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 .
Response to Amendment
The amendment filed on 7/22/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 6-8, 23 and 25-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The limitation requiring sides of the water-soluble polymer zones be exposed to “an environment” renders the claims indefinite. It is not clear what material(s) are encompassed by the claimed environment. The specification fails to define the term.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Newly amended claim 1 already requires a plurality of discontinuously dispersed, water-soluble polymer zones.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-4, 6-8, 23 and 25-27 are rejected under 35 U.S.C. 102(a)(1) as anticipated by WO 2018/129495 to Boswell or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2018/129495 to Boswell in view of USPAP 2004/0161438 to Jungmann.
Claims 1 and 2, Boswell discloses a thermoplastic film comprising: a surface; and a plurality of discontinuously-dispersed water-soluble polymer zones disposed on and in contact with the surface, the water-soluble polymer zones comprising a skin active, a water-soluble film-forming polymer, and a surfactant, wherein sides of the water-soluble polymer zones extending from the surface are exposed to an environment above the surface, wherein the thermoplastic film is free of an adhesive that is disposed between the surface of the thermoplastic film and the water-soluble polymer, and wherein the water-soluble polymer is selected from the group consisting of: methyl cellulose, hydroxyethyl methyl cellulose, hydroxypropyl methyl cellulose, hydroxypropyl ethyl cellulose, ethyl cellulose, hydroxyethyl methyl cellulose, and combinations thereof (see entire document including pages 8-10, 15-18, 21, 29 and 30).
Regarding the sides of the water-soluble polymer zones extending from the surface and being exposed to an environment above the surface, Figure 4 of Boswell shows sides of the water-soluble polymer zones (46) extending from the surface (50) and exposed to an (adhesive) environment above the surface. It is noted that the claims fail to define “an environment” as excluding an adhesive environment. Further, although Figure 4 only shows a cross section taken along 4-4 of Figure 3, Figure 3 clearly shows multiple water-soluble polymer zones (46) with sides (that extend from the surface (50)) that are exposed to non-adhesive environment. For example, Figure 3 shows water-soluble polymer zones (46) with four sides extending from the surface (50) wherein the uppermost and lowermost sides of the water-soluble polymer zones (46) are exposed to a non-adhesive environment while left and right sides of the water-soluble polymer zones are exposed to adhesive environment. Further still, Figure 2 shows that the invention of Boswell does not require the water-soluble polymer zone top surfaces be co-planar with the adhesive zone top surfaces. Thus, Boswell teaches that the invention encompasses Figure 4 but with the adhesive zones (43) not extending up to the height of the water-soluble polymer zones (46). It would have been obvious to one having ordinary skill in the art to construct the thermoplastic film of Figure 4 of Boswell with adhesive zones (43) not extending up to the height of the water-soluble polymer zones (46) for applications desiring a product wherein the skin active agent (48) primarily/firstly comes into contact with the user.
Regarding the thermoplastic film being free of an adhesive disposed between the surface of the thermoplastic film and the water-soluble polymer, the adhesive (43) of Boswell is located between the water-soluble polymer zones (46) (e.g. see Figure 4).
Regarding the claimed freshening active, the current specification defines a freshening active as a perfume raw material, malodor counteractant, intercalated bleach, cleaning active, antibacterial material, or a combination thereof (claim 2) and also mentions plant scents such as thyme, mint, lemon and cinnamon (page 22). The skin active of Boswell is considered the claimed freshening active because Boswell discloses that the skin active may include substances such as an anti-microbial, anti-fungal, botanicals, and mixtures thereof (pages 29 and 30). Further, Jungmann discloses that common skin actives include antimicrobials, plant extracts, deodorants, and perfume oils (see entire document including [0051]. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make to include any suitable skin active material(s), such as deodorants and/or perfumes, because it is within the general skill of a worker in the art to select a known skin active material on the basis of the product intended use.
Claim 3, Boswell does not appear to mention the freshening active being encapsulated but Jungmann discloses that it is known in the art to encapsulate a freshening active to provide the active material with protection, to make the active last longer, and/or to control the active release [0004]. Therefore, it would have been obvious to one having ordinary skill in the art to encapsulate the freshening active to provide the active material with protection, to make the active last longer, and/or to control the active release.
Claim 4, Boswell discloses a plurality of discontinuously dispersed, water-soluble polymer zones (page 26).
Claim 6, Boswell discloses that the surfactant may be selected from the group consisting of: ethoxylated sorbitan, sorbitan, and combinations thereof (page 15). Plus, the examiner takes official notice (now admitted prior art) that the claimed surfactants are well-known in the art. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the water- soluble polymer zones with any suitable surfactant material, such as claimed, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 7, the water-soluble polymer zones may comprise at least 70 wt. % of the freshening active (page 8). Plus, it would have been obvious to one having ordinary skill in the art at the time the invention was made to adjust the amount of freshening active, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
Claim 8, the water-soluble, film-forming polymer is a first water-soluble polymer, and the water-soluble polymer composition may further comprises a second water-soluble, film-forming polymer (pages 10-16).
Claim 23, Boswell does not appear to mention the tensile modulus of the zones at different humidity levels but considering that zones are water-soluble [0077] it would have been obvious to one having ordinary skill in the art to construct the zones as claimed to provide controlled release of the freshening active.
Claim 25, Boswell does not mention the freshening active being encapsulated.
Claim 26, Boswell does not appear to specifically mention the contact angle of the water-soluble polymer zones but the current application discloses that the contact angle is less than 70 degrees when the water-soluble polymer is METHOCEL (Table 1). Considering that Boswell discloses that the water-soluble polymer may be METHOCEL (paragraph bridging pages 12 and 13), the water-soluble polymer zones appear to inherently have the claimed contact angle. 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 27, Boswell discloses that the thermoplastic film comprises polyethylene, polypropylene, ethylene vinyl acetate (EVA), ethylene methyl acrylate (EMA) and ethylene acrylic acid (EAA), or combinations thereof (page 18).
Response to Arguments
Applicant's arguments filed 7/22/2025 have been fully considered but they are not persuasive.
The applicant asserts that Boswell fails to teach or suggest sides of the water-soluble polymer zones extending from the surface and being exposed to an environment above the surface. The examiner respectfully disagrees. Figure 4 of Boswell shows sides of the water-soluble polymer zones (46) extending from the surface (50) and exposed to an (adhesive) environment above the surface. It is noted that the claims fail to define “an environment” as excluding an adhesive environment. Further, although Figure 4 only shows a cross section taken along 4-4 of Figure 3, Figure 3 clearly shows multiple water-soluble polymer zones (46) with sides (that extend from the surface (50)) that are exposed to non-adhesive environment. For example, Figure 3 shows water-soluble polymer zones (46) with four sides extending from the surface (50) wherein the uppermost and lowermost sides of the water-soluble polymer zones (46) are exposed to a non-adhesive environment while left and right sides of the water-soluble polymer zones are exposed to adhesive environment. Further still, Figure 2 shows that the invention of Boswell does not require the water-soluble polymer zone top surfaces be co-planar with the adhesive zone top surfaces. Thus, Boswell teaches that the invention encompasses Figure 4 but with the adhesive zones (43) not extending up to the height of the water-soluble polymer zones (46). It would have been obvious to one having ordinary skill in the art to construct the thermoplastic film of Figure 4 of Boswell with adhesive zones (43) not extending up to the height of the water-soluble polymer zones (46) for applications desiring a product wherein the skin active agent (48) primarily/firstly comes into contact with the user.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Monday-Thursday 7am-5pm.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789