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 § 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 3-8 are rejected under 35 USC §103. This rejection is set forth in the prior Office action mailed on December 22, 2025.
Response to Arguments
Applicant's arguments filed on February 17, 2026 have been fully considered but they are not persuasive.
Applicants argue: 1) that the primary reference, Koroki, does not teach fatty acid esters and/or fatty acid amines having the oil content as it is now claimed and that generic identification of such compounds does not establish that the softener necessarily contains an ether-extractable oil component within the range as it is now claimed; 2) that the specification explicitly teaches that an oil content of 0.1% by mass or greater is not present in conventional tissue paper irrespective of the basis weight, which range has not been found in existing tissues: and 3) that the secondary references discloses the amount of ether-extractable oil content as it is now claimed. The arguments are not convincing for the following reasons:
With regard to 1), the primary reference, Koroki, teaches the same fatty-acid ester and fatty acid amides, including the same formula of the fatty acid amides, as used and preferred by applicants as shown on ¶-[0016] and [0018]-[0019] of applicants’ specification; see ¶-[0030] of Koroki which discloses (emphasis added):
“As the fatty acid ester series compound of the embodiment, although either of a cationic fatty acid ester series compound and a nonionic fatty acid ester series compound may be used, it is desirable that both of them are included. Further, as the fatty acid ester series compound, it is desirable to use a compound of an alcohol whose carbon number is 6 to 24 and a fatty acid whose carbon number is 7 to 25. The alcohol may be either of a straight chain alcohol, an alcohol including a branched chain, a saturated alcohol and an unsaturated alcohol. In particular, it is preferable to use an alcohol whose carbon number is 10 to 22, and lauryl alcohol, myristyl alcohol, cetyl alcohol, stearyl alcohol, behenyl alcohol and oleyl alcohol are preferable. One type of them may be solely used, or a combination of two or more types of them may be used. As the fatty acid whose carbon number is 7 to 25, either of a straight chain fatty acid, a fatty acid including a branched chain, a saturated fatty acid and an unsaturated fatty acid may be used. In particular, a fatty acid whose carbon number is 10 to 22 is preferable, and lauric acid, myristic acid, palmitic acid, stearic acid, behenic acid and oleic acid are preferable. One type of them may be solely used, or a combination of two or more types of them may be used.”
Same as disclosed by applicants in ¶-[0016] of the original specification. Also Koroki teaches on ¶-[0031] the same fatty-acid amides used and preferred by applicants (disclosed on ¶-[0019] of the current application). Therefore, the extractable oil is inherently the same. It has been held that "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to 2), the claims do not recite that the amount of oil in the tissue, but the amount of oil in the softener, which is not the same. Even to get said amount of oil from the fatty-acid ester(s)/amide(s) on the tissue the softener has to be added at 100% by mass relative to the other components of the tissue, which is not the case.
With regard to 3) the secondary reference(s) was/were used just for the teaching of the add-on of creping agents that is typical used in the creping of tissues and it has been held that “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 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