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 .
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.
Claim 30 is 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.
Regarding claim 30, the claim recites that the level of isotropy varies throughout the thickness of the air-laid blank. Applicants’ specification does not appear to explicitly recite the claimed limitation. Therefore, the limitation constitutes new matter.
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.
Claim 30 is 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.
Regarding claim 30, the claim recites that the level of isotropy varies throughout the thickness of the air-laid blank. It is unclear if the claim is requiring the isotropy to vary continuously throughout the thickness of the blank or generally throughout the thickness of the blank.
Claim Rejections - 35 USC § 102/103
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 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.
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 1-3, 5, 6, 8-14, and 30 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over USPN 4,590,114 to Holtman.
Regarding claims 1-3, 5, 6, 8-14, and 30, Holtman teaches a batt including a major percent of thermo-mechanical wood pulp fibers stabilized by the inclusion of a minor percent of thermoplastic fibers, which latter fibers are heat fused to one another and to the thermo-mechanical wood pulp fibers at fiber intersections (Holtman, Abstract). Holtman teaches that the chemical pulp fibers may be air laid (Id., column 5 lines 45-57). Holtman teaches that at least about 5% of the fibers should be thermoplastic fibers, but the amount of thermoplastic fibers may vary from about 5% to about 25% (Id., column 3 lines 62-68). Holtman teaches that the thermoplastic fibers may consist of any of a number of low melt plastics such as polyethylene or polypropylene wherein both the thermo-mechanical pulp fibers and thermoplastic fibers are of paper making fiber length, on the order of ¼ inches or less (Id., column 4 lines 39-57). Holtman teaches heat embossing on one or both faces of the batt to provide locally densified areas for achieving a further stabilized structure (Id., column 4 lines 1-4). Holtman teaches that the batt is embossed with line patterns which not only stabilizes the batt but provides a means of distributing liquid through the smaller capillaries created by the embossing (Id., column 5 lines 35-57). Holtman teaches that an effective embossing pattern includes grooves forming a modified diamond pattern (Id., column 6 lines 24-31, Figs. 1-6).
Regarding the multiple portions having different local fiber orientations, including the higher level of isotropy and the level of isotropy varying throughout the thickness, since Holtman teaches embossing on one or both faces of the batt to provide locally densified areas for achieving a further stabilized structure, it is reasonable for one ordinary skill to expect that the local fiber orientation distribution at embossed regions are different from a fiber orientation distribution of a remaining portion of the batt, as densifying would predictably affect the fiber orientation distribution. Additionally, Holtman teaches that the batt is embossed with line patterns which not only stabilizes the batt but provides a means of distributing liquid through the smaller capillaries created by the embossing, wherein an effective embossing pattern includes grooves forming a modified diamond pattern. As shown in at least Fig. 3, the embossing patterns comprise a cavity or channel extending through at least a portion of a thickness of the batt, which is in the form of a grid or matrix. Additionally, since Holtman teaches embossing on one or both faces of the batt to provide locally densified areas, it is reasonable for one of ordinary skill to expect that the densified areas comprise the claimed properties, such as a higher level of isotropy.
Regarding the preamble, Holtman teaches that the pulp fibers may be air laid. Additionally, the recitation of an air-laid blank is interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even 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 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claim 5, Holtman teaches mixing the pulp and thermoplastic fibers, and feeding mixture onto an endless screen which may also include vacuum means for drawing the mixture against the screen to form a web, and compressing the web between rotating rollers (Holtman, column 5 lines 19-34). Additionally, as shown in at least Figs. 1 and 3, it is reasonable for one of ordinary skill to expect that a majority of fibers are arranged substantially parallel to the surfaces.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the batt of Holtman, and arranging the fibers substantially parallel to the surfaces, motivated by the desire of forming a conventional batt having the desired strength in the direction of the fibers, suitable for the intended application.
Regarding claim 8, Holtman teaches that the pulp fibers have a length on the order of ¼ inches or less. The aforementioned length would appear to necessarily result in a length weighted average fiber length within the claimed range.
Regarding claim 9, Holtman teaches that the batt comprises predominantly pulp fibers, on the order of 75% to 95% of the blend and from about 5% to about 25% thermoplastic fibers (Holtman, column 3 lines 62-68, column 4 line 58 to column 5 line 2). It is reasonable for one of ordinary skill to expect that the amounts are based on the weight of the blend or the batt, as the recitation of a major percent of pulp fibers and minor percent of thermoplastic fibers would predictably be based on the weight amounts.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the batt of Holtman, and forming the batt based on the amounts by weight of the batt, as it is within the level of ordinary skill to determine a suitable amount of the pulp fibers and thermoplastic fibers based on the totality of the teachings of Holtman.
Regarding claim 13, Holtman teaches that the thermoplastic fibers may consist of any of a number of low melt plastics such as polyethylene or polypropylene. It is reasonable for one of ordinary skill to expect that the fibers are monocomponent, as fibers are ordinarily known in the art as being monocomponent.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the batt of Holtman, wherein the thermoplastic fibers are monocomponent, motivated by the desire of forming a conventional batt comprising fiber structures which can be mixed with pulp fibers and provide bond sites suitable for the intended application.
Response to Arguments
Applicant's arguments filed April 2, 2026, have been fully considered but they are not persuasive. Applicant argues that as shown in Fig. 3 of Holtman, the step of heat embossing does not create multiple portions having a local fiber orientation that is different from a fiber orientation distribution of a remaining portion of the air-laid blank, as the orientation of the fibers appear to be substantially similar if not the same as the portion of the batt no subject to heat embossing. Examiner respectfully disagrees. Applicant’s specification at paragraph 0042 recites that the local fiber orientation distribution of the multiple portions has a higher level of entropy, wherein this means that the local fiber orientation is more disordered, i.e., less stratified, and more isotropic. As set forth above, Holtman teaches heat embossing on one or both faces of the batt to provide locally densified areas for achieving a further stabilized structure. As shown in at least Fig. 3, the densified areas are formed by embossing, which inherently results in the area being less stratified. Since Holtman teaches embossing on one or both faces of the batt to provide locally densified areas, it is reasonable for one of ordinary skill to expect that the densified areas comprise the claimed properties, such as a higher level of isotropy within the scope of the claimed invention.
Additionally, although Applicant argues that Holtman describes the batt as substantially homogeneous, the description is directed to the composition of the batt and not the orientation of the fibers in the batt. Such a characterization is based on the preceding statement in Holtman that the TMP and thermoplastic fibers are thoroughly mixed to provide a substantially homogeneous blend so that thermoplastic fibers are intermixed everywhere throughout the basically TMP web (see Holtman, column 3 lines 44-48).
Applicant argues that the orientation of the fibers in the portions of the batt subjected to heat embossing do not have a higher level of isotropy, i.e., are not more disordered or less stratified, compared to the fibers in the remaining portion of the air-laid blank. Examiner respectfully disagrees. Applicant’s specification at paragraph 0047 recites that the local disorder in fiber orientation distribution may be achieved by applying gas pulses into an unbound web, and in particular into the first major surfaces. Applicant’s specification at paragraph 0048 recites that the gas pulses may also create cavities or channels extending or receding into but not through a whole thickness, wherein in such a case, the local fiber orientation distribution adjacent to the cavity is different from the fiber orientation distribution of the remaining portion of the blank. Similarly, Holtman teaches forming grooves by embossing a pattern. Note the resulting structure set forth in Fig. 3 of Holtman appears to be substantially similar to Applicant’s Fig. 2. Additionally, based on the presence of the embossments, the structure of Holtman would appear to result in the same local fiber orientation distribution as described in Applicant’s specification. Therefore, Applicant appears to be describing a structure which is inherently present in the structure of Holtman. Applicant has not established to the contrary.
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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786
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