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” should be updated.
Appropriate correction is required.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 7-8 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 11, and 16-18 of U.S. Patent No. 11,732,420. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps, and the other difference between the claims is that the current application recites that the plurality of wet-formed Knuckles are discrete, yet the scope of the US Patent encompasses such scope since it is broader in that sense. Moreover, making the web with discrete or continuous are within the levels of ordinary skill in the art since there are obvious design choices, i.e., the plurality of knuckles can be either continuous, discrete or a combination of those, which can be then be considered discrete, e.g., the semi-continuous.
Claims 1, 8, 11 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, 16 and 17 of U.S. Patent No. 11,408,129. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps. Note for example that the claims of the US patent can be used to reject the claims of the current application.
Claims 1 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 11 and 17 of U.S. Patent No. 12,071,729. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps, and the other difference between the claims is that the current application recites that the plurality of wet-formed Knuckles are discrete, yet the scope of the US Patent encompasses such scope since it is broader in that sense. Moreover, making the web with discrete or continuous are within the levels of ordinary skill in the art since there are obvious design choices, i.e., the plurality of knuckles can be either continuous, discrete or a combination of those, which can be then be considered discrete, e.g., the semi-continuous.
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Maladen et al., (hereafter Maladen), WO 2016/022618 A1.
With regard to claims 1, 7-11 and 16-20, Maladen disclose a fibrous structure comprising a plurality of wet formed knuckles extending from a pillow surface of the fibrous structure, wherein the plurality of discrete knuckles are arranged in a pattern of repeat units having substantially the same shape and same size. At least some of the discrete knuckles are arranged in a plurality of rows of adjacent knuckles wherein all the rows are oriented along either a Y-axis or an X-axis. The rows are not taken to be strictly straight rows but the rows may be curved such as in a sinusoidal pattern; see abstract, page 13, lines 1-5 and figures 6 and 10 (which shows sinusoidal pattern); page 4, line 17 through page 5, line 3 and paragraph bridging pages 5 and 6. While Maladen does not explicitly teach the wavelength and amplitude as claimed, optimizing the distance and frequency of the patterns is within the levels of ordinary skill in the art and considered obvious absent a showing of unexpected results. Note also that it has been held that “[C]hanges of size, shape, without functional significance are not patentable.” Research Corp. V. Nasco Industries, Inc., 501 F2d 358: 182 USPQ 449 (CA 7) cert. Denied 184 USPQ 193; 43 USLW 3359 (1974). While Maladen does not measure all the claimed properties, Maladen shows SST that falls within the claimed range; see Table 1 and claim 10 for example and teaches sheet density between 0.02 g/cm3 and 0.10 g/cm3, which correspond to sheet bulk between 50 cm3/g to 10 cm3/g (bulk= 1/density), since the process seems to be the same, using similar if not the same molding/structuring belt/fabric, then it must be assumed that the other properties also falls within the claimed range. It has been held that “Where the claimed and prior art apparatus or product is identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F. 2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In other words, when the structure recited in the reference is substantially identical to that of the claims, the claimed properties or functions are presumed to be inherent.
Regarding to claims 2 and 12, see page 13, lines 1-5 and figures 6 and 10 shows sinusoidal pattern.
With regard to claims 3-5 and 13-15, while Maladen teaches sinusoidal pattern, see page 13, lines 1-5 and figures 6 and 10 for example, the reference is silent with regard to the amplitude and wavelength of the pattern; however as indicated above the optimization of the frequency and period, i.e., wavelength and amplitude of the wave, sinusoidal pattern is within the levels of ordinary skill in the art and considered obvious absent a showing of unexpected results. Note also that it has been held that “[C]hanges of size, shape, without functional significance are not patentable.” Research Corp. V. Nasco Industries, Inc., 501 F2d 358: 182 USPQ 449 (CA 7) cert. Denied 184 USPQ 193; 43 USLW 3359 (1974).
With regard to claim 6, Maladen teaches that the cells have uniform size and shape; see abstract and page 13, lines 1-5 and table 1 on page 11, shows that knuckles can be constant in size or can be varying in size.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Fibrous Structures.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached on MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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, Abbas Rashid can be reached on 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF