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 .
Response to Arguments/Amendments
1. Applicant’s amendments to the claims overcome the Claim Objections of the previous Office Action.
2. Applicant’s amendments to the claims overcome the 112(b) rejections of the previous Office Action.
3. Applicant’s Terminal Disclaimer filed 08/18/2026 is approved, and thus the Double Patenting Rejections of the previous Office Action are withdrawn.
4. Applicant argues that LV does not teach of a “joining and piercing unit” that is configured to form through holes in the first or second layer and joining the layers along the perimeter of each through hole. The Examiner disagrees for at least 2 reasons.
Firstly, LV does teach that the ultrasonic device creates through holes in claim 9, which describes the ultrasonic device as a “stitching mechanism”, wherein a through-hole must be necessarily made for the stitching. This was referenced in the Rejection of Claim 1 of the Previous Office Action.
Secondly, Applicant states in page 6 paragraph 5 that the “ultrasonic generator of LV is described as joining or fusing layers”. This is relevant to the 112(f) interpretation stated in the previous Office Action that the structure of the “joining and piercing unit” includes an “ultrasound joiner”. This interpretation came from [0072]-[0073] of Applicant’s Specification filed 09/25/2024, which notes that “Ultrasounds allow to pierce the material at a higher speed”. In arguendo that Applicant overcomes the first reasoning and concludes that LV does not teach of creating through-holes, LV still teaches all the structural limitations of the claimed apparatus, and since Applicant admitted on the record that such a device is capable of piercing the material, the only difference is in the Manner of Operation of the Device, which as per MPEP 2114.II does not differentiate the current claims over the prior art. For at least these reasons, this argument is unpersuasive.
5. Applicant argues that Paldey does not teach applying a hydrophilic agent to through holes as required by claim 1 as Paldey only teaches of the accumulation of absorbent particulate polymer material in valleys. MPEP 2115 teaches- "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963). In the Examiner’s opinion, Paldey’s statement that the accumulation of absorbent particulate polymer material occurs in valleys is strong evidence that it would be capable of, or in other words configured to, apply a hydrophilic agent to a substrate with through-holes at least in proximity of the walls of said through holes. Consequentially, Paldey’s application means fits the required structure of claim 1 and therefore claim 1 does not differentiate over the prior art combination of LV and Paldey.
6. Applicant argues that there is no proper reasoning to combine Paldey and LV. The Examiner disagrees, as the [0109] of Paldey mentions not just the final product, but also the process therein is beneficial, the benefits being the ability to “produce a comfortable article that does not comprise performance”. The Examiner is incorporating the process, and therefore this advantage is reason enough to incorporate Paldey into LV.
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.
7. 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.
8. Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over LV et al. (CN 105729898; previously presented; hereafter LV) in view of Paldey et al. (US 2012/0234475; previously presented; hereafter Paldey).
Regarding claim 1, LV teaches of a manufacturing apparatus of a multilayer absorbent element capable of being incorporated into a sanitary article (pg. 2 lines 7-20) shown in Figure 10 as comprising a first embossing roller (first embossing roller- 43) configured to be engaged by a first layer of sheet material (first material- 2; pg. 8 lines 11-16), the first embossing roller bearing a plurality of first protruding elements (third projection; noted as engaging with concave hole 421, which as seen in Figure 3 there is a plurality of these holes; pg. 7 lines 3-5; Figure 10 also shows a plurality of projections on the first embossing roller- 43). LV’s apparatus further comprises a second roller (bottom roller- 42) configured for being engaged by the first layer of sheet material (first material- 2) and a second layer of sheet material (second material- 3) which overlaps the first layer of material (pg. 8 lines 24-30), as well as a joining and piercing unit (ultrasonic wave generator- 7) configured to make a plurality of through holes on the first and/or on the second layer at selected zones thereof and to join the first layer of sheet material and the second layer of sheet material along the perimeter of each through hole of said plurality (pg. 10 lines 22-29; noted as sealing by heat at convex patterns 422, which are the through holes of the dual material layer; also noted as a stitching mechanism in claim 9).
LV does not teach of an application means of a hydrophilic agent, but does teach that the material layers are hydrophilic (pg. 3 line 17), which establishes compatibility with hydrophilic materials for the apparatus. Paldey teaches an application means (first and second printing rolls- 144 and 156; shown in Figure 9) that is configured to apply a hydrophilic agent (absorbent particulate material- 66) at the walls of through holes (“valleys”) of a first and second material (substrates 64 and 72; [0100]-[0101]). The application means work in conjunction with support rolls 140 and 152 ([0096]), that in the context of LV would be the second roller. Paldey teaches that the advantage of such a technique is that it produces a comfortable article that does not comprise performance ([0109]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to include the application means of Paldey in the apparatus of LV for the advantage of being able to produce a comfortable article that does not comprise performance.
Regarding claim 2, as seen in Figure 10 of LV, the first and second rollers are coupled in rotation.
Regarding claim 3, LV teaches that the second roller has a plurality of cavities each suitable for receiving a respective first protruding element of the first embossing roller (pg. 7 lines 1-3; see Figure 3).
Regarding claim 4, LV teaches that the second roller bears a plurality of second protruding elements (convex patterns- 422) that are configured to cooperate with said joining and piercing unit to make the through holes (pg. 10 lines 22-29).
Regarding claim 5, as seen in Figure 3, LV gives a suggested configuration where some of the protruding elements of the second roller have a cylindrical profile, but not all. However, MPEP 2114.04.IV.B teaches that a change in shape is “a matter of choice which a person of ordinary skill in the art would [find] obvious absent persuasive evidence that [a] particular configuration … was significant” In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). No evidence is presented that such a particular configuration is significant, and therefore each second protruding element having a cylindrical profile is obvious to one of ordinary skill in the art prior to the effective filing date of the invention as a matter of choice.
Regarding claim 6, LV does not teach the dimensions of the second protruding elements, however MPEP 2144.04.IV.A teaches- “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” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). There appears no difference in performance between LV and the currently claimed device. As such, this additional claim limitation does not differentiate over the prior art of LV. Further, such dimensions (width of 0.5 mm) are suggested by Paldey for grid placement of their hydrophilic material ([0074]-[0076]), which gives evidence that LV would be capable of performing in the same manner as the claimed invention with such dimensions.
Regarding claims 7 and 8, similarly to the rejection of claim 5, each second protruding element of the second roller having a tapered profile (relevant to claim 7) or more specifically a conical or frusto-conical profile (relevant to claim 8) is obvious to one of ordinary skill in the art prior to the effective filing date of the invention as a matter of choice as per MPEP 2114.04.IV.B.
Regarding claim 9, claim 9 is rejected for similar reasons to claim 6.
Regarding claim 10, as mentioned in the rejection of claim 1, the joining and piercing device of LV comprises an ultrasonic device (ultrasonic wave generator- 7).
Regarding claim 11, LV teaches that the first protruding elements are of similar shape to fourth protrusions- 441 (pg. 8 line 38- pg. 9 line 6); which as seen in Figure 7 are substantially cylindrical.
Regarding claim 12, in a similar fashion to the rejection of claims 6 and 9, the relative dimensions of the first protruding elements of the first embossing roller do not differentiate the claimed apparatus over the prior art of LV. Also similarly, Paldey also suggests the usability of the dimension of 2 mm ([0076]).
Conclusion
9. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
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, Philip Tucker can be reached on 571-273-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745
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