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 .
Specification
The disclosure is objected to because of the following informalities:
the “CROSS REFERENCE TO RELATED APPLICATIONS” section on page 1 should be updated with U.S. Patent No.(s) for the U.S. Application No.(s) listed that are now patents.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 recites the limitation “a step of applying adhesive to at least one of the first elastic strands, the first substrate, and the second substrate”. However, claim 1 recites the limitations “bonding the stretched first and second elastic strands between a first substrate and a second substrate” and “wherein the first elastic strands are bonded with a first bond applicator configured to apply adhesive bonds” (it being noted a first bond applicator configured to apply adhesive bonds is interpreted as an adhesive applicator) so that adhesive is necessarily applied with the first bond applicator to at least one of the first elastic strands, the first substrate, and the second substrate in order to adhesive bond the first elastic strands between the first substrate and the second substrate. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,059,328. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-12 of U.S. Patent No. 12,059,328 fully encompass claims 1-11 of the instant application (and including claim 1 of U.S. Patent No. 12,059,328 teaching (while not identical) encompassing limitations of “providing first elastic strands wound onto beams, wherein each beam comprises a mandrel core” and “wherein the first elastic strands are bonded with a first bond applicator configured to apply adhesive or mechanical bonds”).
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,654,059. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 of U.S. Patent No. 11,654,059 fully encompass claims 1-11 of the instant application but for a specific teaching of wherein each beam comprises a mandrel core, providing the first elastic strands wound onto the mandrel cores, and rotating the mandrel cores to unwind the first elastic strands from the mandrel cores. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention each beam taught by claims 1-14 of U.S. Patent No. 11,654,059 comprises a mandrel core (and thus providing the first elastic strands wound onto the mandrel cores and rotating the mandrel cores to unwind the first elastic strands from the mandrel cores) following the express direction in claims 1-14 of U.S. Patent No. 11,654,059 of at least one beam comprises a mandrel core (see claim 10) and unwinding at least one first elastic strand from the mandrel core (see claim 11) which beam (comprising the mandrel core) is rotated to unwind the at least one first elastic strand (see claim 1).
Claims 1-8 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,141,322 in view of Pfeifer et al. (WO 92/07531 and see also the machine translation attached to the Office action mailed on 10/3/2022 in parent Application No. 17/474,423) and Ono (JP 56-99175 and see also the abstract attached to the Office action mailed 10/3/2022 in parent Application No. 17/474,423). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of U.S. Patent No. 11,141,322 fully encompass claims 1-8 and 11 of the instant application but for a specific teaching of providing the first elastic strands wound onto mandrel cores. It is well understood in the same art each strand (5) is wound onto one reel (6 and considered analogous to one beam) as evidenced by Pfeifer (Figure 2 and Page 4 of the machine translation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the first elastic strands wound onto a beam as taught by claims 1-9 of U.S. Patent No. 11,141,322 are wound onto beams, i.e. plural, as it is well understood in the same art each strand is wound onto one reel (i.e. considered analogous to one beam) as evidenced by Pfeifer to predictably provide the strands (i.e. a simple substitution of one known technique to prove the strands for another to yield predictable results). It would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention each beam (from which a first elastic strand is unwound) taught by claims 1-9 of U.S. Patent No. 11,141,322 as modified by Pfeifer comprises a mandrel core (and thus providing the first elastic strands wound onto the mandrel cores and rotating the mandrel cores to unwind the first elastic strands from the mandrel cores) as it is further well understood in the art a beam comprise side plates of flanges (3) connected with opposing end portions of a (rotatable) mandrel core of a barrel (2) as evidenced by Ono to predictably provide a beam (Figure 1 and Abstract).
Regarding claim 11, claims 1-9 of U.S. Patent No. 11,141,322 teach “first elastic strands” (i.e. plural/more than one) wherein it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the first elastic strands taught by claims 1-9 of U.S. Patent No. 11,141,322 as modified by Pfeifer and Ono comprise about 200 to about 1000 elastic strands as in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists it being noted there is no evidence of record the claimed range is critical and claims 1-9 of U.S. Patent No. 11,141,322 do not teach away from the claimed range (See MPEP 2144.05).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,141,322 and Pfeifer and Ono as applied claims 1-8 and 11 above, and further in view of Wu et al. (U.S. Patent Application Publication 2004/0158217). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of U.S. Patent No. 11,141,322 as modified by Pfeifer and Ono above fully encompass claim 9 of the instant application but for a specific teaching the first decitex is less than about 100. It is known in the same art conventional decitex is less than 220 and including to form a lighter elastomeric laminate as evidenced by Wu (Paragraphs 0012 and 0144). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in claims 1-9 of U.S. Patent No. 11,141,322 as modified by Pfeifer and Ono the first decitex is less than about 100 not only as a simple substitution of one known decitex to yield predictable results but to form a lighter elastomeric laminate as taught by Wu, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists wherein there is no evidence of record the claimed range is critical and claims 1-9 of U.S. Patent No. 11,141,322 do not teach away from the claimed range (See MPEP 2144.05).
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,141,322 and Pfeifer and Ono as applied claims 1-8 and 11 above, and further in view of Groitzsch et al. (U.S. Patent Application Publication 2004/0219854). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of U.S. Patent No. 11,141,322 as modified by Pfeifer and Ono above fully encompass claim 10 of the instant application but for a specific teaching a step of spacing the first elastic strands apart from each other by about 0.5mm to about 4mm wherein conventionally the distance is 0.5 to 15.0 mm as evidenced by Groitzsch (Paragraph 0069). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention claims 1-9 of U.S. Patent No. 11,141,322 as modified by Pfeifer and Ono comprise a step of spacing the first elastic strands apart from each other by about 0.5mm to about 4mm as is the conventional and predictable spacing for the strands as evidenced by Groitzsch, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists wherein there is no evidence of record the claimed range is critical and claims 1-9 of U.S. Patent No. 11,141,322 do not teach away from the claimed range (See MPEP 2144.05).
Allowable Subject Matter
Claims 1-6 and 8-11 would be allowable in view of a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the rejections based on nonstatutory double patenting set forth above (i.e. provided the reference 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 paragraphs 5-8 above).
The following is a statement of reasons for the indication of allowable subject matter:
Hayase et al. (U.S. Patent Application Publication 2010/0076394) discloses a method for making an absorbent article including stretching elastic members (23S, 24S, 25S, and 26S), bonding the stretched elastic members between a first substrate (21S) and a second substrate (22S), and cutting some of the elastic members to create functionless regions (Figures 14-16 and Paragraphs 0098 and 0191-0204).
Ando et al. (U.S. Patent Application Publication 2006/0270302) discloses a method for making an extensible member including bonding stretched elastic members (4 and including the stretch ratio or stretch stress may vary between elastic members) between a first sheet material (2) and a second sheet material (3) with first adhesive bonds/end seals (11) and second bonds/fusion joints (5) to form an elastomeric laminate comprising different stretch characteristics in different regions in the elastomeric laminate (Figure 1 and Paragraphs 0045, 0063, 0072, 0121, 0135, and 0145).
Pfeifer et al. (WO 92/07531 and see also the machine translation) discloses a method for making a disposable shaped nappy including elastic strands unwound from reels and stretched (Figure 2 and Page 4 of the machine translation).
Groitzsch et al. (U.S. Patent Application Publication 2004/0219854) discloses a method for making an elastic composite fabric including providing elastic threads (26) wound onto a beam (22), rotating the beam to unwind the elastic threads, and stretching the elastic threads (Figure 4 and Paragraphs 0139 and 0141).
Yamamoto (U.S. Patent Application Publication 2013/0032656) discloses an elastic thread supply device providing elastic threads from an overend unwinding device (100) and stretching the threads where Yamamoto teaches advantage in the case of overend unwinding (to that of rotating to unwind) because the elastic thread package does not rotate the processing line need not be stopped to change the elastic thread package (Figure 1 and Paragraphs 0004, 0032, and 0042). Similarly, Bing-Wo et al. (U.S. Patent Application Publication 2008/0283653) discloses a continuous over end take-off (OETO) creel for providing elastomeric threads teaching OETO is advantageous to a rolling takeoff using a rotating cylindrical mandrel as when the package is exhausted the empty mandrel must be removed and a new package installed (Paragraphs 0002-0003).
The prior art of record (alone or in combination) fails to teach or suggest a method for making absorbent articles as claimed and including a step of providing first elastic strands wound onto mandrel cores, wherein the first elastic strands comprise a first decitex, and rotating the mandrel cores to unwind the first elastic strands from the mandrel cores in combination with a step of providing second elastic strands, wherein the second elastic strands comprise a second decitex and wherein the second decitex is greater than the first decitex, and unwinding the second elastic strands from an overend unwinding device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN L GOFF II whose telephone number is (571)272-1216. The examiner can normally be reached 7:30 AM - 4:00 PM EST Monday - Friday.
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746