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 4 August 2025 with respect to the rejection(s) of claim(s) 1-6 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 35 U.S.C. 103.
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.
Claim(s) 1-13 and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joseph et al. (9,320,825) in view of Corzani et al. (2018/0110896).
With respect to claim 1, Joseph discloses composition for a wetness indicator comprising an oily gel, as disclosed in column 9, lines 22-24, and a wetness-sensitive colorant composition, as disclosed in column 3, lines 21-28.
Joseph discloses all aspects of the claimed invention with the exception of the colorant composition comprising a leuco dye. Joseph discloses in column 1, lines 13-14, that the colorant composition may appear, and in column 6, lines 3-5, that the composition can be colorless initially, but remains silent as to the use of a leuco dye to achieve this. Corzani teaches the use of leuco dyes, which are colorless prior to contact with water, as disclosed in paragraph [0014], as the colorant in a wetness indicator composition, as disclosed in paragraph [0012]. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the colorant of Joseph a leuco dye, as taught by Corzani, to apply a known technique to a known device to achieve the predictable result of a wetness indicator that appears upon contact with liquid.
With respect to claims 2-3, Joseph discloses the oily gel is a solid comprising an oily substance, paraffin oil or polyisobutylene, as disclosed in column 9, lines 22-24. Joseph does not disclose that paraffin oil or polyisobutylene is liquid at room temperature, but since it is the same chemical composition as claimed it inherently must have the same properties. Joseph further discloses a gelling agent that is a fatty acid alkyl ester, as disclosed in column 13, lines 31-45.
With respect to claim 4, the wetness-sensitive colorant of Joseph comprises a pH indicator, as disclosed in column 3, lines 24-25, and a surfactant, as disclosed in column 11, lines 7-31.
With respect to claim 5, Joseph discloses a wetness indicator comprising the composition, as disclosed in column 1, lines 34-37.
With respect to claim 6, Joseph discloses an absorbent article comprising the wet indicator, as disclosed in column 6-8.
With respect to claim 7, Joseph discloses the surfactant is a nonionic surfactant, as disclosed in column 11, lines 23-25.
With respect to claim 8, Joseph discloses the surfactant is an anionic surfactant, as disclosed in column 11, lines 14-16.
With respect to claims 9-12, Corzani further teaches that the leuco dye is an aminophthalide that is thermochromic, as disclosed in paragraphs [0027-0028], which develops an intense color, as disclosed in paragraph [0029]. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the colorant of Joseph a thermochromic aminophthalide, as taught by Corzani, to provide a colorant that develops an intense color to achieve the predictable result of a wetness indicator that is easy for a user to view.
With respect to claim 13, the wetness-sensitive colorant of Joseph comprises a pH indicator, as disclosed in column 3, lines 24-25, and a surfactant, as disclosed in column 11, lines 7-31.
With respect to claim 16, Joseph discloses an embodiment in which the oily substance is polyisobutylene, as disclosed in column 9, lines 22-24.
With respect to claim 17, the wetness-sensitive colorant of Joseph comprises a surfactant, as disclosed in column 11, lines 7-31.
With respect to claim 18, Joseph discloses the surfactant is a nonionic surfactant, as disclosed in column 11, lines 23-25.
With respect to claim 19, Joseph discloses the surfactant is an anionic surfactant, as disclosed in column 11, lines 14-16.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joseph et al. (9,320,825) in view of Corzani et al. (2018/0110896), and further in view of Bommarito et al. (2016/0178553).
With respect to claim 14, modified Joseph discloses all aspects of the claimed invention with the exception of the gelling agent being a three-dimensionally cross-linked gelling agent. Bommarito discloses a wetness indicating composition, as disclosed in paragraph [0053], and teaches using cross-linked gelling agents because they result in firmer materials capable of holding their shape, as disclosed in paragraph [0027]. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the gelling agent of Joseph a cross-linked gelling agent, as taught by Bommarito, to achieve a gelling agent that is more capable of holding the shape of the material. With respect to the cross-linking being three-dimensional, any cross-linking of a three-dimensional material is considered to anticipate the claim limitation.
With respect to claim 15, modified Joseph discloses all aspects of the claimed invention with the exception of a structural body including a cross-linked gelling agent with a liquid oily substance. Joseph discloses a liquid oily substance, as disclosed in column 9, lines 22-24, and gelling material, column 13, lines 31-45, but does not disclose the gelling agent is cross-linked. Bommarito discloses a wetness indicating composition, as disclosed in paragraph [0053], and teaches using cross-linked gelling agents because they result in firmer materials capable of holding their shape, as disclosed in paragraph [0027]. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the gelling agent of Joseph a cross-linked gelling agent, as taught by Bommarito, to achieve a gelling agent that is more capable of holding the shape of the material.
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 1-2, 4-6, and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 5-6 of copending Application No. 18/160,453 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate all limitations of the present claims.
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 LYNNE ANDERSON whose telephone number is (571)272-4932. The examiner can normally be reached Monday-Friday 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Al-Hashimi can be reached at 571-272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CATHARINE L ANDERSON/Primary Examiner, Art Unit 3781