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 .
Election/Restrictions
Claims 22-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/9/26.
Applicant’s election without traverse of claims 1-21 in the reply filed on 6/9/26 is acknowledged.
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of 1-20 of U.S. Patent No. 12,016,320. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of U.S. Patent No. 12,016,320 encompass the scope of instant claims 1-21.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, 6-8, 11, 13-16 and 20 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Kane et al. (US 2018/0140469, hereinafter “Kane”).
In regard to claim 1, Kane discloses a biodegradable absorbent article [abstract]. The absorbent article comprises a permeable top sheet, a natural fiber cake that may be derived from plant material, and a water insoluble back sheet [abstract]. The article can be used as an absorption mat [0022]. The examiner considers the permeable top sheet to be applicant's first portion. The tope sheet is configured to enable passage of liquids thereof [0027]. The examiner considers the natural fiber cake to be the second portion outboard of the first portion [Fig. 1C]. The second portion is configured to enable the absorption of liquids seeping through the first portion [0040]. The examiner considers the back sheet to be the third portion outboard the second portion [Fig. 1C]. The back sheet is configured to restrict the passage of liquids
therethrough [0054].
In regard to claim 2, Kane discloses that the organic materials include fluids [0022].
In regard to claim 4, Kane discloses that the top sheet is perforated [0027]. Thus, the top sheet comprises openings for enabling the passage of liquids therethrough.
In regard to claim 6, Kane discloses that the natural fiber cake comprises deliquescent
material [0042].
In regard to claim 7, Kane discloses that the deliquescent material is one of banana pulp or granulated rice material [0042 and 0047].
In regard to claim 8, Kane discloses that the natural fiber cake enables the absorption of liquids through the capillary mechanism [0048].
In regard to claim 11, Kanc discloses that the top sheet [0027], fiber cake [0042], and back sheet [0054] are formed from compostable materials.
In regard to claim 13, Kane discloses that the mat is compostable, thus it is inherent that it would create methane gas.
In regard to claim 14, Kane discloses that the top sheet, fiber cake, and back sheet are formed as multiple layers configured in an adjacent parallel arrangement [Fig. 1C].
In regard to claim 15, Kane discloses that the top sheet, fiber cake, and back sheet comprise regions within a single structure [Fig. 1C].
In regard to claim 16, Kane discloses that the mat is in the form of sheets of
predetermined dimensions [Fig. 1C].
In regard to claim 20, Kane discloses that the mat comprises an additional second portion outboard of the third portion, wherein the additional second portion is configured to enable the absorption of liquids and an additional first portion outboard of the additional second portion, wherein the additional first portion is configured to enable passage of liquids therethrough to the additional second portion [0036].
Claim(s) 1-5, 8-10, 14-17 and 21 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Price (US 7,078,088, hereinafter “Price”).
In regard to claim 1, Price discloses a disposable cutting sheet (abstract). The examiner considers the sheet to be a mat. The sheet comprises an upper portion or layer that is liquid-permeable (col. 4 lines 64-67). The upper portion is considered the applicant's first portion. The sheet comprises a middle portion that is a liquid absorbent material that retains the juices and liquids passed by the upper layer (col. 5 lines 25-30). Thus, the second portion. The sheet comprises a bottom portion that is made of a slip-resistant, liquid, and bacteria impervious material (col. 5 lines 25-33). Thus, the third portion.
In regard to claim 2, Price discloses that the organic materials are liquids and juices (col. 5 lines 25-30).
In regard to claim 3, Price discloses that the first portion can be tissue ply (col. 11 lines 44-47). The examiner considers tissue ply to be parchment like paper.
In regard to claim 4, Price discloses that the first potion comprises apertures that are formed through needle or water jet perforation (col. 13 lines 50-62).
In regard to claim 5, Price discloses that the materials are anti-microbial material and antibacterial material (col. 10 lines 57-64).
In regard to claim 8, Price discloses that the second portion enables the absorption of liquids through a capillary mechanism (col. 6 lines 21-25).
In regard to claim 9, Price discloses that the bottom portion can be formed with a plant-based corn starch that has plastic-like characteristics including liquid impermeability (col. 11 lines 12-17).
In regard to claim 10, Price discloses that the mat is in roll form, and further wherein the mat comprises perforated lines extending across the width of the mat for enabling a user to tear off a portion from the roll (fig. 15 and col. 14 lines 34-39). The examiner considers the perforated line a marking to allow a user to orient the mat as appropriate, i.e. where to tear off the sheet.
In regard to claim 14, Price discloses that the upper portion, the middle portion, and the bottom portion are formed as multiple layers configured in an adjacent, parallel arrangement (Fig. 3).
In regard to claim 15, Price discloses that the upper portion, the middle portion, and the bottom portion comprise regions within a single structure (Fig. 3).
In regard to claim 16, Price discloses that the mat is in the form of sheets of predetermined dimensions (Fig. 1A).
In regard to claim 17, Price discloses that the mat is in roll form, and further wherein the mat comprises perforated lines extending across the width of the mat for enabling a user to tear off a portion from the roll (fig. 15 and col. 14 lines 34-39).
In regard to claim 21, Price discloses that the mat is in combination with a dispenser, wherein the dispenser comprises: sidewalls forming a cavity, the cavity being sized and dimensioned to receive the mat in roll form; and a rigid cutting bar attached to one of the sidewalls (fig. 15 and col. 14 lines 34-56).
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.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kane et al. (US 2018/0140469, hereinafter “Kane”).
In regard to claim 12, Kane discloses a biodegradable absorbent article [abstract]. The absorbent article comprises a permeable top sheet, a natural fiber cake that may be derived from plant material, and a water insoluble back sheet [abstract] as previously discussed.
Kane is silent with regard to the mat disintegrated in a period of either 90-days or 180-days.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to form the absorbent article with a disintegration period of either 90-days or 180-days motivated by the expectation of forming a biodegradable absorbent article that has reduced time in the landfill which is the problem to be solved by Kanc [0001]. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Price et al. (US 7,078,088, hereinafter "Price") in view of Farrell et al. (US 2017/0305634, hereinafter "Farrell").
In regard to claims 18-19, Price discloses a disposable cutting sheet (abstract). The examiner considers the sheet to be a mat. The sheet comprises an upper portion or layer that is liquid-permeable (col. 4 lines 64-67). The upper portion is considered the applicant's first portion. The sheet comprises a middle portion that is a liquid absorbent material that retains the juices and liquids passed by the upper layer (col. 5 lines 25-30). Thus, the second portion. The sheet comprises a bottom portion that is made of a slip-resistant, liquid, and bacteria impervious material (col. 5 lines 25-33). Thus, the third portion.
Price is silent with the regard to the disposable cutting sheet be used in a pizza box as a liner.
Farrell discloses a food packaging assemblies that comprise composite materials for food contact applications [abstract]. The composite materials comprise an absorbent layer and a non- absorbent layer [abstract]. The composite materials are used as liners in conventional food packaging such as pizza boxes [0003].
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the pizza box of Farrell with the sheet of Price motivated by the expectation of forming a pizza box that has a liner that can absorb and trap liquids as still have a cutting surface [Farrell 0002].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 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, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
June 22, 2026
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