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 .
Status of Claims
Claims 16-29 are currently pending. Claims 1-15 were previously cancelled. No claims are amended. No new subject matter was added.
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 16, 17, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 11 of U.S. Patent No. 10,765,569 in view of Salas et al. “Water-Wettable Polypropylene Fibers by Facile Surface Treatment Based on Soy Proteins”, hereinafter referred to as “Salas”, as shown in the chart below.
16/948,163 claims
16
17
29
10,765,569 claims
11
3
11
Although the claims at issue are not identical, they are not patentably distinct from each other because most of the limitations are found in the copending claims.
Claims 3 and 11 of U.S. Patent No. 10,765,569 do not explicitly disclose “maintaining the aqueous solution at a temperature for a period of time sufficient to thermally denature at least a portion of the protein.
Salas teaches the effect of thermal denaturation on protein absorption wherein the protein was heated to 95 degrees Celsius, as that is a well- known method in the art for thermally denaturing a protein, as evidenced by lines 3-5 of the fifth paragraph of the second column of page 3 of Salas, wherein proteins are denatured by heating them for 60 minutes.
Claims 3 and 11 of U.S. Patent No. 10,765,569 and Salas are analogous art because both teach a water soluble protein in an aqueous solution.
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the invention to modify the water soluble proteins of claim 11 and further include maintaining the aqueous solution at a temperature for a period of time sufficient to thermally denature at least a portion of the protein, as taught by Salas. Salas teaches that adsorption of proteins from native and denatured conditions leads to a high coverage of the proteins on the polymer surface as confirmed by a significant improvement in water wettability (see Abstract).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16-21, 23, and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Everhart et al. (US 5494744 A), hereinafter referred to as “Everhart 744’’” in view of US Everhart et al. (5912194 A), hereinafter referred to as “Everhart 194’”, and in further view of Ponomarenko et al. (US 20040158213 A1), hereinafter referred to as “Ponomarenko”.
Regarding claim 16, Everhart 744’ discloses a method of imparting hydrophilic properties to a sheet (considered “coating a permeable sheet with amphiphilic proteins” in lines 1-2 of the abstract, which is disclosed as imparting hydrophilic properties to a sheet in lines 42-45 of column 13) of polymeric material (see lines 14-29 of column 5 wherein the sheet “may be a matrix of fibrous material”, which “may be formed from a thermoplastic polymer”) comprising: dissolving a water-soluble protein (considered the protein dissolved in aqueous solution of lines 53-55 of column 13) in water (lines 9-10 of column 4 disclose water as the solvent) to form a aqueous solution (lines 58-62 of column 5), ; applying the aqueous solution to a sheet of polymeric material (considered the “permeable sheet” to be coated of lines 1-3 of column 5) and drying the sheet such that at least a portion of the protein is retained on a surface of the sheet (considered the step of drying the coated permeable sheet of lines 5-9 of column 6). Everhart 744’ does not disclose forming a 0.5-10% aqueous solution of the water-soluble protein, but does disclose forming a less than 10% or, desirably, a 0.01-6% aqueous solution of the water-soluble protein (considered the amphiphilic protein concentration) in lines 58-62 of column 5. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the solution of Everhart 744’ from less than 10% to between 0.5-10% as applicant appears to have placed no criticality on the claimed range (see [0009], wherein the range is 0.4-1.2% in some embodiments, 0.5-10% in some embodiments, and 0.5-1.2% in other embodiments) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, Everhart 744’ would not operate differently with the claimed range and since the hydrophilic coating is configured to impart wettability to relatively hydrophobic substrates. Further, applicant places no criticality on the ranged claim, indicating simply that “in some embodiments, a 0.5-10% aqueous solution of the water-soluble protein has a surface tension less than 49 milliNewtons per meter (mN/m)’ ([0009)).
Additionally, Everhart 744’ does not disclose having a surface tension of less than 49 milliNewtons per meter (mN/m), but does disclose having a “relatively high surface tension” (lines 6-7 of the abstract), which is considered a surface tension of at least about 45 dynes/cm (which is equal to 45 milliNewtons/meter), and is desirably greater than 45 dynes/cm (lines 60-62 of column 2). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the surface tension of Everhart 744’ from greater than 45 dynes/cm to less than 49 milliNewtons per meter as applicant appears to have placed no criticality on the claimed range (see [0009], wherein “[i]n some embodiments, a 0.4-1.2% aqueous solution of the water-soluble protein has a surface tension greater than 50 milliNewtons per meter (mN/m). In some embodiments, a 0.5-10% aqueous solution of the water-soluble protein has a surface tension less than 49 milliNewtons per meter (mN/m)”’) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, Everhart 744’ would not operate differently with the claimed range and since the hydrophilic coating is configured to impart wettability to relatively hydrophobic substrates. Further, applicant places no criticality on the ranged claim, indicating simply that “Some embodiments of the present finishes (e.g., fora synthetic nonwoven or film) can include: an aqueous solution of a water-soluble, thermally- denatured protein, the solution having a surface tension less than 49 milliNewtons per meter (mN/m)” ({0020]) and “A high-surface-tension aqueous solution of SPI will not readily spread on a hydrophobic polypropylene nonwoven” ([0056)).
Everhart 744’ does not disclose wherein the method includes maintaining the aqueous solution at a temperature for a period of time sufficient to thermally denature at least a portion of the protein.
Everhart 194’ teaches a method of imparting hydrophilic properties to a sheet (milk-Protein Treated Nonwoven Webs, see Abstract; Col. 11 ln 9-16) wherein the method includes maintaining an aqueous solution at a temperature for a period of time sufficient to thermally denature at least a portion of the protein (a sample preparation of “Nonfat milk solutions of about 2.5 percent, by weight, nonfat milk were prepared by adding 25 g of Natural Nonfat Dry Milk solids to 1000 g of distilled water and heating to approximately 70 degrees Centigrade. The resulting solution was stirred for 30 minutes and stored at 4 degrees Centigrade (see Col. 11 ln 10-16).
Everhart 744’ and Everhart 194’ are analogous art because both disclose a method of imparting hydrophilic properties to a sheet by treating it with a protein.
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the invention to modify the method of imparting hydrophilic properties to a sheet of polymeric material of Everhart 744’ to include maintaining the aqueous solution at a temperature for a period of time sufficient to thermally denature at least a portion of the protein, as taught by Everhart 194’. Everhart 744’ teaches it is beneficial to heat and mix the aqueous solution to aid in dissolution of the nonfat dry milk and the milk solutions were stirred
Everhart 744’ in view of Everhart 194’ does not disclose where the aqueous solution is substantially free of synthetic surfactants.
In the analogous art of hydrophilic layers for disposable absorbent articles (lines 1-3 of the abstract) Ponomarenko teaches where the aqueous solution is substantially free of synthetic surfactants (considered the dispersion without surfactants of lines 6-7 of paragraph 52).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of imparting hydrophilic properties to a sheet of polymeric material of Everhart 744’ in view of Everhart 194’ to be substantially free of synthetic surfactants as in Ponomarenko because “Surfactant treatments...would often have an adequate shelf life, but have an inadequate wear life. That is, upon contact with bodily fluids, such as urine, the substrate would instantly [begin to lose] its hydrophilic properties. This may even lead toa surface which repels the bodily fluids it is designed to absorb even though the absorbent article has not reached its total absorbance capacity.” (lines 7-14 of paragraph 37). Examiner notes further embodiments of Ponomarenko include “optional ingredients”, one of which is a surfactant (paragraph 70, lines 1-3), however, as this ingredient is considered optional and reasoning is provided within Ponomarenko for not including a surfactant (as well as an embodiment without a surfactant), Ponomarenko is considered to teach wherein the aqueous solution is substantially free of synthetic surfactants.
Regarding claim 17, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 16. Everhart 744’ further discloses wherein the sheet comprises a nonwoven fabric or a film (see lines 14-20 of column 5 wherein the sheet “may be a matrix of fibrous material” and “The matrix of fibrous material may be a nonwoven fabric”).
Regarding claim 18, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 16. Everhart 744’ further discloses the method further comprising, prior to applying the aqueous solution to the sheet (lines 54-55 of column 14): admixing the water-soluble protein in water (considered adding the dry milk to hot water to form various weight percent amphiphilic protein solutions of lines 38-43 of column 14); heating the water (considered an implied step in order to get hot water, which is defined as “approximately 55°-80°C” in line 41 of column 14); and stirring the admixture to dissolve the water-soluble protein in water (see lines 40-49 of column 14, wherein it is disclosed that “Milk solutions were stirred until all solids were dissolved” in one example of the invention).
Everhart 744’ does not disclose heating the water to a temperature in the range of 40°Celsius (C) to 99°C, but does disclose heating the water to a temperature in the range of 55-80°C (in line 41 of column 14). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify temperature range of Everhart 744’ from 55-80°C as applicant appears to have placed no criticality on the claimed range (see [0013], wherein in some embodiments the temperature is maintained between 40°C and 99°C, or 50 to 85°C) and since it has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, Everhart 744’ would not operate differently with the claimed range and since the heating of the water is to aid with the solubility of the proteins (see lines 40-49 of column 14, wherein it is disclosed that “Milk solutions were stirred until all solids were dissolved” in one example of the invention). Further, applicant places no criticality on the ranged claim, indicating simply that “in some embodiments” the temperature of the water is maintained between 40-99°C (paragraph [0013] of the specifications) without further mention of the range or the reasoning for choosing that range.
Regarding claim 19, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 18. Everhart 744’ further discloses wherein the water is heated before admixing the water-soluble protein (see “added to hot water” in line 41 of column 14, relating to one embodiment of Everhart 744’, wherein dry milk is dissolved to prepare a protein solution; in order for the water to be hot before the protein is mixed in, it must have been heated prior to admixing the water-soluble protein).
Regarding claim 20, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 18. Everhart 744’ further discloses wherein the temperature of the water is maintained at a temperature of from 40°C to 99°C during at least a portion of the stirring (Everhart 744’ discloses dry milk is added to hot water (approximately 55°-80°C) in lines 38-41 of column 4; seeing as the solution is disclosed to be stored in a refrigerator after stirring and not before, without the introduction of a source of cooling, the solution, must, by nature of beginning at approximately 55°-80°C, be maintained at a temperature of from 40°C to 99°C during at least a portion of the stirring, as water takes time to cool down; this is further supported by the disclosure that “Milk solutions were stirred until all solids were dissolved” (lines 44-45 of column 14) and the reasoning in Everhart 744’ for using warmed water, which is “to aid in dissolution of the nonfat dry milk” (lines 43-44 of column 14)).
Regarding claim 21, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 19. Everhart 744’ further discloses wherein the temperature of the water is at an elevated temperature (Everhart 744’ discloses dry milk is added to hot water (approximately 55°-80°C) in lines 38-41 of column 4).
Everhart 744’ does not disclose wherein the temperature of the water is maintained at a temperature of 40°C to 99°C, but does disclose heating the water to a temperature in the range of 55- 80°C (in line 41 of column 14). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify temperature range of Everhart 744’ from 55-80°C as applicant appears to have placed no criticality on the claimed range (see [0013], wherein in some embodiments the temperature is maintained between 40°C and 99°C, or 50 to 85°C) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, Everhart 744’ would not operate differently with the claimed range and since the high temperature of the water is to aid with the solubility of the proteins (see lines 40-49 of column 14, wherein it is disclosed that “Milk solutions were stirred until all solids were dissolved” in one example of the invention). Further, applicant places no criticality on the ranged claim, indicating simply that “in some embodiments” the temperature of the water is maintained between 40-99°C (paragraph [0013] of the specifications) without further mention of the range or the reasoning for choosing that range.
Everhart 744’ does not disclose wherein the temperature of the water is maintained for a period of time sufficient to thermally denature at least a portion of the water-soluble protein.
Everhart 194’ teaches a method of imparting hydrophilic properties to a sheet (milk-Protein Treated Nonwoven Webs, see Abstract; Col. 11 ln 9-16) wherein the method includes maintaining an aqueous solution at a temperature for a period of time sufficient to thermally denature at least a portion of the protein (a sample preparation of “Nonfat milk solutions of about 2.5 percent, by weight, nonfat milk were prepared by adding 25 g of Natural Nonfat Dry Milk solids to 1000 g of distilled water and heating to approximately 70 degrees Centigrade. The resulting solution was stirred for 30 minutes and stored at 4 degrees Centigrade (see Col. 11 ln 10-16).
Regarding claim 23, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 16. Everhart 744’ further discloses wherein the temperature of the solution is in the range of 20°C to 40°C during at least a portion of applying the aqueous solution to the sheet (in lines 46-47 of column 14, Everhart 744’ discloses “solutions were warmed to room temperature prior to exposure to nonwoven materials”; since room temperature is conventionally taken as about 20°C, according the Oxford English Dictionary, this means the temperature of the solution is in the range of 20°C to 40°C during at least a portion of applying the aqueous solution to the sheet).
Regarding claim 26, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 16. Everhart 744’ further discloses applying the aqueous solution to a sheet with a coating apparatus (the liquid distribution element (24), lines 3-32 of column 11). Everhart 744’ does not disclose wherein applying the aqueous solution to the sheet is performed with at least one coating apparatus selected from the group consisting of: a slot die, a knife coater, a kiss coater, a gravure printer, a multiple-roller coating apparatus, and a screen coating apparatus.
Ponomarenko teaches wherein applying the aqueous solution to the sheet is performed with a kiss coater (lines 2-3 of paragraph 83).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Everhart 744’ to include applying the aqueous solution to the sheet with a kiss coater as in Ponomarenko because when using a kiss coater, “the amount of composition applied on the substrate can be controlled easily and it is possible to avoid soaking the substrate with composition” (lines 9-12, paragraph 83 of Ponomarenko).
Regarding claim 27, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 16. Everhart 744’ further discloses wherein the aqueous solution comprises a preservative (lines 10- 13 of column 4).
Claim 22 and 29 is rejected under 35 U.S.C. 103 as being unpatentable over Everhart 744’ in view of Everhart 194’ in view of Ponomarenko, as applied to claim 16 above, and further in view of Battista (US 4349470 A).
Regarding claim 22, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 18. Everhart 744’ does not disclose the method further comprising: adjusting the pH of the admixture of water and water-soluble protein prior to heating the admixture.
Battista teaches a method of creating protein hydrogel structures formed from natural proteins having an average molecular weight of about 100,000 or less by dissolving the protein in an aqueous acidic solution (see Abstract) wherein the method further comprising: adjusting the pH of the admixture of water and water-soluble protein prior to heating the admixture (the products of the present invention are prepared from solutions of the natural protein containing from about 0.5 percent to about 15 percent, by weight, preferably from 0.5 percent to 10 percent, of the protein or mixtures of the proteins. The solution is heated to 60.degree..+-.5.degree. C. so as to aid in dissolving the protein and produce a clear solution. Following the dissolution of the protein, the pH of the solution is adjusted to about pH 3.5 to about pH 5.5 as by the addition of a suitable acid, such as, for example, hydrochloric or phosphoric acids, to form an aqueous acidic solution of the protein, see Col. 2 ln 59-68; Col. 3 ln 1).
Everhart 744’, Everhart 194’, Ponomarenko, and Battista are all analogous art because all teach a method of preparing an aqueous solution of natural proteins.
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the invention to modify the method of preparing the aqueous solution of proteins of Modified Everhart 744’ and further include adjusting the pH of the admixture of water and water-soluble protein prior to heating the admixture, as taught by Battista. Battista teaches the method of provides new forms of treated protein polymers that possess unique physical properties, especially in the wet state, properties that are critically dependent upon the specific sequence of controlling pH, see Col. 1 ln 67-68; Col. 2 ln 1-14).
Regarding claim 29, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 16. Everhart 744’ does not disclose wherein the protein comprises soy protein isolate (SPI).
Battista teaches a method of creating protein hydrogel structures formed from natural proteins having an average molecular weight of about 100,000 or less by dissolving the protein in an aqueous acidic solution (see Abstract) wherein the protein comprises soy protein isolate (SPI) (edible soybean protein is a typical starting vegetable protein example to use in protein hydrogel structures, see Col. 2 ln 18-21).
Everhart 744’, Everhart 194’, Ponomarenko, and Battista are all analogous art because all teach a method of preparing an aqueous solution of natural proteins.
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the invention to modify the method of preparing the aqueous solution of proteins of Modified Everhart 744’ and further include wherein the protein comprise soy protein isolate, as taught by Battista. Battista teaches t is essential to begin with natural protein raw materials that form clear solutions in water at concentrations up to 30 percent or higher to provide new forms of treated protein polymers that possess unique physical properties, especially in the wet state, (see Col. 1 ln 67-68; Col. ln 1; and Col. 2 ln 15-17).
Claims 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Everhart 744’ in view of Everhart 194’ in view of Ponomarenko, as applied to claim 16 above, and further in view of Yao (CN 101324029 A).
Regarding claim 24, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 16. The combination does not disclose wherein applying the aqueous solution to the sheet comprises: immersing the sheet a first time in the aqueous solution: and immersing the sheet a second time in the aqueous solution.
In the analogous art of hydrophilic coatings for nonwoven fabrics (abstract), Yao teaches wherein applying the aqueous solution to the sheet comprises: immersing the sheet a first time in the aqueous solution: and immersing the sheet a second time in the aqueous solution (“the non-woven fabric is doubly dipped” abstract, lines 4-6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Everhart 744’ in view of Everhart 194’ in view of Ponomarenko to include immersing the sheet a first time in the aqueous solution and immersing the sheet a second time in the aqueous solution as in Yao in order to ensure the entire surface is coated sufficiently and increase the possibility of proteins binding to free surfaces on the nonwoven.
Regarding claim 25, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko in view of Yao discloses the method of claim 24. Everhart 744’ further discloses calendaring the sheet (lines 30-33 of column 9).
Everhart 744’ does not disclose calendaring the sheet between immersing the sheet the first time and immersing the sheet the second time.
Yao teaches calendaring the sheet and immersing the sheet a first time and immersing the sheet a second time (“the non-woven fabric is doubly dipped and doubly rolled in a finishing solution” abstract, lines 4-6; wherein the rolling is considered calendaring). Examiner notes Yao does not distinguish whether the calendaring takes place before, after, or in-between the dipping process.
However, a person having ordinary skill in the art before the effective filing date of the claimed invention would have recognized that there are a limited number of options for when in the process to calendar the sheet, either (a) before, (b) after, or (c) in-between the aforementioned dipping steps.
Therefore, when there are a finite number of identified, predictable solutions, i.e., to calendar the sheet before, after, or in-between dipping steps, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, I.e., dispersing the aqueous solution evenly on the nonwoven sheet, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance, the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103 (KSR Int'| Co. v. Teleflex Incl, 127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Everhart 744’ in view of Everhart 194’ in view of Ponomarenko, as applied to claim 27 above, and further in view of Reibel et al. (TW 1400097 B), hereinafter referred to as “Reibel”.
Regarding claim 28, Everhart 744’ in view of Everhart 194’ in view of Ponomarenko discloses the method of claim 27. The combination does not disclose wherein the preservative comprises one or more preservatives selected from the group consisting of elemental silver, Japanese honeysuckle, one or more tocopherols, and mixtures thereof.
In the analogous art of nonwoven fabrics (technical field paragraph, page 2 of the translated document), Reibel discloses using silver as a preservative (page 3 of the translation, paragraph 9 of the page, lines 3-4 of the paragraph).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Everhart 744’ in view of Everhart 194’ in view of Ponomarenko to use the preservative of Reibel because “Silver as a low-concentration preservative has a long-term effect on a variety of infectious disease pathogens.” (page 3 of the translation, paragraph 9 of the page, lines 3-4 of the paragraph), and providing an absorbent article with antibacterial properties is a well-known advantage in the art (see the inclusion of fibers with antibacterial properties after adsorption in lines 12- 15 of the second paragraph of the first column of the second page of Salas).
Response to Arguments
Applicant's arguments filed 02/19/2026 have been fully considered but they are not persuasive.
Specifically, Applicant argues in Claim 16 that Everhart 194 does not teach thermally denaturing at least a portion of the protein and is silent on the temperature of the solution during the 30 minute-stirring. Applicant further states since the parts pointed out in Everhart 194 do not disclose denatured proteins, let alone heat-denatured proteins, Everhart 194 does not disclose the configuration recited in Claim 1.
The examiner respectfully disagrees that Everhart 194 fails to disclose the limitations in claim 1. Everhart 194 describes a non-fat milk solution containing water heated to about 70 degrees Celsius, the obtained solution is prepared by a method including a step of stirring for 30 minutes, the said protein solution is deposited on a non-woven fabric web, and the non-woven fabric web is washed and dried to produce a non-woven fabric web containing non-fat milk having a dry impregnation amount of about 0.38%. in Col. 11 and 11-34. It is understood that when milk is heated-treated at a temperature exceeding 60 degrees Celsius, at least part of the whey protein in the milk denatured by heating. Thus, it is presumed that the fat-free milk solution subject to the above treatment including heating to 70 degrees Celsius in Everhart 194 contains at least a part of water-soluble heat denatured protein. Therefore, Everhart 194 would teach on limitations of claim 16.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
NPL document “Colloids and Surfaces B: Biointerfaces, 2003, Vol.31” (see attached document) teaches that when milk is heat-treated at a temperature exceeding 60 degrees Celsius (for example, 70-90 degrees Celsius), at least a part of the whey protein in the milk is denatured by heating it is deemed that when milk is heat-treated at a temperature exceeding 60 degrees Celsius (see line 4 of the left column to line 1 of the right column on page 115; lines 39-43 of the left column on page 121; and lines 21-23 of the right column on page 122).
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 ERIC RASSAVONG whose telephone number is (408)918-7549. The examiner can normally be reached Monday - Friday 9:00am-5:30pm PT.
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, Sarah Al-Hashimi can be reached at (571) 272-7159. 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.
/ERIC RASSAVONG/ (6/15/2026)Examiner, Art Unit 3781
/ANDREW J MENSH/Primary Examiner, Art Unit 3781
Prosecution Insights