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 .
Status of Claims
Claims 1-12, 14-18, 22, 23, and 26 are pending. New claim 26 is added with the amendment filed 11/11/2025. Claims 13, 19-21, 24, and 25 are cancelled.
Response to Arguments
Applicant's arguments filed 11/11/2025 have been fully considered but they are not persuasive. Applicant argues the Examiner has not established a prima facie case of obviousness as the cited art, alone or in any combination, fails to teach or suggest any of the following aspects of the currently claimed invention: (1) a TBS formed from a nonwoven fabric and a microporous film as recited in independent claims 1 and 18; and (2) a TBS in which the microporous film consists of one or more microporous film layers as recited in dependent claim 26. Applicant argues LaVon expressly teaches away from a TBS that utilizes a microporous film as recited in independent claims 1 and 18 (and further in dependent claim 26) renders any proposed combination/modification to include such a feature would be improper. Applicant has not clearly stated how LaVon teaches away from the claimed invention. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Applicant’s arguments are not persuasive as Applicant has not pointed out where LaVon is deficient in the limitations of the independent claims, nor has Applicant pointed out how LaVon teaches away from the present invention as asserted.
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 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a vapor permeable, liquid impermeable film comprising at least one of a thermoplastic urethane, a polyether-block-amide copolymer, a polyether-block-ester copolymer, polyester- block-amide copolymer, or a copolyester thermoplastic elastomer, does not reasonably provide enablement for a microporous film having the same materials. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. The present invention teaches alternatively or additionally, the VPLI film may comprise a single-layer film that is a microporous film (US 2022/0378631 para. 0047). .
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to:
(a) the breadth of the claims;
(b) the nature of the invention;
(c) the state of the prior art;
(d) the level of one of ordinary skill;
(e) the level of predictability in the art;
(f) the amount of direction provided by the inventor;
(g) the existence of working examples; and
(h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Claim 11 claims that the microporous film comprises at least one of a thermoplastic urethane, a polyether-block-amide copolymer, a polyether-block-ester copolymer, polyester-block-amide copolymer, or a copolyester thermoplastic elastomer. The specification teaches the VPLI (vapor permeable, liquid impermeable) film does comprise these materials (published application US 2022/0378631 para. 0047) and alternatively or additionally, the VPLI film may comprise a single-layer film that is a microporous film (US 2022/0378631 para. 0047), but does not provide enablement for the microporous film to contain the claimed materials.
Based on the amount of direction provided by the inventor (Wands Factor F) and the level of one of ordinary skill in the art (Wands Factor D), one of ordinary skill in the art would not be apprised on how to make the invention as the present specification does not provide embodiments with a microporous film comprising the claimed materials bonded to a nonwoven fabric via an adhesive layer.
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.
Claims 1-4, 9-10, 14-18, 22, 23, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over LaVon et al. USPN 5938648
As to claim 1, LaVon teaches a textile backsheet (TBS) 10 (LaVon Figures 1 and 2), comprising:
(i) a nonwoven fabric 14 (col. 5, lines 28-31; lines 50-56); and
(ii) a microporous film 12 (col. 10, line 60 through col. 11, line 8) that is vapor-permeable and liquid impermeable (col. 9, lines 65-67), wherein the nonwoven fabric is bonded to the microporous film via an adhesive layer (col. 7, lines 26-29; col. 11, lines 8-17);
wherein the TBS has:
(a) a basis weight from 10 grams-per-square-meter (gsm) to 20 gsm – where LaVon teaches an example of a nonwoven blend sheet material having a basis weight of 9.9 g/m2 to 28.3 g/m2 (col. 26, lines 21-23), which has values in the claimed range.
LaVon does not teach an abrasion resistance grade (“Grade”) of at least 3.0 as determined by SS-EN ISO 12945-2. However, when the structure or composition recited in the reference is substantially the same as that of the claims of the instant invention, claimed properties or functions are presumed to be inherent (MPEP 2112-2112.01). A prima facie case of either anticipation or obviousness has been established when the reference discloses all the limitations of a claim except for an abrasion resistance grade of having specific value of 3.0 as determined according to the claimed test method. The examiner cannot determine whether or not the reference inherently possesses properties that anticipate or render obvious the claimed invention but has a basis for shifting the burden of proof to the Applicant. In this case, LaVon discloses a backsheet comprising a breathable film of the claimed materials adhered to one or more nonwovens having the claimed basis weight where the composite web has moisture vapor transmission rates with the claimed values. Thus, one skilled in the art has reason to expect an abrasion resistance grade falling within the claimed range.
LaVon teaches the microporous film laminate film structure /substrate composite is a has a moisture vapor transmission rate (MVTR) comprising at least 4000 g/m2/24 hrs (LaVon col. 11, lines 9-16 and 62-67; col. 46, lines 37-42). LaVon does not teach the MVTR measured as determined according to NWSP 070.4.RO. However, 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 the specific test method to read on the claim limitation. Additionally, since LaVon teaches the materials and structure of the claimed invention, and obviously includes a backsheet composite that would achieve the claimed results when testing in same manner.
As to claim 2, the nonwoven fabric has a first basis weight from about 4 gsm to about 10 gsm - where LaVon teaches an example of a nonwoven blend sheet material having a basis weight of 9.9 g/m2 to 28.3 g/m2 (col. 26, lines 21-23; Table 4), which has values in the claimed range..
As to claim 3, the nonwoven fabric 14 comprises at least one spunbond layer, at least one meltblown layer, at least one carded layer, or any combinations thereof (LaVon col. 5, lines 50-56).
As to claim 4, LaVon teaches the nonwoven fabric 14, 16 comprises one or more spunbond layers – where LaVon teaches substrates 14 and 16 may be polyethylene spunbonded webs (LaVon Figure 2; col. 5, lines 50-56).
As to claim 9, LaVon teaches the microporous film comprises a thickness from 10 to 200 microns – where LaVon teaches laminating the substrates 14, 16 to a very thin film (<25 microns) (col. 6, lines 27-28; col. 7, lines 4-6, Table 4; col. 12, lines 5-14) and <25 microns has values in the claimed range of 10 to 200 microns.
As to claim 10, LaVon teaches the microporous film layer in terms of “a microporous film” (col. 10, lines 60-62), which indicates the film 12 comprises a single-layer film, unless otherwise noted.
As to claim 14, Lavon teaches the present invention substantially as claimed, but does not teach the TBS has a first ratio between a machine direction tensile strength (MDTS) at peak (N / 25 mm) and a basis weight of the TBS (gsm) from 1:1 to 1.5:1. LaVon teaches the backsheet has a tensile strength and a basis weight (LaVon Table 4). One having ordinary skill in the art would be able to determine through routine experimentation the tensile strength to basis weight ratio for desired breathability, conformability, and softness of the backsheet laminate.
As to claim 15, LaVon teaches preferably a composite sheet material to be used as the backsheet in an absorbent article has an elongation of at least 30%, and more preferably of at least 50% in both machine and cross directions (col. 13, lines 35-44), which has values in the claimed range of from about 40% to about 100%. LaVon does not specifically teach the elongation at peak is determined by the ASTM D5035. However, 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 the specific test method to read on the claim limitation. Additionally, since LaVon teaches the materials and structure of the claimed invention, and obviously includes a backsheet composite that would achieve the claimed results when testing in same manner.
As to claim 16, LaVon teaches an absorbent article 250, comprising:
(i) a TBS 247 according to claim 1 (Figure 7; col. 34, lines 55 through col. 35, line 2; col. 37, lines 38-42);
(ii) a liquid permeable topsheet 249; and
(iii) an absorbent body 275 located between the TBS 247 and the liquid permeable topsheet 249.
As to claim 17, LaVon teaches the absorbent article 250 comprises a diaper (Figure 7; col. 37, lines 38-42).
As to claim 18, LaVon teaches a method of forming a textile backsheet (TBS), comprising:
(i) providing or forming a nonwoven fabric 14 (col. 5, lines 28-31; lines 50-56); and
(ii) providing for forming a microporous film 12 (col. 10, line 60 through col. 11, line 8), that is vapor-permeable and liquid impermeable (col. 9, lines 65-67)
(iii) bonding the nonwoven fabric to the film via an adhesive layer to form the TBS;
(col. 7, lines 26-29; col. 11, lines 8-17);
wherein the TBS has:
(a) a basis weight from 10 grams-per-square-meter (gsm) to 20 gsm – where LaVon teaches an example of a nonwoven blend sheet material having a basis weight of 9.9 g/m2 to 28.3 g/m2 (col. 26, lines 21-23), which has values in the claimed range.
LaVon does not teach an abrasion resistance grade (“Grade”) of at least 3.0 as determined by SS-EN ISO 12945-2. However, when the structure or composition recited in the reference is substantially the same as that of the claims of the instant invention, claimed properties or functions are presumed to be inherent (MPEP 2112-2112.01). A prima facie case of either anticipation or obviousness has been established when the reference discloses all the limitations of a claim except for an abrasion resistance grade of having specific value of 3.0 as determined according to the claimed test method. The examiner cannot determine whether or not the reference inherently possesses properties that anticipate or render obvious the claimed invention but has a basis for shifting the burden of proof to the Applicant. In this case, LaVon discloses a backsheet comprising a breathable film of the claimed materials adhered to one or more nonwovens having the claimed basis weight where the composite web has moisture vapor transmission rates with the claimed values. Thus, one skilled in the art has reason to expect an abrasion resistance grade falling within the claimed range.
LaVon teaches the microporous film laminate film structure /substrate composite is a has a moisture vapor transmission rate (MVTR) comprising at least 4000 g/m2/24 hrs (LaVon col. 11, lines 9-16 and 62-67; col. 46, lines 37-42). LaVon does not teach the MVTR measured as determined according to NWSP 070.4.RO. However, 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 the specific test method to read on the claim limitation. Additionally, since LaVon teaches the materials and structure of the claimed invention, and obviously includes a backsheet composite that would achieve the claimed results when testing in same manner.
As to claim 22, LaVon teaches the nonwoven fabric 14, 16 comprises one or more spunbond layers comprising bi-component fibers (LaVon col. 6, lines 18-20).
As to claim 23, LaVon does not specifically teach the nonwoven fabric 14, 16 comprises one or more spunbond layers and one or more meltblown layers. However, LaVon does teach the selection of materials for a nonwoven web provide the desired softness and breathability and suitable materials for the nonwoven fabric includes spunbond webs, meltblown webs, carded webs and the like (col. 43, lines 37-39). It would have been obvious to one having ordinary skill in the art before the invention was originally filed to modify the composite with at least one spunbond and at least one meltblown layer since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
As to claim 26, the microporous film consists of one or more microporous film layers (LaVon col. 10, lines 60-62).
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over LaVon as applied to claim 1 above in view of Collier, IV et al. US Patent Application Publication 2004/0224136.
As to claim 5, LaVon teaches the present invention substantially as claimed. LaVon does not teach the nonwoven fabric comprises a high-loft nonwoven fabric having a density of less than 60 kg/m*, a thickness comprising from 0.3 mm to 3 mm, or both. Collier teaches high loft low density nonwoven webs for use in absorbent articles where the laminate nonwoven fabrics may be given appropriate functionalities such as breathability and fluid barrier properties (Collier paragraph 0007). Collier teaches the nonwoven web including web laminates may particularly be utilized to obtain breathable liquid-barrier layers having a soft cloth-like feel for use in garment outer covers and the like (Collier paragraph 0024). It would have been obvious to one having ordinary sklll in the art before the invention was originally filed to modify the nonwoven of LaVon with the high loft nonwoven of Collier for the benefits taught in Collier.
Collier/LaVon teaches the lofty webs have a density range of from .04 to .0003 g/cc, which meets the claimed density of less than 60 kg/m3. Collier further teaches the nonwoven web has a bulk to about 0.1 inches in the Z axis (Collier paragraph 0011).
As to claim 6, LaVon/Collier teaches the nonwoven fabric comprises a first plurality of multi-component crimped fibers – where Collier teaches crimped bicomponent fibers for the high loft, low density nonwoven webs (paragraphs 0006, 0008-0009, ad 0018-0019).
As to claim 7, LaVon/Collier teach the multi-component crimped fibers comprise continuous fibers (Collier paragraph 0008).
As to claim 8, Lavon/Collier teach the multi-component crimped fibers comprise crimped continuous spunbond fibers (Collier paragraph 0008).
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over LaVon in view of Haffner et al. USPN 6045900.
As to claims 11 and 12, LaVon teaches the present invention substantially as claimed. LaVon teaches the microporous film comprises a multi-layer film (col. 10, line 60 through col. 11, line 16). LaVon does not teach the microporous film comprising at least a first skin layer and a core layer, wherein the first skin layer has a first thickness and the core layer has a second thickness, and the first thickness is less than the second thickness. Haffner teaches a breathable multilayer film for use as a barrier layer (Haffner col. 2, lines 53-60). Haffner teaches the film comprises multi-layer film 52 having a first skin layer 56a and a core layer 54 comprising microporous film – where Haffner teaches the composition of the base film 54 corresponds to the breathable base layer 14 and the composition of the layers 56a and 56b can correspond to the layer 16 (Haffner col. 7, lines 29-35; col. 11, lines 27-43). The breathable base layer and the outer layers comprise at least one of a thermoplastic urethane, a polyether-block-amide copolymer, a polyether-block-ester copolymer, polyester- block-amide copolymer, or a copolyester thermoplastic elastomer (Haffner col. 7, line 49 through col. 9, line 4). Haffner further teaches the thickness of the outer layer 56a, 56b is less than the core of the film 54 (Haffner Fig. 2.) It would have been obvious to one having ordinary skill in the art to provide the multi-layer film of LaVon with the structure of the multi-layer film of Haffner since both are from the same field of endeavor and solve the same problem of providing barrier materials.
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.
Claims 1-12, 14-18, and 22-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 17/951,668. Although the claims 1-18 at issue are not identical, they are not patentably distinct from each other because the claims of the present invention contain each and every limitation of claims of the 17/951,668 application as well as additional features. The claims of the instant application are a broader recitation of the claims of the 17/951,668 application in that the ‘668 application does not set forth a specific type moisture vapor transmission rate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACQUELINE F STEPHENS whose telephone number is (571)272-4937. The examiner can normally be reached 8:30-5:00.
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/JACQUELINE F STEPHENS/ Primary Examiner, Art Unit 3781