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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 147-155 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims are confusing as to intent because it can not be determined which layer or other component is intended to be further defined by claim 147’s reference to “at least one” without further definition of the recited component. As this recitation is followed by “or “the first layer” or “one or more secondary layers”, the recited “or one” can not be referring to these components.
Appropriate correction is required.
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.
Claim(s) 140-146 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 03/097727 in view of Meyer-Ahrens et al.(8,323,788).
WO 03/097727 discloses methods for producing foam by mixing and reacting a prepolymer as claimed, with additional components that include a hydrophilic agent as claimed in amounts as claimed, wetting agent that is a surfactant meeting the surfactant requirements and any amount requirements of the claims and water in amounts as claimed in order to form a foam reaction product and layer in the manner as claimed (see paras [0020]-[0056] and the Examples and Tables). Regarding claim 145, WO 03/097727 discloses employment of superabsorbent polymer as claimed (see paras [0034]-[0036]). Regarding claim 146, WO 03/097727 discloses pouring/casting as claimed (see para [0062]).
WO 03/097727 differs from applicants’ claims in that salt as claimed is not particularly required [Also, note- claim 144]. However, WO 03/097727 discloses that saline solutions may acceptably be used (see para [0055]). Accordingly, it would have been obvious for one having ordinary skill in the art to have used the inorganic salt containing saline solutions disclosed by WO 03/097727 in forming the preparations of WO 03/097727 for the purpose of providing acceptably developed products in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Owing to the fact that the salt and employed amounts are what is responsible for achieving isotonic conditions, it is held that it would necessarily follow that a layer formed which includes this component in amounts as disclosed would be isotonic, and modulating amounts for purposes of accommodating for the salinities of the human condition and modulating accordingly would have been within the skill of the ordinary practitioner in order to arrive at the processes of applicants’ claims, including claim 143, with the expectation of success in the absence of a showing of new or unexpected results.
WO 03/097727 differs from applicants’ claims in that the order of combining materials as claimed is not particularly disclosed. However, it has long been held that the selection of any order of performing process steps, as determined by case law (See MPEP 2144.04 IV. C.), is prima facie obvious in the absence of new and unexpected results. See also, New Wrinkle, Inc. v. Watson, Comr. Pats., 96 USPQ 436, 437 (D.C. Cir. 1953): “Where the result accomplished is substantially the same, steps taken concurrently or simultaneously are the equivalent of and not patentable over steps taken successively.”
WO 03/097727 differs from the claims in that perforations, protrusions or recesses are not required. However, Meyer-Ahrens et al. discloses perforations in polyurethane foam layers to be known for vapor transmission enhancement(column 4 lines 32-59). Accordingly, it would have been obvious for one having ordinary skill in the art to have perforated foam layer(s) of WO 03/097727 in the manner provided for by Meyer-Ahrens et al. for the purpose of enhancing vapor transmission in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Regarding claims 141 and 142, WO 03/097727 discloses application of its foam forming materials to substrates. Though shaping and molding are not specified, it would have been obvious for one having ordinary skilled in the art to have applied molding and compression operations in accompaniment with the casting operations provided for by WO 03/097727 in forming the preparations of WO 03/097727 for the purpose of providing acceptably developed, consumer adapted products in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Claim(s) 147-155 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duffy(5,859,081) in view of WO 03/097727 and Meyer-Ahrens et al.(8,323,788).
Duffy discloses methods for forming foams by producing a first foam layer with at least a second foam layer applied thereto wherein an interface therebetween forms with no coalescence that is sufficient to meet the interface layer criteria as defined by applicants’ claims (see abstract, column 3 lines 1-25, column 4 lines 57-63, Figures and Claims). Owing to the closeness of the make-up of the formed and interfaced layers, it is held that the interface layer formed between the two layers formed by the processes of Duffy would necessarily possess the effect of controlling a moisture vapor transmission rate through said interface to the degree as required by applicants’ claims, including claim 151. Regarding claim 148, in that the layers of forming foam of Duffy are applied to each other in order to form the interface layer therebetween, it is held that the compression from being pressed/applied to each other, as well as any other collapse of developing foam material, is sufficient to meet the compression and/or collapse requirements of this claim. Regarding claims 152 and 153, Duffy discloses inclusion of additives and fillers that are sufficient to meet the additional component(s) set forth by the requirements of these claims (column 4 lines 13-52). Further, in that they are included within the pore forming mixture, it is held that it would necessarily follow that they would retained within a portion of the pores to some degree sufficient to meet the requirements of these claims.
Duffy differs from applicants’ claims, including claims 149, 150, 154 and 155, in that the compositional make-up of the polymer foam forming materials that are layered within their processes are not the same. However, WO 03/097727 discloses foam forming compositions as defined by these claims for purposes of forming absorbent article layers (see abstract, paras [0002]-[0062] and the Examples and Tables). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the foam forming materials of WO 03/097727 as the foam layer forming materials used in the combined foam layer forming operations of Duffy for the purpose of forming acceptably developed layered, absorbent articles in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Further, regarding differences in amounts of materials set forth by claims 154 and 155, it would have been obvious for one having ordinary skill in the art to have utilized any amount of the materials provided for by WO 03/097727 in forming the foam materials to be used in the in the combined foam layer forming operations provided for through the combination of Duffy and WO 03/097727 for the purpose of forming acceptably developed layered, absorbent articles in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Further, it has long been held that where the general conditions of the claims are disclosed in the prior art, discovering the optimal or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233; In re Reese 129 USPQ 402. Similarly, it has been held that discovering the optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272,205 USPQ 215 (CCPA 1980).
Duffy in its combination with WO 03/097727 differs from the claims in that perforations, protrusions or recesses are not required. However, Meyer-Ahrens et al. discloses perforations in polyurethane foam layers to be known for vapor transmission enhancement(column 4 lines 32-59). Accordingly, it would have been obvious for one having ordinary skill in the art to have perforated foam layer(s) of Duffy in its combination with WO 03/097727 in the manner provided for by Meyer-Ahrens et al. for the purpose of enhancing vapor transmission in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Response to Arguments
Applicants’ arguments have been considered. However, rejections are maintained for the reasons set forth in the rejections as laid out above.
Rejection under 35USC102 is withdrawn in light of applicants’ amendments on reply. New rejection(s) under 35USC103 have been introduced or previous rejection(s) modified in light of applicants’ amendments on reply.
Applicants’ arguments have been addressed in the bodies of the rejections above.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. 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.
/JOHN M COONEY/Primary Examiner, Art Unit 1765