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 .
Election/Restrictions
Applicant’s election with traverse of group I, claims 1-5 and 16-18, in the reply filed on 04/23/2026 is acknowledged. Claims 6-15 and 19 withdrawn from further consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/13/2024 has been considered by the examiner.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Preliminary Amendment
Preliminary Amendment that was filed on 09/13/2024 is entered.
Claim Rejections - 35 USC § 112
Claim 1 rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Claim 1 relates to a water-soluble sheet of any composition. This represent an unreasonable generalization from the specific support, since a technical effect has only been shown for PVOH films. Moreover, the application fails to provide support demonstrating or rendering plausible technical effects for all compositions claimed, thus lacks patentability.
Claim Objections
Claim 2 is objected to because the subject- matter for which protection is sought is not clearly defined. The claim attempts to define the subject-matter in terms of the result to be achieved, i.e. that the nanostructured surface pattern is configured such that, in use, polychromatic light incident on the nanostructured surface pattern is diffracted into dispersed colours that are visible on the water-soluble sheet. This is merely a statement of the underlying problem without providing the technical features necessary to achieve this result.
The feature of claim 2 is interpreted in the following as being fulfilled by all water-soluble films having a nanostructured surface pattern with structural features of less than 2 µm.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1, 2, 4 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by IEDA (US PUB 2020/0207530).
Regarding claim 1, IEDA teaches a water-soluble sheet comprising a nanostructured surface pattern (a uniform irregularity pattern can be formed, para. [0123]) having structural features of less than 2 μm (see Abstract and para. [0015]).
Regarding claim 2, IEDA teaches the nanostructured surface pattern is configured such that, in use, polychromatic light incident on the nanostructured surface pattern is diffracted into dispersed colours that are visible on the water-soluble sheet (e.g., a laser diffraction particle size distribution measuring apparatus, see para. [0053] … additives usually used in a PVA film, such as a colorant, para. [0101]).
Regarding claim 4, IEDA teaches the nanostructured surface pattern comprises one or more protrusions and/or depressions (e.g., a combination of irregularities formed by arranging a large number of relatively coarser projections (protrusions) in a pyramid, trapezoid, hexagonal, or diagonal-line shape or the like, para. [0047]).
Regarding claim 16, IEDA teaches the protrusion is a ridge, a cross shaped protrusion, and/or a hexagonal shaped protrusion (e.g., a combination of irregularities formed by arranging a large number of relatively coarser projections (a ridge) in a pyramid, trapezoid, hexagonal, or diagonal-line shape or the like, para. [0047]).
Regarding claim 17, IEDA teaches the depression is a groove, a cross shaped depression, and/or a hexagonal shaped depression (e.g., the engraving shape is not especially limited, and an arrangement of a large number of recesses (e.g., grooves) each in a pyramid shape, trapezoid cross-section, hexagonal shape, diagonal-line or the like is employed, para. [0047]).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 3, 5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over IEDA (US PUB 2020/0207530).
Regarding claim 3, IEDA teaches the nanostructured surface pattern covers between 1 and 100% of at least one side of the water-soluble sheet, or from 1-50%, or from 1-25%, or from 1-10% of the surface of at least one side of the water-soluble sheet (i.e., The first and second irregularities may be formed, in general, uniformly on the surface of the roll (e.g., surface area), para. [0123]).
IEDA discloses the claimed invention except for explicit teaching of the nanostructured surface pattern covers between 1 and 100%. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have desired area to be covered with projections (nanostructures) since, it has held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 5, IEDA teaches the protrusions and/or depressions are arranged in a pattern of 500-1500 protrusions and/or depressions per mm (a combination of irregularities formed by arranging a large number of relatively coarser projections, and relatively finer random irregularities may be employed (protrusions per mm), para. [0047]); and wherein the water-soluble sheet comprises a polymeric material (e.g., a polyvinyl alcohol “PVA”) resin, para. [0024]).
IEDA discloses the claimed invention except for explicit teachings of a pattern of 500-1500 protrusions per mm. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a pattern of 500-1500 protrusions and/or depressions per mm, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Regarding claim 18, IEDA teaches the protrusions and/or depressions have a centre-to-centre distance between adjacent protrusions and/or depressions of less than 2 μm (i.e., a combination of irregularities formed by arranging a large number of relatively coarser projections, … and relatively finer random irregularities (e.g., pitch of less than 2 μm) may be employed, para. [0047]).
IEDA discloses the claimed invention except for explicit teachings of a centre-to-centre distance between adjacent protrusions of less than 2 μm. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a pitch of protrusions of less than 2 μm, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Cited prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP 2002241797 A (IDE et al.) teaches “in order to enhance the strength of the water-soluble film, improve the water solubility, or enhance the commercial value, the film has an average particle size of 0.1 to 10 μm.”, see pages 5-6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUSTAK CHOUDHURY whose telephone number is (571)272-5247. The examiner can normally be reached on M-F 8AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached on 5712722333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MUSTAK CHOUDHURY/Primary Examiner, Art Unit 2872
July 9, 2026
Prosecution Insights