DETAILED ACTION
Receipt of Arguments/Remarks filed on August 6 2025 is acknowledged. Claims 1-2, 6-7 and 9 were amended. Claims 12-18 were added. Claims 1-18 are pending.
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 .
Withdrawn Objections/Rejections
The replacement drawings filed August 6 2025 are sufficient to overcome the objection of the drawings. The drawings now contain the correct identifier.
The amendments filed August 6 2025 are sufficient to overcome the rejection of claims 1-11 under 35 USC 112(b). The claims now clearly recite the concentration is by volume of the silver ion solution.
The amendments filed August 6 2025 are sufficient to overcome the rejection of claims 1-4 under 35 U.S.C. 102(a)(1) over Osawa et al. The Osawa et al. reference does not teach the new limitation of citric acid.
New and Modified Rejections Based on Amendments in the reply filed on August 6 2025
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. (USPGPUB No. 20070154506) in view of Djokic (Bioinorganic Chemistry and Application, 2008).
Applicant Claims
The instant application claims an absorbable and antiviral paper product, comprising: at least one layer of material having a first side and a second side; and a silver ion coating on at least one of the first side and the second side, wherein the silver ion-coating comprises a silver ion solution having a silver ion concentration of at least 1 % by volume of the silver ion solution; and wherein the silver ion solution comprises citric acid.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Patton et al. is directed to antimicrobial agent to inhibit the growth of microorganisms on disposal products. Claimed is an article comprising a structure having fibers and silver halide particles bound to the fibers (claim 1). The structure can be a shoe liners, paper towels, etc. (claim 16). In general, the articles are disposable health care items (paragraph 0040). Typical levels of silver salt particles are from 0.000001% to about 10% (weight percent) (paragraph 0047). The amount of silver particles applied to the target fiber or textile fabric is determined by the desired durability or length of time of antimicrobial properties. The amount of silver particles present in the composition will depend on whether the composition is one being sold in a concentrated form suitable for dilution prior to coating or whether the composition has already been diluted for coating (paragraph 0046).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Patton et al. does not teach the volume % of the silver in the silver solution or that the solution contains citric acid. However, these deficiencies are cured by Djokic.
Djokic teaches that the combination of silver ions with citrate ions can be very attractive for biomedical or pharmaceutical/therapeutic applications. Silver in its ionic or complexed form is antimicrobially active (page 1, first paragraph) It is reasonable to assume that silver citrate complexes would act synergistically as antimicrobial agents (page 1 last complete paragraph). It is taught that 1 part of silver citrate is soluble in 3500 parts of water which corresponds to 285 ppm of Ag(I) ion in the solution (page 2 first sentence). The bactericidal activity of silver citrate/citric acid solution containing 100 ppm Ag(I) was the target so solution containing 18 g/L (1.8 vol%) silver ions was diluted with 0.1% citric acid solution (page 2, last paragraph). Silver citrate has very little solubility in water but the addition of citric acid increases it solubility (sections 3.2 and 4). It was shown that diluted silver citrate/citric acid complexed solutions exhibited very strong bacteriostatic and bactericidal activities (page 7, section 4 and table 2).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., and Djokic and utilize citric acid with the silver taught in Patton et al. One skilled in the art would have been motivated to utilize citric acid as it is taught as synergistic with the silver by Djokic. Since the combination exhibits very strong bacteriostatic and bactericidal activities as taught by Djokic there is a reasonable expectation of success in their combination. Furthermore, since the citric acid aids in the dissolution of the silver salt as taught by Djokic, one skilled in the art would have a reasonable expectation of success in forming a solution of the silver ions which are the antimicrobial species.
Regarding the claimed concentration, Patton et al. teaches the amount of silver particles applied to the target fiber or textile fabric is determined by the desired durability or length of time of antimicrobial properties. The amount of silver particles present in the composition will depend on whether the composition is one being sold in a concentrated form suitable for dilution prior to coating or whether the composition has already been diluted for coating. Djokic teaches forming solution wherein the silver ion concentration is 100 ppm and teaches 18g/L silver which corresponds to 1.8 vol%. Therefore, one skilled in the art would manipulate the concentration of the silver in order to obtain an antimicrobial level of the silver as Patton et al. expressly teaches determining the amount based on the desired antimicrobial properties and Djokic teaches how such concentrations can be achieved.
Regarding the claimed antiviral, Djokic teaches that the silver ions are antimicrobial which encompasses the claimed antiviral.
Regarding the claimed first and second side, paper is inherently two dimensional and therefore inherently has a first and second (top and bottom) side.
Regarding the claimed napkin and paper towel, Patton et al. expressly teaches a paper towel. The recitation napkin does not structurally distinguish the claimed paper product from the prior art. It is noted that changes in size and shape are not a patentable modification absent a demonstration of the criticality. MPEP 2144.04.
Claims 1-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. (USPGPUB No. 20070154506) in view of Djokic (Bioinorganic Chemistry and Application, 2008) and Reed et al. (Environmental Science Technology, 2016).
Applicant Claims
The instant application claims an antiviral, silver-ion containing paper product, comprising: a sheet of material having a first side and a second side; anda coating of silver-ion solution comprising a concentration of from 1 to 1,000 micrograms of silver per gram of the silver-ion containing paper product; wherein the silver-ion solution comprises citric acid.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al. and Djokic are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Patton et al. does not teach the concentration of silver in micrograms of silver per gram of the paper product. However, this deficiency is cured by Reed et al.
Reed et al. is directed to the potential environmental impacts and antimicrobial efficacy of silver- and nanosilver-containing textiles. It is stated that although washing releases silver, it did not affect their antimicrobial efficacy as textiles that retained as little as 2 µg/g silver were still effective (abstract).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Djokic and Reed et al. and utilize citric acid with the silver taught in Patton et al. One skilled in the art would have been motivated to utilize citric acid as it is taught as synergistic with the silver by Djokic. Since the combination exhibits very strong bacteriostatic and bactericidal activities as taught by Djokic there is a reasonable expectation of success in their combination. Furthermore, since the citric acid aids in the dissolution of the silver salt as taught by Djokic, one skilled in the art would have a reasonable expectation of success in forming a solution of the silver ions which are the antimicrobial species.
Regarding the claimed concentration, Patton et al. teaches the amount of silver particles applied to the target fiber or textile fabric is determined by the desired durability or length of time of antimicrobial properties. The amount of silver particles present in the composition will depend on whether the composition is one being sold in a concentrated form suitable for dilution prior to coating or whether the composition has already been diluted for coating. Djokic teaches forming solution wherein the silver ion concentration is 100 ppm and teaches 18g/L silver which corresponds to 1.8 vol%. Reed et al. teaches that concentration of 2 µg/g silver is still effective as an antimicrobial Therefore, one skilled in the art would manipulate the concentration of the silver in order to obtain an antimicrobial level of the silver as Patton et al. expressly teaches determining the amount based on the desired antimicrobial properties and Djokic teaches how such concentrations can be achieved. Since Reed et al. teaches a µg/g amount falling within the scope, there is a reasonable expectation of success.
Regarding the claimed antiviral, Djokic teaches that the silver ions are antimicrobial which encompasses the claimed antiviral.
Regarding the claimed first and second side, paper is inherently two dimensional and therefore inherently has a first and second (top and bottom) side.
Regarding the claimed napkin and paper towel, Patton et al. expressly teaches a paper towel. The recitation napkin does not structurally distinguish the claimed paper product from the prior art. It is noted that changes in size and shape are not a patentable modification absent a demonstration of the criticality. MPEP 2144.04.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Djokic as applied to claims 1-4 above in further view of Barry et al. (WO 0051477, cited on PTO Form 1449).
Applicant Claims
The instant application claims an antiviral paper product, comprising: at least one layer of material having a first side and a second side; at least one rounded corner; anda silver ion coating on at least one side, wherein the silver ion coating comprises a silver ion solution having a silver ion concentration of at least 1 % by volume of the silver ion solution; wherein the silver ion solution comprises citric acid.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al. and Djokic are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches disposable paper articles with silver, Patton et al. does not expressly teach a paper product with rounded corners. However, this deficiency is cured by Barry et al.
Barry et al. is directed to a placemat (aka tray mat) having antimicrobial agent. Placemats made of natural material such as paper is taught (page 4, lines 7-10). Antimicrobial metals include silver (page 5, lines 26-32). As shown in figure 1, placemats have rounded corners. It is generally taught that placements can be in contact with bacteria which can be transferred to utensils (page 1).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Djokic and Barry et al. and utilize the paper article of Patton et al. as a placemat. One skilled in the art would have been motivated to utilize the paper article with silver of Patton et al. as a placement in order to reduce bacteria which can be transferred to utensils as taught by Barry et al. Since Barry et al. teaches silver containing placemats there is a reasonable expectation of success.
Claims 1-5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Djokic and Reed et al. as applied to claims 1-4 and 9 above and in further view of Bhat et al. (USPGPUB No. 20060042767).
Applicant Claims
The instant application claims the at least one layer of material includes at least one dimple, ridge, bump, or recess. The instant application claims the sheet of material includes at least one preformed fold or perforation. The instant application claims the sheet of material includes a first ply and a second ply.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al., Djokic and Reed et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches a paper product, Patton et al. does not specify the paper product has a ridge or perforation or the number of ply. However, these deficiencies are cured by Bhat et al.
Bhat et al. is directed to multi-ply paper product with moisture strike through resistance and method of making the same. Taught is a two-ply napkin or paper towel. In an effort to meet divergent demands, paper products are often made from one or more paper plies that are joined together to form the finished product (paragraph 0002-0003). As few as two plies is taught (paragraph 0005). Microembossing of the paper is taught (paragraph 0006). Perforations are taught (paragraph 0091). Plying may be accomplished by several different techniques. One way is a point to point configuration which implies that the plies being glue laminated have been embossed or otherwise marked in some fashion to create points, ridges, waves, lines or some form of protrusion(s) that may be either registered together or nested to form the plied product (paragraph 0074).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Patton et al., Djokic, Reed et al. and Bhat et al. and utilize a multi-ply paper product. One skilled in the art would have been motivated to make a multi-ply paper product in an effort to meet divergent demands as taught by Bhat et al. Since Patton et al. teaches a paper product there is a reasonable expectation of success.
Regarding claims 5 and 10, Bhat et al. teaches plying results in embossing which results in ridges or protrusions. Bhat et al. teaches the paper has perforations.
Claims 1-5 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Djokic and Reed et al. as applied to claims 1-4 and 9 above and in further view of Bhat et al. (USPGPUB No. 20060042767) and Cabell et al. (US Patent No. 6458447).
Applicant Claims
The instant application claims wherein the first ply is arranged in a first direction and the second ply is arranged in a second direction, wherein the second direction is perpendicular to the first direction.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al., Djokic, Reed et al. and Bhat et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While multiple plies are suggested, the plies being in perpendicular directions is not expressly taught. However, this deficiency is cured by Cabell et al.
Cabell et al. is directed to extensible paper web and method of forming. When made into a multiple ply laminate, webs of the present invention may be positioned in any of various configurations. For example, if both webs of a 2-ply laminate are formed with second regions of rib-like elements , the second regions of each may be positioned such that they are in registry in the laminate structure. Alternatively, it may be beneficial to place the second regions of each ply such that they are out of registry when laminated. Similarly, it may be beneficial to form a multiple ply laminate using a first pattern on one web, and a second, different pattern on the other web.
In the event that extensibility of the paper web is not desired, a multiple ply laminate may be made that has essentially double the bulk of each base web without the extensibility of either base web. This may be accomplished by laminating at least two webs of the present invention, each having major rib axes of second regions being generally perpendicular to the major rib axes of the second regions of the other ply (column 12, lines 36-55; claim 13).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Djokic, Reed et al., Bhat et al. and Cabell et al. and utilize multiple plies which are perpendicular. One skilled in the art would have been motivated to make multi-ply paper product in an effort to meet divergent demands as taught by Bhat et al. Cabell et al. teaches that webs of the present invention may be positioned in any of various configuration including perpendicular. Therefore, this orientation is merely selection of known configurations when using more than one ply.
Regarding claims 5 and 10, Bhat et al. teaches plying results in embossing which results in ridges or protrusions. Bhat et al. teaches the paper has perforations.
Claims 1-4, 9, 13-14 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. (USPGPUB No. 20070154506) in view of Djokic (Bioinorganic Chemistry and Application, 2008) and Reed et al. (Environmental Science Technology, 2016) as applied to claims 1-4 and 9 above and in further view of Jogikalmath et al. (USPGPUB NO. 20140224443) as evidenced by Xe (CN 111388501 A).
Applicant Claims
The instant application claims the paper product further comprising a cationic fixative. The instant application claims the silver-ion solution comprising a concentration of from 20 to 70 micrograms of silver per gram of the absorbable and antiviral paper product; and wherein the absorbable and antiviral paper product exhibits a reduction of COVID-19 ranging from 50 to 75% in 15 minutes.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al., Djokic and Reed et al. are set forth above. Patton et al. teaches cellulosic material (paragraph 0056) and that binders and be used to improve adhesion of the silver (claim 3). Patton et al. teaches there is tremendous interest in the use of silver containing species as an antimicrobial, i.e., an agent capable of destroying or inhibiting the growth of microorganisms, such as bacteria, yeast, fungi and algae, as well as viruses (paragraph 0010). Djokic teaches 100 ppm silver ions. Reed et al. teaches µg/g Ag including 22.8 (page 4021). Reed teaches that silver levels as low as a few ppm (µg/g) were effective (page 4024).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches binders, Patton et al. does not expressly teach a cationic fixative. However, this deficiency is cured by Jogikalmath et al.
Jogikalmath et al. is directed to additives for papermaking. Taught are cellulosic fibers (claim 2) which have an activator to which composite additive particles are tethered to the fibers (claim 1) wherein the additive particles include silver colloid particles (claim 4). Taught is using flocculants or other polymeric substances as the activator. These can be cationic polymers (paragraph 0046). Cationic polymers can also be used as the tethering materials (paragraph 0059).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Djokic, Reed et al. and Jogikalmath et al. and utilize cationic polymers. One skilled in the art would have been motivated to utilize cationic polymers as either tethers or activators for the fibers of the paper in order to aid in the binding of the silver to the paper. Since Patton et al. teaches a binder can be used, one skilled in the art would have been motivated to utilize known agents, such as cationic polymers, which can bind silver particles. Since Jogikalmath et al. teaches the use of cationic polymers to bind particles such as silver particles there is a reasonable expectation of success.
Regarding claims 14 and 18, Patton et al. teaches the silver is effective against viruses. The prior art makes it clear that using an effective amount of the silver to be antimicrobial is desired. Reed et al. teaches levels as low as 2 µg/g (ppm) is effective and Djokic teaches 100 ppm (i.e. 100 µg/g) is a target for the solution which results in an overlapping range. As evidenced by Xe, silver concentrations of 0.5 to 1.0g/L results in compositions effective against covid (abstract). Therefore, the concentrations suggested b Djokic would be expected to be effective against COVID.
Claims 1-4, 6-8 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Djokic and in further view of Barry et al. (WO 0051477, cited on PTO Form 1449) and Jogikalmath et al. (USPGPUB NO. 20140224443) as evidenced by Xe (CN 111388501 A).
Applicant Claims
The instant application claims the paper product further comprising a cationic fixative. The instant application claims the silver-ion solution comprising a concentration of from 20 to 70 micrograms of silver per gram of the absorbable and antiviral paper product; and wherein the absorbable and antiviral paper product exhibits a reduction of COVID-19 ranging from 50 to 75% in 15 minutes.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al., Djokic and Barry et al. are set forth above. Patton et al. teaches cellulosic material (paragraph 0056) and that binders and be used to improve adhesion of the silver (claim 3). Patton et al. teaches there is tremendous interest in the use of silver containing species as an antimicrobial, i.e., an agent capable of destroying or inhibiting the growth of microorganisms, such as bacteria, yeast, fungi and algae, as well as viruses (paragraph 0010). Djokic teaches 100 ppm silver ions.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches binders, Patton et al. does not expressly teach a cationic fixative. However, this deficiency is cured by Jogikalmath et al.
Jogikalmath et al. is directed to additives for papermaking. Taught are cellulosic fibers (claim 2) which have an activator to which composite additive particles can be tethered to the fibers (claim 1) wherein the additive particles include silver colloid particles (claim 4). Taught is using flocculants or other polymeric substances as the activator. These can be cationic polymers (paragraph 0046). Cationic polymers can also be used as the tethering materials (paragraph 0059).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Djokic, Barry et al. and Jogikalmath et al. and utilize cationic polymers. One skilled in the art would have been motivated to utilize cationic polymers as either tethers or activators for the fibers of the paper in order to aid in the binding of the silver to the paper. Since Patton et al. teaches a binder can be used, one skilled in the art would have been motivated to utilize known agents, such as cationic polymers, which can bind silver particles. Since Jogikalmath et al. teaches the use of cationic polymers to bind particles such as silver particles there is a reasonable expectation of success.
Regarding claims 14 and 18, Patton et al. teaches the silver is effective against viruses. Patton et al. teaches the amount of silver particles applied to the target fiber or textile fabric is determined by the desired durability or length of time of antimicrobial properties. The amount of silver particles present in the composition will depend on whether the composition is one being sold in a concentrated form suitable for dilution prior to coating or whether the composition has already been diluted for coating. Djokic teaches forming solution wherein the silver ion concentration is 100 ppm and teaches 18g/L silver which corresponds to 1.8 vol%. Therefore, one skilled in the art would manipulate the concentration of the silver in order to obtain an antimicrobial level of the silver as Patton et al. expressly teaches determining the amount based on the desired antimicrobial properties and Djokic teaches how such concentrations can be achieved. Djokic teaches 100 ppm (i.e. 100 µg/g) is a target for the solution. As evidenced by Xe, silver concentrations of 0.5 to 1.0g/L results in compositions effective against covid (abstract). Therefore, the concentrations suggested b Djokic would be expected to be effective against COVID.
Response to Arguments
Applicants’ arguments filed August 6 2025 have been fully considered but they are not persuasive.
Applicants argue that none of Patton, Barry or Bhat taken alone or in combination suggest the instant claims as amended.
While Applicants are correct the previously cited art does not expressly teach the new limitations, that is why Djokic, Reed et al., Cabell et al., Jogikalmath et al. and Xe are utilized.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-11, 14, 16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6 and 8-21 of copending Application No. 17451657 (USPGPUB No. 20220159948). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant application claims an absorbable and antiviral paper product, comprising: at least one layer of material having a first side and a second side; and a silver ion coating on at least one of the first side and the second side, wherein the silver ion-coating comprises a silver ion solution having a silver ion concentration of at least 1 % by volume of the silver ion solution; and wherein the silver ion solution comprises citric acid.
The instant application claims an antiviral paper product, comprising: at least one layer of material having a first side and a second side; at least one rounded corner; anda silver ion coating on at least one side ,wherein the silver ion coating comprises a silver ion solution having a silver ion concentration of at least 1 %by volume of the silver ion solution; wherein the silver ion solution comprises citric acid.
The instant application claims an antiviral, silver-ion containing paper product, comprising: a sheet of material having a first side and a second side; anda coating of silver-ion solution comprising a concentration of from 1 to 1,000 micrograms of silver per gram of the silver-ion containing paper product; wherein the silver-ion solution comprises citric acid.
Copending ‘657 claims an absorbable paper product, comprising: at least one layer of material having a first side and a second side; and a silver ion coating on at least one of the first side and the second side, wherein the silver ion coating has a concentration of 1% to 10% by volume, and wherein an amount of silver in the absorbable paper product ranges from 2 to 50 micrograms of silver per gram of the absorbable paper product. The difference between copending ‘657 and the instant application is the concentration of silver in the paper. The coating comprises citric acid.
Therefore, the scopes of the copending claims and the instant application overlap and thus they are obvious variants of one another. The recitation of the amount of silver in the paper product in copending ‘657 results in the copending application not being a statutory double patenting but the claims overlap in scope.
The same concentrations of silver are claimed in both applications.
Copending 3-6 and 8-11 recite the same limitations as instant claims 3-6 and 8-11.
Regarding claims 14, 16 and 18, copending ‘657 claims the same silver in the same concentration. The wherein clause does not structurally distinguish the instantly claimed product from copending ‘657.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12, 14, 16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6 and 8-21 of copending Application No. 17451657 (USPGPUB No. 20220159948) as applied to claims 1-11, 14, 16 and 18 above in view of Cabell et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant application claims the first ply is arranged in a first direction and the second ply is arranged in a second direction, wherein the second direction is perpendicular to the first direction.
The teachings of copending ‘657 are set forth above.
While copending ‘657 claims a first and second ply, copending ‘657 does not expressly claim the second ply is perpendicular to the first. However, this deficiency is cured by Cabell et al.
Cabell et al. is directed to extensible paper web and method of forming. When made into a multiple ply laminate, webs of the present invention may be positioned in any of various configurations. For example, if both webs of a 2-ply laminate are formed with second regions of rib-like elements , the second regions of each may be positioned such that they are in registry in the laminate structure. Alternatively, it may be beneficial to place the second regions of each ply such that they are out of registry when laminated. Similarly, it may be beneficial to form a multiple ply laminate using a first pattern on one web, and a second, different pattern on the other web.
In the event that extensibility of the paper web is not desired, a multiple ply laminate may be made that has essentially double the bulk of each base web without the extensibility of either base web. This may be accomplished by laminating at least two webs of the present invention, each having major rib axes of second regions being generally perpendicular to the major rib axes of the second regions of the other ply (column 12, lines 36-55; claim 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘657 and Cabell et al. and utilize multiple plies which are perpendicular. Cabell et al. teaches that webs of the present invention may be positioned in any of various configuration including perpendicular. Therefore, this orientation is merely selection of known configurations when using more than one ply.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 and 13-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6 and 8-21 of copending Application No. 17451657 (USPGPUB No. 20220159948) as applied to claims 1-11, 14, 16 and 18 above in view of Jogikalmath et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant application claims the paper product further comprises a cationic fixative.
Copending ‘657 does not claim a cationic fixative. However, this deficiency is cured by Jogikalmath et al.
Jogikalmath et al. is directed to additives for papermaking. Taught are cellulosic fibers (claim 2) which have an activator to which composite additive particles tethered to the fibers (claim 1) wherein the additive particles include silver colloid particles (claim 4). Taught is using flocculants or other polymeric substances as the activator. These can be cationic polymers (paragraph 0046). Cationic polymers can also be used as the tethering materials (paragraph 0059).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘657 and Jogikalmath et al. and utilize cationic polymers. One skilled in the art would have been motivated to utilize cationic polymers as either tethers or activators for the fibers of the paper in order to aid in the binding of the silver to the paper. Since Jogikalmath et al. teaches the use of cationic polymers to bind particles such as silver particles there is a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed are acknowledged. The rejections are maintained since applicant has not made any substantive arguments traversing the rejection.
Copending ‘657 claims the same concentration and citric acid.
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.
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/ABIGAIL VANHORN/ Primary Examiner, Art Unit 1636