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 1-14 are pending and examined on the merits.
Information Disclosure Statement
The references cited by applicants in the information disclosure statements filed from 9/30/2024 to 3/23/2026 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.
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 & 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 & 17, respectively, of U.S. Patent No. 11,000,421. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims 7 & 17 recite all limitations of the current claims 1 & 8. The difference is that patented claims 7 & 17, by their dependency from their respective independent claims, also recite a Relaxed Product Waist Width, which is not recited in the current Claims 1 & 8.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-10,13-18, respectively, of U.S. Patent No. 12,115,043 in view of Saito (US 2009/0177176). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims 1 & 10 recite all limitations of the current claims 1 & 8 except that the Average-Strand-Spacing in both of the first and second pluralities of elastics are less than 4mm. The patented claims 1 & 10 recite an additional limitation regarding a Relaxed Product Waist Width. Saito discloses a diaper cover having elastics in the front and back belts, wherein the elastics are spaced at 2mm ([0047]). It would have been obvious to one skilled in the art at the time of filing to modify with Saito’s teaching to ensure a smoother surface and more evenly distributed force exerted by the belt.
Allowable Subject Matter
Claims 1-14 contain allowable subject matter. Note the nonstatutory double patenting rejection of all claims.
The following is a statement of reasons for the indication of allowable subject matter:
No prior art is found to disclose or render obvious the inventions recited in Claim 1 or 8.
Ashton et al. (US 6,478,785) discloses an absorbent article having an elastomeric waist band and elastomeric side panels that exert a pressure onto the skin, which is understood to be the Pressure-Under-Strand for the individual article, at 0.1 to 0.75psi. Ashton fails to disclose that the article is formed with front and back waist panels or that there are at least 40 or 60 elastics in the waist panels. Ashton also does not mention that the article has a Target Body Length-to-Waist Silhouette or a Product Length-to-Waist Silhouette.
Seitz et al. (US 2015/0320620) discloses an array of absorbent articles, each article having front and back belts joined at the lateral opening, wherein the article has a Relaxed Product Waist Width of about 200-400mm (Table 2 shows one article at 358mm) and a Relaxed Product Length of 250-450mm (Table 2 shows the same article at 352mm), and that the Product Length-to-Waist Silhouette is 0.983 (based on the previous measurements). Seitz does not disclose a Target Body Length-to-Waist Silhouette, and thus one cannot figure out the difference between the Target Body Length-to-Waist Silhouette and the Product Length-to-Waist Silhouette. Seitz also does not disclose the number of elastics in each of the belt sections or how tightly the elastics cinch around the waist (i.e., Pressure-Under-Strand of the elastics).
Saito (US 2009/0177176) discloses a disposable diaper cover having more than 40 elastics or 60 elastics in the front belt (based on a disclosed spacing of 2mm between elastics ([0047]) and a longitudinal dimension of the front belt being 80-220mm ([0072] and Fig. 1). Saito does not disclose the other parameters recited in the current claims. Saito discloses curved elastic members (26 & 28) that extend from the waist belts into the crotch region of the article, these curved elastic members are essential components of Saito's invention and it is unlikely that incorporating the elastics of Saito into Seitz would allow the Seitz article to retain the disclosed relaxed product measurement and ratios.
Maki et al. (US 2018/0333311) discloses an absorbent article that comprises elastic front and back waist panels (Fig. 2) each formed from an elastic laminate that has a plurality of elastic strands disposed laterally, the strands being sandwiched between two substrate layer (Fig. 5). Maki fails to disclose the number of elastics in the waist panels or Pressure-Under- Strand of the strands.
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.
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/SUSAN S SU/Primary Examiner, Art Unit 3781 13 June 2026
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