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 .
Status of Claims
Claims 1-20 are pending and examined on the merits. Claims 1 & 20 are independent.
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 2 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 2 of prior U.S. Patent No. 12,004,929. This is a statutory double patenting rejection.
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, 8-9, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 8-9, & 20 of U.S. Patent No. 12,004,929. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 2 or 20 recites all limitations in current claim 1, the difference being that patented claim 2 recites the additional limitation of a mean void thickness being 50-300 µm and patented claim 20 recites the additional detail of the ejection plunger being molded from the same composite. Patented claims 8-9 read on the current claims 8-9, respectively. Patented claims 2 & 20 read on the current claim 20, where both patented claims have the additional recitation regarding the mean void thickness being 50-300 µm.
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, 6, 10, 15-16 & 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jarmon et al. (US 2003/0105421) in view of Tojo et al. (US 7,048,975).
Re Claim 1, Jarmon discloses a tampon applicator assembly comprising a barrel portion (the cylindrical portion of barrel 12 where pledget 14 is stored, Fig. 5), a grip portion (fingergrip area 20) and an ejection plunger (plunger 16) configured to slide coaxially within one or both of the barrel portion and the grip portion,
wherein at least one of the barrel portion and the grip portion are molded from a molding composite comprising cellulose fibers (see e.g., Abstract, “molded from a pulp-based material”, and [0031] “cellulosic-based pulps”).
Jarmon does not disclose wherein at least one of the molded barrel portion and the molded grip portion has a dry void space fraction from 6 percent to 40 percent. Jarmon simply discloses that both portions are formed of molded pulp. Tojo discloses a container comprising molded pulp, wherein the molded pulp has a void ratio of 30% (claim 4 of Tojo). It would have been obvious to one skilled in the art at the time of filing to modify Jarmon by looking into other molded pulp containers, such as taught in Tojo, for guidance on creating articles that have sufficient rigidity/strength and can prevent liquids from seeping into the molded pulp material to degrade the material.
Re Claim 6, Jarmon and Tojo combine to disclose claim 1, and Jarmon further discloses wherein the molding composite comprises a binder ([0030] “binding agents”), and wherein the binder comprising a polysaccharide derived from plant matter (“starch”).
Re Claim 10, Jarmon and Tojo combine to disclose claim 1, but Jarmon does not disclose wherein the cellulose fibers constitute 55 percent to 85 percent of the weight of the molding composite, excluding water content. Tojo discloses molded pulp material used to make a container, the material comprising cellulosic fibers that can be present in 40% to 90% (col. 13 lines 45-53). It would have been obvious to one skilled in the art at the time of filing to modify Jarmon by looking into other molded pulp materials for guidance on creating articles that have sufficient rigidity/strength (e.g., for inserting a tampon into a body orifice).
Re Claim 15, Jarmon and Tojo combine to disclose claim 1, and Jarmon also discloses wherein the grip portion is molded from the molding composite ([0022]).
Re Claim 16, Jarmon and Tojo combine to disclose claim 15, and Jarmon also discloses wherein the barrel portion comprises a length of tube formed of paper (since paper is a sheet made of pulp, the barrel, which is disclosed to be made from pulp, satisfies the definition for paper), and is joined to the grip portion (Fig. 5).
Re Claims 18-19, Jarmon and Tojo combine to disclose claim 1 but are silent to wherein at least one of the barrel portion, grip portion, and ejection plunger are recyclable and exhibit a recyclable percentage of at least 70 percent in application of the recyclability test cited herein or exhibit at least 75 percent biodegradation in a marine environment within about 400 days when tested using the marine biodegradability test, and/or, exhibit(s) at least 75 percent biodegradation in a landfill environment within about 400 days when tested using the landfill biodegradability test. However, since Jarmon's tampon applicator is made of plant-based cellulosic pulp, there is reason to expect that the pulp would be able to meet the claimed recyclability and degradability in marine and/or landfill environments. Additionally, the materials used in Jarmon's tampon applicator is mostly the same materials (hardwood and softwood pulp, [0031]) as those used in the currently claimed tampon applicator, one skilled in the art would therefore expect the Jarmon/Tojo tampon applicator to exhibit the same claimed material properties, i.e., recyclability and degradability.
Re Claim 20, Jarmon discloses a tampon applicator assembly comprising a barrel portion (the cylindrical portion of barrel 12 where pledget 14 is stored, Fig. 5), a grip portion (fingergrip area 20) and an ejection plunger (plunger 16) configured to slide coaxially within one or both of the barrel portion and the grip portion,
wherein at least one of the barrel portion, the grip portion, and the ejection plunger is molded from a molding composite comprising cellulose fibers (see e.g., Abstract, “molded from a pulp-based material”, and [0031] “cellulosic-based pulps”).
Jarmon does not disclose wherein at least one of the molded barrel portion and the molded grip portion has a dry void space fraction from 6 percent to 40 percent. Jarmon simply discloses that both portions are formed of molded pulp. Tojo discloses a container comprising molded pulp, wherein the molded pulp has a void ratio of 30% (claim 4 of Tojo). It would have been obvious to one skilled in the art at the time of filing to modify Jarmon by looking into other molded pulp containers, such as taught in Tojo, for guidance on creating articles that have sufficient rigidity/strength and can prevent liquids from seeping into the molded pulp material to degrade the material.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Jarmon and Tojo as applied to claim 1 above, and further in view of Voss et al. (US 3,764,438), as evidenced by Schouweiler et al. (US 2014/0263037).
Re Claims 3-5, Jarmon and Tojo combine to disclose the invention of claim 1 but do not expressly disclose that the hardwood pulp fibers to softwood pulp fibers in a dry weight ratio of 1:2 to 3:1.
Voss discloses a paper tampon applicator, wherein one of the paper layers is made of 75% hardwood fibers, thus implying the remaining 25% being softwood fibers (claim 15 of Voss). It would have been obvious to one skilled in the art at the time of filing to modify Jarmon by learning from Voss to get close to arriving at a material that can disintegrate easily after being used as a tampon applicator.
Jarmon, Tojo and Voss are silent to the softwood fibers are selected from the group consisting of spruce fibers, pine fibers, fir fibers, larch fibers, hemlock fibers and white pine fibers, and combinations thereof, or that the hardwood fibers are selected from the group consisting of eucalyptus fibers, aspen fibers, poplar fibers, maple fibers, birch fibers, beech fibers and ash fibers, and combinations thereof. Schouweiler establishes that "hardwood" and "softwood" fibers are well known terms in the field of cellulosic fibrous materials and that they represent well known deciduous and coniferous trees, where "hardwood" can include eucalyptus, birch, poplar, aspen, and maple ([0024]) and "softwood" includes pine ([0025]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jarmon and Tojo as applied to claim 1 above, and further in view of Colin et al. (US 2012/0035526).
Re Claim 7, Jarmon and Tojo combine to disclose claim 6 and that the polysaccharide comprises a starch ([0030]), but they do not disclose that the starch constitute from about 2 percent to about 20 percent of the weight of the molding composite, excluding water content.
Colin discloses a fibrous material that can disintegrate in water, wherein the fibrous material comprises starch at 10%, 15%, or 20% of the basis weight of the fibrous material [0023], [0033]). It would have been obvious to one skilled in the art at the time of filing to modify Jarmon with Colin for guidance in making a fibrous material that exhibits desirable integrity yet can break down easily after use.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Jarmon and Tojo as applied to claim 1 above, and further in view of Faass et al. (US 5,496,874).
Re Claims 8-9, Jarmon and Tojo combine to disclose the invention of claim 1 but do not disclose that the molding composite comprises a dispersing agent, the dispersing agent comprising particles that are hydrophilic and form a gel upon contact with water, wherein the dispersing agent comprises CMC salt, the dispersing agent constituting from 15 weight percent to 23 weight percent of the molding composite.
Faass discloses a moldable hydrodisintegratable material used for making tampon applicators, wherein the hydrodisintegratable material comprises CMC salt (col. 4 lines 58-62, where "sodium carboxymethyl cellulose" is a common CMC salt), which naturally comprises hydrophilic particles that form a gel upon contact with water. Faass further discloses that the CMC salt is present in 15% to 23% by weight of the molding material (col. 7 lines 26-30, "the xerogellant may be within about 15 to about 75 weight percent"). It would have been obvious to one skilled in the art at the time of filing to modify Jarmon with Faass for creating a tampon applicator that can quickly disintegrate after disposal so as to reduce landfill.
Claims 11, 12 & 17 are rejected under 35 U.S.C. 103 as being unpatentable over Jarmon and Tojo as applied to claim 1 above, and further in view of Zhao et al. (US 2003/0040695).
Re Claims 11-12, Jarmon and Tojo combine to discloses the invention of claim 1 but does not teach that the molding composite comprises a lubricating agent comprising a compound selected from the group consisting of calcium stearate, magnesium stearate, zinc stearate, calcium laurate, magnesium laurate, zinc laurate, aluminum laurate, strontium laurate, aluminum stearate, strontium stearate and combinations thereof, wherein the lubricating agent is included in an amount from 0.3 to 2.0 percent, by weight of the molding composite, excluding water content.
Zhao discloses a biodegradable tampon applicator comprising lubricating agent selected from stearates such as calcium stearate and magnesium stearate ([0135]), wherein the lubricating agent may be present at 0.05% to 25% of the composition that forms the tampon applicator ([0116]). A prima facie case of obviousness is present when the claimed ranges overlap or lie inside ranges disclosed by the prior art, see MPEP 2144.05. It would have been obvious to one skilled in the art at the time of filing to modify Jarmon further with Zhao since adding a lubricant to a biodegradable composition for making a tampon applicator can improve the user experience (e.g., easier insertion of the tampon applicator).
Re Claim 17, Jarmon and Tojo combine to disclose the invention of claim 1 but does not that wherein at least one of the barrel portion, grip portion and ejection plunger contains less than 10 percent by weight petroleum, petroleum derivatives and/or plastics with petroleum or petroleum-derived components or precursor materials. Zhao discloses a biodegradable tampon applicator comprising petroleum ([0129]) at less than 10% ([0126]), as a coating material on the tampon applicator. It would have been obvious to one skilled in the art at the time of filing to modify Jarmon further with Zhao's teaching since doing so would improve the ease of insertion of the tampon applicator and thus improve user experience.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Jarmon and Tojo as applied to claim 1 above, and further in view of Mikhail (US 2013/0281912).
Re Claim 13, Jarmon and Tojo combine to disclose the invention of claim 1 but does not teach that wherein at least of the barrel portion and the grip portion has a water content of 5 to 13 weight percent. Mikhail discloses a tampon applicator made of a biodegradable composition, wherein the composition comprises 10% water content ([0021]). It would have been obvious at the time of filing to glean from Mikhail's teaching to recognize that a material suitable for forming a tampon applicator would need a certain water content to be more comfortable for insertion without falling apart prior/during use.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Jarmon and Tojo as applied to claim 1 above, and further in view of Edgett et al. (US 6,508,780).
Re Claim 14, Jarmon and Tojo combine to disclose the invention of claim 1 but does not disclose that wherein at least one of the molded portions are molded in at least two separately molded subparts that have been joined together following molding, wherein the subparts that have been joined together have been joined without application of any substantial quantity of added glue or adhesive material. Edgett discloses a tampon applicator's barrel portion molded into two subparts (34 & 36, see Fig. 4) that are joined together following molding (col. 4 lines 35-41) without application of any substantial quantity of added glue or adhesive material (col. 4 lines 42-47, "melt welding, snapping the pieces together"). It would have been obvious to one skilled in the art at the time of filing to modify Jarmon further with Edgett's two-subpart construction such that it may be easier to insert a tampon pledget into the tampon applicator.
Examiner Comments
Claim 2 contains allowable subject matter, as indicated in the parent application 17/700,563 (Non-Final Rejection mailed on 9/21/2023). However, Claim 2 has a statutory double-patenting rejection as indicated supra.
Conclusion
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/SUSAN S SU/Primary Examiner, Art Unit 3781 1 April 2026
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