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 .
Examiner Notes
Claims 1-20 are currently pending, of which claim 1 has been amended.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 2-4 recite Core Height Difference Values which are lower than the Core Height Difference Value required in independent claim 1. Thus, they claim to further limit the subject matter of independent claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 1-5 and 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sheehan (US 2007/0256803) and further in view of Thomas (US 3,650,882).
Regarding claims 1-4 and 11-13, Sheehan discloses a multi-ply fibrous structure comprising two or more plies of commingled fibrous structures (0014; instant fibrous elements) wherein at least one of the plies has a plurality of embossments (102) and unembossed cells (104). Sheehan teaches an embossment height ‘a’ from about 300 to about 1500 µm (0041; 0.3-1.5 mm) (0033), overlapping the claimed Core Height Value of greater than 0.60 mm. As the other ply is unembossed (e.g., Fig. 2), the Core Height Difference value will be equal to the embossment height, e.g., 300 to about 1500 µm, thus overlapping the value of greater than 1.30 mm as claimed in claim 1, greater than 0.55 mm in claim 2, 0.60 mm in claim 3, and 0.64 mm in claim 4. Sheehan teaches the sheet having a caliper of at least about 29 mils to about 50 mils (0030), overlapping the claimed caliper of from about 41.9 to about 58.63 mils. The basis weight of the product being from about 26 gsm to about 50 gsm (0016, 0027), overlapping the claimed basis weight from 30 to about 80 gsm.
Sheehan does not teach that the heights are measured according to the Surface Texture Analysis Test method however, an overlapping range is expected as patentability is not based upon method of measurement but whether or not the property would have been obvious in view of the prior art.
Sheehan further teaches that the plies may be bonded together by an adhesive (0033) however does not provided information on a suitable adhesive composition.
Thomas, in the analogous field of muti-ply fibrous paper product (column 1, lines 5-10) comprising plies which are adhesively bonded (column 2, lines 55-60). The adhesive comprising a water resistant adhesive (column 1, lines 50-55).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the adhesive of Sheehan to comprise a water-resistant adhesive as taught by Thomas, to permit retention of the ply webs when wetted (column 1, lines 50-55).
Regarding the overlapping ranges discussed in claims 1-4, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 5, Sheehan does not expressly teach the article exhibit one or more of the bulk characteristics in claim 5. However, Sheehan teaches a substantially identical multi-ply fibrous structure including wet laid, through-air-dried co-formed fibrous structure plies (0039, 0045) of paper making fibers (0037) including an embossed structure ply and a non-embossed structure ply (Fig. 2). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the article of Sheehan to possess one or more of the claimed bulk characteristics. Where the claimed and prior art apparatus or product are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 480, 433 (CCPA 1977). In other words, when the structure recited in the reference is substantially identical to that of the claims, the claimed properties or functions are presumed to be inherent or at least obvious.
Regarding claim 7, Sheehan teaches the second ply (202) being unembossed (0060).
Regarding claims 8-9, Sheehan teaches the embossed ply being direct formed to the second ply (0033).
Please note, claims 8 and 9 include product by process language with regards to the recitation of “direct formed”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 10, Sheehan teaches the product being in roll form (0063).
Regarding claims 14-17, Sheehan teaches the plies being wet-laid and through-air dried (0045) of co-formed fibers and filaments (0039) associated with each other (Fig. 2).
Please note, Sheehan include product by process language with regards to the recitation of “wet-laid,” “through-air dried,” and “co-formed”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claims 18 and 19, Sheehan teaches the product having different exterior surfaces where one in embossed and the other isn’t (Fig. 2, 0060).
Regarding claim 20, Sheehan teaches each ply may include fibers and/or filaments (0037), thus there exists embodiments wherein at least one exterior surface comprises fibers and the other exterior surface comprises filaments.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sheehan in view of Thomas as applied to claim 1 above, and further in view of Hupp et al. (US 2010/0326612).
Regarding claim 6, Sheehan in view of Thomas discloses the limitations of claim 1 as discussed above. Sheehan does not teach the article exhibiting one or more of the claimed absorbent characteristics.
Hupp, in the analogous field of fibrous structures (0002), teaches fibrous structure having a horizontal full sheet absorbency of from about 12 g/g to about 30 g/g (0038), overlapping the claimed HFS of greater than 17 g/g.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the article of Sheehan to have a HFS from about 12 to 30 g/g as taught by Hupp, to have a sufficient absorbency to take up and retain fluid (0038).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/484473 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the present applicant and the pending application disclose a multi-ply fibrous structure-containing article comprising a plurality of fibrous elements and two or more fibrous structure plies and it is clear from the claimed properties in both applications the same article is disclosed. E.g., Claims 1-4 are rejected over claim 5 of the ‘473 application, as claim 1 of the ‘473 application, from which claim 5 depends, is directed to a multi-ply fibrous structure-containing article comprising a plurality of fibrous elements, and claim 1 further specifies a Core Height Difference value of greater than 1.00 mm as measured according to the Surface Texture Analysis Method. And overlapping the claimed Core Height Difference Values in claims 1-4.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s amendments filed 05/04/2026 have been entered. The rejection over 35 U.S.C. 112(b) rejection has been withdrawn. However, due to the amendments however, a new 35 U.S.C. 112(d) rejection has been made over claims 2-4.
Applicant’s arguments with respect to the instant claims have been fully considered but they are not persuasive.
Applicant argues that the Core Height Difference Value of greater than 1.30 mm clearly distinguished over Sheehan.
Sheehan discloses an embossment height “a” from about 300 to about 1500 µm (i.e., 0.3 to 1.5 mm). As the other ply is unembossed, the Core Height Difference value will be equal to the embossment height and thus overlaps the claimed range. I.e., 1.50 mm is higher than 1.30 mm, and thus the range of Sheehan encompasses values of the claimed range.
Regarding the double patenting rejection, Applicant postpones response until one of the instant application or the copending applicant are in condition for allowance. The double patenting rejection will be maintained until such time as the rejection is properly overcome (see MPEP 804 IB and IB1).
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 ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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