DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
In view of the Appeal Brief filed on October 21, 2025, PROSECUTION IS HEREBY REOPENED. A new grounds of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/REBECCA E EISENBERG/ Supervisory Patent Examiner, Art Unit 3781
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 10-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim appears to positively recite body parts including the nipple and the breast. The claims appear to require the use of human body parts in order to define the scope of the claims. In claim 10 see for example, line 6 which requires the base to be secured to the breast and lines 7 and 19 which require specific positioning of the nipple.
In claim 11, see line 5 which requires the base to be secured to the breast.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5-6, 8-9 and 19 are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by WO 96/41601.
With reference to claim 1, WO 96/41601 (hereinafter “Larson”) discloses a nursing pad system adapted for use upon a breast (abstract), the nursing pad system comprising:
a base (1) having a base inner surface, a base outer surface (figure ), and a first adhesive applied to the base inner surface for removably securing the base to the breast (page 12, lines 9-12); and
a cover (4) including a cover inner surface attached to the base outer surface along a periphery of the cover inner surface with a second adhesive (page 7, lines 25-31), the cover inner surface, base outer surface, and periphery defining an open interior area therebetween, the open interior area including an absorbent material (3) and a pocket for capturing breast milk as shown in annotated figure 5 below.
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As to claim 5, Larson discloses a nursing pad system wherein the base is configured to fit about a nipple as shown in figure 5.
With respect to claims 6 and 8, Raimondo discloses a nursing pad system wherein the pocket is positioned beneath a nipple of a breast feeding mother and/or below/beneath the absorbent material (cl. 8) as set forth in at least annotated figure 5 above where the opening (pocket) extends to the lowermost end of the article.
As to claim 9, Larson discloses a nursing pad system wherein the pocket is formed by securing a layer of material to the cover inner surface as set forth on page 7, lines 25-31 and as shown in figure 5.
Regarding claim 19, Larson discloses a nursing pad wherein the periphery of the cover inner surface is attached to the entire periphery (which includes the bottom perimeter) of the base outer surface as set forth on page 7, lines 25-31.
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over WO 96/41601.
With reference to claim 2, Larson teaches the invention substantially as claimed as set forth in the rejection of claim 1.
The difference between Larson and claim 2 is the explicit recitation that the first adhesive is a low trauma adhesive.
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the pad of Larson with a low trauma adhesive because Larson utilizes the first adhesive to adhere to the breast of a wearer (page 12, lines 9-12), and a low trauma adhesive reduces skin irritation.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over WO 96/41601 and further in view of Valentin (US 2005/0186885).
Regarding claim 3, Larson teaches the invention substantially as claimed as set forth in the rejection of claim 1.
The difference between Larson and claim 3 is the explicit recitation that the second adhesive is a strong bond adhesive.
Valentin recognizes the use of a body side (low tack) adhesive [0025] and a fabric side (stronger) adhesive (i.e., acrylate adhesive) as set forth in [0024] .
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide both a low tack and a stronger adhesive to the article as desired in order to provide an adhesive that is easily removed from the wearer without causing discomfort and a second, stronger adhesive to maintain the integrity of the article as taught by Valentin in [0024-0025].
Allowable Subject Matter
Claims 4 and 16-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claims 1-6 and 8-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELE M KIDWELL whose telephone number is (571)272-4935. The examiner can normally be reached Monday-Friday, 7AM-4PM EST.
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, Rebecca Eisenberg can be reached on 571-270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELE KIDWELL/Primary Examiner, Art Unit 3781