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 .
Claim Objections
Claim 1 is objected to because the language “within about 0 to about 20% of first density” should read “within about 0 to about 20% of the first density.”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 recites the limitation "the back region" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, this limitation is interpreted as “the rear region”.
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 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.
Claim(s) 1-2, 9-10, 12-16, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al (US 2015/0238369) in view of Hao et al (US 2015/0133884).
Regarding Claim 1, Kaiser discloses a disposable absorbent article (100, Fig. 1) comprising:
a topsheet (105, Fig. 1);
a backsheet (107, Fig. 1); and
an absorbent core structure disposed between the topsheet (105, Fig. 1) and the backsheet (107, Fig. 1), wherein the absorbent core structure comprises:
an upper layer and a lower layer (¶ [0077] a substrate is wrapped around the absorbent core); and
an inner core layer (112/212, Figs. 1-2) disposed between the upper and the lower layer (¶ [0077]), wherein the inner core layer (112/212, Figs. 1-2) comprises cellulosic fibers are superabsorbent particles (¶ [0048]);
wherein the inner core layer (112/212, Figs. 1-2) further comprises a central absorbent zone (220, Fig. 2) having a first basis weight and an outer absorbent zone (218, Fig. 2) having a second basis weight, wherein the outer absorbent zone (218, Fig. 2) substantially surrounds the central absorbent zone (220, Fig. 2), wherein the first basis weight is greater than the second basis weight (¶ [0073]);
wherein the central absorbent zone (220, Fig. 2) comprises a pair of inwardly concave longitudinal side edges, an outwardly convex front edge, and an outwardly convex rear edge (as seen in Fig. 2);
wherein the absorbent article (100, Fig. 1) has a first average density measured in the central absorbent zone (220, Fig. 2) and a second average density measured in the outer absorbent zone (218, Fig. 2), and wherein the second density is within about 0 to about 20% of the first density (¶ [0070-0071]; values for both densities can be selected from the given ranges that result in the second density being within about 0 to about 20% of the first density).
Kaiser is silent whether the upper and lower layers are nonwoven layers comprising polymer fibers.
Hao teaches an absorbent article, thus being in the same field of endeavor, with an absorbent layer wrapped in polymeric nonwoven sheet materials (¶ [0073]). Utilizing a core wrap surrounding the absorbent layer is well known in the art of absorbent articles to provide extra stability to the absorbent materials.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate of Kaiser to be a nonwoven material comprising polymer fibers, as taught by Hao, to utilize a well known core wrap material to provide stability to the absorbent core (as taught by Hao ¶ [0073]).
Regarding Claim 2, Kaiser further discloses the first basis weight and the second basis weight differ by about 20% to about 100% (¶ [0073]; the preferred second basis weight is 450 gsm and the preferred first basis weight is 900 gsm, which is 100% more than the second basis weight).
Regarding Claim 9, Kaiser further discloses the inner core layer (112/212, Fig. 2) is a unitary structure (as seen in Fig. 2).
Regarding Claim 10, Kaiser/Hao is silent whether the central absorbent zone has a longitudinal length of from about 50% to about 75% of an inner core layer longitudinal length.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Kaiser/Hao to have the central absorbent zone have a longitudinal length of from about 50% to about 75% of an inner core layer longitudinal length since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kaiser/Hao would not operate differently with the central absorbent zone having a longitudinal length of from about 50% to about 75% of an inner core layer longitudinal length and since the device would function appropriately to absorbent fluid with the claimed central absorbent layer longitudinal length. Further, applicant places no criticality on the range claimed, indicating simply that the central absorbent zone “may” be within the claimed ranges (¶ [0050] of published specification).
Regarding Claim 12, Kaiser discloses a disposable absorbent article (100, Fig. 1) comprising:
a topsheet (105, Fig. 1);
a backsheet (107, Fig. 1); and
an absorbent core structure disposed between the topsheet (105, Fig. 1) and the backsheet (107, Fig. 1), wherein the absorbent core structure comprises:
an upper layer and a lower layer (¶ [0077] a substrate is wrapped around the absorbent core); and
an inner core layer (112/212, Figs. 1-2) disposed between the upper and the lower layer (¶ [0077]), wherein the inner core layer (112/212, Figs. 1-2) comprises cellulosic fibers are superabsorbent particles (¶ [0048]);
wherein the inner core layer (112/212, Figs. 1-2) further comprises a central absorbent zone (220, Fig. 2) having a first basis weight and an outer absorbent zone (218, Fig. 2) having a second basis weight, wherein the outer absorbent zone (218, Fig. 2) substantially surrounds the central absorbent zone (220, Fig. 2), wherein the first basis weight is greater than the second basis weight (¶ [0073]);
wherein the central absorbent zone (220, Fig. 2) comprises a pair of inwardly concave longitudinal side edges, an outwardly convex front edge, and an outwardly convex rear edge (as seen in Fig. 2);
wherein the central absorbent zone (220, Fig. 2) comprises a narrow portion between the inwardly concave longitudinal edges (as seen in Fig. 2);
wherein the inner core layer (112/212, Figs. 1-2) is a unitary structure (as seen in Fig. 2);
wherein the absorbent article (100, Fig. 1) has a first average density measured in the central absorbent zone (220, Fig. 2) and a second average density measured in the outer absorbent zone (218, Fig. 2), wherein the first and second average density are between about 0.045 g/cm3 and about 0.15 g/cm3 (¶ [0070-0071]).
Kaiser is silent whether the upper and lower layers are nonwoven layers, a first wing portion extending laterally outward from a first longitudinal side of the absorbent article, and a second wing portion extending laterally outward from a second longitudinal side of the absorbent article, wherein the narrow portion is positioned forward of a lateral centerline of the first and second wing portions.
Hao teaches an absorbent article, thus being in the same field of endeavor, with an absorbent layer wrapped in polymeric nonwoven sheet materials (¶ [0073]) and a first and second wing portion (13, Fig. 1) extending laterally outward from a first and a second longitudinal side of the absorbent article to secure the absorbent article to the user’s undergarments (¶ [0042]). Utilizing a core wrap surrounding the absorbent layer is well known in the art of absorbent articles to provide extra stability to the absorbent materials, and the use of wings is well known to ensure the absorbent article remains in place within the user’s undergarments without shifting or bunching.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate of Kaiser to be a nonwoven material comprising polymer fibers, as taught by Hao, to utilize a well known core wrap material to provide stability to the absorbent core (as taught by Hao ¶ [0073]), and to modify the absorbent article to have wings to allow the user to secure the article to their undergarments (as taught by Hao ¶ [0042]). The combination of Kaiser/Hao will have the narrow portion of the central absorbent zone positioned forward of the lateral centerline of the first and second wing portions, since the wings of Hao would be placed along the narrowing portion of the absorbent core 212. The lateral centerline of the wings would therefore be around the lateral center point of the narrowed portion of core 212, which would make the narrow portion of the central absorbent zone 220 positioned forward of this lateral centerline.
Regarding Claim 13, Kaiser/Hao is silent whether the inner core layer comprises a minimum lateral width, wherein the narrow portion of the central absorbent zone has a lateral width that is from about 20% to about 40% of the minimum lateral width of the inner core layer.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Kaiser/Hao to have the narrow portion of the central absorbent zone have a lateral width that is from about 20% to about 40% of the minimum lateral width of the inner core layer since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kaiser/Hao would not operate differently with a narrow portion of the central absorbent core having a lateral width of about 20% to about 40% of the minimum lateral width of the inner core layer and since the absorbent core would absorb fluid the device would function appropriately with the claimed central absorbent zone lateral width. Further, applicant places no criticality on the range claimed, indicating simply that the central absorbent zone lateral width “may” be within the claimed ranges (¶ [0053] of published specification).
Regarding Claim 14, Kaiser further discloses the absorbent article (100, Fig. 1) further comprises a front region (101, Fig. 1), a rear region (103, Fig. 1) and a middle region disposed between the front region (101, Fig. 1) and the rear region (103, Fig. 1), wherein the narrow portion of the central absorbent zone (120/212, Figs. 1-2) is positioned in the middle region (as seen in Fig. 1).
Regarding Claim 15, Kaiser/Hao is silent whether the narrow portion has a lateral width of from about 10 mm to about 20 mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Kaiser/Hao to have the narrow portion have a lateral width of from about 10 mm to about 20 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kaiser/Hao would not operate differently with a narrow portion lateral width of from about 10 mm to about 20 mm and since the device would be capable of absorbing fluid the device would function appropriately with the claimed narrow portion lateral width. Further, applicant places no criticality on the range claimed, indicating simply that the narrow portion lateral width “may” be within the claimed ranges (¶ [0053] of published specification).
Regarding Claim 16, Kaiser/Hao is silent whether the absorbent article has a caliper measured in the central absorbent zone of from about 2.5 mm to about 6 mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Kaiser/Hao to have a central absorbent zone caliper of from about 2.5 mm to about 6 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kaiser/Hao would not operate differently with a central absorbent zone caliper of from about 2.5 mm to about 6 mm and since the central absorbent zone would be capable of absorbing fluid the device would function appropriately with the claimed central absorbent zone caliper. Further, applicant places no criticality on the range claimed, indicating simply that the central absorbent zone caliper “may” be within the claimed ranges (¶ [0045]).
Regarding Claim 18, Kaiser further discloses the absorbent core structure (Fig. 2) is shaped to substantially follow the shape of the central absorbent zone (220, Fig. 2; the shape of the central absorbent zone is similar to the shape of the core as a whole).
Regarding Claim 19, Kaiser/Hao does not explicitly indicate the upper nonwoven layer has a Permanent Strain of about 0.005 to about 0.013 mm/mm. However, it has been held that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01. Therefore, the upper nonwoven layer of Kaiser/Hao inherently has a Permanent Strain of about 0.005 to about 0.013 mm/mm.
Regarding Claim 20, Kaiser/Hao is silent whether the outwardly convex from edge is positioned a distance of from about 25 mm to about 45 mm from a front edge of the inner core layer.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Kaiser/Hao to have the outwardly convex front edge be positioned a distance of from about 25 mm to about 45 mm from a front edge of the inner core layer since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kaiser/Hao would not operate differently with the claimed positioning of the outwardly convex front edge and since the device would absorb fluid the device would function appropriately with the claimed positioned of the outwardly convex front edge. Further, applicant places no criticality on the range claimed, indicating simply that the placement of the outwardly convex from edge “may” be within the claimed ranges (¶ [0052] of published specification).
Claim(s) 3-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al (US 2015/0238369) in view of Hao et al (US 2015/0133884) further in view of Alkmin et al (US 2012/0040039).
Regarding Claims 3 and 4, Kaiser further discloses the central absorbent zone (220, Fig. 2) comprises a front region having a first lateral width W1, a rear region having a third lateral with W3, and a middle region disposed therebetween having a second lateral width W2, wherein the second lateral width W2 is smaller than the first lateral width W1 and the third lateral width W3.
Kaiser/Hao is silent whether the third lateral width W3 is greater than the first lateral width W1 and the second lateral width W2.
Alkmin teaches an absorbent article, thus being in the same field of endeavor, with a central raised area (213, Fig. 25) with a rear region having a lateral width that is larger than the front region (as seen in Fig. 25). This allows the raised area to conform to a user’s body more effectively to prevent leakage and user discomfort.
Therefore, it would have been obvious to modify the shape of the central absorbent zone of Kaiser/Hao to have a third lateral width W3 that is greater than the first lateral width W1, as taught by Alkmin, to allow the central absorbent zone to more accurately conform a user’s body to prevent leakage and user discomfort.
Regarding Claim 5, Kaiser/Hao/Alkmin is silent whether the first lateral width W1 is from about 20 mm to about 35 mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Kaiser/Hao/Alkmin to have a first lateral width W1 from about 20 mm to about 35 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kaiser/Hao/Alkmin would not operate differently with a first lateral width from about 20 mm to about 35 mm and since the device would be capable of absorbing fluid the device would function appropriately with the claimed first lateral width. Further, applicant places no criticality on the range claimed, indicating simply that the first lateral width “may” be within the claimed ranges (¶ [0049] of published specification).
Regarding Claim 6, Kaiser/Hao/Alkmin is silent whether the third lateral width W3 is from about 30 mm to about 45 mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Kaiser/Hao/Alkmin to have a third lateral width W3 from about 30 mm to about 45 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kaiser/Hao/Alkmin would not operate differently with a third lateral width from about 30 mm to about 45 mm and since the device would be capable of absorbing fluid the device would function appropriately with the claimed third lateral width. Further, applicant places no criticality on the range claimed, indicating simply that the third lateral width “may” be within the claimed ranges (¶ [0049] of published specification).
Regarding Claim 7, Kaiser/Hao/Alkmin is silent whether the second lateral width W2 is from about 10 mm to about 20 mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Kaiser/Hao/Alkmin to have a second lateral width W2 from about 10 mm to about 20 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kaiser/Hao/Alkmin would not operate differently with a second lateral width from about 10 mm to about 20 mm and since the device would be capable of absorbing fluid the device would function appropriately with the claimed second lateral width. Further, applicant places no criticality on the range claimed, indicating simply that the second lateral width “may” be within the claimed ranges (¶ [0049] of published specification).
Claim(s) 8 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al (US 2015/0238369) in view of Hao et al (US 2015/0133884) further in view of Munakata et al (US 2006/0116653).
Regarding Claims 8 and 17, Kaiser/Hao is silent whether the central absorbent zone has a first caliper and the outer absorbent zone has a second caliper, wherein a ratio of the first caliper to the second caliper is from 1.2 to about 2.5.
Munakata teaches an absorbent article, thus being in the same field of endeavor, with a caliper ratio of a profiled portion to a non-profiled portion of the absorbent core can be about 2.2:1 (¶ [0078, 0107]). This allows the central region of the absorbent core to have the highest profile of the absorbent article (¶ [0107]).
Therefore, it would have been obvious to modify the caliper of the absorbent core of Kaiser/Hao to have the central absorbent zone have a first caliper and the outer absorbent zone have a second caliper, wherein the ratio of the first caliper to the second caliper is from 1.2 to about 2.5, as taught by Munakata, to have the central region of the absorbent core have the highest profile of the absorbent article and therefore improve the fluid handling of the article (as motivated by Munakata ¶ [0107]).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al (US 2015/0238369) in view of Hao et al (US 2015/0133884) further in view of Bianchi et al (US 2017/0312149).
Regarding Claim 11, Kaiser/Hao is silent whether the first basis weight is from about 220 gsm to about 450 gsm and the second basis weight is from about 150 gsm to about 320 gsm.
Bianchi teaches an absorbent article, thus being in the same field of endeavor, with a first basis weight in the range of 150-300 gsm and a second basis weight in the range of 50-200 gsm (¶ [0044]). Bianchi discloses these basis weights of a profiled absorbent core are suitable for most absorbent articles (¶ [0044]).
Therefore, it would have been obvious to modify the first basis weight of Kaiser/Hao to be in the range of 150-200 gsm and the second basis weight in the range of 50-200 gsm, as taught by Bianchi, as these values of profiled core basis weights have been shown to be suitable for most absorbent articles (as motivated by Bianchi ¶ [0044]).
Kaiser/Hao/Bianchi discloses a first basis weight in the range of 150-200 gsm and a second basis weight in the range of 50-200 gsm.
However, Kaiser/Hao/Bianchi does not explicitly disclose a first basis weight in the range of about 220-450 gsm and a second basis weight in the range of about 150-320 gsm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second basis weights of Kaiser/Hao/Bianchi to be from 150-200 gsm to 220-450 gsm, and from 50-200 gsm to 150-320 gsm, respectively, as applicant appears to have placed no criticality on the claimed range (see ¶ [0043] of Applicant’s published specification indicating the basis weights “may” be within the claimed range) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 17 of copending Application No. 18/804,295 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are merely narrower than the instant claim. Claims 3 and 17 both recite the basis weight values for the upper and lower nonwoven layers, which is not present in Instant Claim 1, and Claim 3 additionally recites the limitation that the first and second average density are between about 0.045 g/cm3 and about 0.150 g/gm3 which is not present in Instant Claim 1. As such, both copending claims 3 and 17 anticipate the instant Claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JESSICA ARBLE/ Primary Examiner, Art Unit 3781
Prosecution Insights