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 .
Examiner Notes
Claims 1-4, and 6-19 are currently pending, of which claims 1-3 have been amended. Claim 20 has been cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/10/2025 has been entered.
Claim Rejections - 35 USC § 112
Claims 1-4, and 6-19 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 1 recites “caliper” however, the specification defines caliper as the as the “wet and dry thickness” and goes on to teach values of “dry caliper” and “wet caliper” (see table 1 page 60) and it is unclear if the “caliper” is referring to the dry or wet caliper values.
Given the disclosed range appears to equate to the “dry caliper” values in applicants specification, “caliper” will be viewed as the dry caliper.
Claims 2-3, and 6-19 are rejected as being dependent upon indefinite claim 1.
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.
Claims 1, 3-4, and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sheehan (US 2007/0256803) in view of Horsfield et al. (US 2007/0151685).
Regarding claims 1, 4, and 10-12, Sheehan discloses a multi-ply fibrous structure comprising two or more plies of commingled fibrous structures (0014; instant fibrous elements) wherein at least one of the plies has a plurality of embossments (102) and unembossed cells (104). Sheehan teaches an embossment height ‘a’ from about 300 to about 1500 µm (0041; 0.3-1.5 mm) (0033). As the other ply is unembossed (e.g., Fig. 2), the Core Height Difference value will be equal to the embossment height, e.g., 300 to about 1500 µm, thus overlapping the claimed Core Height Difference Value greater than 0.50 mm in claim 1 and Core Height Value of greater than 0.40 mm in claim 4.
Sheehan does not teach that the height measured according to the Surface Texture Analysis Test method however, an overlapping range is expected as patentability is not based upon method of measurement but whether or not the property would have been obvious in view of the prior art.
Sheehan further teaches that the plies may be bonded together by an adhesive (0033) however does not provided information on a suitable adhesive.
Horsfield, in the analogous field of multilayer fibrous substrates (0002), teaches use of a water-resistant adhesive to bond the corrugated paper to a liner (0080).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the bond of Sheehan to including a water-resistant adhesive as taught by Horsfield, to provide moisture resistance (0080).
Sheehan in view of Horsfield does not expressly teach the article exhibits one or more of the bulk characteristics as claimed. However, Sheehan teaches a substantially identical multi-ply fibrous structure including wet laid, through-air-dried co-formed fibrous structure plies (0039, 0045) of paper making fibers (0037) including an embossed structure ply and a non-embossed structure ply (Fig. 2). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the article of modified Santiago to possess one or more of the claimed bulk characteristics. Where the claimed and prior art apparatus or product are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 480, 433 (CCPA 1977). In other words, when the structure recited in the reference is substantially identical to that of the claims, the claimed properties or functions are presumed to be inherent or at least obvious.
Regarding the overlapping ranges discussed in claims 1 and 4, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 3, Sheehan teaches fibrous structure having a wet burst strength greater than 270 up to about 400 g (0032),
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the article of Sheehan to have wet burst greater than 270g up to 400 g as taught by Sheehan, to have sufficient energy absorption when wet and subjected to deformation (0110), overlapping the claimed greater than 306 g (MPEP 2144.05).
Regarding claim 6, Sheehan teaches the second ply (202) being unembossed (0060).
Regarding claims 7-8, Sheehan teaches the embossed ply being directed formed to the second ply (0033).
Please note, claims 7 and 8 include product by process language with regards to the recitation of “direct formed”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven 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). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 9, Sheehan teaches the product being in roll form (0063).
Regarding claims 13-16, Sheehan teaches the plies being wet-laid and through-air dried (0045) of co-formed fibers and filaments (0039) associated with each other (Fig. 2).
Please note, claims 13-16 include product by process language with regards to the recitation of “wet-laid,” “through-air dried,” and “co-formed”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven 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). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claims 17-19, Santiago teaches the product having different exterior surfaces where one in embossed and the other isn’t (Fig. 2, 0060).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sheehan in view of Horsfield as applied to claim 1 above, and further in view of Hupp et al. (US 2010/0326612).
Regarding claim 2, modified Sheehan discloses the limitations of claim 1 as discussed above. Sheehan does not teach the article exhibiting one or more of the claimed absorbent characteristics.
Hupp, in the analogous field of fibrous structures (0002), teaches fibrous structure having a horizontal full sheet absorbency of from about 12 g/g to about 30 g/g (0038), overlapping the claimed HFS of greater than 17 g/g.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the article of Sheehan to have a HFS from about 12 to 30 g/g as taught by Hupp, to have a sufficient absorbency to take up and retain fluid (0038).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 5 of copending Application No. 18/189351 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Response to Arguments
Applicant’s amendments filed 06/17/2025 have been entered. Accordingly, the 35 U.S.C. 112(b) and (d) rejections have been withdrawn. Due to the amendments however, a new 35 U.S.C. 112(b) rejection has been made.
Applicant’s arguments with respect to the instant claims have been considered but are moot due to the new grounds of rejection under 35 U.S.C. 103 in view of the new combination of prior art.
Regarding the double patenting rejection, Applicant postpones response until one of the instant application or the copending applicant are in condition for allowance. However, the double patenting rejection will be maintained until such time as the rejection is properly overcome (see MPEP 804 IB and IB1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Thomas (US 3,650,882) teaching a paper product bonded through a water resistant adhesive.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781