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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/2025 has been entered.
An amendment was filed on 12/15/2025. Claims 1, 8, and 21 have been amended, and new claim 24 has been added. Currently, claims 1, 4-5, 8, 11-18, 21, and 24 are pending and are being examined on the merits.
Response to Arguments
Applicant's arguments filed 08/06/2025 have been fully considered but they are not persuasive.
In response to the applicant’s arguments with respect to the specification, notably to the traversal of the objection thereto of the incorporation by reference of the international patent application being ineffective due to the Application Data Sheet and Request Form of the International Application listing priority to the PCT application, pointing to MPEP 211.05 reciting that a later-filed application can rely on the disclosure of a prior-filed application to which it claims priority, the examiner respectfully disagrees.
Per MPEP 608.01(p) | B: “An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date”.
While priority information is allowed, incorporating a reference, including priority documents, after the filing date is ineffective.
In response to the applicant’s argument with respect to Martin in view of Yoshizato not disclosing a molar ratio of the organic diisocyanate compound to the polyol is greater than 1 but less than 1.7, wherein the inventors claim criticality for this range suggesting that this ratio significantly exhibits a normalized recovery force of at least 0.023 centinewtons per decitex, the examiner respectfully disagrees.
While the examples given ins Yoshizato appear to have a molar ratio of 1.8, there also appear to be ranges of acceptable ratios that range from 1.01-2.1, 1.2-1.9, and 1.3-1.8 (paragraph 0083), which all overlap with the claimed range.
Moreover, while applicant points to examples 1-25 and figures 1-4 to exemplify criticality, paragraph 00025 suggests a range between 1-2, thus exemplifying that the ratio being less than 1.7 does not appear critical. Examiner points to MPEP 716.02 for proving unexpected results.
Further, with the obviousness of the given molar ratio in mind, the structure of Martin in view of Yoshizato would have the same composition as claimed, and as such would have the same properties as claimed.
In response to the applicant’s argument that Yoshizato discloses a weight by weight ratio ranging from 4.11 to 4.16 and does not teach the weight by weight ratio of the polyol to the organic diisocyanate to be about 1.86:1.00 to about 3.66:1.00, the examiner respectfully disagrees.
While the given example 1 of Yoshizato fails to teach this range, it is noted because Yoshizato grants multiple acceptable molar ratios of the diisocyanate versus the diol (paragraph 0083), wherein the polyol/diol may have a molecular weight (which determines the weight used based on the molar ratio) ranging from 200-4000 grams/mol, one of ordinary skill in the art would have a choice of a finite, albeit large, amount of identified, predictable solutions that lead to a reasonable expectation of success, rendering the ranges of claimed weight by weight ratios of the polyol to the organic diisocyanate obvious to try. See MPEP 2143(I)(E).
Claim Objections
Claims 1, 8, and 21 objected to because of the following informalities:
Claims 1, 8, and 21 have been amended to recite the molecular weight with a unit of grams/mole as recommended in the final office action mailed on 08/27/2025. However, upon further reconsideration, molecular weight is considered to be a unitless measurement, wherein molar mass is granted in grams/mole.
Appropriate correction is required.
Specification
The amendment filed 09/16/2022 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The incorporation by reference of the international patent application PCT/US2021/023798 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 03/25/2020 see MPEP 1893.03(b). Therefore the specification amendment of 09/16/2022 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action.
The disclosure is objected to because of the following informalities:
Paragraphs 00069-00072 recite the materials with a molecular weight using a unit of grams/mole. However, molecular weight is considered a unitless measurement, while molar mass is defined as grams/mole. Examiner respectfully requests either clarification that the values given are given either for molecular weight or for molar mass.
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.
Claims 1, 4-5, 8, 11-18, 21, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Martin (US 20110174317) in view of Yoshizato (US 20190249005).
Regarding claim 1, Martin discloses an elasticized nonwoven laminate (paragraph 0076 describes a laminate structure of two nonwoven substrates sandwiching spandex elastomeric fibers recovering from extensions as great as 350%, paragraph 0076) comprising a high recovery power elastic fiber (paragraph 0076 describes the spandex in complete recovery) and a nonwoven laminate (paragraph 0076 describes two outer layers of nonwovens and an inner layer of the elastic),
wherein the fiber is adhesively bonded to the nonwoven laminate using a hot melt adhesive (paragraph 0078 of Martin teaches the adhesion of the fiber to the laminate via hot melt adhesive)
but fails to teach an elasticized nonwoven laminate comprises said high recovery power polyurethane elastic fiber, wherein the polyurethane elastic fiber is prepared from a polyol, an organic diisocyanate compound, and a diamine compound, wherein the polyol has a minimum number average molecular weight of 450 and a maximum of 1800 g/mol, wherein the high recovery power polyurethane elastic fiber exhibits a normalized recovery force, expressed as the recovery power at 200% elongation of the 5th unload cycle of at least 0.023 centinewtons per decitex.
However, Yoshizato teaches a high recovery power polyurethane elastic fiber (paragraph 0003, “Polyurethane elastic fibers possess high elongation and superior elasticity”).
Moreover, Yoshizato teaches wherein the high recovery power polyurethane elastic fiber comprises a polyol, an organic diisocyanate compound, and a diamine compound (paragraph 0041 describes the polyurethane polymerized from polyol, organic diisocyanate compound, and diamine compound).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed in Martin such that the elasticized nonwoven laminate uses a high recovery power polyurethane elastic fiber, wherein the high recovery power polyurethane elastic fiber comprises a polyol, an organic diisocyanate compound, and a diamine compound, as taught and suggested by Yoshizato, for the purpose of providing a suitable material known for high elongation and superior elasticity (see Yoshizato, paragraph 0003).
Martin, as modified by Yoshizato, is silent to wherein the high recovery power polyurethane elastic fiber exhibits a normalized recovery force, expressed as the recovery power at 200% elongation of the 5th unload cycle, or at least 0.023 centinewtons per decitex, and does not teach wherein the polyol has a minimum number average molecular weight of 450 and a maximum of 1600.
However, Yoshizato teaches wherein the polyol has a molecular weight ranging from 200-4000 (paragraph 0056).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed in Martin such that the polyol has a minimum number average molecular weight of 450 and a maximum of 1600, as taught by Yoshizato, since the applicant appears to have placed no criticality on the claimed range (paragraph 0008 describes the ranges of the average molecular weight as a nonlimiting embodiment), and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Martin, as modified by Yoshizato, does not explicitly teach that a molar ratio of the organic diisocyanate compound to the polyol is greater than 1 but less than 1.7.
However, Yoshizato teaches that such a ratio may range from 1.01-21 of the diol , preferably between 1.3-1.8 (paragraph 0083).
Moreover, applicant appears to have not placed criticality on the claimed range, in fact citing that, in a non-limiting embodiment, the molar ratio would be greater than 1 but less than 2 (paragraph 00025), thus suggesting that the molar ratio being less than 1.7 is non-critical.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed in Martin in view of Yoshizato such that the molar ratio is between 1 and 1.7, since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Martin, as modified by Yoshizato, is silent to wherein the high recovery power polyurethane elastic fiber exhibits a normalized recovery force, expressed as the recovery power at 200% elongation of the 5th unload cycle, or at least 0.023 centinewtons per decitex.
However, because the high recovery power polyurethane elastic fiber in Yoshizato comprises the same structure as the fiber described in the instant specification (paragraph 0093 describes a high-molecular polyol, a diisocyanate, a diamine, and a terminal stopper having a monofunctional active hydrogen atom, and also the range as modified above), and products of identical chemical composition cannot have mutually exclusive properties, In re Spada, 9111 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 4, Martin, as modified by Yoshizato, discloses wherein the elastic fiber has a decitex of 540-1880 (paragraph 0063), does not teach wherein the high recovery power polyurethane elastic fiber has a decitex of 30-1500.
However, because the decitex of any material can be adjusted by adding more or less material to the overall yarn, one of ordinary skill in the art would be capable of achieving the same decitex using the elastic fiber taught in Yoshizato.
Moreover, the applicant appears to have placed no criticality on the claimed range (paragraph 00017 describes the ranges being a nonlimiting embodiment), and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, Martin, as modified by Yoshizato, discloses wherein the elastic fiber has a decitex of 540-1880 (paragraph 0063), does not teach wherein the high recovery power polyurethane elastic fiber has a decitex of 33-1100.
However, because the decitex of any material can be adjusted by adding more or less material to the overall yarn, one of ordinary skill in the art would be capable of achieving the same decitex using the elastic fiber taught in Yoshizato.
Moreover, the applicant appears to have placed no criticality on the claimed range (paragraph 00017 describes the ranges being a nonlimiting embodiment), and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8, Martin does not teach wherein the polyol has a minimum number average molecular weight of 450 and a maximum of 1600 grams/mole.
However, Yoshizato teaches wherein the polyol has a molecular weight ranging from 200-4000 grams/mol (paragraph 0056).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed in Martin such that the polyol has a minimum number average molecular weight of 450 grams/mol and a maximum of 1600 grams/mol, as taught by Yoshizato, since the applicant appears to have placed no criticality on the claimed range (paragraph 0008 describes the ranges of the average molecular weight as a nonlimiting embodiment), and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 11, Martin, as modified by Yoshioka, discloses an article of manufacture, at least of portion of which comprises the elasticized nonwoven laminate of claim 1 (Paragraph 0002 of Martin teaches the use of the composite structure as a whole in disposable hygiene products such as diapers, and Martin in view of Yoshioka discloses the nonwoven laminate of claim 1 in the analysis of claim 1 above).
Regarding claim 12, Martin discloses the article of manufacture which is a disposable hygiene product, disposable diaper, training pant or adult incontinence device or product; a catamenial device, garments or product; a bandage, wound dressing, surgical drape, surgical gown, surgical or other hygienic protective mask, hygienic gloves, head covering, head band, ostomy bag, bed pad or bed sheet (paragraph 0002 of Martin describes the use in diapers).
Regarding claim 13, Martin discloses the article which is a disposable diaper or training pant (paragraph 0002 of Martin describes the use in diapers).
Regarding claim 14, Martin discloses wherein the elasticized nonwoven laminate is positioned at a front panel, back panel, side panel, leg cuff, leg hole, belly band and/or waist band of the diaper or training pant (paragraph 0039 of Martin, “Such elements can include, for example, front, back and side panels, leg cuffs, and/or waist bands of diapers or training pants)
Regarding claim 15, Martin, as modified by Yoshizato, discloses said method comprising adhering a high recovery power polyurethane elastic fiber to with the nonwoven laminate (Yoshizato discloses the high recovery power polyurethane elastic fiber, and Martin discloses where the elastic fiber is juxtaposed with the nonwoven laminate in paragraph 0076)
Regarding claim 16, Martin, as modified by Yoshizato, is silent to wherein the high recovery power polyurethane elastic fiber exhibits a normalized recovery force, expressed as the recovery power at 200% elongation of the 5th unload cycle, or at least 0.023 centinewtons per decitex.
However, because the high recovery power polyurethane elastic fiber in Yoshizato comprises the same structure as the fiber described in the instant specification (paragraph 0093 describes a high-molecular polyol, a diisocyanate, a diamine, and a terminal stopper having a monofunctional active hydrogen atom), and products of identical chemical composition cannot have mutually exclusive properties, In re Spada, 9111 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 17, Martin, as modified by Yoshizato, discloses wherein the elastic fiber has a decitex of 540-1880 (paragraph 0063), does not teach wherein the high recovery power polyurethane elastic fiber has a decitex of 30-1500.
However, because the decitex of any material can be adjusted by adding more or less material to the overall yarn, one of ordinary skill in the art would be capable of achieving the same decitex using the elastic fiber taught in Yoshizato.
Moreover, the applicant appears to have placed no criticality on the claimed range (paragraph 00017 describes the ranges being a nonlimiting embodiment), and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 18, Martin, as modified by Yoshizato, discloses wherein the elastic fiber has a decitex of 540-1880 (paragraph 0063), does not teach wherein the high recovery power polyurethane elastic fiber has a decitex of 33-1100.
However, because the decitex of any material can be adjusted by adding more or less material to the overall yarn, one of ordinary skill in the art would be capable of achieving the same decitex using the elastic fiber taught in Yoshizato.
Moreover, the applicant appears to have placed no criticality on the claimed range (paragraph 00017 describes the ranges being a nonlimiting embodiment), and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 21, Martin does no teach wherein the polyol has a minimum number average molecular weight of 450 and a maximum of 1600 grams/mol.
However, Yoshizato teaches wherein the polyol has a molecular weight ranging from 200-4000 grams/mol (paragraph 0056).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed in Martin such that the polyol has a minimum number average molecular weight of 450 and a maximum of 1600, as taught by Yoshizato, since the applicant appears to have placed no criticality on the claimed range (paragraph 0008 describes the ranges of the average molecular weight as a nonlimiting embodiment), and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 24, Martin discloses an elasticized nonwoven laminate (paragraph 0076 describes a laminate structure of two nonwoven substrates sandwiching spandex elastomeric fibers recovering from extensions as great as 350%, paragraph 0076) comprising a high recovery power elastic fiber (paragraph 0076 describes the spandex in complete recovery) and a nonwoven laminate (paragraph 0076 describes two outer layers of nonwovens and an inner layer of the elastic),
wherein the fiber is adhesively bonded to the nonwoven laminate using a hot melt adhesive (paragraph 0078 of Martin teaches the adhesion of the fiber to the laminate via hot melt adhesive)
but fails to teach an elasticized nonwoven laminate comprises said high recovery power polyurethane elastic fiber, wherein the polyurethane elastic fiber is prepared from a polyol, an organic diisocyanate compound, and a diamine compound, wherein the polyol has a minimum number average molecular weight of 450 and a maximum of 1800 g/mol, wherein the high recovery power polyurethane elastic fiber exhibits a normalized recovery force, expressed as the recovery power at 200% elongation of the 5th unload cycle of at least 0.023 centinewtons per decitex.
However, Yoshizato teaches a high recovery power polyurethane elastic fiber (paragraph 0003, “Polyurethane elastic fibers possess high elongation and superior elasticity”).
Moreover, Yoshizato teaches wherein the high recovery power polyurethane elastic fiber comprises a polyol, an organic diisocyanate compound, and a diamine compound (paragraph 0041 describes the polyurethane polymerized from polyol, organic diisocyanate compound, and diamine compound).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed in Martin such that the elasticized nonwoven laminate uses a high recovery power polyurethane elastic fiber, wherein the high recovery power polyurethane elastic fiber comprises a polyol, an organic diisocyanate compound, and a diamine compound, as taught and suggested by Yoshizato, for the purpose of providing a suitable material known for high elongation and superior elasticity (see Yoshizato, paragraph 0003).
Martin, as modified by Yoshizato, is silent to wherein the high recovery power polyurethane elastic fiber exhibits a normalized recovery force, expressed as the recovery power at 200% elongation of the 5th unload cycle, or at least 0.023 centinewtons per decitex, and does not teach wherein the polyol has a minimum number average molecular weight of 450 and a maximum of 1600.
However, Yoshizato teaches wherein the polyol has a molecular weight ranging from 200-4000 (paragraph 0056).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed in Martin such that the polyol has a minimum number average molecular weight of 450 and a maximum of 1600, as taught by Yoshizato, since the applicant appears to have placed no criticality on the claimed range (paragraph 0008 describes the ranges of the average molecular weight as a nonlimiting embodiment), and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Martin, as modified by Yoshizato, does not explicitly teach a weight by weight ratio of the polyol to the organic diisocyanate is about 1.86:1.00 to about 3.66:1.00.
However, Yoshizato teaches the molar ratio of the organic diisocyanate to the polyol having a range as large as between 1.01-2.1 (paragraph 0083). Moreover, the diol/polyol may have an average molecular weight ranging from 200-4000 grams/mol (paragraph 0056). The factors of the molecular weight of the polyol and the molar ratio between the diisocyanate and the polyol both define the weight by weight ratio of the polyol to the organic diisocyanate, and grant a finite number of identified, predictable solutions with a reasonable expectation of success.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed in Martin in view of Yoshizato such that a weight by weight ratio of the polyol to the organic diisocyanate is about 1.86:1.00 to about 3.66:1.00, since it has been held that one of ordinary skill in the art would have found it obvious to try the given weight by weight ratio with a reasonable expectation of success based on a finite number of identified, predictable potential solutions to Yoshizato’s recognized need or problem.
Martin, as modified by Yoshizato, is silent to wherein the high recovery power polyurethane elastic fiber exhibits a normalized recovery force, expressed as the recovery power at 200% elongation of the 5th unload cycle, or at least 0.023 centinewtons per decitex.
However, the high recovery power polyurethane elastic fiber in Yoshizato comprises the same structure as the fiber described in the instant specification (paragraph 0093 describes a high-molecular polyol, a diisocyanate, a diamine, and a terminal stopper having a monofunctional active hydrogen atom, and also the ranges as modified above), and products of identical chemical composition cannot have mutually exclusive properties, In re Spada, 9111 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON W LEVY whose telephone number is (571)272-7582. The examiner can normally be reached M-F 7:30AM- 4:00 PM.
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/Brandon W. Levy/Examiner, Art Unit 3781