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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 12, 2026 has been entered.
Claim Objections
Claims 1, 17, 19 and 20 are objected to because of the following informalities: the claims shows units without the corresponding superscript, e.g., “g/m2” should be changed to g/m2, etc. Appropriate correction is required.
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 1-4 and 9-19 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.
In Claim 1 the word “dry-heat” makes the claim vague and indefinite, because it is unclear if it means that the heat is provided by means which is/are not wet, i.e., conduction heating, as oppose to a convection heating, e.g., by steam or humid air, or refers to the dryness/moisture of the web/ply, as explicitly recited in claim 20, which recites “…dry heat-embossing”
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, 9-23 and 43-45 are rejected under 35 U.S.C. 103 as being unpatentable over Jeannot et al., (hereafter Jeannot), EP 2692948 A1.
With regard to claims 1-4, 9-10 and 19-20, Jeannot teaches a tissue product comprising at least two plies (see abstract) which are ply bonded, having basis weight in the claimed range and made using the same type of process as claimed, e.g., TAD, UCTAD, eTAD, Atmos, SST, or NTT; see ¶-[0017]-[0020], [0043], [00633]-[0066]. Jeannot teaches also the embossing of the plies, including the first outer ply with micro-embossing (h1) and macro-embossing (h2), having heights falling with the claimed range; see figures 1-4, which shows two to three plies and ¶-[0047] which teaches the embossing heights. Figure 4 shows a three-ply web including a conventional wet pressed web/tissue as the third ply, the middle ply, described on ¶-[0051], reading on claim 10 and shows the second ply being a structured ply made by TAD. Jeannot shows also in figure 1 and described on ¶-[0043] a two-ply tissue in which the first ply is structured ply made by a TAD process and a wet pressed ply being the second ply. The limitation on the embossing being made using a heated roll is a process limitation that does not necessarily add structure to the product and there is no evidence that it produces a different product and only that it may be advantageous as the embossments may have better shape memory…which only amounts to speculation and there will no way to distinguish the product from the reference, i.e., Jeannot.
Regarding to claim 11-12, Jeannot teaches a third ply which is flat, i.e., not embossed and the outer ply being embossed; see figure 4 and ¶-[0051].
With regard to claims 13-16, while Jeannot does not explicitly teach a four-ply tissue, the addition of fourth ply is within the levels of ordinary skill in the art and also well-known1 and thus considered obvious to one of ordinary skill in the art. Note that Jeannot teaches the claimed heights of the embossments, including a third height (h3) that can be of the size as h1; see figure 1 and ¶-[0046].
Regarding to claims 17-18, while Jeannot does not teach the embossing of the area of the plies, Jeannot teaches embossing density falling within eth claimed range, since Jeannot teaches density range between 30 to 100 protuberances/cm2; see ¶-[0047]-[0048] and choosing the embossing area is considered to be within the levels of ordinary skill in the art, absent a showing of unexpected results.
With regard to claims 21-23 and 43-45, Jeannot teaches tissue paper spirally wound onto a core to form a roll or stacked and folded; see ¶-[0032]-[0034], [0075]. As to the size of the roll this is within the levels of ordinary skill in the art and considered obvious.
Response to Arguments
Applicant's arguments filed June 12, 2026 have been fully considered but they are not persuasive.
Although applicants’ arguments are moot in view of the new rejection, it is important to address that it was never indicated that the heat-embossing of the first ply and not heat-embossing the second ply was well-known in the art, but that both embossing techniques are well-known in the art, as evidenced by the cited references2 which one teaches non-heat embossing of the plies and the secondary references teach heat-embossing and that using both techniques in separated plies would be within the level of ordinary skill in the art, absent a showing of un expected results.
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).
As to the use of a heat-embossing of the first ply, as indicated above, repeated here, the limitation on the embossing being made using a heated roll is a process limitation that does not necessarily add structure to the product and there is no evidence that it produces a different product and only that it may be advantageous as the embossments may have better shape memory…which only amounts to speculation and there will no way to distinguish the product from the reference, i.e., Jeannot.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Tissue Paper Products, Rolls and Stacks of Tissue Paper Products.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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, Abbas Rashid can be reached on 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 See for example WO/166572 A1.
2 Also by the references on PTO-892; see for example ¶-[0003] of US Patent Application Publication No. 2021/0379863 A1 and paragraph bridging columns 10 and 11 of United State Patent No. 8,920,905 B2, just to cite a couple.
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