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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 23, 2026 has been entered.
Response to Amendment
The amendment filed October 23, 2025 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 newly presented amendments now require a durably and non-transferable treatment adhered to a surface. This language is not supported by the originally filed specification.
Applicant is required to cancel the new matter in the reply to this Office Action.
The Declaration under 37 CFR 1.132 filed April 23, 2026 is insufficient to overcome the rejection of claims 1-24 based upon 35 U.S.C. 103 as set forth in the last Office action because the showing fails to set forth facts and is not commensurate in scope with the claims. Claim 1 requires an inner layer treatment that is durably adhered. Initially, the declaration refers conventional wet-finishing, impregnation, drying and curing processes being durable, surface-bound and non-migratory by default.
It is noted that Applicant's specification does not exclusively utilize these processes for application. See [0072] stating "The surface treatment can be performed using any number of suitable techniques and more specifically, conventional treatments involve steps such as dipping the nonwoven in a treatment bath, coating or spraying the nonwoven with the treatment composition, and printing the nonwoven with the treatment composition."
Additionally, even if these processes are considered to provide a durable treatment, it is not indicative of a treatment that is “non-migratory by default”.
“Durably” is defined as lasting or enduring. That does not necessarily translate to non-migratory and/or non-transferable. Lasting can include present during packaging, present during the first few minutes of use, present after one wet occurrence, etc. The arguments presented in the Declaration are not commensurate with the scope of the claims. The art as a whole is replete with absorbent articles having inner layer treatments that are both durable and transferable to the wearer.
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 1-4, 6-17 and 19-24 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.
The newly presented amendments now require a durably adhered treatment that does not transfer to a skin of a user. The specific language, and the scope of the language, are not supported by the originally filed specification.
The language used to support applicant’s assertion of durably adhered, to including non-migratory and/or non-transferable, while not synonymous with something durable, are also absent in the originally filed specification. The applicant has failed to describe the concept and/or terms 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The originally filed specification does not support the term “durably adhered”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 8-9, 14 and 17 are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by Roe et al. (US 6,018,093).
With reference to claims 1-2, 8, 14 and 17, Roe et al. (hereinafter “Roe”) discloses a disposable absorbent article (abstract) described in col. 1, lines 6-9 as a diaper (cl. 2) having an inner layer (24) that is formed with a top surface and a bottom surface (figure 3), the inner layer comprising:
natural fibers derived from the flower/fruit/seed/stalk of a plant (i.e., cotton) that is harvested in a single growing season (i.e., cotton – an annual grown fiber – understood as a plant grown and harvested within a single growing season) (col. 5, lines 20-21) ; and
an inner layer (75) treatment durably adhered (col. 13, line 56 to col. 14, line 7; col. 15, lines 65; col. 16, lines 47-64) to the top or bottom at least one surface thereof (col. 5, line 51 to col. 6, line 36; col. 19, lines 64-65; figure 3) at a solid loading percent as recited in claims 1, 8 and 17(col. 10, lines 4-20), the inner layer treatment comprising at least one compound selected from the group consisting of waxes, urethanes, silicones, non-fluorochemical repellants (col. 14, lines 7-39) to increase a hydrophobic nature of the inner layer to inhibit a normal moisture absorption of standard cellulosic structures comprising the inner layer (col. 5, lines 51-60);
wherein the top or bottom surface of the inner layer with the treatment durably adhered comprises a plurality of pores allowing for passage of moisture into an absorbent core (see apertured web disclosed in col. 6, lines 5-6); and
wherein the treatment durably adhered to the top or bottom surface of the inner layer further comprises a plurality of pores (cl. 14) as discussed in col. 17, lines 6-14 and does not transfer to a skin of a user of the disposable absorbent article as set forth in col. 15, lines 59-65.
It is further noted that Roe utilizes the same hydrophobic finish (i.e., wax) on the same substrate (i.e., cotton) via the same application process (i.e., drying) which applicant deems durable, surface-bound and non-migratory by default. See page 2, 3rd full paragraph of Declaration filed April 23, 2026.
As to claim 9, Roe discloses a hydrophobic leg cuff as set forth in col. 8, lines 29-44.
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.
Claims 3-4, 7, 10-13, 15-16 and 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Roe et al. (US 6,018,093) and further in view of Richards et al. (US 2017/0021051).
With reference to claims 3-4, 12-13, 15-16 and 23-24, Roe teaches the invention substantially as claimed as set forth in the rejection of claim 1.
The difference between Roe and claims 3-4, 12-13, 15-16 and 23-24 is the provision that the inner layer treatment comprises a specific type of wax.
Richards teaches an analogous absorbent article wherein the inner treatment layer comprises dendrimer wax as set forth in [0107].
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the article of Roe with dendrimer wax, or paraffin wax (cl. 4, cl.16) since Roe already discloses the inclusion of wax and any specific type of wax preferred would fall within the general disclosure of wax which has already been taught.
Regarding claims 7 and 20, Roe teaches the invention substantially as claimed as set forth in the rejection of claims 1 and 14.
The difference between Roe and claims 7 and 20 is the provision that a hydrophilic treatment is applied to a bottom surface of the inner layer.
Richards teaches an analogous absorbent article wherein the inner layer treatment is applied to a top surface (205) of the inner layer (200) and a hydrophilic treatment is applied to a bottom surface of the inner layer as set forth in [0073] where Richards discloses that the surface treatment applied to the inner layer can be configured to impart hydrophilic properties on the other side (bottom).
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the bottom surface of Csillag with a hydrophilic treatment on a bottom surface of the inner layer as taught by Richards in order to impart the amount of desired hydrophilic and/or hydrophobic properties to the layer as taught by Richards in [0069].
With reference to claims 10-11 and 21-22, see the rejection of claims 1 and 9.
Roe discloses that all or a portion of the leg cuffs may be treated as set forth in col. 8, lines 30-44.
Richards teaches the absorbent article further including a hydrophobic leg cuff as set forth in [0107], [0122], [0157] and [0163]-[0164] where Richards discloses a pair of leg cuffs and an acquisition distribution layer (ADL) that expands across the width of the diaper from one leg cuff to the other and the inner layer surface treated with dendrimer wax (hydrophobic) that is adhered to the ADL.
It also noted that Richards teaches cotton leg cuffs as set forth in [0123].
The difference between Richards and claims 10-11 and 21-22 is the provision that the treatment is applied to the leg cuff at a certain solid loading percent and/ or by a specific weight add on.
With respect to the solid loading percent, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the amount of solid loading percent as desired because Roe discloses that the amount of material utilized will vary depending on the amount of feces that is desired to be treated as set forth in col. 10, lines 10-20.
It also would have been obvious to one of ordinary skill in the art at the time of the invention to modify the amount of add as desired in order to in order to impart the article with the desired hydrophilic and/or hydrophobic properties to the layer.
Claims 6 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Roe et al. (US 6,018,093).
With reference to claim 6, Roe teaches the invention substantially as claimed as set forth in the rejection of claim 1.
The difference between Roe and claim 6 is the provision that the inner layer treatment is adhered to both a top and bottom surface of the inner layer.
It would have been obvious to one of ordinary skill in the art at the time of the invention to adhere the inner layer treatment to both top and bottom surfaces of the inner layer as desired because Roe discloses that any portion of the inner layer may be treated as set forth in col. 6, lines 15-39.
As to claim 19, see the rejection of claim 6.
Response to Arguments
Applicant’s arguments with respect to claims 1-4, 6-17 and 19-24 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELE M KIDWELL whose telephone number is (571)272-4935. The examiner can normally be reached Monday-Friday, 7AM-4PM EST.
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, Rebecca Eisenberg can be reached at 571-270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHELE KIDWELL/Primary Examiner, Art Unit 3781
Prosecution Insights