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
Applicant's arguments filed 06/23/2025 have been fully considered but they are not persuasive. Applicant has amended claims 1 and 19 to include the test characteristics cited in claim 7. Applicant argues the combination of cited references is silent as to these limitations and these properties are not inherently present in the combination of cited references. Applicant further argues the Office fails to demonstrate that these components would all necessarily have the claimed tan delta —1 and storage modulus--1 values. Applicant further argues the terms “acrylate,” “ethylene vinyl acetate,” and “tackified block copolymer” encompass broad genera, with variations in molecular weight affecting their properties and applications. Furthermore, ethylene vinyl acetate copolymers can vary in the amount of ethylene and vinyl acetate, with different ratios giving the resulting copolymers different properties. The Office fails to explain why these broad genera of adhesive materials would necessarily have the tan delta —1 and storage modulus--1 values as recited in claim 1. The Office Action has failed to set forth a prima facie case of obviousness. The examiner respectfully disagrees with the arguments as the arguments are not commensurate with the scope of the claims which do not require specific materials or percentage of components to meet the test parameters. What is claimed in claims 1 and 19 is “ a first adhesive”, with no further limitation as to the adhesive material. The limitations directed to the adhesive composition are in claim 8, which requires the adhesive to be acrylate-based or comprises a mixture of ethylene-vinyl acetate and styrene block copolymer. In the original specification, the adhesive is described as “The PFA’s of the present disclosure may comprise any suitable chemistry” (paragraph 0077 of published application Toro et al. US 2023/0135421). Paragraphs 0077-0087 describe a variety of materials for the adhesive compositions including thermoplastic polyurethane silicone, acrylate ester/vinyl pyrrolidone copolymers, or acrylate polymers; tackifiers, thermoplastic elastomeric or elastomeric materials, and optional additives. In sample 4, Toro’ 421 teaches a mixture of ethylene vinyl acetate and styrene block copolymer-based adhesives having good adhesion to microfiber undergarments (paragraph 0090). Toro US 2016/0166447 and Austin US 2015/0038938 both teach panty fastening adhesives (PFA) and Austin teaches styrenic block copolymers (Austin paragraph 0043); tackifiers (Austin paragraph 0045), elastomeric materials, and optional additives; where Goerg-Wood teaches panty fastening adhesive comprising acrylic adhesives , tackified block copolymer adhesives, ethylene vinyl acetate, and silicone adhesives, and acrylate adhesives, as well as optional components (paragraph 0050).
Toro/Austin/Goerg-Wood do not teach the claimed test characteristics. However, Toro/Austin/Goerg-Wood teach the composition of the adhesive. The adhesive of Toro/Austin/Goerg-Wood has the same types materials as the present invention. Applicant argues the terms “acrylate,” “ethylene vinyl acetate,” and “tackified block copolymer” encompass broad genera, with variations in molecular weight affecting their properties and applications. Furthermore, ethylene vinyl acetate copolymers can vary in the amount of ethylene and vinyl acetate, with different ratios giving the resulting copolymers different properties. However, specific types of acrylate polymers and tackified block copolymers and amounts of these components are not claimed or specified in the original disclosure. Thus, the components taught in Toro/Austin/Goerg-Wood meet the limitations as broadly as claimed. The properties of a material are inherent to the material, thus, once the same composition is present the properties of the material will necessarily be present. Further one of ordinary skill in the art is generally considered able to formulate a composition where the amounts of components are within the ranges disclosed by the prior art, absent a showing of unexpected results.
The objection to the drawings is obviated by the introduction of new Figure 17, which shows a central region without adhesives.
The amendments to claims 1 and 19 obviate the rejection of these claims under 35 USC 112, second paragraph.
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.
Claims 3, 4, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 3 originally recited “a second adhesive different from the first adhesive being disposed on the garment-facing surface of the central portion”. Amended claim 3 now recites “The absorbent article of claim 1, further comprising a second adhesive comprising a different composition than the first adhesive”. The original disclosure does not provide support for ‘a second adhesive comprising a different composition than the first adhesive’.
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, 2, and 5-18 are rejected under 35 U.S.C. 103 as being unpatentable over Toro et al. United States Patent Application Publication 2016/0166447 in view of Austin et al. United States Patent Application Publication 2015/00038938 and further in view of Goerg-Wood et al. US Patent Application Publication 2009/0062761.
As to claim 1, Toro teaches a disposable absorbent article 10 comprising:
a topsheet forming at least a portion of a wearer-facing surface of the absorbent article (paragraphs 0009, 0022);
a backsheet 20 forming at least a portion of a garment-facing surface of the absorbent article (paragraph 0010);
an absorbent core disposed between the topsheet and the backsheet (paragraphs 0011, 0018, 0023);
a front end portion i, a rear end portion ii, and a central portion iii (Figure 1);
a first adhesive 40 for attachment of the disposable absorbent article to an undergarment (Toro paragraph 0058),
a first adhesive for attachment of the disposable absorbent article to an undergarment, the first adhesive being disposed on the garment-facing surface of the front end portion and the rear end portion (Toro paragraph 0074) and not in a central portion – where Toro teaches PFA-free (adhesive-free) areas 50 in the central portion iii of the absorbent article (Toro Figures 1 and 2; paragraphs 0066, 0070, 0072).
Toro does not teach the peel force and that the adhesive leaves no residue on an undergarment in accordance with the Adhesive Residue test. Austin teaches a panty fastening adhesive (PFA) having a peel force of at least 1.0N (Austin Table 2). Austin does not specifically teach the adhesive leaves no residue on an undergarment. However, Austin teaches the adhesives are nontransferable to cotton as observed by visual inspection (Austin paragraphs 0022, 0057). Thus, it is reasonable to conclude without regard to how it is tested, the adhesive leaves no residue on an undergarment. It would have been obvious to one having ordinary skill in the art to modify Toro with the adhesive of Austin since both are from the same filed of endeavor and solve the same problem of providing a panty fastening mechanism for an absorbent article.
Toro/Austin teach a panty-fastening adhesive (Toro paragraphs 0054,0063; Austin paragraphs 0007, 0016, 0033, 0062). Toro/Austin teach the same materials as the present invention. The present invention teaches an adhesive comprising thermoplastic polyurethane (TPU) silicone, an acrylate ester/vinyl pyrrolidone copolymers, dimethyl silicone polymers, or acrylate polymer (paragraph 077 of published application Toro et al. US 2023/0135421. The present invention also teaches an ethylene-vinyl acetate and styrene block copolymer polymer backbone. The present invention also teaches tackifiers included in the adhesive (published application paragraph 0080); where the tackifier includes aromatic, aliphatic, and cycloaliphatic hydrocarbon resins (published application 0082). Toro et al. United States Patent Application Publication 2016/0166447 teaches a panty fastening adhesive in a striped pattern (Toro paragraph 0070-0074); Austin et al. United States Patent Application Publication 2015/00038938 teaches a panty fastening adhesive comprising thermoplastic elastomer polymer/copolymers (paragraph 0036), and styrene block copolymers (paragraph 0043) and further includes cycloaliphatic hydrocarbon resins as tackifiers (paragraph 0045). Toro/Austin do not teach acrylate polymers. Goerg-Wood et al. US Patent Application Publication 2009/0062761 teaches a panty fastening adhesive comprising tackified block copolymer adhesive, ethylene vinyl acetate adhesives, silicone adhesives, polyurethane adhesives, and thermoplastic pressure-sensitive adhesives, such as epoxy acrylate or epoxy polyester pressure sensitive adhesive (Goerg-Wood paragraph 0050). It would have been obvious to modify the adhesives of Toro/Austin with the materials of Goerg-Wood since all of the references are from the same field of endeavor and solve the same problem of providing a panty-fastening adhesive.
Toro/Austin/Goerg-Wood do not teach the claimed parameters and test results. Toro/Austin/Goerg-Wood provide the same adhesive materials used as a panty fastening adhesive for an absorbent article as the present invention. Toro/Austin/Goerg-Wood do not teach the specific material properties of the adhesive including the claimed tan delta and storage modulus. However, it is reasonable to expect the invention of Toro/Austin to achieve these material properties if subjected to the same material testing parameters since the combination of Toro/Austin/Goerg-Wood is comprised of the same materials and meets the construction limitations as the present invention. It would have been obvious to one having ordinary skill in the art before the invention was originally filed to have applied the same testing procedures with the expectation of the same results since the same materials are used as panty-fastening adhesives in the present invention.
As to claim 2, the adhesive 40 is provided in a striped pattern (Toro Figure 1; paragraphs 0063, 0066).
As to claim 5, the absorbent article exhibits a peel force of from between 1.0 N to about 5.0 N (Austin paragraph 0054).
As to claim 6, the absorbent article 10 further comprising a pair of side flaps 80 (Toro paragraphs 0036, 0076, 0077), wherein the side flaps 80 comprise a part of the garment-facing surface (Toro Figure 2) and wherein each of the pair of side flaps 80 comprise the first adhesive on the garment-facing surface (Toro Figure 2 paragraph 0078; Austin paragraph 0029).
As to claims 7-18, Toro/Austin teach the present invention substantially as claimed, see the rejection of claim 1 supra.
Specifically as to claim 8, Toro/Austin/Goerg-Wood teaches acrylates, ethylene vinyl acetate adhesives, and tackified block copolymer adhesives (Goerg-Wood paragraphs 0050). All of the references alone and combined teach a panty-fastening adhesive (Toro paragraphs 0054,0063; Austin paragraphs 0007, 0016, 0033, 0062); and Goerg-Wood paragraphs 0050-0051). The references do not teach the claimed parameters and test results. Toro/Austin/Goerg-Wood teach the invention substantially as claimed as set forth in the rejection of claims 1-5. Toro/Austin/Goerg-Wood provide the same adhesive materials used as a panty fastening adhesive for an absorbent article. Toro/Austin/Goerg-Wood does not teach the specific material properties of the adhesive including the claimed tan delta, surface energy, storage modulus, relaxation time, and yield stress. However, it is reasonable to expect the invention of Toro/Austin/Goerg-Wood to achieve these material properties if subjected to the same material testing parameters since the combination of Toro/Austin/Goerg-Wood is comprised of the same materials and meets the construction limitations as the present invention. It would have been obvious to one having ordinary skill in the art before the invention was originally filed to have applied the same testing procedures with the expectation of the same results since the same materials are used as panty-fastening adhesives in the present invention.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Toro et al. United States Patent Application Publication 2016/0166447 in view of Austin et al. United States Patent Application Publication 2015/00038938 and further in view of Goerg-Wood et al. US Patent Application Publication 2009/0062761 and further in view of Veglio et al. USPN 7842022.
As to claim 3, Toro/Austin/ Goerg-Wood et al. US Patent Application Publication 2009/0062761 teach the present invention substantially as claimed. However, Toro/Austin/Goerg-Wood et al. US Patent Application Publication 2009/0062761 do not specifically teach the absorbent article further comprising a second adhesive comprising a different composition than the first adhesive being disposed on the garment-facing surface of the central portion. Veglio teaches an adhesive for undergarment attached absorbent articles where the central portion of the garment-facing surface has a different adhesive than the end portions (Veglio Figures 6 and 7; col. 6, line 62 through col. 7, line 2). Veglio teaches the use of a multi-component adhesive system provides an absorbent article with a PFA, which is capable to provide secure attachment of the on all kinds of garments, particularly cotton-based garment. It would have been obvious to one having ordinary skill in the art before the invention was originally filed to modify Toro/Austin with a multi-component adhesive system for the benefits taught in Veglio.
As to claim 4, the adhesive is provided in a striped pattern (Toro Figure 2; Veglio col 7, lines 32-41).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Toro et al. United States Patent Application Publication 2016/0166447 in view of Veglio et al. USPN 7842022.
As to claim 20, Toro teaches a disposable absorbent article comprising:
a topsheet forming at least a portion of a wearer-facing surface of the absorbent article (paragraphs 0009, 0022);
a backsheet 20 forming at least a portion of a garment-facing surface of the absorbent article (paragraph 0010);
an absorbent core disposed between the topsheet and the backsheet (paragraphs 0011, 0018, 0023);
a front end portion i, a rear end portion ii, and a central portion iii (Figure 1);
a first adhesive 40 for attachment of the disposable absorbent article to an undergarment (Toro paragraph 0058),
a first adhesive for attachment of the disposable absorbent article to an undergarment, the first adhesive being disposed on the garment-facing surface of the front end portion and the rear end portion (Toro paragraph 0074) and not in a central portion – where Toro teaches PFA-free (adhesive-free) areas 50 in the central portion iii of the absorbent article (Toro Figures 1 and 2; paragraphs 0066, 0070, 0072).
Toro does not specifically teach the absorbent article further comprising a second adhesive comprising a different composition that the first adhesive being disposed on the garment-facing surface of the central portion. Veglio teaches an adhesive for undergarment attached absorbent articles where the central portion of the garment-facing surface has a different adhesive than the end portions (Veglio Figures 6 and 7; col. line 62 through col. 7, line 2). Veglio teaches the use of a multi-component adhesive system provides an absorbent article with a PFA, which is capable to provide secure attachment of the on all kinds of garments, particularly cotton-based garment. It would have been obvious to one having ordinary skill in the art before the invention was originally filed to modify Toro/Austin with a multi-component adhesive system for the benefits taught in Veglio.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Toro et al. United States Patent Application Publication 2016/0166447 in view of Goerg-Wood et al. US Patent Application Publication 2009/0062761 and further in view of Austin et al. United States Patent Application Publication 2015/00038938.
As to claim 19, Toro teaches a disposable absorbent article 10 comprising:
a topsheet forming at least a portion of a wearer-facing surface of the absorbent article (Toro paragraph 0009);
a backsheet 20 forming at least a portion of a garment-facing surface of the absorbent article (paragraph 0010);
an absorbent core disposed between the topsheet and the backsheet (paragraphs 0011, 0018);
a front end portion i, a rear end portion ii, and a central portion iii (Figures 1 and 2);
a first adhesive for attachment of the disposable absorbent article to an undergarment, the first adhesive being disposed on the garment-facing surface of the front end portion and the rear end portion (Toro paragraph 0074) and not in a central portion – where Toro teaches PFA-free (adhesive-free) areas 50 in the central portion iii of the absorbent article (Figures 1 and 2; paragraphs 0066, 0070, 0072).
Toro does not specifically teach a second adhesive different from the first adhesive being disposed on the garment-facing surface of the central portion. Goerg-Wood teaches an adhesive for undergarment attached absorbent articles where the central portion of the garment-facing surface has a different adhesive than the end portions (Goerg-Wood Figures 3, 4, 8, 9, 10, and 13). The examiner considers the central portion to provide a different adhesive in that the pattern and amount of adhesive in the central portion is different than the amount and pattern of adhesive in the end portions, which creates a different adhesive as broadly as claimed. Goerg-Wood teaches a specifically placed adhesive in the central portion enhances the performance and comfort of the undergarment attached absorbent article during use (Abstract). Goerg-Wood teaches the adhesive is applied in a specific pattern to removably secure the article to the crotch portion of an undergarment in use. Goerg-Wood teaches the described attachment pattern is particularly suitable for use with ultra-thin, flexible absorbent feminine care articles (Goerg-Wood paragraphs 0021-0022). Goerg-Wood further teaches movements during use, especially when walking or running, create a twisting, flexing motion of the absorbent feminine care article that strains the adherence of the article to the undergarment, especially at the front and back portions. Specifically, this twisting, flexing motion creates greater strain on the adhesion bond areas than on the adhesion bonds located in the middle portion. Thus, the present adhesion pattern utilizes different adhesion patterns within the middle portion and either of the front or back portions (Goerg-Wood paragraph 0028). Goerg-Wood teaches the middle portion is subjected to the least amount of stress forces throughout the entire absorbent feminine care article; therefore, an opportunity exists to decrease the amount of adhesive applied in the middle portion, which can lead to decreased material costs (i.e. less adhesive used). (paragraph 0038). It would have been obvious to one having ordinary skill in the art before the invention was originally filed to modify the articles of Toro/Austin with different adhesive as taught in Goerg-Wood in the central portion compared to the front and back portions for the benefits taught in Goerg-Wood.
The first adhesive and the second adhesive provided in a striped pattern (Toro Figures 1 and 2; Goerg-Wood Figures 1, 3, and 4), the striped pattern including a plurality of separate, spaced apart geometric figures 40 comprising a length and a width (Toro Figures 1 and 2; Goerg-Wood Figures 1, 3, and 4), wherein the first adhesive is provided in a plurality of separate, spaced apart geometric figures 40 disposed in the front end portion i, and others of the plurality of separate, spaced apart geometric figures 40 disposed in the central portion iii, wherein the striped pattern further comprises at least one undergarment fastening adhesive-free area 50 disposed between each of the separate, spaced apart geometric figures 40 (Figures 1 and 2; paragraph 0079),
wherein the adhesive-free areas 50 have a width of from about 1 mm to about 10 mm (Toro paragraph 0070).
Toro does not teach the adhesive exhibits a peel force of at least 1.0 N. Austin teaches an adhesive for attachment to microfiber garments providing peel strength of from about 1.96 to about 4.9 N (Austin paragraphs 0016, 0054) for the benefits of providing an adhesive that functions well as a positioning adhesive for absorbent articles yet provides a peel strength suitable for attachment to microfiber garments (Austin paragraphs 0002, 0004, 0033). It would have been obvious to one having ordinary skill in the art before the invention was originally filed to provide Toro with a PFA of Austin for the benefits Austin teaches.
Toro/Goerg-Wood/Austin teach a panty-fastening adhesive (Toro paragraphs 0054,0063; Austin paragraphs 0007, 0016, 0033, 0062). Toro/Goerg-Wood/Austin teach the same materials as the present invention. The present invention teaches an adhesive comprising thermoplastic polyurethane (TPU) silicone, an acrylate ester/vinyl pyrrolidone copolymers, dimethyl silicone polymers, or acrylate polymer (paragraph 077 of published application Toro et al. US 2023/0135421. The present invention also teaches an ethylene-vinyl acetate and styrene block copolymer polymer backbone. The present invention also teaches tackifiers included in the adhesive (published application paragraph 0080); where the tackifier includes aromatic, aliphatic, and cycloaliphatic hydrocarbon resins (published application 0082). Toro et al. United States Patent Application Publication 2016/0166447 teaches a panty fastening adhesive in a striped pattern (Toro paragraph 0070-0074). Goerg-Wood et al. US Patent Application Publication 2009/0062761 teaches a panty fastening adhesive comprising tackified block copolymer adhesive, ethylene vinyl acetate adhesives, silicone adhesives, polyurethane adhesives, and thermoplastic pressure-sensitive adhesives, such as epoxy acrylate or epoxy polyester pressure sensitive adhesive (Goerg-Wood paragraph 0050). Austin et al. United States Patent Application Publication 2015/00038938 teaches a panty fastening adhesive comprising thermoplastic elastomer polymer/copolymers (paragraph 0036), and styrene block copolymers (paragraph 0043) and further includes cycloaliphatic hydrocarbon resins as tackifiers (paragraph 0045).
Toro/Goerg-Wood/Austin do not teach the claimed parameters and test results. Toro/Goerg-Wood/Austin provide the same adhesive materials used as a panty fastening adhesive for an absorbent article as the present invention. Toro/Austin/Goerg-Wood do not teach the specific material properties of the adhesive including the claimed tan delta and storage modulus. However, it is reasonable to expect the invention of Toro/Austin to achieve these material properties if subjected to the same material testing parameters since the combination of Toro/Goerg-Wood/Austin is comprised of the same materials and meets the construction limitations as the present invention. It would have been obvious to one having ordinary skill in the art before the invention was originally filed to have applied the same testing procedures with the expectation of the same results since the same materials are used as panty-fastening adhesives in the present invention.
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