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 .
Information Disclosure Statement
With regard to the IDS filed 6/30/25 which lists all Office Actions for U.S. Patent Application No. 19/982,113, it is noted that there are no Office Actions for this application at this time so there was nothing to consider.
Claims 22-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not provide support for a fluid management layer comprising absorbent fibers, stiffening fibers and resilient fibers which meets the particular parameters obtained by testing the fluid management layer at various steps. The specification describes a particular material as the “Inventive Sample fluid management layer” at paragraph 0075 of the published application upon which all tests were performed. The inventive sample fluid management layer as described at paragraph 0075 is much narrower than the broad fluid management layer claimed. The inventive sample fluid management layer is disclosed as a layer having a basis weight of 55 gsm having 20% by weight viscose cellulose fibers having a 17 dtex; 30% by weight hollow spiral polyethylene terephthalate fibers having a 10 dtex and 50% by weight bi component fibers having PET core and a polyethylene sheath and the particular properties and test measurements set forth in claims 22-24 were all performed upon this sample. The specification does not disclose the broader claimed fluid management layer as being tested and having various values at the various steps of the test.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 16-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 16/831,868 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each claims a fluid management layer having a basis weight of 40-75 gsm comprising absorbent, stiffening and resilient fibers in the same amounts and having the same dtex, and therefore, it is reasonable to expect that the material of 16/831, 868 would have the same properties as the instant claims, based on the fact that both are carded nonwovens made up of the same types and sizes of fibers in the same amounts.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1, 16-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Viens et al, U.S. Patent Application Publication No. 2014/0343523 in view of Nguyen, U.S. Patent Application Publication No. 2008/0119806 and Samuelsson et al, U.S. Patent No. 6,100,442.
Viens discloses a hydroentangled, (spunlaced), thermally bonded structure. See paragraph 0013. The structure is a secondary topsheet having a basis weight of 35-65 gsm. See paragraph 0011. The structure can include PET fibers having a dtex of 3.5-12 in amounts of 5-30% by wt. which correspond to the claimed resilient fibers, (see paragraph 0010 and 0053), bicomponent binder fibers in amounts of 30-55% by weight which correspond to the claimed stiffening fibers, (see paragraph 0053), and 30-60% by weight of cellulosic fibers such as rayon having a dtex of 1.3-7 which correspond to the claimed absorbent fibers, (see paragraph 0050-0051). The step of heating raises the temperature of the hydroentangled structure to soften the sheath of the bicomponent fibers to form bonds between the sheath. See paragraph 0061. The stiffening fibers can have a dtex of 1.7 in the example set forth in paragraph 0065. The stiffening fibers can comprise bicomponent polyester and polyethylene. See paragraph 0046.
Viens differs from the claimed invention because it is silent as to caliper and while it does disclose a polyester/polyethylene bicomponent fiber, it does not clearly teach that the polyester is PET.
However, Nguyen discloses a carded nonwoven article, (see paragraph 0018), comprising absorbent fibers such as regenerated cellulose, (paragraph 0020), bicomponent fibers having a polyethylene terephthalate core and a polyethylene sheath, (paragraph 0028), and other synthetic fibers such as polyethylene terephthalate fibers. See paragraph 0029.
Therefore, it would have been obvious to have employed PET as the core polyester in the bicomponent fibers of Viens, in view of their art recognized suitability for forming the sheath in a nonwoven comprising the same types of fibers as used in Viens for the same purpose. Once the PET was employed as the core polyester in Viens, it is reasonable to expect that the particular properties as set forth in claims 22-24 would be present, since the same structure would be provided and like materials must have like properties, or, in the alternative, to have selected the proportions of each type of fiber within the ranges provided by Viens, which produced the caliper as claimed and measured in claims 22-24.
With regard to the caliper, Samuelsson teaches that suitable caliper for an acquisition layer is 0.3-7 mm. See col. 8, lines 9-24.
Therefore, it would have been obvious to have selected a caliper as taught by Samuelsson for the structure of Viens in view of the teaching of Samuelsson of the suitability of these thicknesses for this purpose.
Applicant's arguments filed 6/18/25 have been fully considered but they are not persuasive.
With regard to the 112 rejection, Applicant argues that paragraph 0083 provides support for the caliper as measured by step 1 of a dynamic Mechanical Analysis method. However, the only disclosure regarding a caliper measured by step 1 of a dynamic Mechanical Analysis method relates to measurements of the “Inventive Sample fluid management layer” at paragraph 0075 of the published application upon which all tests were performed. The inventive sample fluid management layer as described at paragraph 0075 is much narrower than the broad fluid management layer claimed. The inventive sample fluid management layer is disclosed as a layer having a basis weight of 55 gsm having 20% by weight viscose cellulose fibers having a 17 dtex; 30% by weight hollow spiral polyethylene terephthalate fibers having a 10 dtex and 50% by weight bi component fibers having PET core and a polyethylene sheath and the particular properties and test measurements set forth in claims 22-24 were all performed upon this sample. The specification does not disclose the broader claimed fluid management layer as being tested and having various values at the various steps of the test. Applicant points to paragraph 0083 which states “So, for fluid management layers in accordance with the present disclosure, the caliper at step 1 (measured in accordance with the Dynamic Mechanical Analysis method disclosed herein) can be greater than about 0.9 mm. “ However, “fluid management layers in accordance with the present disclosure” appears to refer to the sample tested by step 1 measured in accordance with the Dynamic Mechanical Analysis method.
Applicant argues that the Office Action does not adequately consider that Viens discloses a variety of arrangements other than core sheath arrangements, including side by side, concentric, or eccentric. However, concentric and eccentric bicomponent fibers are sheath/core fibers. In a concentric sheath/core fiber, the center of the core is also the center of the sheath, while in an eccentric sheath/core fiber, the center of the core is not the center of the sheath. Therefore, Viens appears to disclose either sheath/core or side by side fibers as the bicomponent fibers. Further, Viens discloses particular sheath/core fibers having a polyester core and a polyethylene sheath, (see paragraphs 0046, 0047, 0053). Therefore, Viens clearly teaches a sheath/core fiber having a polyester core and a polyethylene sheath. Viens differs only in that it does not clearly disclose the particular type of polyester used as the core. Nguyen teaches employing the particularly claimed type of polyester, (PET), as the core of a sheath/core fiber used as a binding fiber in a carded nonwoven which also includes absorbent and resilient fibers.
Applicant argues that the examiner is using improper hindsight by drawing on knowledge found only in the “patented invention” when the prior art does not contain or suggest that knowledge. It appears that Applicant is using the term “patented invention” to refer to the subject matter of the instant application. However, as set forth above, the prior art clearly teaches each and every element. Viens teaches a polyester core generally, since Viens teaches a bicomponent fiber having a sheath/core structure wherein polyolefin is used as the binder component. See paragraphs 0046, 0047, 0053. Nguyen teaches a substantially similar structure and teaches a particular type of polyester which is suitable for as the core of the bicomponent fiber. Specifically, Nguyen teaches sheath/core fibers having a core of PET and a sheath of polyethylene in a carded nonwoven article, (see paragraph 0018), comprising absorbent fibers such as regenerated cellulose, (paragraph 0020), bicomponent fibers having a polyethylene terephthalate core and a polyethylene sheath, (paragraph 0028), and other synthetic fibers such as polyethylene terephthalate fibers. See paragraph 0029. Therefore, one of ordinary skill in the art, given the clear teaching of Nguyen of a particular polyester suitable for use as the core of the bicomponent fiber in a substantially similar structure, would have had a reasonable expectation that the PET core could have been successfully used as the particular type of polyester in the bicomponent fiber of Viens.
Applicant argues that only the present disclosure demonstrated the unique benefits of this selection and that the selection of stiffening fibers comprising bicomponent fibers having a sheath/core configuration in which the core component was PET and the sheath component waste polyethylene was not known to be beneficial in the context of the invention as a whole. However, clearly, Nguyen establishes that using stiffening fibers comprising bicomponent fibers having a sheath/configuration in which the core component was PET and the sheath component was polyethylene was known per se in the art. If Applicant argues an unexpected result, the burden is on Applicant to provide a showing which is commensurate in scope with the claims and to establish that the results are unexpected and significant. Applicant also argues that the analysis must take into account that the stiffening fibers are heat treated. However, Viens teaches heating treating the structure and teaches employing bicomponent fibers having a polyester core and a polyolefin sheath.
Applicant argues that the action improperly reduces the inquiry to a determination of the “differences themselves”. However, the action clearly points to each element and where that element is found in the prior art and provides a reasoned statement as to why the combination of references would have rendered the claimed invention obvious. Similarly, Applicant argues that the invention is not the discovery of bicomponent fibers having a PET core and PE sheath. The office agrees. The action as set forth does not purport to show that bicomponent fibers having a PET core and PE sheath per se were known in the art, but rather, that the use of such well-known fibers would have been obvious in view of Nguyen, considering that Viens are already teaches bicomponent fibers having a polyester core and a PE sheath, while Nguyen teaches that the specific polyester, PET, was known to have been successfully used as the core of a bicomponent fiber with a PE sheath in a similar structure, thus providing a reasonable expectation of success for one of ordinary skill in the art to likewise use PET as the polyester in the bicomponent fiber having a polyester core and a polyethylene sheath already taught in Viens. Both Applicant and the office are in agreement that bicomponent fibers having a PET core and PE sheath were well-known in the art and that the instant invention is not drawn to bicomponent fibers having a PET core and PE sheath, but rather to the invention as set forth in the claims of the application, wherein bicomponent fibers with a PET core and PE sheath are part of but not the entirety of what is claimed.
Applicant argues that Nguyen teaches bicomponent fibers having a PET core and PE sheath but not their usefulness in the context of the present invention as a whole. It is true that Nguyen does not anticipate the claimed invention, however, Nguyen clearly teaches the usefulness of PET as the particular type of polyester core for use in bicomponent fibers having a polyester core and a polyethylene sheath which are already taught by Viens. Nguyen teaches a particular type of polyester which is useful in a highly similar structure and therefore, renders the use of that particular type of polyester in the structure of Viens obvious.
Applicant argues that the office action ignores the fact that Samuelson does not have the same structure as the claimed invention. However, Samuelson is relied on for the teaching of suitable caliper factor for the acquisition layer of absorbent articles. Further, Samuelson teaches a nonwoven layer which includes both polyolefin and cellulosic fibers. Viens, Nguyen and Samuelson are all drawn to absorbent articles and acquisition layer.
Applicant argues that only the present invention describes a new manufacturing method and that combined with the method and the selection of fibers, the caliper of the fluid managements layers can be maintained. However, Viens in view of Nguyen already teaches the claimed selection of fibers. The instant application states that the number of water jets and the use of rolls can be reduced and the level of entanglement provided can therefore be lower because the additional bonding is provided by the heat treatment, (paragraph 0032 of the published application). The application does not provide a particular number of water jets or rolls which constitutes a reduced or lower level or clearly describe the simplified process in terms of a particular number or water jets or rolls or particular pressures, etc. Similarly, Viens teaches selecting the particular number of jets depending on the degree of bonding required. The instant specification does not provide any particular process which differs from that disclosed in Viens, since both teach employing hydroentangling and then drying and heat treating to melt the sheath and provide bonding to the hydroentangled structure. Further, while Applicant can assert that Samuelson is irrelevant, it is in fact relevant since it is drawn to the same structure as claimed, ( an acquisition layer), and teaches the particularly claimed caliper factor as being suitable for use in such layers.
With regard to claims 22-24, Applicant argues that the claims highlight the importance of the immediate tactile experience and aspects of the fluid management layer that are important for long-term wearing experience. However, with regard to claims 22-24, as set forth above, since Viens teaches the claimed types and proportions of fibers and teaches a similar/same process, once a particular polyester, PET, was employed as the polyester core generally taught in Viens, there would be a reasonable expectation that the claimed properties would necessarily be present, since like materials must have like properties.
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 ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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 at 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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789
Prosecution Insights