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 .
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 1 and dependent claims 3-5, 7, 9, 14, 16, 17, 19, 20, 22-25, 30, 32-34 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 is amended to recite “the article to encourage evaporation of the moisture”. It is not clear what structure or materials or function “encourage” encompasses. The claims are indefinite for failing to define the scope of encourage with respect to evaporation.
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.
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.
Claims 1 and 3-7, 9, 14, 16, 17, 19, 20, 22-25, 27, 30, 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Chien (US 5702801) in view of Latimer et al (US 2001/0009711).
Chien is directed to a method for producing a variable density, corrugated, resin-bonded or thermo-bonded fiberfill and structure produced thereby (Title).
Chien teaches a method for corrugating bonded fiberfill which enhances three-dimensional strength and resilience of the final product and the method for corrugating bonded fiberfill which allows excellent penetration of resin and hot air by means of resin bonding or thermo-bonding, thereby resulting in products having increased strength (col. 2, lines 1-5).
Chien teaches the present invention is also directed to a method for forming a corrugated fiberfill structure having a first surface defined by crests of at least some of the pleats and a second surface defined by bases of at least some of the pleats which includes:
(a) lapping a fibrous web in alternating directions to form alternating laps; and
(b) folding the fibrous web in such a manner to form a corrugated fibrous web having variations in density between the first and second surfaces. If a thermo-bonded structure is being prepared, then the fibrous web(s) employed may be formed from first fibers and second fibers, the latter having a lower melting point than the former. After forming the green corrugated fibrous web(s), the structure may be heated to bond the corrugations and the first fibers together. If a resin-bonded structure is desired, after the green corrugated fibrous web is formed, a suitable resin may be applied to the corrugated web and heated (col. 3, lines 1-20).
Chien teaches carding the web (col. 5, lines 39-43) and lapping and meets the claim limitation.
Chien teaches the corrugated fibrous web can be applied to a first outer web (col. 5, lines 63-66). Chien teaches the corrugated web is bonded to the outer web via resin and is heated and dried in an oven. Chien also teaches there does not need to be resin added and can be bonded by low melting and high melting fibers and the molten fibers bond the corrugations and the regular fibers together (col. 6, lines 24-68).
Chien also teaches melting the fibers to bond the fibers and this is equated with fused in space to form a network so the article as structure and body. As Chien teaches the same material and same method of making the material, the structure of Chien would inherently have the same structure and properties as claimed.
Chien teaches a carded and lapped fibrous layer and teaches an additional outer layer.
Chien teaches the fiberfill webs are used for clothing (col. 9, lines 4-8).
Chien teaches the structure has a high degree of permeability, anticompression, loftiness (col. 9, lines 4-8).
Chien differs and does not teach the structure transfers perspiration away from the user. Chien teaches the same materials, structure and fibers as claimed and therefore it is reasonable to presume that the nonwoven structure of Chien would inherently transfer moisture away from the user. In the alternative, Latimer is relied upon for showing that the vertically lapped nonwoven of Chien would inherently remove moisture.
Latimer is directed to a resilient fluid management material for personal care products (Title). Latimer teaches a corrugated nonwoven web where at least 40 percent of the web surface area is made from fusible fibers. The corrugated web is bonded such that no gaps are present between the folds of the web. The web provides compression resistance and resiliency than webs having conventional X-Y plane fiber alignment.
The corrugated web is equated with fibrous layers that are vertically oriented fibers. See Fig. 10.
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Latimer teaches a personal care product with a fluid transfer layer, a fluid retention layer and a garment side layer acting together as an absorbent system [0056]. The body side layer is referred to a bodyside liner or topsheet and the liner is next to the skin [0056]-[0057]. There is a garment side liner layer, referred to as the backsheet [0058]. The absorbent system layers located between the body side layer and the garment side layer is a corrugated nonwoven wherein the fibers are oriented in the Z direction. Such Z-direction fibers facilitate fluid movement away from the skin [0060].
Latimer teaches the material has directional fluid wicking properties [0075].
Latimer teaches the absorbent article removes moisture from the body.
Latimer teaches a corrugated nonwoven, equated with the vertically oriented fibrous layers, and the corrugated nonwoven is sandwiched between the body side topsheet and a garment side back sheet. The topsheet removes moisture from the body [0059].
Latimer teaches a topsheet layer that removes moisture from the body side surface into the corrugated nonwoven. Moving moisture is equated with wicking.
Latimer teaches the article improves the flow of moisture from the skin to the corrugated nonwoven layers. Latimer teaches the backsheet, outer layer, is vapor or gas permeable to promote breathable, permeability [0059].
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine bicomponent fibers for thermal bonding a vertically lapped nonwoven motivated to provide for wicking properties to wick moisture away from the skin and have permeability.
Chien teaches the outer layer would inherently be in contact with skin of a body but differs and is silent with respect to removal of moisture. The additional outer layer is adapted to directly contact the surface of the skin or body. Adapted to suggests of makes options but does not require the steps or function to be performed.
Chien teaches all fibrous layers and therefore the article is “adapted to remove moisture from the surface having or producing moisture into the fibrous layer”. Again Adapted to suggests of makes options but does not require the steps or function to be performed.
Chien does not teach the function of evaporation of moisture.
Latimer teaches the structure is capable of moving moisture away from the body and therefore teaches the structure “encourages” the evaporation of moisture.
As to claims 1 and 3, it would have been obvious to one of ordinary skill in the art before the effective filing date to employ the structure to wick moisture motivated to remove moisture away from the body. The combination of Chien and Latimer would have been predictable in producing a wearable, reusable fibrous layered article that wicks moisture away from a surface producing moisture.
As to claim 4, Chien is made from a first outer web and a second outer web and can be applied corrugated web 40 (col. 1 and 2, lines 62-15).
As to claim 5, Chien is silent to the property of wicking moisture.
Latimer teaches the material has directional fluid wicking properties [0075].
Latimer teaches the absorbent article removes moisture from the body.
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ the structure to wick moisture motivated to remove moisture away from the body.
As to claim 7, Chien is silent with regard to the property of wicking moisture.
Latimer teaches the material has directional fluid wicking properties [0075].
Latimer teaches the absorbent article removes moisture from the body.
As to claim 9, Chien differs and does not teach the cross-sectional shape of the fibers.
Latimer teaches the fibers may also have shapes [0029], [0033]. The fibers in such a web may be made from the same or varying diameter fibers and may be of different shapes such as pentalobal, trilobal, elliptical, round, etc. The web may also include particles, flakes or spheres to impart additional properties to the corrugated absorbent system [0067].
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ shaped fibers motivated to provide additional properties to the moisture wicking article.
As to claim 14, Chien teaches the article can be used in cushioned seats and cushions and has anti-compression properties.
As to claim 16, Chien teaches a vertical lapping process.
As to claim 17, Chien teaches the web is thermally bonded but is not specific with regard to thermoformable to a desired shape. The claim is directed to a product by process limitation. It should be noted that even 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 or an obvious variant from a product of the prior art, the claim is unpatentable even though a different process made the prior product. In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985). The burden has been shifted to the Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289,292 (Fed. Cir. 1983).
As to claim 19, Chien is directed to an article of apparel as well as a quilt, pillow, sleeping bag and these article could be inherently washable.
As to claim 22, Chien teaches low melting point fibers such as polypropylene, polyamides, copolyesters and polyesters which are inherently thermoplastic fibers.
Latimer teaches thermoplastic fibers [0032].
As to claim 23, Chien teaches low melting point fibers such as polypropylene, polyamides, copolyesters and polyesters.
As to claim 25, Chien teaches that the fibers are a combination of low melting fibers and high melting fibers. Chien teaches the low melting point fibers can be sheath-core fibers which are equated with bicomponent fibers (col. 6, lines 24-68). Chien teaches a thermal binder fiber that is core of polyethylene terephthalate and sheath of copolyethylene terephthalate/isophthalate (col. 15, lines 30-36).
As to claim 27, Chien teaches the article is used for pillows, cushions, ski jackets, sleeping bags and these article are all flexible. It is reasonable to presume the property of flexibility is inherent to Chien.
As to claim 30, Chien teaches the layers are bonded together by hot air resin bonding or thermos-bonding which is equated with lamination.
As to claim 32, Chien teaches the fibers are carded to form the web. Chien is not specific with regard to air laying however the claim is directed to a product by process limitation.
Latimer teaches the webs can be made by air-laying [0010].
It would have been obvious to one of ordinary skill in the art before the effective filing date to produce the web by airlaying motivated to produce the web by known methods.
As to claim 33, Chien teaches the use for the cushions, seats, mattresses, sleeping bags, ski jackets. The claim is directed to a statement of use and a new use for an old product does not make the product patentable.
As to claim 34, Chien differs and does not teach a hydrophilic finish or coating.
Latimer teaches the body side liner can be surface treated with surfactant to impart hydrophilicity [0057].
It would have been obvious to one of ordinary skill in the art before the effective filing date to impart hydrophilicity on the nonwoven motivated to improve moisture wicking across the layers.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Chien (US 5702801) in view of Latimer et al (US 2001/0009711) and in further view of Amos et al (US 20120070480).
As to claim 20, Chien differs and does not teach antimicrobial characteristics.
Amos is directed to an antimicrobial absorbent article. Amos teaches the absorbent articles include garments such as disposable infant diapers, adult incontinence articles, feminine hygiene articles such as sanitary napkins, wound dressings, bandages, panty liners and tampons, personal care wipes and household wipes to provide odor control, and control of microbial growth (ABST).
Amos teaches the antimicrobial additives include silver [0059].
Amos teaches the absorbent articles include a corrugated nonwoven and a liquid permeable topsheet [0091].
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ antimicrobials such as silver motivated to reduce odor and control microbial growth.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Chien (US 5702801) in view of Latimer et al (US 2001/0009711) and in further view of Van Emden et al (WO 2004089614).
As to claim 24, Chien and Latimer differs and does not teach embedded particles of active carbon, sand or fruit or nut shells.
Latimer teaches additional particles can be added to impart additional properties to the corrugated absorbent system. Latimer teaches use of superabsorbents.
Van Emden is directed to wicking, breathable fabrics that the wearer remains. The fabric advantageously provide breathability and sweat and moisture are wicked away by the breathable fabric. Van Emden uses activated carbon as a deodorizing agent. The deodorizing agent can also be antimicrobial.
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ activated carbon motivated to provide for a deodorizing properties.
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, 3-4, 7, 9, 14, 16-17, 19-20, 27, 30 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 5-10, 18, 19, 28-30 and 32 of copending Application No. 18695128 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and the copending application are directed to wicking fibrous layer and vertically oriented fibrous layer for removal of moisture from a body and to a wearable article. Both the instant invention and the copending application require a vertically lapped fibrous layer and layers that are air permeable, wicking cushioning, headwear, and has antimicrobial properties and additives. Both the instant invention and the copending application are thermoformable. Both the instant invention and the copending application teach the articles are moisture wicking and as the copending application is directed to a footwear insert, the footwear insert would be in contact with a moisture producing body or garment with moisture (e.g. the footwear).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-4, 7, 9, 14, 16-17, 19-20, 22, 23, 25, 27, 30 and 32-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4, 13, 14, 17, 22, 23, 24, 25, 26, 37 and 43 of copending Application No. 18017457 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and the copending application are directed to wicking fibrous layer and vertically oriented fibrous layer for removal of moisture from a body and to a wearable article. Both the instant invention and the copending application require permeable, wicking layers with antimicrobial properties and additives, formed by vertical lapping, that provide cushioning and are thermoformed. Both the instant invention and the copending application teach the articles are moisture wicking and as the copending application is directed to a headband, the headband would be in contact with a moisture producing body, the head.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants amendments and arguments filed 7/22/2026 have been fully considered but they are not persuasive. Applicant notes that claims 22, 33 and 34 are not listed in the rejection statement. However the claims were rejected in the body of the rejection and therefore a typographical error and the claims are added to the rejection statement.
Applicants amendments and arguments filed 7/22/2026 have been fully considered but they are not persuasive. Applicant argues that the office action has not shown where Chien teaches that it has a layer adapted to directly contact a surface having or producing moisture nor to encourage evaporation of the moisture. Applicant states that Chien is to provide fiberfill and thus, by definition Chien provides a material used to fill something else and there is no evidence one skilled in the art would presume the material of Chien itself would be suitable for directly contacting a surface having or producing moisture. Applicant states that additionally there is no evidence provided that Chien is concerned at all with evaporation of moisture or moisture management.
In response, the office action relies upon Latimer for teaching moisture management. And the office action continues to maintain that Chien would inherently transfer moisture as Chien is directed to a layered structure made of fibrous material in the same structure and materials as claimed.
Applicant states that in the alternative, Latimer, which is directed to “a structure in an article for personal care like diapers etc. Applicant points out that the present claims are directed to a “wearable and reusable article” and in contrast Latimer is directed to a single use, disposable items. Applicant concludes that one skilled in the art would not consult a reference at all that pertains to materials clearly contrary to the objective – namely, providing a wearable and reusable article.
While Latimer is not reusable, Latimer teaches the same materials and structure as claimed and clearly shows that wicking is inherent to the structure even though wicking of the more specific sanitary fluids and the claimed general moisture.
Applicant states that a prior art reference must be read as a whole; the entire disclosure of the reference must be considered, including its teachings away from the claimed invention. Moreover, references that teach away cannot serve to create a prima facie case of obviousness and “teaching away does not require that the prior art foresaw the specific invention that was later made and warned against taking that path.” The court stated “A reference may be said to teach away when person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference or would be led in a direction divergent from the path that was taken by the applicant. Applicant states that a reference that emphasizes disposability clearly teaches away from a reusable article. Applicant states that evaporation of fluids contained within “articles….such as diapers….and the like would not be desirable, sanitary or safe.
In the instant case, both Chien and Latimer teach the same fibrous structures as claimed. Wherein Chien does not teach the function of moisture transfer, Latimer does teach moisture transfer and therefore shows that this function is inherently present in both of Chien and Latimer. Wherein Latimer does not teach a reusable article, Chien provides this teaching as a garment is reusable. Both functions are known functions of fabric laminates and provided for by the references. Claiming a new use for an old structure or article is not patentable. A reference is available for all that it discloses and is not limited to the narrow use provided in the disclosure. Therefore the rejection is maintained as the structural, material and functional features are taught in the prior art.
Applicant argues claim 19 and the office action alleges “Chien is directed to an articles of apparel as well as a quilt, pillow…could be inherently washable” and there is no evidence that the named articles are inherently washable. The rejection over claim 1 relies on a combination of Chien and Latimer and Latimer clearly distinguishes from washable materials, wherein Latimer is for disposable items.
The office action is maintained as one of ordinary skill in the art would know that fabrics in general are washable as clothing items are routinely washed.
Applicant states that the office action rejected claim 20 using a combination of Chien, Latimer and Amos however both Latimer and Amos pertain to single-use, disposable article and not to reusable articles.
The references are available for all that they teach and Chien teaches a fibrous insulation that is used for various items include garment (ski jackets) and household items (quilts, sleeping bags), items that are in fact known to be washable and reusable. Therefore the prior art teaches the claimed function.
As to claim 24, the Office Action admits that Chien and Latimer differs and does not teach embedded articles of active carbon, sand, fruit or nut shells. Applicant states that the office action makes a conclusory statement that it “would have been obvious to one of ordinary skill in the art before the effective filing date to employ activated carbon motivated to provide for deodorizing properties and relies on Van Emden. Applicant states that one skilled in the art concerned with providing a reusable article would not have consulted Latimer in the first place and therefore would not have consulted Van Emden. Van Emden refers to construction having perspiration impermeable or liquid impermeable layers or materials.
Applicant is arguing the references can’t be combined because Chien does not teaches moisture transport, washability and Latimer does not teach reusable and washability, Amos is not reusable, and Van Emden is not reusable nor moisture permeable.
The references can be combined under 35 USC 103 as the references once combined according to known methods would yield predictable results. As per MPEP, 2143, I, A:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness
While Chien teaches a wearable article, therefore the article would inherently be a reusable article such as a clothing but does not teach the fibrous layers remove moisture from a surface, however clothing does remove and absorb moisture from bodies. Latimer teaches fibrous layers of the same structure and materials are capable of doing so and therefore the combination would have been predictable in producing a layered wearable and reusable article that is capable of removing moisture from the surface producing moisture. While Chien and Latimer do not teach or suggest the article has antimicrobial characteristics, Amos teaches antimicrobial characteristics are known in a layered fibrous structure and therefore it would have been obvious and predictable to add an antimicrobial to the fibrous layers as it is known in the art to do so. Further, it is also predictable to combine the feature of Van Emden of using activated carbon motivated to provide for a wicking, breathable fabric wherein sweat and moisture are wicked away motivated to deodorize the sweat and moisture in the fabric. The results of the combination would have been predictable.
Applicant argue the Obviousness Double Patenting rejections over Applicant 18695128 and 18017457. As the copending applications are directed to the same fibrous structure with moisture removing properties and air permeable properties, the rejections are maintained at this time until the claims diverge in subject matter.
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 JENNIFER A STEELE whose telephone number is (571)272-7115. The examiner can normally be reached 9-5:30.
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/JENNIFER A STEELE/Primary Examiner, Art Unit 1789
