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 .
This Office Action acknowledges the applicant’s amendment filed on 10/14/2025. Claims 1, 3, 5-22 are pending in the application. Claims 2 and 4 are cancelled. Claims 21-22 are new.
The text of those sections of Title 35, U.S. code not included in this action can be found in a prior Office Action.
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 and 5-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,178,692 B2 and claims 1-18 of U.S. Patent No. 12,076,221 B2 in view of Noguchi et al. US 2013/0098793 A1.
Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims recite a package of one or more absorbent articles with the package material comprising natural fibers, a plurality of panels forming an interior that holds the articles and the package material has a Basis Weight between about 50 gsm and about 120 gsm, according to the Basis Weight Test Method. The difference of the patents and the present application is the present application recites additional features and limitations relating to the package, such as, the one or more absorbent articles are disposed in the interior compartment of the package in a tri-fold configuration, wherein the one or more absorbent articles comprise a first fold nose and a second fold nose, wherein the first and second fold noses are disposed proximate the front and back panels of the package respectively or the first and second side panels of the package respectively. However, Noguchi teaches that it was known in the art to have a package holding one or more absorbent articles 3 that are disposed in the interior compartment of the package in a tri-fold configuration (shown in Fig. 3 and 4), wherein the one or more absorbent articles comprise a first fold nose and a second fold nose, wherein the first and second fold noses are disposed proximate the front and back panels of the package respectively or the first and second side panels of the package respectively (shown in Figs. 10 and 11). It would be obvious to one having ordinary skill in the art to have the package hold the one or more absorbent articles in a tri-fold configuration with the first and second fold noses are disposed proximate the front and back panels of the package respectively or the first and second side panels of the package since it was known in the art that doing so would provide an alternative arrangement of the articles.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3, 5-9 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cornelissen et al. US 5,065,868, cited in Applicant’s IDS, in view of Noguchi et al. US 2013/0098793 A1 or Snell US 2008/0128309 A1, in view of Achelpohl US 3,979,049, all previously cited, and further in view of Piotrowski et al. US 2004/0146224 A1.
With regards to claims 1, Cornelissen discloses a package comprising one or more absorbent articles 28, comprising: a package material comprising natural fibers (Kraft paper; Col 2:55-65 and 6:30-34); wherein the package material forms a front panel, a back panel opposite the front panel, a first side panel, a second side panel opposite the first side panel, a top panel, and a bottom panel opposite the top panel, wherein the panels define an interior compartment (Col 3:55-63), and wherein the one or more absorbent articles are disposed in the interior compartment of the package; wherein at least three of the panels are free of seams; wherein the package material comprises at least one gusset (Col 3:56-57); wherein the package material has a Basis Weight between about 50 gsm and about 120 gsm (Col 2:37-39); and wherein the package is recyclable.
Cornelissen discloses the articles in a folded configuration but it does not specifically disclose they are in a tri-fold configuration, wherein the one or more absorbent articles comprise a first fold nose and a second fold nose, wherein the first and second fold noses are disposed proximate the front and back panels of the package respectively or the first and second side panels of the package respectively.
However, Noguchi teaches that it was known in the art to have a package holding one or more absorbent articles 3 that are disposed in the interior compartment of the package in a tri-fold configuration (shown in Fig. 3 and 4), wherein the one or more absorbent articles comprise a first fold nose and a second fold nose, wherein the first and second fold noses are disposed proximate the front and back panels of the package respectively or the first and second side panels of the package respectively (shown in Figs. 10 and 11).
Snell also teaches it was known in the art to have a package holding an absorbent articles 342 that are disposed in the interior compartment of a package in a tri-fold configuration (Fig. 44), wherein the one or more absorbent articles comprise a first fold nose and a second fold nose, wherein the first and second fold noses are disposed proximate the first and second side panels of the package.
It would be obvious to one having ordinary skill in the art to have the package hold the one or more absorbent articles in a tri-fold configuration with the first and second fold noses are disposed proximate the front and back panels of the package respectively or the first and second side panels of the package, as taught by Noguchi and Snell since it was known in the art that doing so would provide an alternative arrangement of the articles.
Cornelissen discloses the package material has a Basis Weight between
about 50 gsm and about 120 gsm, but it does not specifically disclose it is
according to the Basis Weight Test Method. However, as the Kraft material was
one of the cited suitable materials, it will inherently perform this limitation.
The USPTO is not equipped to perform specialized tests upon prior art
devices in order to determine an inherent property of a prior art device. Once a
reference teaching the product appearing to be substantially identical is made the
basis of a rejection, the burden shifts to the applicant to show an unobvious
difference. See MPEP § 2112(V).
Cornelissen does not specifically disclose the bottom panel comprises a cross bottom configuration.
However, Achelpohl (Fig. 1 and 2) teaches that it was known in the art to have a package bottom panel have a cross bottom configuration 1. (Col 3:10-34)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the bottom panel in Cornelissen by providing a block bottom configuration as taught by Achelpohl for the purposes of providing alternative configurations to the bag panel (i.e. substitution of known equivalents).
Cornelissen discloses the package material comprises at least one gusset but it does not specifically disclose the at least one gusset is oriented outward of the interior compartment of the package.
However, Piotrowski teaches that it was known in the art to have a package with a gusset 20 (46/48) that is oriented outward of the interior compartment of the package. (Para. 0021 and Fig. 2)
Cornelissen recites the gusset is used to assist in releasing the articles from the package. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the gusset in Cornelissen by orienting the gusset outward as taught by Piotrowski for the purposes of enlarging the opening of the packaging to easily dispense the articles.
With regards to claim 3, Achelpohl further teaches the bottom panel 1 comprises a first flap 8, a second flap 7, one or more first seams 5, one or more second seams 6, and a base portion; wherein first flap is folded onto the base portion, and is attached to the base portion using the one or more first seams; and wherein the second flap is folded onto the base portion and on top of the first flap, and is attached to the base portion and/or the first flap using the one or more second seams. (Fig. 1)
With regards to claim 5, Cornelissen discloses the package is formed of natural fibers but it does not specifically disclose the package material comprises between about 50 percent and about 100 percent, by weight, of natural fibers. However, as the Kraft material was one of the cited suitable materials, it will inherently perform this limitation.
With regards to claim 6, Cornelissen discloses the natural fibers comprise at least one of wood fibers and pulp fibers. (Col 2:35-38)
With regards to claims 7, Cornelissen discloses the package material is free of a barrier layer. (unbleached virgin paper; Col 2:43-45)
With regards to claims 8, Cornelissen discloses the package material comprises a barrier layer. (coating to reduce friction: Col 5:24-30)
With regards to claim 9, Cornelissen discloses all of the panels of the package comprise a unitary piece of package material.
With regards to claim 21, Cornelissen discloses the first side panel comprises a first gusset 12a and wherein the second side panel 12b comprises a second gusset.
See claim 1, for Piotrowski teaching of orienting the gussets outward of the interior compartment of the package.
Claim(s) 10 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cornelissen et al. US 5,065,868, cited in Applicant’s IDS, in view of Noguchi et al. US 2013/0098793 A1 or Snell US 2008/0128309 A1, in view of Achelpohl US 3,979,049, all previously cited, and further in view of Muckenfuhs US 4,966,286.
With regards to claims 10, Cornelissen discloses a package comprising one or more absorbent articles 28, comprising: a package material comprising natural fibers (Kraft paper; Col 2:55-65 and 6:30-34); wherein the package material forms a front panel, a back panel opposite the front panel, a first side panel, a second side panel opposite the first side panel, a top panel, and a bottom panel opposite the top panel, wherein the panels define an interior compartment (Col 3:55-63), wherein the one or more absorbent articles are disposed in the interior compartment of the package; wherein at least three of the panels are free of seams; wherein the package comprises a closing seam (at 18) and a weakened region 25a/25b, the weakened region configured to form an opening; wherein the package material has a Basis Weight between about 50 gsm and about 120 gsm (Col 2:37-39); and wherein the package is recyclable.
Cornelissen discloses the articles in a folded configuration but it does not specifically disclose they are in a tri-fold configuration, wherein the one or more absorbent articles comprises a fold nose, and wherein the fold nose is disposed proximate to the top panel of the package.
See claim 1, for Noguchi and Snell teaching of an absorbent article in a trifold configuration arranged in the package as described above.
Cornelissen does not specifically disclose the bottom panel comprises a cross bottom configuration.
See claim 1, for Achelpohl teaching of a package having a cross bottom configuration.
Cornelissen discloses a closing seam and a weakened region to form an opening but it does not specifically disclose the weakened region is disposed between the closing seam and the interior compartment.
However, Muckenfuhs teaches that it was known in the art to have flexible package 10 that has a closing seam 170 and a weakened region 66 to form an opening, wherein the weakened region is disposed between the closing seam and the interior compartment. (Col 6:30-41, 60-68 and Fig. 2)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the closing seam and a weakened region in Cornelissen by having the weakened region disposed between the closing seam and the interior compartment as taught by Muckenfuhs since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim 12, treated as in claim 5 above.
Claim 13, treated as in claim 7 above.
Claim 14, treated as in claim 8 above.
Claim(s) 11 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cornelissen et al. US 5,065,868, cited in Applicant’s IDS, in view of Noguchi et al. US 2013/0098793 A1 or Snell US 2008/0128309 A1, all previously cited, in view of Achelpohl US 3,979,049,previously cited, in view of Muckenfuhs US 4,966,286 and further in view of BillerudKorsnäs Axello Tough White MF KRAFT PAPER Technical data sheet, September 12, 2019, hereafter referred to Axello Tough White, all previously cited.
With regards to claim 11, Cornelissen discloses the package material has a thickness but it does not specifically disclose the package material has a caliper of between about 50 µm and about 110 µm, according to the Caliper Test Method.
However, Axello Tough White teaches that it was known in the art to have the package material comprising natural fibers material have a caliper thickness of between 50 µm to 110 µm. (recited in the attached Data sheet)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the packaging material in Cornelissen by providing the packaging material of Axello Tough White (Kraft paper) having the recited properties as taught by Axello Tough White for the purposes of providing an alternative material to be used. Cornelissen discloses a desire for Kraft paper with “good mechanical properties” (Col 2:55-59) but does not specifically disclose the particular brand of Kraft paper, so one of ordinary skill in the art would naturally look to those commercially available and the Axello Tough White was advertised as “used for various kind [sic] of bags, where strength properties are of extreme importance.” (see Technical Data Sheet, End uses). It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Axello Tough White does not specifically state the data is according to the Caliper Test Method, however the Axello Tough White was one of the cited suitable materials, and it will inherently perform this limitation.
The USPTO is not equipped to perform specialized tests upon prior art devices in order to determine an inherent property of a prior art device. Once a reference teaching the product appearing to be substantially identical is made the basis of a rejection, the burden shifts to the applicant to show an unobvious difference. See MPEP § 2112(V).
With regards to claim 15, Axello Tough White further teaches the package material has a MD Tensile Strength of at least 5.0 kN/m. (see attached Data sheet)
Axello Tough White does not specifically state the data is according to the Strength Tensile Test Method, the Axello Tough White was one of the cited suitable materials, it will inherently perform this limitation.
The USPTO is not equipped to perform specialized tests upon prior art devices in order to determine an inherent property of a prior art device. Once a reference teaching the product appearing to be substantially identical is made the basis of a rejection, the burden shifts to the applicant to show an unobvious difference. See MPEP § 2112(V).
With regards to claim 16, Axello Tough White further teaches the package material has an MD Stretch At Break of between about 3 and about 6.5 percent. (see attached Data sheet)
With regards to claim 17, Axello Tough White further teaches the package material has an CD Stretch At Break of between about 4 percent and about 10 percent. (see Data sheet)
Claim(s) 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cornelissen et al. US 5,065,868, cited in Applicant’s IDS, in view of Noguchi et al. US 2013/0098793 A1 or Snell US 2008/0128309 A1.
With regards to claim 18, Cornelissen discloses a package of one or more absorbent articles 28 comprising: a package material comprising natural fibers (Kraft paper; Col 2:55-65 and 6:30-34); wherein the package material has a Basis Weight between about 50 gsm and about 120 gsm (Col 2:37-39); wherein the package material forms a consumer-facing panel, an opposing back panel, a pair of end seals (at 15; Col 3:68-4:3 / at 14; Col 4:17-25), and a hoop seam (Col 3:64-65) extending between and joining the end seals (formed at the top and bottom of the package), and wherein the panels define an interior compartment of the package; wherein the hoop seam (formed down the middle of the package) is generally perpendicular to the end seals (at the top and bottom of the package), wherein the package is sealed such that the one or more absorbent articles are enclosed within the interior compartment of the package; wherein the one or more absorbent articles exert tension on the package material (abstract and claim 1) and wherein the package is recyclable.
Cornelissen discloses the package material has a Basis Weight between about 50 gsm and about 120 gsm, but it does not specifically disclose it is according to the Basis Weight Test Method. However, as the Kraft material was one of the cited suitable materials, it will inherently perform this limitation.
The USPTO is not equipped to perform specialized tests upon prior art devices in order to determine an inherent property of a prior art device. Once a reference teaching the product appearing to be substantially identical is made the basis of a rejection, the burden shifts to the applicant to show an unobvious difference. See MPEP § 2112(V).
Cornelissen discloses the articles in a folded configuration but it does not specifically disclose they are in a tri-fold configuration, wherein the one or more absorbent articles comprise a first fold nose and a second fold nose, wherein the first and second fold noses are disposed proximate the front and back panels of the package respectively or the first and second side panels of the package respectively.
However, Noguchi teaches that it was known in the art to have a package holding one or more absorbent articles 3 that are disposed in the interior compartment of the package in a tri-fold configuration (shown in Fig. 3 and 4), wherein the one or more absorbent articles comprise a first fold nose and a second fold nose, wherein the first and second fold noses are disposed proximate the front and back panels of the package respectively or the first and second side panels of the package respectively (shown in Figs. 10 and 11).
Snell also teaches it was known in the art to have a package holding an absorbent articles 342 that are disposed in the interior compartment of a package in a tri-fold configuration (Fig. 44), wherein the one or more absorbent articles comprise a first fold nose and a second fold nose, wherein the first and second fold noses are disposed proximate the first and second side panels of the package.
It would be obvious to one having ordinary skill in the art to have the package hold the one or more absorbent articles in a tri-fold configuration with the first and second fold noses are disposed proximate the front and back panels of the package respectively or the first and second side panels of the package, as taught by Noguchi and Snell since it was known in the art that doing so would provide an alternative arrangement of the articles.
It would be obvious to one having ordinary skill in the art to have the package hold the one or more absorbent articles in a tri-fold configuration with the first and second fold noses are disposed proximate the consumer-facing panel and the back panel of the package since it was known in the art that doing so would provide an alternative arrangement of the articles.
With regards to claim 19, Cornelissen discloses the hoop seam is an overlap seam.
With regards to claim 20, treated as in claim 5 above.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cornelissen et al. US 5,065,868, cited in Applicant’s IDS, in view of Noguchi et al. US 2013/0098793 A1 or Snell US 2008/0128309 A1, in view of Achelpohl US 3,979,049, all previously cited, in view of Piotrowski et al. US 2004/0146224 A1, and further in view of EL-KHOURI US 2018/0177711 A1.
With regards to claim 22, Cornelissen discloses the package material but it does not specifically disclose the package material comprises a Gloss of less than 70 GU at 60°.
However EL-KHOURI teaches that it was known in the art to have a flexible package material (Para. 0246) comprises a Gloss of less than 70 GU at 60°. (Para. 0262)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the packaging material in Cornelissen by providing a Gloss of less than 70 GU at 60° as taught by EL-KHOURI for the purposes of altering the appearance of the package.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive. The Applicant argues Cornelissen, Noguchi, Snell, Achelpohl, and Axello Tough White do not disclose the amended limitation “the package material comprises at least one gusset, wherein the at least one gusset is oriented outward of the interior compartment of the package". However, Piotrowski has been cited above to teach that it was known in the art to have a package with gussets that are oriented outward of the interior compartment of the package. The Applicant argues Cornelissen, Noguchi, Snell, Achelpohl, and Axello Tough White do not disclose the amended limitation “the package comprises a closing seam and a weakened region, the weakened region configured to form an opening, wherein the weakened region is disposed between the closing seam and the interior compartment". Cornelissen does disclose a closing seam and a weakened region, however, Muckenfuhs has been cited to teach that it was known in the art to have a package comprise the closing seam and the weakened region, wherein the weakened region is disposed between the closing seam and the interior compartment. The Applicant argues Cornelissen, Noguchi, Snell, Achelpohl, and Axello Tough White do not disclose the amended limitation “the hoop seam is generally perpendicular to the end seals" and that "the one or more absorbent articles exert tension on the package material". The Examiner respectfully disagrees, Cornelissen discloses a hoop seam extending down the package, perpendicular to the end seals, formed at the top and bottom of the package.
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 JENINE SPICER whose telephone number is (313)446-4924. The examiner can normally be reached 9:00am-5:00pm, Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Avilés can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENINE SPICER/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736