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 1-14 are pending and examined on the merits.
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 1-9 and 11-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-8 of U.S. Patent No. 12,042,366 in view of Plumley (EP 0 923 921). Said patented claim 1 recites the same limitations as current claims 1 & 7-8 but does not explicitly recite that the adhesive is disposed on the backsheet at 10-50gsm. Plumley discloses an adhesive that is disposed on the backsheet of a sanitary article at 10-30gsm ([0040]). It would have been obvious to one skilled in the art at the time of filing to modify with the adhesive basis weight disclosed by Plumley as this is a range that has been shown to be effective and sufficient for attaching a sanitary article to the undergarment of a user. Patented claim 2 reads on current claim 2, patented claim 5 reads on current claims 3 & 9, patented claim 4 reads on current claim 11, patented claim 6 reads on current claims 4 & 12, patented claim 7 reads on current claims 5 & 13, and patented claim 8 reads on current claims 6 & 14.
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 8-10, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Plumley (EP 0 923 921) in view of Johnson et al. (US 2013/0036802) and Robles et al. (US 2015/0328059).
Re Claim 8, Plumley discloses a sanitary absorbent article (1) comprising a
topsheet ([0023]),
a backsheet ([0023]),
an absorbent core (starting at [0055] to [0067]) disposed between the topsheet and the backsheet; and
from about 10 gsm to about 50 gsm ([0040] "12g/m2 to 25g/m²") of an adhesive attachment means (first zone 3, e.g., [0035]) on a garment faceable surface of the backsheet ([0030] "at least a portion of the garment facing surface of the backsheet is coated with pressure sensitive adhesive to form the panty fastening adhesive") for securing the article to an undergarment.
Plumley does not discloses that the adhesive attachment means comprises between 0% and 20% of a low molecular weight component, based on the total weight of the adhesive attachment means, and the low molecular weight component has a weight average molecular weight between 400 and 700 Daltons, a kinematic viscosity measured at 40oC of 68 CST, or wherein that the adhesive attachment means is a rubber based resin.
Johnson discloses an adhesive (adhesive layer 927) used in an absorbent article, wherein the adhesive is rubber-based ([0097]) and may comprise 0-20% of a low molecular weight plasticizer (second half of [0098], "average molecular weight up to 600 daltons" and "[c]ertain embodiments may include plasticizer from about 10 to about 50 percent by weight"). It would have been obvious to one skilled in the art at the time of filing to modify Plumley with Johnson's adhesive since the selection of a material suitable for its intended use (i.e., selecting Johnson's adhesive for use in an absorbent article) establishes prima facie case of obviousness.
As for the limitation regarding the kinematic viscosity of the adhesive, it is directed to the material property of the adhesive. After modification with the adhesive of Johnson, which has the rubber resin and the low molecular weight component in the weight range as claimed, one skilled in the art would reasonably expect the Johnson adhesive to exhibit the claimed properties or functions are presumed to be inherent (see MPEP 2112-2112.01). A prima facie case of obviousness has been established in this case and the burden is shifted to the Applicant to prove otherwise.
Plumley also does not explicitly disclose that the absorbent core comprises a high internal phase emulsion foam. Robles discloses a sanitary pad (10) having an absorbent core (second absorbent core 42) that may be made of high internal phase emulsion foam ([0087]). It would have been obvious to one skilled in the art at the time of filing to modify Plumley further with Robles since the selection of a material suitable for its intended use (i.e., choosing a high internal phase emulsion foam to be an absorbent core in a sanitary pad) establishes a prima facie case of obviousness (MPEP 2144.07).
Re Claim 9, Plumley, Johnson and Robles combine to disclose claim 8, and Plumley further discloses that the backsheet comprises a polyethylene film ([0073] discloses backsheet being made from macroscopically expanded films disclosed in US 4,637,819, and polyethylene is disclosed in said reference at col. 14 lines 54-56).
Re Claim 10, Plumley, Johnson and Robles combine to disclose claim 8 and while none of them explicitly discloses wherein the absorbent article exhibits a TD NMR signal of less than 2.0 at 5 days of storage at 50 degrees Celsius, this value is considered to be a material property resulting from the materials used to make the absorbent article, i.e., the adhesive and the high internal phase emulsion foam. After modification with Johnson and Robles, the resulting absorbent article has the same materials and structures as the claimed absorbent article, thus one skilled in the art would reasonably expect the resulting article to exhibit the claimed TD NMR (understood to be time-domain nuclear magnetic resonance, a method to determine crystallinity and density of materials). A prima facie case of obviousness has been established in this case and the burden is shifted to the Applicant to prove otherwise (see MPEP 2112-2112.01).
Re Claim 12, Plumley, Johnson and Robles combine to disclose claim 8, and Plumley further discloses that the backsheet has a thickness of from about 0.075 mils to about 1.25 miles (see US 4,637,819 at col. 14 lines 54-56 disclosing a 1mil thick polyethylene film).
Re Claim 13, Plumley, Johnson and Robles combine to disclose claim 8, but none explicitly discloses further comprising an adhesive disposed between the backsheet and the absorbent core. However, a person of ordinary skill has good reason to pursue the known options (using adhesive to firmly attach the various layers of an article together or simply have the backsheet and topsheet form a sealed pouch to enclose all other layers thereinbetween) within his or her technical grasp. If this leads to the anticipated success (the absorbent article successfully retains liquid discharged from the user), it is likely that product was not of innovation but of ordinary skill and common sense. In that instant the fact that a combination was obvious to try might show that it was obvious under § 103. See MPEP 2143 (E).
Re Claim 14, Plumley, Johnson and Robles combine to disclose claim 8, and Plumley also teaches that wherein the adhesive is deposited in a uniform continuous layer of adhesive, a patterned layer of adhesive, or an array of separate lines (see Fig. 4, where first zone 3 form two separate lines), spirals, or spots of adhesive.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Plumley, Johnson and Robles as applied to claim 8 above, and further in view of Toro et al. (US .
Re Claim 12, Plumley, Johnson and Robles combine to teach the invention of claim 8 but they do not explicitly disclose the absorbent article comprises a pair of flexible side flaps, one flap extending laterally outward from each respective longitudinal side of the absorbent element, the flaps being adapted to be folded over a crotch portion of a wearer's undergarment when in use. Toro discloses a sanitary pad having a pair of flexible side flaps (wings 60, Fig. 2) that extend laterally outward from both longitudinal sides of the pad, wherein the side flaps can fold around a crotch portion of a wearer's undergarment when in use. It would have been obvious to one skilled in the art at the time of filing to modify Plumley further with Toro for the benefit of reducing soiling of the undergarment due to side leakage.
Allowable Subject Matter
Claims 1-7 contain allowable subject matter. Please note the nonstatutory double patenting rejection of these claims.
The following is a statement of reasons for the indication of allowable subject matter:
Johnson discloses an adhesive (adhesive layer 927) that is rubber-based ([0097]) and may comprise 10% of a low molecular weight plasticizer ([0098]). However, this range is well outside of the claimed 1-5% range in current Claim 1.
Conclusion
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/SUSAN S SU/ Primary Examiner, Art Unit 3781
14 July 2026
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