Detailed Office Action
The communication fated 2/19/2025 has been entered and fully considered.
Claims 1-15 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 .
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,264,439 in view of U.S. 6,949,443. The ‘439 patent claims a multi-ply tissue product with a latex polymer between the two plies. The instant product differs from the claimed product in that the claimed product is not stated to have a creping composition. It is stated that the tissue product is through-air dried (TAD). This does not preclude a finishing step on a Yankee dryer with a creping composition. U.S. 6,969,442 teaches that yankee drying and creping can be proceeded with through air crying [col. 15 lines 10-21].
Instant claim 1 see patent claim 1, 4, and 13 claims the same GMT, the same GM slope and the same TS7.
Instant claim 2 see patent claim 2.
Instant claim 3 see overlapping patent claimed range of patent claim 2.
Instant claim 4 see overlapping claimed range of patent claim 5.
Instant claim 5 see overlapping patent claimed range of instant claim 6.
Instant claim 6 see overlapping claimed ranges of patent claims 5 and 6.
Instant claim 7 see abutting claimed range of patent claim 7.
Instant claim 8 see overlapping range of patent claim 8.
Instant claim 9 see patent claim 9.
Instant claim 10 see overlapping claimed range of patent claim 10.,
Instant claim 11 see overlapping claimed range of patent claim 11.
Instant claim 12 see encompassing range of patent claim 12.
Instant claims 13 and 14 see patent claim 13.
Instant claim 15 see overlapping claimed range of patent claim 2.
Claims 1-15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 19/057,601(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a multi-ply tissue paper with creped outer surface and an inward facing latex surface. The instant claim states that the two plies are wet-pressed but that is a product-by process limitation. Copending claim 13 limits claim 1 which means that copending claim 1 can have creping composition thereupon (doctrine of claim differentiation).
Instant claim 1 see copending claim 1
Instant claim 2 see copending claim 2.
Instant claim 3 see copending claim 7.
Instant claim 4 see copending claim 3.
Instant claim 5 see copending claim 4
Instant claim 6 see copending claims 3 and 4.
Instant claim 7 see copending claim 5. The Examiner interprets about 20% to overlap with about 22% of the copending claim
Instant claim 8 see copending claim 12.
Instant claim 9 see copending claim 14
Instant claim 10 see copending claim 15.
Instant claim 11 see copending claim 16.
Instant claim 12 see copending claim 17.
Instant claims 13 and 14 see copending claim 1.
Instant claim 15 see copending claim 7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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
Prosecution Insights