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 without traverse of Group I in the reply filed on 6/05/2026 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/05/2026.
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.
Claim(s) 1-4 and 6-11 are rejected under 35 U.S.C. 102a1 as being anticipated by Baum et al., US Patent Application Publication No. 2018/0142422.
With regard to claim 1, Baum discloses an embossed multi-ply tissue product with a machine direction axis and cross-direction axis (figure 8a) comprising:
A) a first tissue ply having a first embossed pattern (paragraph [0052] - the first embossing elements comprise linear elements which form a curvilinear pattern) an embossing pattern disposed thereon, the embossing pattern comprising a plurality of line elements substantially oriented in the machine or the cross-machine directions comprising a plurality of embossed elements disposed thereon [0052] (Fig 8A has elements 112 in the machine direction); and
B) a second tissue ply [0079 and 0094].
Regarding claims 2 and 3, Baum further teaches that the plurality of line elements have an axis of orientation that is ±5 degrees of the machine or cross-machine direction axis (parallel [0021] and visually shown by the wavey lines in Fig 8a being directed in the MD).
Regarding claim 4, Baum further teaches that the second ply having a molded topographical pattern (paragraph [0079], [0094]; Figs. 7, 8 - the elevated ridges 120 and valleys 122 surface texture is considered as the molded topographical pattern) and a second embossed pattern comprising a plurality of dot emboss elements (paragraph [0052] - the second embossing elements comprise non - linear elements that form discrete geometric patterns, such as diamonds) disposed thereon.
Regarding claim 6, Baum further teaches that wherein the embossing pattern disposed on the first ply comprises a plurality of substantially machine direction (MD) oriented line elements and plurality of substantially cross-machine direction (CD) oriented line elements (see figures).
Regarding claim 7, Baum further teaches that the substantially MD oriented line elements are continuous and the substantially CD oriented line elements are discrete (see figures).
Regarding claims 8 and 9, Baum further teaches that the claimed patterns are possible and known (see figures with continuous line embossments and dot embossments both utilized in the claimed directions).
Regarding claim 10, Baum further teaches that the first and second plies have a basis weight from about 14.0 to about 30.0 grams per square meter (gsm) (paragraph[0087] - basis weight more preferably from about 50 to about 60 gsm).
Regarding claim 11, Baum further teaches that the product has a sheet bulk from about 8.00 to about 12.00 cc/g [0087], a basis weight from about 30.0 to about 60.0 gsm (paragraph[0087] - basis weight more preferably from about 50 to about 60 gsm) and a geometric mean tensile strength (GMT) from about 800 to about 1,700 g/3 [0007]".
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.
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) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Baum et al., US Patent Application Publication No. 2018/0142422.
Regarding claim 5, Baum further teaches wherein the plurality of micro-embossments cover at least about 6 percent of the second ply outer surface (Baum teaches that the second embossed pattern can comprise from about 5.0 to about 25 percent of the surface area of the engraved roll [0066]).
Baum is silent as to the density of the micro embossments, but depicts them present in varied patterns in the figures.
By the showings of Baum to have micro embossments in the claims percentage of the ply and various options, there is a clear teaching that the placement and concentration of these dot embossments are a material of design choice as their density would only affect the desired visual pattern. Absent a showing of unexpected results that shows the concentration of dot embossments providing an unexpected physical property of the product it is being held that the selection of the design of the embossments falls under the category of an obvious design choice (see MPEP 2144.04.
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 1-11 are rejected on the ground of nonstatutory double patenting as being
unpatentable over the claims of U.S. Patent No. 12,601,118, 12,281446, 11,987,934, 11,236,469, 11,795,625, and 11,255,049. Although the claims at issue are not identical, they are not patentably distinct from each other because the primary difference in these applications and the instant application is the distance between the nonlinear embossments, which has been understood to be a design choice and an obvious variation on what has been taught by these inventions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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