DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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, 2, 5-9 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, respectively, of U.S. Patent No. 12,090,032 in view of Takino et al. (US 2010/0252178 A1; hereinafter “Takino”). The patented claims recite the same limitations as the instant claims, except patented claim 1 is silent regarding wherein the extensible elastic laminate present in the first waist region has a different applied waistband strain versus the extensible elastic laminate present in the second waist region. However, Takino teaches that it was known in the diaper art at the time of invention for a diaper to include wherein the extensible elastic element present in the first waist region (elastic members 61) has a different applied waistband strain (i.e. it is stretched more/less when attached to the associated diaper component) versus the extensible elastic element (elastic members 62) present in the second waist region (Figs. 1, 2, and 4; bond the elastic members 61, 62 for the front and rear sheet members under tension so that the front sheet member may contract more significantly than the rear sheet member 30 when the elastic members…have tension released, para [0051]; enabling the front sheet member 20 to contract more significantly than the rear sheet member 30 [by] adjust[ing] a tensile stress of the elastic members 61…under which these elastic members 61 are bonded to the front sheet member 20 to be higher than…for the rear waist region-side belt…a stretching percentage under which the elastic members 61 are bonded…is adjusted to be higher than a stretching percentage under which the elastic members 62 are bonded, para [0054]). Therefore, it would have been obvious to an artisan at the time of invention for the patented claims to include wherein the extensible elastic laminate present in the first waist region has a different applied waistband strain versus the extensible elastic laminate present in the second waist region as taught by Takino, in order to aid in providing the predictable result of e.g. the front of the diaper being more contracted than the rear of the diaper, so as to provide a tighter, reduced-liquid-insult-leakage fit in the front while accommodating for greater expansion for solid insults and/or buttock sizes in the rear.
Claims 3 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,090,032 modified in view of Takino above, and further in view of Ashraf. The modified patented claims are silent regarding wherein the first longitudinal edge and the second longitudinal edge are angled or curved, or the diaper further comprising an absorbent core comprising a co-form layer. However, it has been held to be within the general skill of one in the art to select a known material on the basis of its suitability for the intended use, see MPEP 2144.07, and Ashraf teaches it was known in the diaper art at the time of invention to include wherein the first longitudinal edge and the second longitudinal edge (left and right longitudinal edges 550) are angled or curved (Fig. 5, where they curve/angle inward toward the middle/crotch), and the diaper further comprising an absorbent core (528) comprising a co-form layer (absorbent core 528 may comprise…co-form, para [0078]; where layers were a standard element of absorbent cores at the time of invention). Therefore, it would have been obvious to an artisan at the time of invention to include in the modified patented claims wherein the first longitudinal edge and the second longitudinal edge are angled or curved and the diaper further comprising an absorbent core comprising a co-form layer as taught by Ashraf, in order to provide the predictable result of a fitted, sufficiently absorbent diaper using a common and thus easily-sourced and/or manufactured material (co-form) and a less wide/bulky crotch.
Claims 10, 11, 14-16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-14, respectively, of U.S. Patent No. 12,090,032. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims fully anticipate the instant claims by reciting the same limitations, except where the current recitation of the waistband “present in the first/second waist region” (emphasis added) in instant claim 10 is slightly broader than the patented “present in the first/second waist edge” (emphasis added) in patented claim 9.
Claims 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,090,032 in view of Ashraf et al. (US 2006/0244184 A1; hereinafter “Ashraf”). The patented claims are silent regarding wherein the first longitudinal edge and the second longitudinal edge are angled or curved, or the diaper further comprising an absorbent core comprising a co-form layer. However, it has been held to be within the general skill of one in the art to select a known material on the basis of its suitability for the intended use, see MPEP 2144.07, and Ashraf teaches it was known in the diaper art at the time of invention to include wherein the first longitudinal edge and the second longitudinal edge (left and right longitudinal edges 550) are angled or curved (Fig. 5, where they curve/angle inward toward the middle/crotch), and the diaper further comprising an absorbent core (528) comprising a co-form layer (absorbent core 528 may comprise…co-form, para [0078]; where layers were a standard element of absorbent cores at the time of invention). Therefore, it would have been obvious to an artisan at the time of invention to include in the patented claims wherein the first longitudinal edge and the second longitudinal edge are angled or curved and the diaper further comprising an absorbent core comprising a co-form layer as taught by Ashraf, in order to provide the predictable result of a fitted, sufficiently absorbent diaper using a common and thus easily-sourced and/or manufactured material (co-form) and a less wide/bulky crotch.
Claims 1, 2, 5-9 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1/6, 7, 1, 9, 8, 1, 5 and 1, respectively of U.S. Patent No. 10,806,638 in view of Takino. The patented claims recite the same limitations as the instant claims (where the limitations of instant claim 17 are the definitions of the patented terms per col. 19-22 of the patent), except patented claim 1 (and thus its dependent claims 5 and 7-9) is silent regarding wherein the waistband (and its elastic laminate) is present both in the first and second waist regions and the leg gasketing system is present in the first and second longitudinal edges (although this is recited by patented claim 6) and wherein the extensible elastic laminate present in the first waist region has a different applied waistband strain and is less contracted versus the extensible elastic laminate present in the second waist region. However, Takino teaches that it was known in the diaper art at the time of invention for a diaper to include elastic elements in both the first and second waist regions as well as both the longitudinal edges (Fig. 1) and to include wherein the extensible elastic element present in the first waist region (elastic members 62) has a different applied waistband strain/is less contracted (i.e. it is stretched less when attached to the associated diaper component) versus the extensible elastic element (elastic members 61) present in the second waist region (Figs. 1, 2, and 4; bond the elastic members 61, 62 for the front and rear sheet members under tension so that the front sheet member may contract more significantly than the rear sheet member 30 when the elastic members…have tension released, para [0051]; enabling the front sheet member 20 to contract more significantly than the rear sheet member 30 [by] adjust[ing] a tensile stress of the elastic members 61…under which these elastic members 61 are bonded to the front sheet member 20 to be higher than…for the rear waist region-side belt…a stretching percentage under which the elastic members 61 are bonded…is adjusted to be higher than a stretching percentage under which the elastic members 62 are bonded, para [0054]). Therefore, it would have been obvious to an artisan at the time of invention for the patented claims to include wherein the waistband (and its elastic laminate) is present both in the first and second waist regions and the leg gasketing system is present in the first and second longitudinal edges and wherein the extensible elastic laminate present in the first waist region has a different applied waistband strain/is less contracted versus the extensible elastic laminate present in the second waist region as taught by Takino, in order to aid in providing the predictable results of leakage-protection features on all sides of the diaper and e.g. the rear of the diaper being less contracted than the front of the diaper, so as to provide a tighter, reduced-liquid-insult-leakage fit in the front while accommodating for greater expansion for solid insults and/or buttock sizes in the rear.
Claims 3 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,806,638 modified in view of Takino above, and further in view of Ashraf. The modified patented claims are silent regarding wherein the first longitudinal edge and the second longitudinal edge are angled or curved, or the diaper further comprising an absorbent core comprising a co-form layer. However, it has been held to be within the general skill of one in the art to select a known material on the basis of its suitability for the intended use, see MPEP 2144.07, and Ashraf teaches it was known in the diaper art at the time of invention to include wherein the first longitudinal edge and the second longitudinal edge (left and right longitudinal edges 550) are angled or curved (Fig. 5, where they curve/angle inward toward the middle/crotch), and the diaper further comprising an absorbent core (528) comprising a co-form layer (absorbent core 528 may comprise…co-form, para [0078]; where layers were a standard element of absorbent cores at the time of invention). Therefore, it would have been obvious to an artisan at the time of invention to include in the modified patented claims wherein the first longitudinal edge and the second longitudinal edge are angled or curved and the diaper further comprising an absorbent core comprising a co-form layer as taught by Ashraf, in order to provide the predictable result of a fitted, sufficiently absorbent diaper using a common and thus easily-sourced and/or manufactured material (co-form) and a less wide/bulky crotch.
Claim Objections
Claims 1 and 10 are objected to because of the following informalities:
The last three lines of both claims 1 and 10 would have clearer antecedent basis if line 19 of each claim were to read “wherein the waistband with extensible region is present”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-3, 5-7 and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over St. Louis et al. (US 5,993,433; hereinafter “St. Louis”) in view of Kumasaka (US 2009/0182298 A1; hereinafter “Kumasaka”) and Takino et al. (US 2010/0252178 A1; hereinafter “Takino”).
Regarding claims 1 and 5, St. Louis discloses a taped diaper (diaper 10) (Fig. 1) comprising:
a first waist region (font waistband portion 12), a second waist region (back waist band portion 14), a crotch region (intermediate portion 16) disposed between the first waist region and second waist region (Fig. 1; col. 3, lines 45-49);
a first waist edge and a second waist edge (front and rear end margins 22);
a first longitudinal edge and a second longitudinal edge (laterally opposed side margins 20) (Fig. 1);
a waistband (waist pocket member 80) (Figs. 1-2) and a leg gasketing system (comprising gusset-flap members 19) (Figs. 1 and 4),
wherein the leg gasketing system extends from the first waist edge to the second waist edge (Fig. 1; col. 14, lines 37-40),
wherein the waistband comprises an extensible region (occupied by elastics 110) (Fig. 1), wherein the extensible region comprises a laminate comprising a nonwoven material (layer 105 or 106) (col. 12, lines 48-50) and at least one elastic strand (elastic members 110) (col. 4, lines 5-13),
wherein the at least one elastic strand has an installed elongation which is the strain that the at least one elastic strand is under when combined with the nonwoven material to form the laminate (the amount of elongation at which the elastic strands were assembled into the laminate, col. 11, lines 26-27) and has an applied waistband strain which is the strain that the laminate is under when combined with the taped diaper (the elastic members may be stretched and secured while the appointed component of the article is in an uncontracted condition, col. 10, lines 15-19);
wherein the waistband has an Extended Waist Feature Length (EWL) (the initial, ungathered length of the composite, col. 26, lines 44-67, i.e. the initial length of the waistband nonwoven material before the elastics are attached to form the laminate), and a Relaxed Length of the Waist Feature (RWL) (the inherent length of the installed waistband in the relaxed article, expected to be approximately the length of the relaxed elastics) (Fig. 1; col. 26, line 65-col. 27, line 3);
wherein the waistband is present in the first waist edge and the second waist edge, and wherein the leg gasketing system is present in the first longitudinal edge and the second longitudinal edge (Fig. 1).
While St. Louis further discloses wherein the installed elongation of the leg elastic laminates is higher than the applied leg elastic strain (the composite, gusset-flap member may be shirred and gathered by a selected amount of elastomeric retraction of the attached elastomeric strands…which is allowed to occur prior to the attaching and incorporation of the composite gusset-flap member 19 into the article 10…amount of allowed retraction and pre-gathering can be expressed in terms of a percentage based upon the initial, ungathered length…[and] the final, gathered length…within the range of about 0-50%, col. 26, lines 50-67), St. Louis does not explicitly recite wherein the installed elongation of the waistband elastics is higher than the applied waistband strain. However, given the teachings of St. Louis that it is desirable for the waistband to be gathered (col. 4, lines 12-13; col. 11, lines 29-36) and the benefits of pre-gathering an elastic laminate before attachment to the article (col. 27, lines 3-10), it would have been obvious to one of ordinary skill in the art at the time of invention for the waistband laminate of St. Louis to be applied in a pre-gathered manner such that the installed elongation [of the waistband elastics] is higher than the applied waistband strain as taught/suggested by St. Louis, in order to ensure the formation of sufficient gathers within the waistband for stiffness (col. 4, lines 12-13; col. 11, lines 29-36) while reducing the amount of gathering force that is initially transmitted to the topsheet and backsheet layers and/or to help isolate the topsheet and backsheet layers from the stretching and contracting movements of the waistband that may occur while the article is being worn (col. 27, lines 3-10).
Since St. Louis does not actually recite values for the relaxed or stretched lengths of the elastics/degree of stretching for installment into the laminate and subsequent final relax length once the laminate is installed on the diaper, modified St. Louis is silent regarding a Full Waistband Consolidation of between 95% and 237%, wherein the Full Waistband Consolidation = ((EWL - RWL) / RWL) x 100. However, Kumasaka teaches that it was known in the absorbent article art at the time of invention to provide a Full Waistband Consolidation (FWC) of greater than 95% and less than 237%, wherein FWC = ((EWL-RWL)/RWL) x 100, because Kumasaka teaches an EWL of 400 mm (three to five pieces of synthetic rubber ribbon...are stretched to 400 mm and intermittently bonded to a pair of the non-stretchable covering sheets...having a length of 400 mm [i.e. the EWL length], para [0014]) and it would have been reasonable for an artisan at the time of invention to assume that the RWL would about the length of the fully contracted elastics, that is, ~171 mm (para [0014]), which gives a FWC of about 134%, and optimization of ranges of parameters within prior art ranges or through routine experimentation is not sufficient to patentably distinguish the invention over the prior art, see MPEP § 2144.05. Therefore, it would have been obvious to an artisan at the time of invention for the article of St. Louis to include a Full Waistband Consolidation of between 95% and 237% as taught by Kumasaka and through routine experimentation, in order to provide the predictable result of a stretchable waist-hole that can be adequately opened so that the diaper may be easily put on (Kumasaka para [0015]).
Modified St. Louis is silent regarding wherein the extensible region present in the first waist region comprises a laminate having a different applied waistband strain/is less contracted versus the extensible region present in the second waist region. However, Kumasaka further teaches that it was known in the absorbent article art at the time of invention for the waistbands in the front and rear waist regions to have different stress stresses (i.e. degrees of contraction) (Kumasaka para [0017]), as does Takino, which teaches that it was known in the diaper art at the time of invention for a diaper to include wherein the extensible elastic element present in the first waist region (elastic members 62) has a different applied waistband strain/is less contracted (i.e. it is stretched less when attached to the associated diaper component) versus the extensible elastic element (elastic members 61) present in the second waist region (Takino Figs. 1, 2, and 4; bond the elastic members 61, 62 for the front and rear sheet members under tension so that the front sheet member may contract more significantly than the rear sheet member 30 when the elastic members…have tension released, para [0051]; enabling the front sheet member 20 to contract more significantly than the rear sheet member 30 [by] adjust[ing] a tensile stress of the elastic members 61…under which these elastic members 61 are bonded to the front sheet member 20 to be higher than…for the rear waist region-side belt…a stretching percentage under which the elastic members 61 are bonded…is adjusted to be higher than a stretching percentage under which the elastic members 62 are bonded, para [0054]). Therefore, it would have been obvious to an artisan for modified St. Louis to include wherein the extensible elastic laminate present in the first waist region has a different applied waistband strain/is less contracted versus the extensible elastic laminate present in the second waist region as taught by Kumasaka and Takino, in order to utilize known means (i.e. different applied strains) when using the same elastic laminate in the front and rear (e.g. for economies of scale) to provide the predictable result of the rear of the diaper being less contracted than the front of the diaper (Takino paras [0051] and [0054]), so as to provide a tighter, reduced-liquid-insult-leakage fit in the front while accommodating for greater expansion for solid insults and/or buttock sizes in the rear.
Regarding claim 2, St. Louis in view of Kumasaka and Takino teaches the taped diaper of Claim 1, but modified St. Louis is silent regarding wherein the waistband and the leg gasketing system are the same color. However, the color is non-functional printed matter, see MPEP 2112.01.III, and for modified St. Louis to have the waistband be the same color as the leg gasketing system would have been an obvious design choice to an artisan at the time of invention out of the two finite options (either they are the same colors or different colors), in order to provide an aesthetically pleasing, visually-cohesive article, e.g. one with color continuity that resembles traditional undergarments.
Regarding claim 3, St. Louis in view of Kumasaka and Takino teaches the taped diaper of Claim 1, wherein St. Louis further discloses wherein the first longitudinal edge and the second longitudinal edge are angled or curved (at concave side edge contours 15) (St. Louis Fig. 1; col. 4, lines 31-36).
Regarding claim 6, St. Louis in view of Kumasaka and Takino teaches the taped diaper of Claim 1, wherein St. Louis further discloses an apertured topsheet (suitable topsheet…apertured, St. Louis col. 6, lines 4-6).
Regarding claim 7, St. Louis in view of Kumasaka and Takino teaches the taped diaper of Claim 1, wherein St. Louis further discloses wherein the leg gasketing system comprises an inner cuff (containment flap section 144) (St. Louis Figs. 1 and 4) and an outer cuff (leg gusset section 142), wherein the inner cuff comprises an inner cuff folded edge (at folding line 189) and an inner cuff material edge (at 172 in St. Louis Fig. 4); wherein the outer cuff comprises an outer cuff folded edge (at folding line 188) and an outer cuff material edge (at 130 in St. Louis Fig. 4) such that a web of material (fabric layer 176) is folded laterally inward to form the outer cuff folded edge and folded laterally outward to form the inner cuff folded edge (St. Louis Fig. 4).
Regarding claim 17, St. Louis in view of Kumasaka and Takino teaches the taped diaper of Claim 1, where the limitations of claim 17 are drawn to the testing of the claimed absorbent article using particular procedures. As the structure meets the claimed limitations and the examiner is unable to test the EWL and RWL according to the claimed procedures, it would be expected that the prior art EWL and RWL would meet the claimed testing limitations absent an objective showing to the contrary, see MPEP 2112.
Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over St. Louis in view of Kumasaka and Takino as applied to claim 1 above, and further in view of Ashraf et al. (US 2006/0244184 A1; hereinafter “Ashraf”).
Regarding claim 4, St. Louis in view of Kumasaka and Takino teaches the taped diaper of Claim 1, wherein St. Louis further discloses the diaper further comprising an absorbent core (absorbent body structure 32) comprising a layer (e.g. Fig. 2; col. 27, line 56-col. 28, line 50), but modified St. Louis is silent regarding the core comprising specifically a co-form layer. However, it has been held to be within the general skill of one in the art to select a known material on the basis of its suitability for the intended use, see MPEP 2144.07, , and Ashraf teaches it was known in the diaper art at the time of invention to include an absorbent core (528) comprising a co-form layer (absorbent core 528 may comprise…co-form, para [0078]; where layers were a standard element of absorbent cores at the time of invention). Therefore, it would have been obvious to an artisan at the time of invention for modified St. Louis to include an absorbent core comprising a co-form layer as taught by Ashraf, in order to provide the predictable result of a sufficiently absorbent diaper using a common and thus easily-sourced and/or manufactured material (co-form).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional references teaching elastic laminates in diaper waistbands: Lakso et al. (US 2010/0298798 A1; Fig. 6); Wennerbäck (US 2010/0324513 A1). Additional references teaching differential applied waistband strains for waist elastics in diapers: Baba et al. (US 2011/0178489 A1); Fell et al. (US 2002/0177829 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHRYN E DITMER whose telephone number is (571)270-5178. The examiner can normally be reached M 7:30a-3:30p, Tu-Th 8a-2p, F 7:30-11:30a ET.
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/KATHRYN E DITMER/Primary Examiner, Art Unit 3785
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