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 .
EXAMINER REMARKS
Applicant’s remarks are found persuasive regarding the prior art and the absorption rate. Therefore, this is a 2nd Non-Final rejection.
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.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 and 17 of copending Application No. 17,426,683 in view of Chen et al. (PUB 20030135181).
Wherein the copending Application discloses all of the features except the wrapping completely surrounding a filler and the filler being made of sustainable materials. Chen et al. teaches a cleaning article with a wrapping completely surrounding a filler (Fig. 2, 46 and 54) [0088] and a filler made of sustainable materials [0019].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the copending Application to include these features; as these features are beneficial to protect the filler and the filler being of sustainable materials is beneficial for the environment.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 3 is objected to because of the following informalities: claim 3 does not end in a period. Appropriate correction is required.
Claims 13 and 14 objected to because of the following informalities: claims recite “g/m3” but it appears it should be “g/cm3”. For rejection purposes, it is being interpreted as g/cm3.
Additionally, Examiner also notes it appears that the specification also contains the same error.
While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. An amendment to correct an obvious error does not constitute new matter where the ordinary artisan would not only recognize the existence of the error in the specification, but also recognize the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 4 recites that the filler is fibrous, non-woven, and a foam, however, the limitation that the filler is a foam contradictory to the specification as in Para [0017] and the fact that the ”comparative examples” are all foam products. The specification does not explain this contradiction nor does it appear to disclose the invention as a foam. Therefore this term in the claim lacks proper written description. For purposes of examination, the term “foam” is not considered in claim 4.
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.
Claim 4 is 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. Claim 4 recites that the filler is fibrous, non-woven, and a foam, however, the limitation that the filler is a foam contradictory to the specification such as Para [0017] and the fact that the ”comparative examples” were all foam products. It does not appear that Applicant intended to claim the invention as a foam and/or Applicant has not explained if the term “foam” has a different meaning. Therefore, the metes and bounds are unclear and this claim is indefinite. As stated above, for purposes of examination, the term “foam” is not considered in claim 4.
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.
Claim(s) 1-4, 6-9, and 11-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (hereinafter Chen) (PUB 2003/0135181) in view of Macedo et al. (hereinafter Mac) (PUB 2005/0276827) and Haq et al. (hereinafter Haq) (USPN 4,603,069).
Regarding Claims 1 and 11, Chen discloses a cleaning article (Fig. 2; Abstract) comprising: a filler (22); and a wrapping (46) completely surrounding the filler (Fig. 1; at least Para. [0088]), wherein at least one of the filler and the wrapping are composed of a sustainable material (at least Paras. [0019, 0080, 0090, 0098, and 0125]). Chen does not disclose wherein the filler is a vertically lapped non-woven.
However, Mac teaches an analogous cleaning article (Fig. 1; Abstract) including a filler that is a vertically lapped non-woven (Para. [0026]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the filler of Chen and arranged the filler as a vertically lapped non-woven as taught by Mac; because Mac teaches that this arrangement is old and known in the art of producing cleaning articles. It would be further obvious to one of ordinary skill that vertically lapped non-woven fibers produce results according to the intended end use of the cleaning article.
Chen does not disclose wherein the filler has an absorption rate of at least about 10-20 times the dry weight of the filler.
However, Haq teaches an analogous cleaning article (Figs. 1-3) inclusive of a high absorbent filler material (col. 2, lines 24-27 and col. 3, lines 57-col 4, line 4; preferably at least 40 times its own weight in liquid).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the filler of Chen and included a filler with an absorption rate of at least about 20 times the dry weight of the filler as taught by Haq; because Haq teaches that it is known in the art to provide cleaning articles with such a structure to provide this absorbency and it would be obvious that increased absorbency may be beneficial for certain end uses in cleaning articles (ability to clean up larger amounts of liquid for example).
Regarding Claim 2, Chen further discloses wherein the sustainable material is at least one of biodegradable, partially bio-based, compostable, recyclable, and at least partially made of recycled material (at least Paras. [0019, 0080, 0090, 0098, and 0125]).
Regarding Claim 3, Chen further discloses wherein the wrapping is at least one of a netting, nonwoven, woven cloth, knit cloth, microfiber, perforated film, or a combination thereof (at least Paras. [0019, 0080, 0090, 0098, and 0125]).
Regarding Claim 4, Chen further discloses wherein the filler is a fibrous filler, a non- woven filler,
Regarding Claim 6, Chen further discloses wherein the filler comprises fibers having a denier of between about 2 and about 1000 (Para. [0197]). Alternatively, Mac teaches the denier range between 1-20 in Para. [0026]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the denier between about 2 and 1000 as claimed; because Mac teaches that this feature is known in the art of cleaning articles. It would further be obvious that denier is directly correlated to end use and it would be obvious to adjust the denier as needed (finer denier for delicate cleaning such as surfaces which may scratch easier vs larger denier for abrasively cleaning surfaces which may require heavy duty cleaning).
Regarding Claim 7, Chen further discloses wherein the cleaning article is used for household cleaning applications or cosmetic cleaning applications (at least Para. [0073]).
Regarding Claims 8-9 and 12, as combined above, now that Chen includes all of the claimed structure as modified by Mac & Haq, it would be obvious that the combined structure now meets and/or is capable of performing these functional limitations (wherein the cleaning article cleans at least about 0.1-1 food soil panels in 5,550 cycles and wherein the cleaning article has a Schiefer scratch rating of 3.5 or less) since like structure is deemed to have like characteristics/properties. While these limitations have been carefully considered, they are not deemed to patentably distinguish over the prior art of record.
Alternatively, 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 prior art to include these taught limitations, because it has been held that discovering an optimum value of a results effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and See MPEP 2144.05. Furthermore, selecting suitable materials to provide optimum cleaning/scratch properties is obvious to one having ordinary skill in the art.
Regarding Claims 13-14, the prior art as combined above fails to disclose the density as currently claimed. However, Haq further teaches wherein the filler has a density of about 0.03-0.025 g/cm3 or less (col. 4, lines 8-10).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the density as taught by Haq; because Haq teaches that this density is known in the art and suitable for cleaning articles. It would further be obvious that density is directly correlated to end use and it would be obvious to adjust the density as needed (more density may be needed for cleaning heavily soiled surfaces for example).
Regarding Claims 15 and 16, as combined above, now that Chen includes all of the claimed structure as modified by Mac & Haq, it would be obvious that the combined structure now meets and/or is capable of performing these functional limitations (wherein the filler has a compression of about 9-5 Kgf or less) since like structure is deemed to have like characteristics/properties. While these limitations have been carefully considered, they are not deemed to patentably distinguish over the prior art of record.
Alternatively, 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 prior art to include these taught limitations, because it has been held that discovering an optimum value of a results effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and See MPEP 2144.05. Furthermore, providing specific compression and resiliency to provide the best cleaning properties is obvious to one having ordinary skill in the art (depending on the intended end use such as a delicate or sturdy object, compression would be adjusted accordingly via selection of appropriate materials known in the art).
Regarding Claim 17, Chen further discloses wherein both the filler and the wrapping are at least partially composed of a sustainable material (at least Paras. [0019, 0080, 0090, 0098, and 0125]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA K KINSAUL whose telephone number is (571)270-1926. The examiner can normally be reached Monday-Friday 8:30am-5pm.
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, Edward Lefkowitz can be reached at 571-272-2180. 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.
/ANNA K KINSAUL/Supervisory Patent Examiner, Art Unit 3731
Prosecution Insights