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 .
In response to the amendments filed 06/12/2025 in which claims 1, 3, 6, 13-17, and 24-25 have been amended, claims 1, 3-9, 11, 13-21, 24-25, and 27 are pending in the instant application and are examined on the merits herein.
Priority
The instant application claims priority to U.S. Provisional Application no. 63/031,059 filed on 05/28/2020.
All claims receive priority to the prior-filed application.
Response to Arguments
Rejection of the Claims under 35 U.S.C. 103
Applicant's arguments filed 06/12/2025 have been fully considered but they are not persuasive.
Regarding independent claims 1 and 15, the applicant argues that the claimed chroma values, L*a*b* color values, and delta E values are not merely selections of ornamentation or design and that the design choice rejection over these limitations is inappropriate.
In response to the applicant’s argument, the examiner acknowledges the applicant’s argument and respectfully disagrees. The applicant argues that the claimed chroma, L*a*b* colors, and delta E values are functional selections necessary to achieve a specific effect when the invention is viewed as a whole. The applicant further argues that the design choice rejection is inappropriate in that the case law cited is focused on only aesthetic differences between an instant invention and the prior art, and the chroma values of the applicant’s instant invention have been deliberately chosen so that measurement of the portion of the graphics comprising said chroma values will have two visually different color values. The applicant concludes that this is a critical limitation. In the previous rejection of record filed 03/20/2025, the examiner provided both a design choice rejection as well as a non-functional printed matter rejection in regards to the graphics and all limitations regarding said graphics, including chroma, color, amount of graphics, orientation, size, etc.. As the graphics of the absorbent article do not provide a functional relationship to the substrate which they are printed on, the graphics are considered non-functional printed matter which cannot patentably distinguish over the prior art. Any decisions made regarding said graphics, including chroma, color, amount of graphics, orientation, size, would be considered an obvious matter of design choice in that they provide no mechanical function to the absorbent article itself. Changing a chroma value would not modify anything about the absorbent article as a substrate. Further, the applicant argues that without said chroma values, the difference in color values and the delta E corresponding to the difference in color values would not be exhibited in the claimed absorbent articles. The prior art US/2016/0278986 A1 to Gross, even without an explicit disclosure of chroma, clearly indicates that the differences in the color values between the embossed/apertured and unembossed/unapertured areas of the outer cover and backsheet are exhibited as color effects that are visible (para. 0004; para. 0055-0056; para. 0063-0064; para. 0441).
The rejections of the claims are maintained.
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.
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 1, 3-9, 13-21, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over US/2016/0278986 A1 to Gross.
Regarding claim 1, Gross discloses an absorbent article (Fig. 4, 20 absorbent article) comprising: a liquid permeable topsheet (para. 0147 lines 1-2; Fig. 4, 24 topsheet); a liquid impermeable backsheet (para. 0066, backsheet comprises the body facing layer of 100 laminate; para. 0147 line 2; para. 0177 lines 1-10, laminate formed as a backsheet and outer cover; Fig. 1E, 110 first layer as backsheet when comprised of 100 laminate; Fig. 4, 25 backsheet); an absorbent core positioned at least partially between the topsheet and the backsheet (para. 0147 lines 2-4; Fig. 4 showing 28 absorbent core positioned between 24 topsheet and 25 backsheet); and an outer cover material (para. 0066, outer cover comprises the garment facing layer of 100 laminate; para. 0177 lines 1-10, laminate formed as a backsheet and outer cover; Fig. 1E, 150 second layer as outer cover when comprised of 100 laminate) or a landing zone comprising an embossed pattern (para. 0085, embossing involves the manipulation of material in 110 first layer and 150 second layer of 100 laminate in the positive and/or negative Z-direction; para. 0430 lines 5-10; para. 0431 lines 3-4; Fig. 1E showing 180 embossed area of 100 laminate wherein 150 second layer comprises a thinned area); wherein a garment-facing surface of the backsheet (para. 0260 ln. 1-5; para. 0431 lines 3-4) comprises one or more graphics and a graphic-free area (para. 0260 lines 1-5; Fig. 88B showing 15900a/15900b graphics and area wherein there are no graphics); wherein a portion of the embossed pattern including densified and non-densified regions (para. 0085, embossing involves the manipulation of material in 110 first layer and 150 second layer of 100 laminate in the positive and/or negative Z-direction; para. 0430 lines 5-10; Fig. 1E showing 180 embossed area on 150 second layer creating thinned/densified region and non-densified region; Fig. 88B showing 16074a/16074b/16076a/16076b embossments) overlaps a portion of the one or more graphics (para. 0430 lines 5-10; para. 0436-0437; Fig. 88B showing 16074a/16076a embossments overlapping a portion of 15900a/15900b graphics); and wherein the embossed pattern (para. 0430 lines 5-10; Fig. 88B, 16074a/16074b/16076a/16076b embossments) forms at least 1 and less than 40 recognizable, discrete indicia (Fig. 88B showing 4 arrays of embossments made each from 16074a/16074b/16076a/16076b embossments creating wavy lines).
Gross differs from the instantly claimed invention in that Gross fails to explicitly disclose the graphics comprising visually vibrant colors, and the portion of the one or more graphics comprising the visually vibrant color exhibits a chroma value of about 8 to about 130 according to the Backsheet Graphic Color Test Method.
These claim limitations are merely defining the shade or hue of the graphics and outer cover and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the color or chroma values to provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Further, the graphics of the absorbent article of the instant application are not considered functional printed matter as the absorbent article merely serves as a support for the graphics. As the graphics are not considered functional printed matter, all limitations with respect to the graphics (such as chroma, color, amount of graphics, orientation, size, etc.) do not receive patentable weight and cannot patentably distinguish the claimed product from the prior art, as discussed in MPEP 2111.05.
Further still, it is the Office’s position that the testing method for a material or structural property does not impart a patentable weight. The property is attributed to the material and structure, not the testing method. As such, a reference does not need to recite using the backsheet laminate color test method to determine the L*a*b* color values through densified and non-densified regions or using the backsheet graphic color test method to determine the chroma value or an L* value of the graphics to read on the claim language.
Further, Gross differs from the instantly claimed invention in that Gross fails to explicitly disclose that the portion of the one or more graphics exhibits a first L*a*b* color value when measured through a densified region of the embossed pattern of the outer cover material or landing zone, according to the Backsheet Laminate Color Test Method and that the portion of the one or more graphics exhibits a second, different L*a*b* color value when measured through a non-densified region of the outer cover material or landing zone, according to the Backsheet Laminate Color Test Method.
It would be considered inherent that the first and second L*a*b* color values would measure differently when measured through a densified region of the embossed pattern of the outer cover and a non-densified region of the outer cover according to the disclosures of Gross wherein the first layer of the laminate as the outer cover is a nonwoven web (para. 0177 lines 1-10), the second layer of the laminate as the backsheet is a film (para. 0177 lines 1-10), the first and second layers of the laminate may have different colorations (para. 0122), the first layer of the laminate as the backsheet may further comprise printing (para. 0431 lines 1-3) as a pattern or a plurality of patterns which form graphics that may be pigmented or colored (para. 0260 lines 1-5), and some of the embossed regions are disposed over the graphic portion of the first layer and others are disposed over the non-graphic portion of the first layer (para. 0430 lines 5-10; para. 0436-0437; Fig. 88B showing 16074a/16076a embossments overlapping a portion of 15900a/15900b graphics). Gross further discloses that embossing creates thinned out areas of the laminate (para. 0085 lines 1-3) and that thinned out areas can have a different opacity characteristic with respect to the material around them, which achieves a color effect wherein the thinner area appears as a different color than the material around it (para. 0240 lines 3-8) in that a lower opacity first layer will allow more color of the second layer to bleed through (para. 0079 lines 2-10), and, inversely, a higher opacity first layer will allow less color of the second layer to bleed through, thus modifying the color that is initially expressed from either of the first layer and the second layer. Further still, Gross discloses that when a cover layer is used and a subjacent layer is printed, such as a backsheet, the cover layer may have a lowered opacity, such that the printing may be seen through the cover layer (para. 0260 lines 14-17). These disclosures would result in a printing which may be seen through a colored cover layer (non-embossed region) and a printing which may be seen through a thinned out area of the colored cover layer (embossed region), wherein the printing in the embossed region may appear as a different color than the material of the non-embossed region due to a difference in opacity of the cover layer in the embossed regions and non-embossed regions. Therein, it is inherent in Gross that the first and second L*a*b* color values would measure differently when measured through the embossed and non-embossed regions of the outer cover. Additionally, the absorbent article of Gross can be measured using the Backsheet Laminate Color Test Method as detailed in the specification of the instant application (pg. 37-39) as the method only requires a densified region of an embossed pattern in an outer cover material overlapping a portion of a graphic on the backsheet (as disclosed in Gross above).
Additionally and as explained above, the graphics of the instant application do not have a functional relationship to the article and therefore, are considered nonfunctional printed matter which do not patentably distinguish the claimed product from the prior art.
Gross further differs from the instantly claimed invention in that Gross fails to explicitly disclose that a delta E between the first L*a*b* color value and the second L*a*b* color value is from about 2 and about 19, according to the Backsheet Laminate Color Test Method.
Gross does disclose that the delta E between the color values in the area creating color effects (embossed/apertured and unembossed/unapertured areas) is at least greater than 2.5, according to a color test method that is different from that claimed (para. 0063-0064; para. 0461; para. 0463-0467).
This claim limitation is merely defining the shade or hue of the graphics and outer cover and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the color or chroma values to provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Further still, it is the Office’s position that the testing method for a material or structural property does not impart a patentable weight. The property is attributed to the material and structure, not the testing method. As such, a reference does not need to recite using the backsheet laminate color test method to determine the L*a*b* color values through densified and non-densified regions or the delta E between the L*a*b* color values to read on the claim language.
Even further still, the limitation as recited “wherein the embossed pattern forms at least 1 and less than 40 recognizable, discrete indicia” merely defines the amount of recognizable indicia and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application that forming recognizable indicia would provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Regarding claim 3, Gross discloses the invention of claim 1, Gross further discloses: wherein an entire area of at least one recognizable, discrete indicium is overlapped by a portion of the one or more graphics comprising visually vibrant colors (para. 0430 lines 5-10; Fig. 88B showing 4 arrays of embossments made each from 16074a/16074b/16076a/16076b embossments creating wavy lines and 16074a/16076a embossments overlapped with 15900a/15900b graphics).
Further, this limitation merely defines the orientation and size of the indicium and graphics and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application that overlapping the indicium and graphics would provide the predictable result of accentuating the overlapped features. Gross discloses this result in para. 0055. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Regarding claim 4, Gross discloses the invention of claim 1; however, Gross differs from the instantly claimed invention in that Gross fails to explicitly disclose that a single, recognizable indicium has an area in the range of about 52 mm2 to about 7500 mm2.
It appears that the article of Gross would operate equally well with the claimed indicium areas and further, the applicant has not disclosed that the range claimed solves any stated problem or is for any particular purpose, indicating simply that the area “may” be within the claimed ranges (spec. pg. 22 lines 23-26). It would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the size of a single indicium of Gross to have an area within 52 mm2 to 7500 mm2 because it appears to be an arbitrary design consideration which fails to patentably distinguish over Gross. Since applicant has not given any criticality to why the dimension disclosed has any importance to the function of the claimed device, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777.
Regarding claim 5, Gross discloses the invention of claim 1 Gross further discloses: wherein the recognizable discrete indicia comprises an animal, a logo, a brand name, a symbol, a word, a character, or an icon (Fig. 88B showing 4 arrays of embossments made each from 16074a/16074b/16076a/16076b embossments creating wavy lines considered to be a symbol such as a tilde).
Further, this limitation merely defines the shape of the indicium and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application that forming recognizable indicia would provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Regarding claim 6, Gross discloses the invention of claim 1, Gross further discloses wherein a single graphic of the one or more graphics comprising the visually vibrant color has an individual graphic area (para. 0430 lines 5-10; Fig. 88B showing individual area of 15900a/15900b graphics), wherein a single recognizable, discrete indicium has an individual indicium area (Fig. 88B showing 4 arrays of embossments made each from 16074a/16074b/16076a/16076b embossments creating wavy lines having an area about each array); however, Gross differs from the instantly claimed invention in that Gross fails to disclose wherein the individual indicium area is smaller than the individual graphic area.
This limitation merely defines the orientation and size of the indicium and graphics and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application that overlapping the indicium and larger graphics would provide the predictable result of accentuating the overlapped features. Gross discloses this result in para. 0055. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Regarding claim 7, Gross discloses the invention of claim 1; however, Gross differs from the instantly claimed invention in that Gross fails to explicitly disclose that the outer cover material comprises a densified region area in the range of about 5% to about 30%, relative to an entire area of the outer cover material or the landing zone.
It appears that the article of Gross would operate equally well with the claimed densified region areas and further, the applicant has not disclosed that the range claimed solves any stated problem or is for any particular purpose, indicating simply that the area “may” be within the claimed ranges (spec. pg. 24 lines 5-7). It would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the size of a densified region of Gross to have an area within 5% to about 30% of the entire area of the outer cover material because it appears to be an arbitrary design consideration which fails to patentably distinguish over Gross. Since applicant has not given any criticality to why the dimension disclosed has any importance to the function of the claimed device, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777.
Regarding claims 8-9 and 13-14, Gross discloses the invention of claim 1; however, Gross differs from the instantly claimed invention in that Gross fails to explicitly disclose (Claim 8) wherein the first L*a*b* color value has an L* value in the range of about 5 to about 95, an a* value in the range of about -90 to about 90, and a b* value in the range of about -90 to about 90, when measured through the densified region of the embossed pattern of the outer cover material or the landing zone, according to the Backsheet Laminate Color Test Method; (Claim 9) wherein the second L*a*b* color value has a L* value in the range of about 5 to about 95, an a* value in the range of about -90 to about 90, and a b* value in the range of about -90 to about 90, when measured through the non-densified region of the outer cover material or the landing zone, according to the Backsheet Laminate Color Test Method; (Claim 13) wherein the portion of the one or more graphics comprising the visually vibrant color exhibits a chroma value in the range of about 8 to about 100, according to the Backsheet Graphic Color Test Method; and (Claim 14) wherein the portion of the one or more graphics comprising the visually vibrant color exhibits an L* value of less than 95, according to the Backsheet Graphic Color Test Method.
These claim limitations are merely defining the shade or hue of the graphics and outer cover and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the color or chroma values to provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Additionally and as explained in the rejection of claim 1 above, the graphics of the instant application do not have a functional relationship to the article and therefore, are considered nonfunctional printed matter which do not patentably distinguish the claimed product from the prior art.
Further still, it is the Office’s position that the testing method for a material or structural property does not impart a patentable weight. The property is attributed to the material and structure, not the testing method. As such, a reference does not need to recite using the backsheet laminate color test method to determine the L*a*b* color values through densified and non-densified regions or using the backsheet graphic color test method to determine the chroma value or an L* value of the graphics to read on the claim language.
Regarding claim 15, Gross discloses an absorbent article (Fig. 4, 20 absorbent article) comprising: a liquid permeable topsheet (para. 0147 lines 1-2; Fig. 4, 24 topsheet); a liquid impermeable backsheet (para. 0066, backsheet comprises the body facing layer of 100 laminate; para. 0147 line 2; para. 0177 lines 1-10, laminate formed as a backsheet and outer cover; Fig. 1E, 110 first layer as backsheet when comprised of 100 laminate; Fig. 4, 25 backsheet); an absorbent core positioned at least partially between the topsheet and the backsheet (para. 0147 lines 2-4; Fig. 4 showing 28 absorbent core positioned between 24 topsheet and 25 backsheet); and an outer cover material (para. 0066, outer cover comprises the garment facing layer of 100 laminate; para. 0177 lines 1-10, laminate formed as a backsheet and outer cover; Fig. 1E, 150 second layer as outer cover when comprised of 100 laminate) or a landing zone comprising a plurality of apertures and non-apertured regions (para. 0068; para. 0430 lines 5-10; para. 0431 lines 3-4; Fig. 1B showing 125 apertures and non-apertured regions); wherein a garment-facing surface of the backsheet (para. 0431 lines 3-4) comprises one or more graphics (para. 0260 lines 1-5; Fig. 88B showing 15900a/15900b graphics); wherein each of a portion of the plurality of apertures and non-apertured regions overlap a portion of the one or more graphics (para. 0068; para. 0430 lines 5-10; Fig. 88B showing 16074a/16074b/16076a/16076b apertures and non-apertured regions overlapping 15900a/15900b); and wherein at least a portion of the plurality of apertures (para. 0430 lines 5-10; Fig. 88B, 16074a/16074b/16076a/16076b apertures) forms at least 1 and less than 40 recognizable, discrete indicia (Fig. 88B showing 4 arrays of apertures made each from 16074a/16074b/16076a/16076b apertures creating wavy lines).
Gross differs from the instantly claimed invention in that Gross fails to explicitly disclose that the portion of the one or more graphics comprising visually vibrant colors, and the portion of the one or more graphics comprising the visually vibrant color exhibits a chroma value of about 8 to about 130 according to the Backsheet Graphic Color Test Method.
These claim limitations are merely defining the shade or hue of the graphics and outer cover and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the color or chroma values to provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Further, the graphics of the absorbent article of the instant application are not considered functional printed matter as the absorbent article merely serves as a support for the graphics. As the graphics are not considered functional printed matter, all limitations with respect to the graphics (such as chroma, color, amount of graphics, orientation, size, etc.) do not receive patentable weight and cannot patentably distinguish the claimed product from the prior art, as discussed in MPEP 2111.05.
Further still, it is the Office’s position that the testing method for a material or structural property does not impart a patentable weight. The property is attributed to the material and structure, not the testing method. As such, a reference does not need to recite using the backsheet laminate color test method to determine the L*a*b* color values through densified and non-densified regions or using the backsheet graphic color test method to determine the chroma value or an L* value of the graphics to read on the claim language.
Further, Gross differs from the instantly claimed invention in that Gross fails to explicitly disclose that the portion of the one or more graphics has a first L*a*b* color value, when measured through one of the plurality of apertures in the outer cover material or the landing zone, according to the Backsheet Laminate Color Test Method and the portion of the one or more graphics has a second, different L*a*b* color value, when measured through a non-apertured region of the outer cover material, according to the Backsheet Laminate Color Test Method.
It would be considered inherent that the first and second L*a*b* color values would measure differently when measured through one of the plurality of apertures and through a non-apertured region of the outer cover material according to the disclosures of Gross wherein the second layer of the laminate as the outer cover is a nonwoven web (para. 0177 lines 1-10), the first layer of the laminate as the backsheet is a film (para. 0177 lines 1-10), the first and second layers of the laminate may have different colorations (para. 0122), the first layer of the laminate as the backsheet may further comprise printing (para. 0431 lines 1-3) as a pattern or a plurality of patterns which form graphics that may be pigmented or colored (para. 0260 lines 1-5), and some of the apertures are disposed over the graphic portion of the first layer and others are disposed over the non-graphic portion of the second layer (para. 0430 lines 5-10; para. 0436-0437; Fig. 88B showing 16074a/16076a apertures overlapping a portion of 15900a/15900b graphics). Gross further discloses that when the first layer and second layer are laminated, the apertures may substantially align meaning that at least 51% of the apertures in the first layer comprise a reciprocal aperture in the second layer and of those apertures in the first layer comprising a reciprocal aperture in the second layer, at least 51% of their open area corresponds to the open area of their reciprocal aperture (para. 0068 ln. 13-24) and that when the apertures are only present in a first layer of the laminate and the colorations of the first and second layers are different, the color of a second layer may be visible through the apertures (para. 0072). Further still, Gross discloses that when a cover layer is used and a subjacent layer is printed, such as a backsheet, the cover layer may have a lowered opacity, such that the printing may be seen through the cover layer (para. 0260 lines 14-17), and that a lower opacity first layer will allow more color of the second layer to bleed through (para. 0079 lines 2-10). These disclosures would result in a printing which may be seen through a colored cover layer (non-apertured region) and a printing which may be seen through an apertured area of the colored cover layer that does not correspond to an apertured area of the subjacent layer (apertured region), wherein the printing in the apertured region may appear as a different color than the material of the non-apertured region due to a difference in coloration of the first and second layers and the opacity of the first layer. Therein, it is inherent in Gross that the first and second L*a*b* color values which would measure differently when measured through the embossed and non-embossed regions of the outer cover. Additionally, the absorbent article of Gross can be measured using the Backsheet Laminate Color Test Method as detailed in the specification of the instant application (pg. 37-39) as the method only requires an aperture in an outer cover material overlapping a portion of a graphic on the backsheet (as disclosed in Gross above).
Additionally and as explained above, the graphics of the instant application do not have a functional relationship to the article and therefore, are considered nonfunctional printed matter which do not patentably distinguish the claimed product from the prior art.
Gross further differs from the instantly claimed invention in that Gross fails to explicitly disclose that a delta E between the first L*a*b* color value and the second L*a*b* color value is from about 2 to about 19, according to the Backsheet Laminate Color Test Method.
Gross does disclose that the delta E between the color values in the area creating color effects (embossed/apertured and unembossed/unapertured areas) is at least greater than 2.5, according to a color test method that is different from that claimed (para. 0063-0064; para. 0461; para. 0463-0467).
This claim limitation is merely defining the shade or hue of the graphics and outer cover and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the color or chroma values to provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Further still, it is the Office’s position that the testing method for a material or structural property does not impart a patentable weight. The property is attributed to the material and structure, not the testing method. As such, a reference does not need to recite using the backsheet laminate color test method to determine the L*a*b* color values through densified and non-densified regions or the delta E between the L*a*b* color values to read on the claim language.
Even further still, the limitation as recited “wherein the embossed pattern forms at least 1 and less than 40 recognizable, discrete indicia” merely defines the amount of recognizable indicia and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application that forming recognizable indicia would provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Regarding claim 16, Gross discloses the invention of claim 15, Gross further discloses: wherein an entire area of at least one recognizable, discrete indicium is overlapped by a portion of the one or more graphics comprising the visually vibrant color (para. 0430 lines 5-10; Fig. 88B showing 4 arrays of apertures made each from 16074a/16074b/16076a/16076b apertures creating wavy lines and 16074a/16076a apertures overlapped with 15900a/15900b graphics).
Further, this limitation merely defines the orientation and size of the indicium and graphics and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application that overlapping the indicium and underlying graphics would provide the predictable result of accentuating the overlapped features. Gross discloses this result in para. 0055. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Regarding claim 17, Gross discloses the invention of claim 15, Gross further discloses: wherein the outer cover material has an open area of between from 7% to about 30% (para. 0307 lines 1-14), according to the Open Area Test Method.
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 open area of Gross from between 5% to 50% to 7% to 30% as applicant appears to have placed no criticality on the claimed range ([pg. 27 lines 10-13] The outer cover may have an open area between about 7% to about 30%) 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, Gross would not operate differently with the claimed range and since the apertures are meant to be placed through the outer cover layer. Further, applicant places no criticality on the ranged claimed, indicating simply that the open area is between 7% to 30% ([pg. 27 lines 10-13] “The topsheet and/or outer cover material comprising a plurality of apertures may have an open area of between about 7% and about 30%, between about 10% and about 25%, or between about 12% and about 20%, specifically reciting all 1% increments within the specified ranges and all ranges formed therein or thereby”).
Further, it is the Office’s position that the testing method for a material or structural property does not impart a patentable weight. The property is attributed to the material and structure, not the testing method. As such, a reference does not need to recite using the open area test method to determine the open area of the outer cover to read on the claim language.
Regarding claims 18-19, and 24, Gross discloses the invention of claim 15; however, Gross differs from the instantly claimed invention in that Gross fails to explicitly disclose wherein (Claim 18) wherein the first L*a*b* color value has a L* value in the range of about 5 to about 95, an a* value in the range of about -90 to about 90, and a b* value in the range of about -90 to about 90, when measured through an apertures of the outer cover material or the landing zone, according to the Backsheet Laminate Color Test Method; (Claim 19) wherein the second L*a*b* color value has an L* value in the range of about 5 to about 95, an a* value in the range of about -90 to about 90, and a b* value in the range of about -90 to about 90, when measured through the non-apertured region of the outer cover material or the landing zone, according to the Backsheet Laminate Color Test Method; and (Claim 24) wherein the portion of the one or more graphics comprising the visually vibrant color exhibits a chroma value greater than 8 to about 130, according to the Backsheet Graphic Color Test Method.
These claim limitations are merely defining the shade or hue of the graphics and outer cover and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the color or chroma values to provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Additionally and as explained in the rejection of claim 15 above, the graphics of the instant application do not have a functional relationship to the article and therefore, are considered nonfunctional printed matter which do not patentably distinguish the claimed product from the prior art.
Further still, it is the Office’s position that the testing method for a material or structural property does not impart a patentable weight. The property is attributed to the material and structure, not the testing method. As such, a reference does not need to recite using the backsheet laminate color test method to determine the L*a*b* color values through apertured and non-apertured regions or the delta E between the L*a*b* color values or using the backsheet graphic color test method to determine the chroma value or an L* value of the graphics to read on the claim language.
Regarding claim 20, Gross discloses the invention of claim 15; however, Gross differs from the instantly claimed invention in that Gross fails to explicitly disclose that a single, recognizable indicium has an area in the range of about 52 mm2 to about 7500 mm2.
It appears that the article of Gross would operate equally well with the claimed indicium areas and further, the applicant has not disclosed that the range claimed solves any stated problem or is for any particular purpose, indicating simply that the area “may” be within the claimed ranges (spec. pg. 22 lines 23-26). It would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the size of a single indicium of Gross to have an area within 52 mm2 to 7500 mm2 because it appears to be an arbitrary design consideration which fails to patentably distinguish over Gross. Since applicant has not given any criticality to why the dimension disclosed has any importance to the function of the claimed device, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777.
Regarding claim 21, Gross discloses the invention of claim 15, Gross further discloses: wherein the recognizable discrete indicia comprises an animal, a logo, a brand name, a symbol, a word, a character, or an icon (Fig. 88B showing 4 arrays of apertures made each from 16074a/16074b/16076a/16076b apertures creating wavy lines considered to be a symbol such as a tilde).
Further, this limitation merely defines the shape of the indicium and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application that forming recognizable indicia would provide the predictable result of creating an aesthetic look. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Regarding claim 25, Gross discloses the invention of claim 15, Gross further discloses wherein a single graphic of the one or more graphics comprising the visually vibrant color has an individual graphic area (para. 0430 lines 5-10; Fig. 88B showing individual area of 15900a/15900b graphics), wherein a single recognizable, discrete indicium has an individual indicium area (Fig. 88B showing 4 arrays of apertures made each from 16074a/16074b/16076a/16076b apertures creating wavy lines having an area about each array); however, Gross differs from the instantly claimed invention in that Gross fails to disclose wherein the individual indicium area is smaller than the individual graphic area.
This limitation merely defines the orientation and size of the indicium and graphics and would be considered an obvious matter of design choice, as it would be considered obvious to one of ordinary skill in the art before the effective filing date of the instant application that overlapping the indicium and larger underlying graphics would provide the predictable result of accentuating the overlapped features. Gross discloses this result in para. 0055. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Claims 11 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Gross as applied above, and further in view of U.S. Patent no. 9,018,434 B2 to Ruman.
Regarding claim 11, Gross discloses the invention of claim 1; however, Gross differs from the instantly claimed invention in that Gross fails to disclose that a wearer-facing surface of the backsheet comprises a wetness indicator, and wherein a zone of different color or different graphics or a zone of no color or no graphics at least partially surrounds the wetness indicator.
Ruman teaches an absorbent article (Fig. 1, 10 absorbent article) wherein a wearer-facing surface of the backsheet (col. 7 lines 51-58, the active graphic is disposed on an interior surface of a liquid impermeable inner layer) comprises a wetness indicator (col. 4 lines 26-28; Fig. 1, 58 active graphics), and wherein a zone of different graphics (Fig. 1, 56 framing device) surrounds the wetness indicator (col. 13 lines 43-47).
Ruman is considered to be analogous to the instantly claimed invention in that Ruman teaches an absorbent article. It would be obvious to one of ordinary skill to modify the wearer-facing surface of the backsheet of Gross to comprise a wetness indicator surrounded by a zone of different graphics as taught by Ruman, because Ruman teaches that providing a wetness indicator surrounded by a zone of graphics allows caregivers to more readily notice when the absorbent article has been wetted (see col. 1-2 lines 67 and 1-3; col. 6 lines 38-54).
Regarding claim 27, Gross discloses the invention of claim 15; however, Gross differs from the instantly claimed invention in that Gross fails to disclose that a wearer-facing surface of the backsheet comprises a wetness indicator, and wherein a zone of different color or different graphics or a zone of no color or no graphics at least partially surrounds the wetness indicator.
Ruman teaches an absorbent article (Fig. 1, 10 absorbent article) wherein a wearer-facing surface of the backsheet (col. 7 lines 51-58, the active graphic is disposed on an interior surface of a liquid impermeable inner layer) comprises a wetness indicator (col. 4 lines 26-28; Fig. 1, 58 active graphics), and wherein a zone of different graphics (Fig. 1, 56 framing device) surrounds the wetness indicator (col. 13 lines 43-47).
Ruman is considered to be analogous to the instantly claimed invention in that Ruman teaches an absorbent article. It would be obvious to one of ordinary skill to modify the wearer-facing surface of the backsheet of Gross to comprise a wetness indicator surrounded by a zone of different graphics as taught by Ruman, because Ruman teaches that providing a wetness indicator surrounded by a zone of graphics allows caregivers to more readily notice when the absorbent article has been wetted (see col. 1-2 lines 67 and 1-3; col. 6 lines 38-54).
Conclusion
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 Linnae Raymond whose telephone number is (571)272-6894. The examiner can normally be reached M-F 8:00am to 4:00pm.
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, Nicholas Weiss can be reached on (571)270-1775. 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 D