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 .
International Search Report
No “X” and/or “Y” references were cited in the International Search Report and Written Opinion for International Application PCT/US2015/062483, to which the instant application is related although priority is not claimed.
Specification
The disclosure is objected to because of the term “bulk” is used several times in the instant Specification (in at least pars [0086], [0170], [0179], [0188], [0197] and Table 1 on p 52) with the units of microns or microns/1 ply. The same paragraphs also recite a caliper in units of microns, with the two terms used apparently interchangeably. The term “bulk” is commonly known to those of ordinary skill in the art as the reciprocal of density, or volume per unit weight, often expressed as cm3/g. It is believed that the Specification, in reciting bulk in units of microns, is intending to recite a caliper.
Appropriate correction is required.
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.
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 and 10 are rejected under 35 U.S.C. 103 as obvious over Chen et al (US 7182837) and as evidenced by Rekoske (US 2014/0096924).
Chen et al discloses a three-dimensional textured (having a three dimensional surface structure) tissue product (Abs; col 4, lines 27-31; col 6, lines 38-40) comprising raised web portions formed by a molding process and having a height above the planar surface of the web of from about 0.2 mm to about 1 mm (about 200-1000 microns), or from about 0.25 mm to about 0.7 mm (about 250-700 microns) (col 4, lines 44-49; col 15, lines 20-31 and 54-60). The three-dimensional textured tissue product thus has a peak to valley depth of the web comprising raised web portions of at least 100 microns. In an embodiment, the paper product is multi-ply, and comprises two or more tissue web plies (col 11, lines 56-58; col 31, lines 45-50; col 32, lines 37-39). The product can be in roll form (col 32, lines 46-47) and can be bath tissues, facial tissues, paper towels, wipers, absorbent articles, etc. (col 33, lines 12-17), which read on sanitary tissue products.
Chen et al discloses that the web has a basis weight between about 10 and about 200 gsm, specifically between about 15 and 120 gsm (col 4, lines 34-38); therefore, obtaining a basis weight for a 2-ply product from about 20 to about 400 gsm, or from about 30 to 240 gsm, which ranges significantly overlay the claimed range, is embodied. Absent convincing evidence of unexpected results commensurate in scope with the claims, obtaining a basis weight for 2-ply product within the claimed range would have been obvious from the disclosure to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of obtaining a suitable tissue product.
Chen et al discloses that the web has a bulk between about 3 and about 20 cc/g (col 4, lines 39-40). Combined with the disclosed basis weight, a caliper per 2-ply between about 300 and about 80,000 microns can be calculated as the product of basis weight x bulk x 2(plies) with appropriate unit conversion, which significantly overlays the claimed ranges. Chen et al discloses that the plies forming the opposing outer surfaces of the product may comprise any of the following: a creped and uncreped web; a calendered and uncalendered web (col 32, lines 20-22), therefore uncalendered tissue products are embodied. Absent convincing evidence of unexpected results commensurate in scope with the claims, obtaining a claimed basis weight and an uncalendered tissue product having a caliper per 2-ply in the claimed ranges would have been obvious from the disclosure to one of ordinary skill in the art before the effective filing date of the claimed invention.
Chen et al also teaches that any known molding process suitable for a paper web may be used (col 10, lines 10-12), thus indicating to one of ordinary skill in the art that structured webs produced by any molding process would be expected to produce the same or similar product.
The product of Chen et al comprises the same structure as the claimed product and can exhibit the claimed crumple resistance and bulk softness or at least, absent convincing evidence of unexpected results commensurate in scope with the claims, obtaining the claimed crumple resistance and bulk softness values would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because, 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 430, 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.
Alternatively or in addition, numerous consumer tissue products have a TS7 softness of less than 10, such as from 8 to 10 (see Rekoske, p 3, Table 1 for evidence). It would have been obvious to one skilled in the art to have provided the tissue of Chen et al with a claimed TS7 softness value as appropriate for consumer tissue products as evidenced by Rekoske.
Claims 2-3 are rejected under 35 U.S.C. 103 as obvious over Chen et al (US 7182837) as evidenced by Rekoske and as further evidenced by Wilhelm (US 6896767).
The product of Chen et al with the evidence of Rekoske, as discussed above, comprises the same structure as the claimed product and can exhibit claimed machine direction (MD) or cross machine direction (CD) tensile strength per 2-ply properties or, at least, obtaining the claimed MD or CD tensile properties would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for reasons given previously, there being no convincing evidence of unexpected results commensurate in scope with the claims.
Alternatively or in addition, physical properties of many 2-ply consumer tissue products having basis weights in the claimed range are disclosed In Table 3 of Wilhelm (columns 13 and 14). For example, sample No. 8, P&G Charmin, has MD tensile of 961 gmf/76.2 mm, equivalently 123 N/m (= 961/76.2 x 9.8 with appropriate unit conversions) which falls within the claimed range of 110-190 N/m, and has CD tensile of 473 gmf/76.2 mm, equivalently 61 N/m (= 473/76.2 x 9.8) which falls within the claimed range of 35-90 N/m (the factor of 9.8 converts gmf to N). Sample No. 25, Kimberly-Clark Kleenex, has MD tensile of 1180 gmf/76.2 mm, equivalently 152 N/m which falls within the claimed range of 110-190 N/m, and has CD tensile of 543 gmf/76.2 mm, equivalently 70 N/m which falls within the claimed range of 35-90 N/m. Other samples in Table 3 have MD and CD tensile which fall within claimed ranges. It would have been obvious to one skilled in the art to have provided the two-ply tissue of Chen et al to have MD tensile and CD tensile within the claimed ranges appropriate for consumer tissue products as evidenced by Wilhelm.
Claims 4-5 are rejected under 35 U.S.C. 103 as obvious over Chen et al (US 7182837) as evidenced by Rekoske and as further evidenced by Underhill et al (US 20070131366).
The product of Chen et al with the evidence of Rekoske, as discussed above, comprises the same structure as the claimed product and can exhibit claimed MD stretch or CD stretch properties per 2-ply or, at least, obtaining claimed MD stretch or CD stretch properties would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for reasons given previously, there being no convincing evidence of unexpected results commensurate in scope with the claims.
Alternatively or in addition, physical properties of many consumer tissue products are disclosed in Underhill et al. In the table of Underhill that begins on page 9, paragraph [0068], physical properties of commercial tissues are disclosed including MD Dry Stretch (%) and CD Dry Stretch (%). Nearly all of the numerous two-ply tissues therein have an MD stretch which falls within the claimed range of 4 to 30% and a CD stretch which falls within the claimed range of 4 to 20%. For example, Kimberly-Clark Classic 2-ply has an MD stretch of 16.95% and a CD stretch of 12.87%. It would have been obvious to one skilled in the art to have provided the two-ply tissue of Chen et al to have a MD stretch and CD stretch within the claimed ranges as values appropriate for consumer tissue products as evidenced by Underhill et al.
Claim 6 is rejected under 35 U.S.C. 103 as obvious over Chen et al (US 7182837) as evidenced by Rekoske and as further evidenced by Miller et al (US 2013/0029105) and Manifold (US 2011/0189435).
The product of Chen et al with the evidence of Rekoske, as discussed above, comprises the same structure as the claimed product and can exhibit claimed 2-ply CD wet tensile strength properties or, at least, obtaining the claimed 2-ply CD wet tensile strength properties would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for reasons given previously, there being no convincing evidence of unexpected results commensurate in scope with the claims.
Alternatively or in addition, physical properties of consumer tissue products are tabulated in Miller on page 22, Table16, including CD wet tensile. The CD wet tensile of most of the samples falls in the range of 23 to 71 gm/3 inches, which corresponds to a range of 3.0 to 9.1 N/m using the calculation discussed above, and falls within the claimed range of 0 to 25 N/m. Most of the listed products are two-ply (see Manifold, p 5, Table 1 for evidence). It would have been obvious to one skilled in the art to have provided the two-ply tissue of Chen et al to have a 2-ply CD wet tensile within the claimed ranges as appropriate for consumer tissue products as evidenced by Miller et al.
Claim 7 is rejected under 35 U.S.C. 103 as obvious over Chen et al (US 7182837) as evidenced by Rekoske and as further evidenced by Manifold (US 2011/0189435).
The product of Chen et al with the evidence of Rekoske, as discussed above, comprises the same structure as the claimed product and can exhibit claimed ball burst per 2-ply properties or, at least, obtaining a claimed ball burst per 2-ply would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for reasons given previously, there being no convincing evidence of unexpected results commensurate in scope with the claims.
Alternatively or in addition, In Table 1 of Manifold (page 5, paragraph [0086]), physical properties of consumer tissue products are disclosed, including dry burst (equivalently ball burst). The two-ply Quilted Northern has a dry burst (also ball burst) of 218 gf which falls within the claimed range of 150-300 gf per two-ply. The two-ply Charmin Ultra Soft has a dry burst of 245 gf which falls within the narrower claimed range of 150-300 gf per two-ply. It would have been obvious to one skilled in the art to have provided the tissue of Chen et al to have a ball burst value per two-ply within the claimed ranges as appropriate for consumer tissue products as evidenced by Manifold.
Claim 8 is rejected under 35 U.S.C. 103 as obvious over Chen et al (US 7182837) as evidenced by Rekoske and as further evidenced by Batra (US 6162327).
The product of Chen et al with the evidence of Rekoske, as discussed above, comprises the same structure as the claimed product and can exhibit claimed lint value per 2-ply properties or, at least, obtaining a claimed lint value per 2-ply would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for reasons given previously, there being no convincing evidence of unexpected results commensurate in scope with the claims.
Alternatively or in addition, In Table 1 of Batra (columns 17 to 20), physical properties of consumer tissue products are tabulated, including lint value. Many of the tissues listed have a lint value within the claimed range of 2.5 to 7.5. It would have been obvious to one skilled in the art to have provided the tissue of Chen et al to have a lint value per 2-ply within the claimed ranges as appropriate for consumer tissue products as disclosed by Batra.
Claim 9 is rejected under 35 U.S.C. 103 as obvious over Chen et al (US 7182837) as evidenced by Rekoske and as further evidenced by Klerelid (US 2011/0180223).
The product of Chen et al with the evidence of Rekoske, as discussed above, comprises the same structure as the claimed product and can exhibit claimed softness properties or, at least, obtaining a claimed softness would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for reasons given previously, there being no convincing evidence of unexpected results commensurate in scope with the claims.
Alternatively or in addition, Klerelid discloses in paragraphs [0021] and [0022] that a multi-ply towel may have a TSA softness of up to 90 on a 0-100 scale, which substantially overlaps the claimed ranges of TSA softness. It would have been obvious to one skilled in the art to have provided the sanitary tissue product of Chen et al a softness values within the claimed range as appropriate for consumer tissue products as evidenced by Klerelid.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 20, 24-32 and 38 of U.S. Patent No. 10,273,635. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent recite the limitations of the instant claims, but in different combinations plus additional limitations. It would have been obvious to one of ordinary skill in the art to rearrange the claims of the patent to obtain the limitations of the instant claims. A sanitary tissue product in roll form would have been obvious as a typical consumer product.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 20-21 and 23-32 of U.S. Patent No. 10,900,176. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent recite the limitations of the instant claims, but in different combinations plus additional limitations. It would have been obvious to one of ordinary skill in the art to rearrange the claims of the patent to obtain the limitations of the instant claims. A sanitary tissue product in roll form would have been obvious as a typical consumer product.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-15 of U.S. Patent No. 11,959,226. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent recite the limitations of the instant claims, but in different combinations plus additional limitations. It would have been obvious to one of ordinary skill in the art to rearrange the claims of the patent to obtain the limitations of the instant claims. A sanitary tissue product in roll form would have been obvious as a typical consumer product.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/609839 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application recite the limitations of the instant claims, but in different combinations. It would have been obvious to one of ordinary skill in the art to rearrange the claims of the patent to obtain the limitations of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS R CORDRAY whose telephone number is (571)272-8244. The examiner can normally be reached Monday-Friday 8 AM-5 PM (EST).
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, 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.
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.
/DENNIS R CORDRAY/ Primary Examiner, Art Unit 1748