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 .
Status of Claims
Claims 1-13 are pending and examined on the merits.
Information Disclosure Statement
The references cited by applicants in the information disclosure statements filed from 12/9/2024 to 1/27/2026 have been made of record. Examiner has considered the voluminous references to the best of her ability.
While the statements filed do not comply with the guidelines set forth in MPEP 2004 regarding both the number of references cited and the elimination of clearly irrelevant art and marginally cumulative information, compliance with these guidelines is not mandatory. Furthermore, 37 CFR 1.97 and 1.98 does not require that the information be material; rather, they allow for submission of information regardless of its pertinence to the claimed invention. Also, there is no requirement to explain the materiality of the submitted references. However, the cloaking of a clearly relevant reference by inclusion in a long list of citations may not comply with Applicant’s duty of disclosure. See Penn Yan Boats, Inc. v. Sea Lark boats Inc., 359 F. Supp. 948, aff’d 479 F. 2d. 1338.
Applicant is advised that the MPEP states the following with respect to large information disclosure statements:
Although a concise explanation of the relevance of information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted. Concise explanations (especially those that point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more is highly relevant to patentability. MPEP § 609.04(a)(III).
This statement is in accord with dicta from Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), states that forcing the Examiner to find “a needle in a haystack” is “probative of bad faith.” Id. at 1888. This case presented a situation where the disclosure was in excess of 700 pages and contained more than fifty references. Id. 1888.
The MPEP provides more support for this position. In a subsection entitled “Aids to Compliance With Duty of Disclosure,” item thirteen states:
It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant information and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to Applicant’s attention and/or are known to be of the most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F.Supp 948 (S.D. Fla. 1972) aff’d 479 F.2d 1338 (5th Cir 1974). See also MPEP § 2004.
Therefore, it is recommended that if any information that has been cited by Applicants in the previous disclosure statement is known to be material for patentability as defined by 37 CFR 1.56, Applicant should present a concise statement as to the relevance of that/those particular documents therein cited.
Claim Objections
Claim 13 is objected to because of the following informalities:
Re Claim 13, “wherein the each of the elastic strand” should be “wherein each of the elastic strands”.
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 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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-23 of U.S. Patent No. 10,987,253. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 12 recites all limitations in current claim 1; the differences being that the patented claim 1 recites an additional limitation and has a narrower range for the Basis Weight and for the 2%-98% Height Value. The patented claims 13, 15-22, 14, 23 recite the same limitations as the current claim 2-12, respectively.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,109,093. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 1 recites all limitations in current claim 1; the difference being that the patented claim 1 recites an additional limitation and has a narrower range for the 2%-98% Height Value. The patented claims 2-12 recite the same limitations as the current claim 2-12, respectively.
Claim Rejections - 35 USC § 103
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2004/0158217).
Re Claim 1, Wu discloses an absorbent article, comprising:
a chassis (main chassis layer 34) comprising a topsheet (14), a backsheet (12) and an absorbent core (16) disposed between the topsheet and the backsheet;
an elastomeric laminate (52) forming at least a portion of an article component selected from the group consisting of a belt (e.g., Figs. 2A-2C showing elastic assembly 52, which is formed of stomach elastics 3 sandwiched between substrates 32 & 32', forming all or a portion of the belt), waistband, waistcap, inner leg cuff, outer leg cuff, a transverse barrier, and combinations thereof;
wherein the elastomeric laminate (e.g., [0062]) comprising a first substrate layer (32) and a second substrate layer (32') and a plurality of elastics (stomach elastics 3) disposed between the first substrate layer and the second substrate layer;
wherein the plurality of elastics comprises from about 10 to about 400 elastic strands ([0112] "about 8 to 300 stomach elastics"), an Average-Strand-Spacing from about 0.25 mm to about 4 mm ([0110] "are spaced apart at about 1 to about 10 elastics per centimeter," which is mm of spacing between elastics), an Average-Dtex from about 10 to about 500 ([0110] "the stomach elastics 3 have a decitex of about 220"), and an Average-Pre-Strain from about 50% to about 400% ([0111], “the stomach elastics 3 are extended to about 2 times to 4 times, and most preferably 3.5 times their unstretched length”); and
ate least one of the first substrate layer and second substrate layer each have a Basis Weight from about 6 grams per square meter to about 30 grams per square meter;
Wu does not expressly teach that wherein the elastomeric laminate has a 2%-98% Height Value of <3.0 mm (see [0332] of the current PGPub, namely 2024/0415703, explaining the 2%-98% Height Value as a measurement of the thickness of the elastic laminate). Instead, Wu discloses that the elastomeric laminate under a pressure of 0.05 psi has a thickness of 2.6mm ([0120]). While it is not exactly clear how the Wu’s disclosed thickness would compare to the claimed 2%-98% Height Value (another thickness value measured with a different method), but given Wu discloses essentially the exact elastomeric laminate structure as claimed (e.g., the elastic strands fall within the claimed fineness, the substrates having the claimed basis weight, and the elastic strands being attached at the claimed pre-strain), one skilled in the art would also reasonably find it likely that the Wu elastomeric laminate exhibits a Height Value that falls within the claimed range when measured under the same conditions.
Re Claim 2, Wu also discloses that the plurality of elastics comprises from about 100 to about 650 elastic strands ([0112]).
Re Claim 3, Wu also discloses that the plurality of elastics comprises an Average-Strand-Spacing from about 0.5 mm to about 3.0 mm ([0110], "about 10 elastics per centimeter").
Re Claim 4, Wu also discloses that the plurality of elastics comprises an Average-Dtex from about 30 to about 400 ([0110] "decitex of about 220").
Re Claim 5, Wu also discloses that the plurality of elastics comprises an Average-Pre-Strain from about 75% to about 300% ([0111] "extended to about 2 times to 4 times").
Re Claims 6-10, Wu does not expressly disclose that the elastomeric laminate has an Average Pressure Under Strand from about 0.1 psi to about 1 psi, the elastomeric laminate has an Air Permeability of at least one of: a) greater than about 40 cubic meters/square meter/minute Air Permeability at 0 gf/mm (no extension); b) greater than about 60 cubic meters/square meter/minute Air Permeability at 3 gf/mm (slight extension); and c) greater than about 80 cubic meters/square meter/minute Air Permeability at 7 gf/mm (moderate extension), the elastomeric laminate has a Water Vapor Transmission Rate of greater than 4000 g/m2/24 hrs, the elastomeric laminate has a Caliper of at least one of: a) from about 0.5 mm to about 4 mm Caliper at 0 gf/mm (no extension); b) from about 60% to about 95% Caliper Retention Value at 3 gf/mm (slight extension); and c) from about 40% to about 90% Caliper Retention Value at 7 gf/mm (moderate extension), or the elastomeric laminate has a Cantilever Bending of less than about 40 mm. However, all of these are properties determined by the structure and materials that form the elastomeric laminate. Since Wu discloses an elastomeric laminate that has the same number of elastic strands, same elastic strand fineness, same pre-strain, same spacing, substrates of the same basis weight that are made of spunbond nonwoven ([0139], which discloses substrates 32 & 32' being 13.5 gsm spunbond nonwovens, same as that disclosed in [0183] of the current PGPub), it is reasonable for one skilled in the art to expect that properties exhibited by the Wu invention would be the same as those currently claimed. See MPEP 2112.
Re Claim 11, Wu also discloses that the elastomeric laminate has a Rugosity Frequency of from about 0.2 mm-1 to about 1 mm-1 and a Rugosity Wavelength of from about 0.5 mm to about 5 mm ([0120] "at least about 8 corrugations per centimeter," which yields a frequency of 0.8 mm-1 and a wavelength of 1.125mm).
Re Claim 12, Wu also discloses that the plurality of elastics comprises from about 30 to about 400 elastic strands ([0112]).
Claim 13 rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of LaVon et al. (US 2013/0211363).
Re Claim 13, Wu discloses claim 1 but does not explicitly disclose wherein each of the elastic strands comprises a plurality of individual fibers. LaVon discloses a diaper having elastic strands, wherein an elastic strand may be made from a single strand or by combining multiple strands in close proximity to each other ([0057]). It would have been obvious to one skilled in the art a the time of filing to modify Wu by gleaning from LaVon’s knowledge that elastics may be made from a single strand or from combining multiple strands together as a way to control the force exerted against the skin of a user.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSAN S SU whose telephone number is (408)918-7575. The examiner can normally be reached M-F 9:00 - 5:00 Pacific.
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, Rebecca Eisenberg can be reached at 571-270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUSAN S SU/Primary Examiner, Art Unit 3781
9 June 2026
Prosecution Insights