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 .
Claim Objections
1. Claims 3, 11, and 12 are objected to because of the following informalities:
Claim 3 uses the term “said embossing roller” in line 3. While it is unambiguous that this term refers to the “first embossing roller” of claim 1, for consistency among claims, claim 3 should be amended to read “said first embossing roller”.
Claim 11 uses the term “the embossing roller” in lines 1-2. While it is unambiguous that this term refers to the “first embossing roller” of claim 1, for consistency among claims, claim 11 should be amended to read “the first embossing roller”.
Claim 12 uses the term “the embossing roller” in lines 1-2. While it is unambiguous that this term refers to the “first embossing roller” of claim 1, for consistency among claims, claim 12 should be amended to read “the first embossing roller”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
2. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
“Application means” is recited 3 times in claim 1 lines 11-13 is to be interpreted as a “kiss roll” or equivalents as understood in [0075]-[0078] of Applicant’s Specification.
3. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“joining and piercing unit” in claim 1 line 7. “Joining and piercing” are functional limitations, “unit” is a generic placeholder, and the claims do not give sufficient structure to perform the claimed function. Structure is found in [0072] as an ultrasound joiner or alternatively a thermal or mechanical joiner, and will be interpreted as such and equivalents. This 112(f) interpretation does not apply to claim 10, where it is specified that the joining and piercing unit is an ultrasonic device.
4. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, Claim 1 lines 1-2 has the phrase “multilayer absorbent element for organic fluid apt to be incorporated into a sanitary article”. The word “apt” makes this phrase unclear whether this statement is an intended use of a produced good or a property of the produced good. This in turn makes it unclear whether this statement should be incorporated as a limiting claim limitation as a property of a produced good may affect the applicability of prior art, while an intended use may not. Such differences in scope may change the applicability of prior art during examination. Please amend the preamble to clarify whether this statement is an intended use or a property of the product.
Regarding claim 5, Claim 5 recites the limitation "said protruding elements of said second roller" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 5 depends on claim 1, however the “protruding elements” of the second roller are established in claim 4, and therefore in claim 5 lacks antecedent basis. For the sake of compact prosecution, the Examiner will interpret claim 5 as being dependent on claim 4.
Regarding claim 11, Claim 11 recites the limitation "said cavities of the pierced roller" in line 2. There is insufficient antecedent basis for this limitation in the claim. There is no “pierced roller” in the claims, nor that the “pierced roller” has “cavities”.
Regarding claim 12, Claim 12 recites the limitation "said cavities of the pierced roller" in line 2. There is insufficient antecedent basis for this limitation in the claim. There is no “pierced roller” in the claims, nor that the “pierced roller” has “cavities”.
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.
6. 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.
7. Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over LV et al. (CN 105729898; PDF translation included with Office Action; hereafter LV) in view of Paldey et al. (US 2012/0234475; hereafter Paldey).
Regarding claim 1, LV teaches of a manufacturing apparatus of a multilayer absorbent element such as 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) 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 the dimension of 2 mm ([0076]).
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.
8. Claims 1-3, and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 10,987,257 (hereafter ‘257). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claim 1, ‘257 teaches a manufacturing apparatus of a multilayer absorbent element for organic fluids apt to be incorporated into a sanitary article (claim 22; col. 9 lines 38-39) comprising a first embossing roller bearing a plurality of first protruding elements and configured to be engaged by a first layer of sheet (laminate) material (claim 22; col. 9 lines 62-64) a second roller (suction roller) configured for being engaged by the first layer of sheet material and a second layer of sheet material which overlaps the first layer of material (claim 22; col 10 lines 25-31) a joining and piercing unit (second embossing roller with protrusions; claim 22; col. 9 lines 65-67) unit 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 (claim 22; col. 9 lines 52-55), and an application means of a hydrophilic agent (super-absorbent material) on the second roller that applies the hydrophilic agent on the walls of the through holes of said plurality onto said first layer (claim 22; col. 10 lines 19-24).
Regarding claim 2, ‘257 teaches that the first and second rollers are coupled in rotation (claim 22; col. 10 lines 1-2).
Regarding claim 3, ‘257 teaches that the second roller has a plurality of cavities, wherein each cavity of the plurality is suitable for receiving a respective first protruding element of said first embossing roller (claim 2; col. 10 lines 3-5).
Regarding claims 11 and 12, the shape (Claim 11) and size (Claim 12) of the protruding elements would be rendered obvious by the principals taught in MPEP 2144.04.IV subsections A- “Changes in Size/Proportion” and B- “Changes in Shape”, and thus do not differentiate over the claims of ’257 and thus are still subject to Double Patenting Rejections.
Conclusion
9. 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.
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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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