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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/12/2025 has been entered.
Response to Amendment
Applicant’s amendments, filed 12/12/2025, have been entered and fully considered by the examiner. The examiner notes the amendment to claims and the addition of new claim 28-30. Claims 1-2, 4, 6-11, 13, 15-20, 22, 24-30 remain pending with claims 6, 15 and 24 withdrawn from consideration.
Response to Arguments
Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive as they are directed to newly added claim requirements that are specifically addressed hereinafter.
Applicant's argue that Warner discloses outside cooling and thus one of ordinary skill in the art would understand that if gelation occurred on contact there would be no need for additional outside cooling. Examiner notes that this argument is mere attorney speculation without any factual support. The claims do not require 100% gelation at contact and actively cools to form a solid or semi-solid gel softener layer. To take the applicant's position, the further cooling would be unnecessary to form the solid or semi-solid layer. As such, since the applicant's arguments are not supported by factual evidence and appear to be contrary to the claims as drafted, the more reasonable interpretation would be that some gelating occurs at contact and further gelating occurs by cooling. Warner discloses quickly gelating on the surface, as well as adding additional cooling to speed up the gelating (see column 11, lines 1-10) to solidify on the surface and prevent migration into the tissue. Here, as outlined in previous rejection, such quick solidifying would read on the claims as drafted, i.e. some degree of gelating on contact, i.e. quickly.
Applicants have not pointed to any specific claim requirement or disclosure that is required to gelating on contact (versus quickly gelating to prevent migration into the substrate) would indicate that their claim requirement is any more than mere recognition of a latent property that would flow from the specific disclosure of the prior art.
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 (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 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) 1-2, 4, 7-8, 10-11, 13, 17, 19-20, 22, 25 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 5716692 by Warner et al. taken with US Patent Application Publication 20060110432 by Luu et al. alone or as evidenced by US Patent 6428794 by Klofta.
Claim 1: Warner discloses a method of making a tissue comprising (abstract): forming a cellulosic substrate having a surface (column 16-17, column 6, lines 53-column 7, line 17); forming a lotion that includes mixing a gelator (see e.g. immobilizing agent at column 10-11) with a pharmaceutically or cosmetically acceptable oil (see e.g. emollient at column 8-9) at a temperature above room temperature to form a sprayable gel softener (column 8, line 55), and depositing the lotion (i.e. gel softener) substantially on the surface of the cellulosic substrate, the gel softener gelating with the cellulosic substrate and cooling to about room temperature to form a solidified coating or film on the surface (column 17, lines 25-35). Here, the prior art does not explicitly disclose that the gel softener gelating on contact; however, does disclose that the lotion is solid or semi-solid at room temperature and using quick cooling to lock the immobilizing agent on the surface (see column 11, line 1-6) and discloses the gelling agent provides the benefit that the emollient remains primarily on the surface of the tissue and thus some gelating would be expected upon application.
Warner discloses quickly gelating on the surface, as well as adding additional cooling to speed up the gelating (see column 11, lines 1-10) to solidify on the surface and prevent migration into the tissue. Here, as outlined in previous rejection, such quick solidifying would read on the claims as drafted, i.e. some degree of gelating on contact, i.e. quickly solidify. Examiner incorporates herein by reference the response to arguments section.
At the very least, Warner is specifically concerned with quickly solidifying on the surface to maintain on the tissue surface and therefore it would have been obvious to one of ordinary skill in the art to have provided a degree solidification on contact would have been obvious to achieve the goal of Warner, that is to prevent migration by quickly solidifying the lotion on the surface. Finally, the prior art discloses each and every claim requirement that is disclosed and claimed by the applicant as being required to achieve “gelating on contact” and therefore the prior art must necessarily meet this requirement unless the applicant is using specific materials or process parameters or other requirements that are neither disclosed or required to achieve the gelating on contact.
As for the requirement of a gel softener solution, the examiner notes that Warner discloses “since the immobilizing agent is also miscible with the emollient (or solubilized in the emollient with the aid of an appropriate emulsifier), it entraps the emollient on the surface of the paper as well” (column 10, line 64-68) and “[t]he emulsifier can be included in an amount sufficient to solubilize the immobilizing agent in the emollient such that a substantially homogeneous mixture is obtained” (column 14, lines 15-20). Therefore Warner discloses including an emulsifier to solubilize the gelator and thus makes obvious the formation of a gel softener solution as claimed.
Warner discloses the amount of oil to immobilizing agent to encompass the claimed range (compare Column 10, lines 26-35 to column 14, lines 24-35). Additionally, the amount of gelator relative to oil is not explicitly disclosed; however, the gelator provides the benefits of the emollient oil is prevented from migrating into the paper tissue and it determinable based on varying factors (column 14, lines 24-35) and as such it would have been obvious to determine the optimum amount of gelling agent, through routine experimentation, to provide the deposit of the oil on the surface to control the oil migrating to the interior.
Warner discloses all that is taught above and discloses using an oil and emollient and Warner discloses the oils can include esters and others that are conventional (columns 9-10); however, fails to explicitly disclose the elected species of C12-C15 alkyl benzoate ester as claimed. However, Luu, also in the art of lotion treated tissues, discloses the lotion can include C12-C15 alkyl benzoate ester (See Table 1) and therefore using the known oil for the treatment of tissue would have been obvious as predictable. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
As for the amount of gelator, the examiner additionally notes the claim as drafted does not foreclose a mixture of gelators, where the gelator as claimed is within the ratio as claimed and Warner discloses mixtures of materials as immobilizing agents (column 11, lines 30-31 “and mixtures thereof”) and discloses using any number of immobilizing agents (“optionally other types of immobilizing agents can be used in combination” at column 11, lines 52-60) and therefore while Warner may disclose an amount of immobilizing agents that may be outside of the range as claimed, the collection of multiple immobilizing agents will meet both the claimed requirement and the disclosure of Warner.
Additionally Warner discloses a lotion for treating the tissue and supports the finding that the amount of the immobilizing agent is a result effective variable. Warner explicitly discloses “The amount of immobilizing agent that should be included in the lotion composition will depend on a variety of factors, including the particular emollient involved, the particular immobilizing agent involved, whether an emulsifier is required to solubilize the immobilizing agent in the emollient, the other components in the lotion composition and like factors. The lotion composition can comprise from about 5 to about 80% of the immobilizing agent. Preferably, the lotion composition comprises from about 5 to about 50%, most preferably from about 10 to about 40%, of the immobilizing agent.” (column 14, lines 25-35). Here, as noted by the Warner, the amount of gelator will depend on various factors, but will be such to counteract the emollient/oil from migrating and keeping the emollient/oil on the surface of the tissue, and one of ordinary skill in the art would found it obvious to determine the optimum amount of gelator through routine experimentation.
Claim 2: Warner discloses a temperature of about 100C and thus reasonably meets the claim requirement of “about 105C” (column 17, lines 25-35) as the range of the prior art abut the instant claimed range. Additionally, Warner discloses however, disclose raising the temperature to above the melting point and allow the lotion to flow such that is can be applied. Therefore, determination of the optimum temperature through routine experimentation would have been obvious to achieve the desired application/flowability.
Claim 4: Warner discloses loading amount that overlaps the claimed range and thus makes obvious the claimed range (column 16, lines 58-68). Additionally, the loading amount would be recognized as a result effective variable directly affecting the use (i.e. too little lotion and not enough benefits for user contact and too much lotion will saturate the tissue and be deleterious). Therefore taking the references collectively, it would have been obvious to one of ordinary skill in the art at the time of the invention to have determined the load amount through routine experimentation to reap the benefits of a tissue used by consumers.
Claim 7: Warner discloses the cellulosic substrate comprises softwood or hardwood kraft fibers (see e.g. column 6, lines 62-column 7, lines 8, stating kraft fibers from softwood or hardwood)
Claim 8: Warner discloses the gel softener includes a surfactant (column 14-16, section 3) and disclose an amount that overlaps the claims range (column 16, lines 8-28) and thus makes obvious such. Additionally, Warner disclose the amount is a result effective variable (column 16, lines 8-12) and as such it would have been obvious to have determined the optimum amount of surfactant to reap the benefits of its inclusion.
Claims 10-13 and 17: The cited prior art discloses and makes obvious the claim requirements for the reasons set forth above.
Claims 19-22, 25 and 26: The cited prior art discloses and makes obvious the claim requirements for the reasons set forth above.
Claim(s) 9, 18 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Warner taken with Luu and further with WO 2010149798, hereinafter WO 798.
Warner taken with Luu discloses all that is taught above and discloses using a surfactant; however, fails to disclose the claimed surfactant. However, WO 798 disclose known polyol surfactants for lotions (see page 2) include hydoxyethylglycinate coco-glucoside crosspolymer (see page 26) and thus using this known and suitable surfactant for lotions (see page 2) would have been obvious as predictable. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Claim(s) 28-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Warner taken with Luu and further with Okesola et al. (1,3:2,4-Dibenzylidene-D-sorbitol (DBS) and its derivatives - Efficient, versatile and industrially-relevant low-molecular-weight gelators with over 100 years of history and a bright future)
Warner generally discloses including a gelling agent/thickener to the lotion so that the emollient is prevented from migrating into the paper tissue (i.e. remains primarily on the surface); however, Warner with Luu fails to explicitly disclose the claimed gelling agent. However, Okesola, in the art of gelling agents discloses that 1,3:2,4 dibenzylidene sorbitol is a well-known organic gelling agent (abstract, introduction) and discloses such are used for cosmetic and personal care products including lotions, cream (page 10-11). Warner explicitly discloses including known gelling agents for lotions (column 11, lines 52-60) and Okesola discloses known gelling agents include 1,3:2,4 dibenzylidene sorbitol and therefore it would have been obvious to one of ordinary skill in the art to have modified Warner to use the known and suitable gelling agents as taught by Okesola to reap the benefits of using a well-known gelling agent for personal use products.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718