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 amendment filed 12/18/2025 is accepted and entered. Applicant’s amendments to the claims have overcome the previous 112 rejections and the previous 112 rejections have been withdrawn.
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
Applicant argues that Tamura does not teach the first plurality of embossment points “form a closed shape comprising longitudinally extending side portions connecting to transversely extending end portions.” While the embodiment of Fig. 1 does not teach this limitation, the embodiment of Fig. 12 of Tamura does teach this structural relationship. Therefore, the ground of rejection has been modified to rely upon the embodiment of Fig. 12 as set forth below.
Applicant additionally argues that Tamura does not recognize the criticality of the first distance being at least 6 mm. However, this is not found persuasive. Since Tamura teaches a first distance in the range of 4.5 – 13.5 mm, it has been held that a prima facie case of obviousness exists for the overlapping range of “at least 6 mm”. Therefore, Tamura does not need to recognize the criticality of a range it renders obvious.
Applicant did not specifically argue the dependent claims.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a shaping element in claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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.
Claims 3-6 are 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 3, it is unclear if the limitation “a first embossment region” is intended to refer to the same “first embossment region” as that recited in Claim 1 or a different first embossment region. For the purpose of compact prosecution, these “first embossment regions” are interpreted as referring to the same first embossment region.
Regarding Claim 4, it is unclear if the limitation “a pair of sidewalls” is intended to refer to the same “side walls” as that recited in Claim 1 or a different pair of side walls. For the purpose of compact prosecution, these “side walls” are interpreted as referring to the same side walls.
Regarding Claim 5, it is unclear if the limitation “a second embossment region” is intended to refer to the same “second embossment region” as that recited in Claim 1 or a different second embossment region. For the purpose of compact prosecution, these “second embossment regions” are interpreted as referring to the same second embossment region.
Regarding Claim 6, it is unclear if the limitation “a pair of sidewalls” is intended to refer to the same “side walls” as that recited in Claim 1 or a different pair of side walls. For the purpose of compact prosecution, these “side walls” are interpreted as referring to the same side walls.
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 3 and 5 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 3 and 5 recite the same limitations as present in Claim 1, and as such do not further limit the subject matter of 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
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura et al (US 2005/0148973).
Regarding Claim 1, Tamura discloses an absorbent article (1H, Fig. 12) comprising:
a topsheet layer (3, Figs. 1 and 12) and a backsheet layer (2, Figs. 1 and 12);
an absorbent core (4, Figs. 1 and 12) comprising an absorbent core edge (dotted perimeter 4a shown in Fig. 12) wherein the absorbent core (4, Fig. 12) is positioned between the topsheet layer (3, Fig. 12) and the backsheet layer (2, Fig. 12; ¶ [0087]);
a target acquisition region (4c shown in Fig. 12, 4A shown in Fig. 2A; ¶ [0094]) bounded by a first perimeter (perimeter formed by compressed portions 11H and 13H, Fig. 12) comprising a first plurality of embossment points (high-density compressed portions 10a within compressed portions 11H and 13H, Figs. 1 and 12; ¶ [0088]) positioned within a first embossment region (first compressed portion 11H and 13H, Fig. 12), the first embossment region (11H and 13H, Fig. 12) forming side walls and a transition region (10b, Figs. 14A-B) defining a transition between the first embossment region (11H and 13H, Figs. 12, 14A-B) and the first plurality of embossment points (10a, Figs. 12, 14A-B) with the transition region (10b, Figs. 12, 14A-B) located at a shallower depth (as seen in Fig. 14B) than a depth of the first plurality of embossment points (10a, Figs. 12, 14A-B); and
a second perimeter (dotted perimeter 4b shown in Fig. 12) comprising a second plurality of embossment points (high-density compressed portions 10a within compressed portions 12H, Fig. 12; ¶ [0088]) positioned within a second embossment region (12H and 13H, Fig. 12) forming side walls and a transition region (10b, Figs. 14A-B) defining a transition between the second embossment region (12H and 13H, Figs. 12, 14A-B) and the second plurality of embossment points (10a, Figs. 12, 14A-B) with the transition region (10b, Figs. 12, 14A-B) located at a shallower depth (as seen in Fig. 14B) than a depth of the second plurality of embossment points (10a, Figs. 12, 14A-B);
wherein the first plurality of embossment points (10a, Figs. 12, 14A-B) form a closed shape comprising longitudinally extending side portions (10a within 11H, Fig. 12) connecting to transversely extending end portions (10a within 13H, Fig. 12);
wherein the second plurality of embossment points (10a within compressed portions 12H, Fig. 12) are positioned between the first perimeter (perimeter formed by 11H and 13H, Fig. 12) and the absorbent core edge (as seen in Fig. 12) and wherein the second plurality of embossment points (10a within compressed portions 12H, Fig. 12) completely surrounds the first plurality of embossment points (10a within compressed portions 11H and 13H, Figs. 1 and 12), and
wherein a center of each of the first plurality of embossment points (high-density compressed portions 10a within compressed portions 11H and 13H, Fig. 12) is separated by a first distance from a center of each of the second plurality of embossment points (high-density compressed portions 10a within compressed portions 12H, Fig. 1; the center of compressed portion 11H and the center of compressed portion 12H are separated from one another by W2 and W4, as shown in Fig. 2A, as the center of each compressed portion 11H and 12H is ½ W4 from the sidewall).
Tamura discloses W2 is in the range of 3- 10 mm (¶ [0136]) and W4 is in the range of 1.5 – 3.5 mm (¶ [0135]), and therefore discloses that the first distance is in the range of 4.5 – 13.5 mm.
However, Tamura does not explicitly disclose the first distance is at least 6 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the first distance of Tamura to be from 4.5 – 13.5 mm to 6 – 13.5 mm since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 2, Tamura does not explicitly disclose the first distance is at least 10 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the first distance of Tamura to be from 4.5 – 13.5 mm to 10 – 13.5 mm since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 3, Tamura further discloses the first plurality of embossment points (high-density compressed portions 10a within compressed portions 11H and 13H, Fig. 1) is positioned within a first embossment region (compressed portions 11H and 13H, Fig. 1).
Regarding Claim 4, Tamura further discloses the first embossment region (11H and 13H, Fig. 1) has a pair of sidewalls separated from each other by a distance (W4, Fig. 2A). Tamura discloses W4 is in the range of 1.5 – 3.5 mm (¶ [0135]).
However, Tamura does not explicitly disclose the distance is 2 to 3.5 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the distance of Tamura to be from 1.5 – 3.5 mm to 2 – 3.5 mm since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 5, Tamura further discloses the second plurality of embossment points (high-density compressed portions 10a within compressed portions 12H and 13H, Fig. 1) is positioned within a second embossment region (compressed portions 12H and 13H, Fig. 1).
Regarding Claim 6, Tamura further discloses the second embossment region (12H and 13H, Fig. 1) has a pair of sidewalls separated from each other by a distance (W4, Fig. 2A). Tamura discloses W4 is in the range of 1.5 – 3.5 mm (¶ [0135]).
However, Tamura does not explicitly disclose the distance is 2 to 3.5 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the distance of Tamura to be from 1.5 – 3.5 mm to 2 – 3.5 mm since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 9, Tamura further discloses a fluid intake layer (nonwoven fabric 8, Fig. 6; ¶ [0153]) positioned between the absorbent core (4, Figs. 1 and 6) and the topsheet (3, Figs. 1 and 6).
Regarding Claim 10, Tamura further discloses a shaping element (elastic members 22, Fig. 1; ¶ [0104]).
Regarding Claim 11, Tamura further discloses a pair of wings (18, Fig. 1).
Regarding Claim 12, Tamura further discloses the second plurality of embossment points (10a within 12H and 13H, Fig. 12) are disposed closer to a first laterally extending end of the article and a second laterally extending end edge of the article than the fluid intake layer (8, Fig. 6; extensions 14H and 15H with embossment points 10a are closer to the lateral edges of the article than the fluid intake layer).
Regarding Claim 13, Tamura further discloses the transition region (10b, Figs. 14A-B) comprises a flat surface (Fig. 14B; the surface of the transition region 10b is angled, but a flat angle).
Regarding Claim 14, Tamura further discloses the plurality of first embossment points (10a within 11H and 13H, Fig. 12) and the plurality of second embossment points (10a within 12H and 13H, Fig. 12) are each individually surrounded by the transition regions (10b, Figs. 12 and 14A-B).
Regarding Claim 15, Tamura is silent whether the first plurality of embossment points and the second plurality of embossment points have a depth of between 0.4 mm and 1 mm extending from the transition regions.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Tamura to have the first plurality of embossment points and the second plurality of embossment points have a depth of between 0.4 mm and 1 mm extending from the transition regions since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Tamura would not operate differently with a depth of between 0.4 mm and 1 mm extending from the transition regions between the two plurality of embossment points and since the device would function appropriately with the claimed distance between embossment points and transition regions. Further, applicant places no criticality on the range claimed, indicating simply that the depth of the embossment points “can” be within the claimed ranges (¶ [0065] of Applicants published specification).
Claim(s) 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura et al (US 2005/0148973) in view of Tagomori et al (US 2017/0246056).
Regarding Claim 7, Tamura is silent whether each of the first embossment points within the first plurality of embossment points are separated from each other by a second distance of from 0.7 mm to 3.5 mm.
Tagomori teaches an absorbent article, thus being in the same field of endeavor, with a first plurality of embossment points (23, Fig. 6) within a first plurality of embossment points (23, Fig. 6) are separated from each other by a second distance. Tagomori discloses the second distance is between 2 – 5 mm (¶ [0108]) to ensure the compression portion does not collapse while also preventing issues during manufacturing (¶ [0108]).
Therefore, it would have been obvious to modify the first embossment points of Tamura to be separated from each other by a second distance between 2- 5 mm, as taught by Tagomori, to ensure the compression portion does not collapse while also preventing issues during manufacturing (¶ [0108]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the second distance of Tamura/Tagomori to be from 2 – 5 mm to 0.7 – 3.5 mm since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 8, Tamura is silent whether each of the second embossment points within the second plurality of embossment points are separated from each other by a third distance of from 0.5 mm to 6.25 mm.
Tagomori teaches an absorbent article, thus being in the same field of endeavor, with a second plurality of embossment points (23, Fig. 6) within a second plurality of embossment points (23, Fig. 6) are separated from each other by a third distance. Tagomori discloses the third distance is between 2 – 5 mm (¶ [0108]) to ensure the compression portion does not collapse while also preventing issues during manufacturing (¶ [0108]).
Therefore, it would have been obvious to modify the second embossment points of Tamura to be separated from each other by a third distance between 2- 5 mm, as taught by Tagomori, to ensure the compression portion does not collapse while also preventing issues during manufacturing (¶ [0108]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the second distance of Tamura/Tagomori to be from 2 – 5 mm to 0.5 – 6.25 mm since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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 Jessica Arble whose telephone number is (571)272-0544. The examiner can normally be reached Mon - Fri 9 AM - 5 PM.
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/JESSICA ARBLE/ Primary Examiner, Art Unit 3781
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