, Passler discloses that it is known in the art to include cellulosic fibers in an amount of up to about 50% by weight (paragraph bridging columns 3 and 4) which overlaps the claimed cellulosic fiber range. Further, Dodge discloses that it is known in the art to include 30-90% by weight wood fiber ([0056] and [0059]) which overlaps the claimed cellulosic fiber range.
Regarding the claimed binder amount, Dodge discloses that it is known in the art to include 0-20% by weight binder ([0056] and [0059]) which overlaps the claimed binder fiber ranges of 5 to 35% (claim 1) and 15 to about 35% (claim 4).
Therefore, it would have been obvious to one skilled in the art to include the claimed fibers in the claimed amounts to obtain an absorbent composite with improved absorbency and because the chosen fiber mixture should be easily determinable by one skilled in the art and varied based on the intended application and the desired composite characteristics.
The applicant also asserts that the applied prior art fails to teach or suggest the claimed product-by-process step of making the absorbent composite sheet from a foam precursor or slurry comprising the claimed components. Applicant’s argument is not persuasive. Ziemer discloses that that the absorbent composite sheet can be made from a foam precursor or slurry mixture wherein the mixture is combined with a web of fibers and then the combination of the mixture and the web is polymerized ([0056]-[0064]). Ziemer discloses that the mixture can be added to the web, or the web can be added to the mixture, and that the mixture completely penetrates the web [0061]. Therefore, it is the Office’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if the applicant intends to rely on Examples in the specification or in a submitted declaration to show non-obviousness, the applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Plus, Ziemer discloses that that the absorbent composite sheet foam precursor or slurry may contain fibers ([0021] and [0051]). Additionally, Ziemer discloses that water-absorbing composites are conventionally obtained using a precursor or slurry mixture comprising fibers [0013]. Further, Argy (column 4, line 46 through column 5, line 4 and column 6, lines 37-47) and Zhang [0093] each disclose that it is known in the art to mix all components together in a precursor or slurry as claimed.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the absorbent composite sheet of Ziemer by any suitable method, such as claimed, because it is within the general skill of a worker in the art to select a known method on the basis of its suitability and desired characteristics.
The applicant also asserts that the claimed component amounts resulted in unexpected results. Specifically, the applicant asserts that the claimed component amounts resulted in unexpected Wet Caliper Retention. The applicant cites Examples 1-5 of specification wherein different fiber materials and amounts are tested. Specifically, the applicant cites Examples 3-5 as including a lower percentage of cellulosic fibers (32%, 35% and 35% respectively) than the percentage of cellulosic fibers in Examples 1 and 2 (50% and 60% respectively) resulting in Examples 3-5 exhibiting higher Wet Caliper Retention (97.9%, 95.3% and 91.6% respectively) compared to the Wet Caliper Retention of Examples 1 and 2 (44.4% and 80.2% respectively). Applicant’s argument is not persuasive for at least a couple of reasons.
Firstly, the applicant argues that the results are desirable (when a higher Wet Caliper Retention is desired) but the applicant has failed to show that the results are necessarily unexpected and unexpected to a degree sufficient to overcome obviousness. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. The burden is on the applicant to establish results are unexpected and significant. The evidence relied upon should establish that the differences in results are in fact unexpected, unobvious, commensurate in scope with the claims, and of both statistical and practical significance. See MPEP 716.02(b) and 716.02(d). The applicant is reminded that an affidavit or declaration must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See MPEP 716.02(e). Plus ,the Background section of the current application admits that it was already known that wood pulp (cellulosic) fibers are not wet stable and that the bending stiffness of wood pulp fibers significantly degrades when wet (page 1). Therefore, it is unclear why the applicant asserts that it is unexpected that the Examples (Examples 3 to 5) with lower amounts of cellulosic fibers (lower amounts of fibers that are not wet stable) exhibit a higher Wet Caliper Retention than the Examples (Examples 1 and 2) that have higher amounts of cellulosic fibers (a higher amount of fibers that are not wet stable).
Secondly, Examples 3 to 5 are limited to specific fiber materials and specific amounts. For examples, Example 3 is limited to 32% Eucalyptus wood pulp fiber, 32% PET water resistant staple fibers, 20% melamine staple fibers, and 16% Trevira T255-6 binder fibers). In comparison, claim 1 is not limited to the specific fiber materials or the specific fiber materials. Therefore, any “unexpected” results demonstrated by said Examples are not commensurate in scope with the claims. Evidence relied upon to establish unexpected results must be commensurate in scope with the claims.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached on Monday-Thursday 7am-5pm.
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, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
