Detailed Office Action
The communication dated 8/15/2026 has been entered and fully considered.
Claim 1 has been amended. Claims 8 is new claims 1-8 are pending.
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
In light of amendment the rejections towards JEON have been withdrawn.
The Examiner maintains the ODP rejections.
In light of amendment the Examiner maintains the objections to the specification and drawings. The Examiner still does not know what “gush” or “grush” means. The Examiner made a translation of the original Japanese document which gave the word as “grash” means to gnash or grind teeth [see attached translation]
Specification
The disclosure is objected to because of the following informalities: Applicant uses the term “gush” 11 times in the specification. This appears to be a mistranslation or a typo.
Appropriate correction is required.
Drawings
The drawings are objected to because in steps 14 and 22 the applicant uses the term “gush”. This appears to be either a mistranslation or a typo. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/993,864 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending ‘864 application claims recycled resin from used diaper mixed with pulp to form a resin molded article. The ‘864 application does not explicitly specify that the pulp is from a recycled used paper diaper. On the onset the source of the pulp is not limiting as this is a product by process limitation. In the alternative it would be obvious to additionally reclaim the used pulp from the diaper for use a pulp in a molded product as the resin is already being reclaimed.
Claims 1, 6, and 8 see copending claims 1 and 2.
Claim 2 see copending claim 2.
Claim 3 it is the Examiners position that recycling diapers will leave a small amount of SAP present with the pulp/resin recycled.
Instant claim 4 see copending claim 4.
Instant claim 5 see copending claim 5
Claim 7 see copending claim 8.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. The Examiner notes that the ‘864 application has been granted.
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.
Claims 1-3, 6, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2015/0291762 WATANANBE et al., hereinafter WATANABE.
As for claim 1, WATANANBE discloses recycling diapers to obtain a pulp [Figure 1] and molding the recycled fiber into a molded product. The recycled fiber comprises less than 10% super absorbent polymer [0032] and therefore the pulp product is 90% or greater. A superabsorbent polymer is a resin containing product which includes PVA/sodium polyacrylate
As for claim 2, resin amount of less than 10% overlaps with sufficient specificity to the instant claimed range [0024]. WATANABE also gives the specific example of 2.3 and 6.3% resin which falls within the claimed range [0128].
As for claim 3, the resin material is also a superabsorbent polymer and overlaps with sufficient specificity to the instant claimed range [0024]. WATANABE also gives the specific example of 2.3 and 6.3% resin which falls within the claimed range [0128].
As for claim 6, WATANABE discloses a moiled product made with the paper pulp of claim 1 [0024]. The making of the product by “hot molding” is a product by process limitation and is non-limiting.
As for claim 8, WATANANBE discloses a pulp product with 100% recycled fiber use [0150].
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.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2015/0291762 WATANANBE et al., hereinafter WATANABE in view of JP 2002161499 TOSHIYA et al., hereinafter TOSHIYA.
As for claims 4, 5, and 6, WATANABE discloses a molded product but does not disclose how to make the product (hot molding) or the use of colorants/calcium compounds. TOYISHA discloses a method of hot molding pulp [0021]. TOYISHA discloses that powders including calcium carbonate can be added (a white compound) to increase opacity [0023].
At the time of the invention it would be obvious to perform pulp molding of WATANANBE by the hot molding of TOSHIYA. The person of ordinary skill in the art would be motivated to do so as TOSHIYA discloses the hot molding method allows for the formation of molded products that are uniform and have a good appearance [0028]. The person of ordinary skill in the art would expect success as TOSHIYA states that recycled fiber can be used in the molding process [0022] and WATANANBE discloses that the recycled fiber can be used for molding.
Although TOSHIYA does not give a specific amount of calcium carbonate to use the amount is a result effective variable that effects opacity and color. It would be obvious to the person of ordinary skill in the art to optimize the amount of calcium carbonate powder added through routine experimentation to obtain a desired opacity/color.
As for claim 7, TOYISHA discloses the molded product can have an outer laminated layer [0004, 0015].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
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