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 .
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/903,406 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claim 1 is anticipated by claim 11 of copending Application No. 18/903,406.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 in view of claim 2 of copending Application No. 18/903,406.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/903,406 in view of Giovanni et al. (Pub. No.: US 2021/0369511 A1).
Claim 11 of copending Application No. 18/903,406 fails to disclose wherein the disruptive coloring clusters comprise a maximum delta E of 12 or less.
Giovanni teaches an absorbent article (abstract) and thus in the same field of endeavor, wherein at least a pair of disruptive coloring clusters have in the range of about 6 to about 15 (¶ 0150) which falls within the claimed range of 12 or less. Further, Giovanni discloses a delta E such that a human eye can detect a difference (¶ 0150).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify at least a pair of the disruptive color clusters of claim 11 of copending Application No. 18/903,406 such that they have a maximum delta E of 12 or less, as taught by Giovanni, in order to configure the color clusters such that a human eye can detect a difference (Giovanni ¶ 0150).
“[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (see MPEP §2131.03.I).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 in view of claim 6 of copending Application No. 18/903,406.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 in view of claim 7 of copending Application No. 18/903,406.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 in view of claim 8 of copending Application No. 18/903,406.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/903,406 in view of Giovanni et al. (Pub. No.: US 2021/0369511 A1).
Claim 1 of copending Application No. 18/903,406 fails to disclose wherein the backsheet comprises a laminate, wherein the laminate comprises a film substrate.
Giovanni teaches (fig. 6-7, fig. 25) an absorbent article (10) and thus int eh same field of endeavor, comprising a backsheet comprising a laminate, wherein the laminate comprises a nonwoven substrate (outer cover nonwoven material 40, ¶ 0058) and a film substrate (backsheet 28, ¶ 0057), the backsheet laminate configured to enhance the consumer experience (¶ 0004) and the film substrate configured to be liquid impermeable (¶ 0057).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the backsheet of Claim 1 of copending Application No. 18/903,406 such that the backsheet comprises a laminate, wherein the laminate comprises a film substrate, as taught by Giovanni, as such backsheet laminate can enhance the consumer experience (Giovanni ¶ 0004) that is liquid impermeable (Giovanni ¶ 0057).
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/903,406 in view of Giovanni et al. (Pub. No.: US 2021/0369511 A1).
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/903,406 in view of Giovanni et al. (Pub. No.: US 2021/0369511 A1).
Giovanni teaches wherein at least a pair of disruptive coloring clusters have in the range of about 6 to about 15 (¶ 0150) which falls within the claimed range of 15 or less. Further, Giovanni discloses a delta E such that a human eye can detect a difference (¶ 0150).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify at least a pair of the disruptive color clusters of claim 1 of copending Application No. 18/903,406 in view of Giovanni such that they have a maximum delta E of 12 or less, in order to configure the color clusters such that a human eye can detect a difference (Giovanni ¶ 0150).
“[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (see MPEP §2131.03.I).
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/903,406 in view of Giovanni et al. (Pub. No.: US 2021/0369511 A1).
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/903,406 in view of Giovanni et al. (Pub. No.: US 2021/0369511 A1).
Claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/903,406 in view of Giovanni et al. (Pub. No.: US 2021/0369511 A1).
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.
Claims 4-5, 10 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.
Claim 4 recites the limitation "the first plurality of fibers" in ln. 1. There is insufficient antecedent basis for this limitation in the claim. Such limitation of claim 4 will be interpreted as the “first fibers”.
Claim 4 recites the limitation "the second plurality of fibers" in ln. 2. There is insufficient antecedent basis for this limitation in the claim. Such limitation of claim 4 will be interpreted as the “second fibers”.
Claim 5 recites the limitation "the first plurality of fibers" in ln. 1. There is insufficient antecedent basis for this limitation in the claim. Such limitation of claim 5 will be interpreted as the “first fibers”.
Claim 5 recites the limitation "the second plurality of fibers" in ln. 2. There is insufficient antecedent basis for this limitation in the claim. Such limitation of claim 5 will be interpreted as the “second fibers”.
Claim 10 recites the limitation "the first plurality of fibers" in ln. 2. There is insufficient antecedent basis for this limitation in the claim. Such limitation of claim 10 will be interpreted as the “first fibers”.
Claim 10 recites the limitation "the second plurality of fibers" in ln. 1-2. There is insufficient antecedent basis for this limitation in the claim. Such limitation of claim 10 will be interpreted as the “material”.
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) 7, 10-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Giovanni et al. (Pub. No.: US 2021/0369511 A1).
Regarding claim 7, Giovanni discloses (fig. 6-7, fig. 25) an absorbent article (10) comprising:
A garment-facing surface (2);
A wearer-facing surface (4);
A topsheet (26);
A backsheet (characterized by backsheet 28 and outer cover 40);
An absorbent core (30) positioned between the front sheet and the backsheet (fig. 7);
An elastic belt (54, 56) connected with the backsheet;
The backsheet comprising a laminate, wherein the laminate comprises a nonwoven substrate (outer cover nonwoven material 40, ¶ 0058) and a film substrate (backsheet 28, ¶ 0057);
The nonwoven substrate consisting of first fibers having a first color (¶ 0123);
The film substrate consisting of a material having a second color, wherein the first color and the second color are different (first color is from a colorant, additive and/or dye and second color is a color of the film);
Wherein the laminate comprises a first side (garment-facing side 412, ¶ 0148) and a second side opposite the second side, wherein the nonwoven substrate forms a portion of the first side (fig. 7);
Wherein the portion of the first side of the laminate comprises a plurality of disruptive color clusters (first regions 404 and second regions 406, ¶ 0148).
Regarding claim 10, Giovanni discloses wherein at least one of the first fibers and the material comprise a colorant (¶ 0123).
Regarding claim 11, Giovanni discloses wherein the first fibers comprise a colorant (¶ 0123).
Regarding claim 12, Giovanni discloses wherein the first side of the laminate forms a portion of the garment-facing surface (fig. 7).
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsunoda (Pub. No.: US 2022/0071817 A1) in view of Giovanni.
Regarding claim 1¸ Tsunoda discloses (fig. 1-4) an absorbent article (abstract) comprising:
A garment-facing surface (fig. 2, ¶ 0045);
A wearer-facing surface (fig.1 , ¶ 0044);
A topsheet (11);
A backsheet (liquid impervious sheet 12);
An absorbent core (absorbent body 13) positioned between the topsheet and the backsheet (¶ 0077, fig. 4A);
An elastic belt (elastic sheet stretchable structure 20X) connected with the backsheet (fig. 4A), the elastic belt comprising a laminate, wherein the laminate comprises a first nonwoven substrate (second sheet layer 20B), a second nonwoven substrate (first sheet layer 20A) (¶ 0208), and an elastic sheet (30) positioned between the first nonwoven substrate and the second nonwoven substrate (fig. 4A, ¶ 0093);
The first nonwoven substrate consisting of first fibers having a first color (¶ 0212);
The second nonwoven substrate consisting of second fibers having a second color (¶ 0212), wherein the first color and the second color are different (the first nonwoven substrate is a colored nonwoven and the second nonwoven substrate is a base sheet, ¶ 0212);
Wherein the laminate comprises a first side and a second side opposite the first side (fig. 4A), wherein the first nonwoven substrate forms a portion of the first side (fig. 4A);
Wherein the portion of the first side of the laminate comprises a plurality of disruptive coloring clusters (¶ 0216).
Tsunoda fails to disclose a plurality of elastic strands.
Giovanni teaches (fig. 4-7) an absorbent article (10, abstract) and thus in the same field of endeavor, comprising an elastic belt (54), the elastic belt comprising a laminate, wherein the laminate comprises a first substrate (inner belt layer 66), a second substrate (outer belt layer 64), and a plurality of elastic strands positioned between the first nonwoven substrate and the second nonwoven substrate (68, ¶ 0046), wherein such strands are a suitable elastomeric material (¶ 0046).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the elastic sheet of Tsunoda for the elastic strands of Giovanni, as the substitution would achieve the predictable result of providing a suitable elastomeric material (Giovanni, ¶ 0046). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding claim 2, Tsunoda in view of Giovanni fail to disclose wherein at least a pair of the disruptive coloring clusters have a delta E of greater than 2, as measured according to the disruptive coloration test method in a relaxed state.
However, Giovanni further teaches (fig. 23-25) a laminate comprising a first side (garment-facing surface 408) and a second side, wherein the first side comprises a plurality of disruptive color clusters (first regions 404 and second regions 406, ¶ 0148), wherein at least a pair of disruptive coloring clusters have a delta E of greater than 2, according to a Nonwoven-Backsheet Laminate Color test (¶ 0148, ¶ 0150). Further, Giovanni discloses a delta E such that a human eye can detect a difference (¶ 0150).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify at least a pair of the disruptive color clusters of Tsunoda in view of Giovanni such that they have a delta E of greater than 2, as measured according to the disruptive coloration test method in a relaxed state, in order to configure the color clusters such that a human eye can detect a difference (Giovanni ¶ 0150).
Regarding claim 3, Tsunoda in view of Giovanni fail to disclose wherein the disruptive coloring clusters comprise a maximum delta E of 12 or less.
However, Giovanni teaches wherein the disruptive coloring clusters comprise a delta E in the range of about 2 to about 19 (Giovanni ¶ 0150) which overlaps within the claimed range of 12 or less, such delta E being of a value such that the human eye can detect the difference (¶ 0150).
In this case where the claimed ranges “overlap or lie inside ranges disclosed in the prior art”, a prima facie case of obviousness exists (MPEP §2144.05 I.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the disruptive coloring clusters of Tsunoda in view of Giovanni such that they comprise a maximum delta E of 12 or less, as suggested by Giovanni, such delta E range is such that the human eye can detect the difference (Giovanni ¶ 0150).
Regarding claim 4, Tsunoda discloses wherein at least one of the first fibers and the second fibers comprise a colorant (¶ 0217).
Regarding claim 5, Tsunoda discloses wherein the first fibers comprise a colorant (¶ 0217) and the second fibers does not comprise a colorant (base sheet, ¶ 0214).
Regarding claim 6, Tsunoda discloses wherein the first side of the laminate forms a portion of the garment-facing surface (fig. 4A).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giovanni.
Regarding claim 8, Giovanni fails to disclose wherein at least a pair of the disruptive color clusters have a delta E of greater than 2, as measured according to the disruptive coloration test method.
However, Giovanni discloses wherein at least a pair of disruptive coloring clusters have a delta E of greater than 2, according to a Nonwoven-Backsheet Laminate Color test (¶ 0148, ¶ 0150). Further, Giovanni discloses a delta E such that a human eye can detect a difference (¶ 0150).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify at least a pair of the disruptive color clusters of Giovanni such that they have a delta E of greater than 2, as measured according to the disruptive coloration test method, in order to configure the color clusters such that a human eye can detect a difference (¶ 0150).
Regarding claim 9, Giovanni discloses wherein the disruptive coloring clusters comprise a delta E in the range of about 6 to about 15 (¶ 0150) which falls within the claimed range of 15 or less.
“[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (see MPEP §2131.03.I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Morimoto (Pub. No.: US 2017/0290710 A1) discloses an absorbent article having fibers having a color.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEAGAN NGO whose telephone number is (571)270-1586. The examiner can normally be reached M - TH 8:00 - 4:00 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Al-Hashimi can be reached at (571) 272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEAGAN NGO/Examiner, Art Unit 3781
/PHILIP R WIEST/Primary Examiner, Art Unit 3781
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