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 Amendment
Applicant’s amendment to the claims filed January 26, 2026 has been entered. Claims 1 and 2 are currently amended. Claims 10 and 11 remain withdrawn from further consideration. Claims 1-9 and 12-18 are under examination.
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.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2017/0152377) in view of Kozee et al. (US 2013/0189503) alone or further in view of either one of Martin et al. (US 2005/0176872) or Sebastian et al. (US 2003/0235681).
Regarding claim 1, Wang et al. teach a breathable film (Abstract) comprising a breathable, polyolefinic, filled, stretched film (Abstract; paragraphs [0006], [0007], [0020], [0035], [0036], [0039], [0043]-[0045], [0050]-[0057], [0106]-[0110], [0114], [0118], [0119] and [0122]) having an adhesive integrally formed therein and the film being formed as a layer (paragraphs [0045] and [0108] – ethylene vinyl acetate (EVA) within the layer is disclosed in the instant application as being an adhesive; paragraph [0105] – tackifier/adhesive provided within the layer) and further suggest that the film can be imprinted (paragraph [0004]), the breathable film having values of a water vapor transmission rate and a water column that are within or overlap the claimed ranges of at least 500 g/m2 in 24 h according to ASTM D6701-01; and more than 300 mm according to EDANA WSP 80.6, respectively (paragraphs [0056], [0057], [0118], and [0119]; WVTR greater than 500 g/sq. meter – day – atm.; hydrohead of at least 60 cm).
While Wang et al. provide clarity that the film can be imprinted (paragraph [0004]), Wang et al. do not explicitly teach imprinting the film as claimed. However, Kozee et al. teach an analogous breathable film (paragraphs [0014] and [0021; breathable film; backsheet for a diaper]) and method wherein the film is explicitly printed upon/imprinted to bond it to the surface (Figure 1; Abstract; paragraphs [0002], [0005], [0014], [0021]-[0023], [0037], [0040], [0043] – an adhesion promoter may be provided, but is not required, [0045].
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Wang et al. and Kozee et al. and to have imprinted the breathable film of Wang et al., as taught and suggested by the references, for the purpose, as suggested by the references, of providing a desired appearance to the film or providing desired information to the surface of the film that is durably applied.
In combination, the adhesive that is integrally formed within the film of Wang et al. is understood to provide sufficient adhesion between the imprint and the film such that the bonding is “via the adhesive” to the extent required by the claim. The combination teaches and suggests the same claimed and disclosed materials. The same materials have the same properties. As such, each and every limitation of the claim is taught and suggested by the combination of references. It is further noted that the presence of an additional adhesive/adhesion promoter in the ink composition is not excluded from the claim. Both the film itself and the imprinted material may have an adhesive/adhesion promoter within the scope of the claim.
Alternatively, each of Martin et al. (Abstract; paragraphs [0004], [0005], [0015], [0018] and [0021]-[0025], [0035] and [0040]) and Sebastian et al. (Abstract; paragraphs [0013] and [0014] – EVA based material used as ink absorptive polymer in the film, [0022] – polyolefin based film, [0032]-[0044] – further description of utilized EVA materials, [0046] and [0047] – metal oxide fillers, [0064] – stretched film; and [0066] – film containing pores/voids) teach analogous products and methods wherein an adhesive is integrally formed within a layer to which subsequent bonding of other material is desired.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Wang et al. and either one of Martin et al. or Sebastian et al. and to have incorporated an adhesive integrally into the film of Wang et al. such that a subsequent imprint was effectively bonded to the film via the adhesive, as suggested by either one of Martin et al. or Sebastian et al., for the purpose, as suggested by the references, of facilitating the bond between the materials in an effective and art recognized suitable manner to either further improve the bonding of the ink to the film or to reduce the need for externally utilized adhesives. In this alternative combination, each and every limitation of the claim is taught and suggested by the combination of references.
As to claim 2, in the combination, the imprint is disposed directly on the breathable film formed as a layer (the Kozee et al. ink is printed directly on the breathable film of Wang et al.). The reason to combine the references is the same as that set forth above.
As to claim 3, Kozee et al. teach the ink comprises water or glycol as claimed (paragraphs [0037], [0043], [0045] and Table 3 – disclosing glycol containing compositions; paragraph [0040] discloses up to 5% water, which is understood to be water-based under a reasonable interpretation absent further specificity). The reason to combine the references is the same as that set forth above.
Claims 4, 5, 8, 12, 13, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2017/0152377) in view of Kozee et al. (US 2013/0189503) alone or further in view of either one of Martin et al. (US 2005/0176872) or Sebastian et al. (US 2003/0235681), as applied to claims 1-3 above, and further in view of Bormann (WO 2019/206769).
Note: US 2021/0237418 is utilized as the English language equivalent of WO 2019/206769 in this Office Action.
As to claims 4, 5, 12 and 13, the combination teaches the breathable film as set forth above. Further, Wang et al. teach and suggest a breathable film, such as a backsheet for a diaper, as set forth above, and further suggest that additional layers may be included (paragraphs [0059], [0113] and [0120]-[0122]), but do not explicitly teach applicable thicknesses as claimed. However, Bormann teaches analogous breathable films (paragraphs [0014], [0020]) wherein thicknesses within and which overlap the claimed range are disclosed (paragraphs [0020], [0039] and [0050]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Wang et al. and Bormann and to have produced the layers of Wang et al. to have a thickness within the claimed range, as suggested by Bormann, for the purpose, as suggested by the references, of producing a breathable film/backsheet having a suitable thickness for the application while optimizing for costs.
As to claims 8, 16 and 17, the combination teaches the breathable film as set forth above. Further, Wang et al. teach fillers, such as calcium carbonate, in amounts ranging from amounts within the claimed range may be utilized (paragraph [0050]; [0106]). Wang et al. do not teach the filler is a metal oxide as claimed. However, Bormann teaches an analogous film wherein magnesium oxide is utilized as an alternative to calcium carbonate (paragraph [0037]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Wang et al. and Bormann and to have utilized magnesium oxide as the filler in the film of Wang et al., as suggested by Bormann, for the purpose, as suggested by the references, of utilizing art recognized suitable and effective fillers to produce the film. The reason to utilize the alternative filler in the combination may be different than facilitating adhesion, but the combination clearly renders the selection of such a filler prima facie obvious absent further specificity or evidence to the contrary.
Claims 6, 7, 14 and 15, are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2017/0152377) in view of Kozee et al. (US 2013/0189503) alone or further in view of either one of Martin et al. (US 2005/0176872) or Sebastian et al. (US 2003/0235681), as applied to claims 1-3 above, and further in view of Tang et al. (US 2019/0060507).
As to claims 6, 7, 14 and 15, the combination teaches the film as set forth above. Further, Wang et al. teach the film can additionally include ethylene-vinyl acetate (paragraphs [0045], [0053] and [0108]; claims 6, 8 and 9). Wang et al. do not teach the amounts or composition types of EVA as claimed. However, Tang et al. teach and disclose an analogous breathable film or backsheet wherein the amounts and composition type of ethylene-vinyl acetate are within or overlap the claimed ranges (paragraphs [0022]-[0035] and [0059]-[0061]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Wang et al. and Tang et al. and to have utilized EVA in amounts as claimed and having a composition type as claimed in the film of Wang et al., as suggested by Tang et al., for the purpose, as suggested by the references, of utilizing a composition of a suitable type, in known amounts and with a known composition, in order to effectively produce the breathable film of Wang et al. having desired properties. Wang et al. generally disclose the suitability of adding EVA to the film and Tang et al. provide additional and analogous specificity regarding the amounts and compositions of suitable EVA materials.
Claims 8, 9 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2017/0152377) in view of Kozee et al. (US 2013/0189503) alone or further in view of either one of Martin et al. (US 2005/0176872) or Sebastian et al. (US 2003/0235681), as applied to claims 1-3 above, and further in view of any one of Middlesworth et al. (US 2017/0129228), Jayasinghe et al. (US 2014/0018759), Wang et al. (US 2014/0005620), or Thomas et al. (US 2006/0251858).
As to claims 8, 9 and 16-18, the combination teaches the breathable film set forth above. Wang et al., do not disclose the filler/adhesive is calcium oxide. However, each of Middlesworth et al. (paragraph [0043]), Jayasinghe et al. (paragraphs [0070] and [0071]), Wang et al. (paragraph [0082]), or Thomas et al. (paragraph [0049]) disclose analogous films wherein the filler/adhesive includes calcium oxide.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Wang et al. and any one of the secondary references and to have included calcium oxide in the film as claimed in the film of Wang et al., as suggested by any one of the secondary references, for the purpose, as suggested by the references of utilizing a material known in the art to be an effective filler in producing a breathable film. In this scenario, the filler itself that is contained within the film is understood to be the adhesive as claimed. The same materials have the same properties.
Response to Arguments
Applicant’s arguments filed January 26, 2026 have been fully considered, but are moot in view of the new grounds of rejection necessitated by the amendment to the claims.
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 Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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, Christina Johnson can be reached at 571-272-1176. 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.
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742