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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/3/2026 has been entered.
Withdrawn Rejections
The 35 U.S.C. 103 rejection of claims 1-6 and 10-20 as being unpatentable over McNeil of record in the previous Office Action mailed on 12/10/2025 has been withdrawn due to Applicant's amendment filed on 3/3/2026.
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.
Claim 6 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.
Claim 6 recites the limitation "the multi-ply sanitary tissue product" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, 6 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,952,724. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of U.S. Patent No. 11,952,724 encompass or include that which is recited in claims 1-3, 5, 6 and 10-20 of the present patent application.
Claims 1-3, 5, 6 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,152,347. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of U.S. Patent No. 12,152,347 encompass or include that which is recited in claims 1-3, 5, 6 and 10-20 of the present patent application.
Claims 1-3, 5, 6 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,700,979. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of U.S. Patent No. 11,700,979 encompass or include that which is recited in claims 1-3, 5, 6 and 10-20 of the present patent application.
Claims 1-3, 5, 6 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,633,076. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-15 of U.S. Patent No. 11,633,076 encompass or include that which is recited in claims 1-3, 5, 6 and 10-20 of the present patent application.
Claims 1-3, 5, 6 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,916. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-17 of U.S. Patent No. 11,447,916 encompass or include that which is recited in claims 1-3, 5, 6 and 10-20 of the present patent application.
Claims 1-3, 5, 6 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,520,973. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of U.S. Patent No. 12,520,973 encompass or include that which is recited in claims 1-3, 5, 6 and 10-20 of the present patent application.
Claims 1-3, 5, 6 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,416,118. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of U.S. Patent No. 12,416,118 encompass or include that which is recited in claims 1-3, 5, 6 and 10-20 of the present patent application.
Response to Arguments
Applicant’s arguments, see page 6, filed 3/3/2026, with respect to the 35 U.S.C. 103 rejection of claims 1-6 and 10-20 as being unpatentable over McNeil have been fully considered and are persuasive. Thus, the 35 U.S.C. 103 rejection of claims 1-6 and 10-20 as being unpatentable over McNeil has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
Prosecution Insights