DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16th, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claim 1 (between 8 and 10) been renumbered claim 9.
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 1-20 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, the term “intensive property” alone is confusing in terms of its scope within the disclosure as there is no explicit definition. The International Union of Pure and Applied Chemistry (IUPAC) defines an intensive property as “a physical quantity whose magnitude is independent of the extent of the system” meaning it does not depend on the amount of substance that is measured, meaning any subset should be identical. This is not true for, as an example “thickness”, which seems to be by definition an extensive property (i.e. it is the extent of the system). Furthermore, the term is unclear regarding the types and number of potential intensive properties (for example color, melting point, etc.) and how they are being measured, which may or may not even be enabled by the specification.
Regarding claims 1, 10, and 17, the phrase(s) “Inter-Article Gray Level Variation Test Method defined herein” and claims 1 and 17 further include “Haralick Maximum Mean Contrast Test Method defined herein” are not clear for at least two reasons. Claims cannot explicitly reference the specification. Delete “defined herein” to fix this part of the issue.
Furthermore, while claims are interpreted in light of the specification, limitations from the specification are not read into the claims. While the entirety of the Inter-Article Gray Level Variation Test Method and Haralick Maximum Mean Contrast Test Method are not necessary to replicate in the claims, it should be clear at least in the claims, how the values/ranges are obtained and what the values/ranges represent. Refer to prosecution history of 16/816,323 and 18/047,766 for assistance in providing a definite claim in this regard.
Further regarding claims 1, 10, and 17, it is unclear, even after reviewing the Test Method in the disclosure [PGPub, 0384-0389], how the package factors into each nonwoven fabric being measured. Are they measured before or after (simulated) packaging? Are the Gray Level Variation range within each nonwoven (each nonwoven fabric exhibiting this variation range), between each nonwoven (variation of each nonwoven fabric from each other), or among each nonwoven (the range being an average variation over the nonwoven fabrics)? Are the Grey Values being recorded over the entirety of the features or within each region?
Further regarding claims 1 and 17, multiple Haralick values are taken at a variety of angles, it is unclear if the mean is referring to each value being individually averaged or collectively averaged.
Claims 2-9, 11-16, and 18-20 are rejected for being dependent on an indefinite claim and not (entirely) correcting the issue.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Ashraf et al. (U.S. Pub. No. 2017/002999$ A1) (hereinafter “Ashraf”), OR, in the alternative, under 35 U.S.C. 103 as obvious over Ashraf optionally in view of Phan et al. (U.S. Patent No. 5,277,761) (hereinafter “Phan”), wherein claims 1-9 and 17-20 optionally further in view of Franke et al. (U.S. Patent No. 5,863,639) (hereinafter “Franke”).
Regarding claims 1-20, Ashraf teaches a package of shaped nonwoven useful as backsheets or topsheets for absorbent articles such as diapers or sanitary napkins [0078-0079, 0126-0127, 0301] comprising at least one visually discernible zone comprising a pattern of crisp, well-defined shapes (uniform, visually sharp textured pattern) on at least one surface [0054, 0101], wherein the shapes of the zone are defined by a plurality of three dimensional features formed by a directly spinning/blowing nonwoven fibers onto a three-dimensional shaped forming belt [0051-0055] each three-dimensional feature defining a (first/second) zone (All Figs. [22]) differing in at least one intensive property, such as caliper/thickness, density, and/or basis weight, from an adjacent (second/first) region (All Figs. [21]) [0037-0039, 0051-0058, 0108-0109, claims 16-17 & 20], wherein the forming belt can sequentially extend the pattern as repeating multiple times to form multiple identical nonwoven fabrics comprising an identical/same pattern, wherein the pattern shapes are maintained even after packaging [0078-0079, 0126-0128], wherein although Ashraf does not teach the visually discernible zone as comprising an (Inter-Article) Gray Level Variation or Haralick Maximum Mean Contrast as set forth herein, the claimed properties are deemed to be inherent to the structure in the prior art since Ashraf teaches an invention with a substantially similar structure and chemical composition as the claimed invention (i.e. comparison of Figs. 1-2 between each application). Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Furthermore, even if the shaped fabric of Ashraf does not inherently lie within the bounds of the claimed value ranges, varying the differential properties using known methods and variables attributed to the forming belt [0051-0058, 0108-0109], would have inherently affected the above recited properties as a result effective variable.
Alternatively, Phan teaches forming a shaped nonwoven using a forming belt to vary the intensive properties, such as basis weight and varying by at least 25% (col. 3, lines 40-56; col. 4, lines 19-21; & col. 41), of regions formed by repeating, non-random three-dimensional features, wherein the regions of differing basis weight directly correlate to an associated gray level of a calibrated and pseudo-colored image, comprising values between 1-26+ or 1-36+ with discernible differences attributed to about every 5 grey level values (cols. 17-20, Tables IVA-IVB), wherein the standard deviation of basis weight in samples of about 4”x4” grid is 5.3 corresponding to the high basis weight areas (in relation to an average of 22.2), 3.7 corresponding to the low basis weight areas (in relation to an average of 8.5), and 5.5 corresponding to transition areas (in relation to an average of 16.1) as to the color scheme of red/yellow appearing high basis weight areas (value between 16-25 or 22-26 in Tables IVA and IVB, respectively) and dark blue low basis weight areas (value between 1-5 or 1-7 in Tables IVA and IVB, respectively) (col. 41), wherein a pixel-weighted average standard deviation was calculated using the largest, smallest, and average values for GL in the high and low basis areas, and a transition GL value estimated by averaging the high and low GL and multiplying by a correction factor of 1.04886 (obtained by 16.1/[(22.2+8.5)/2]), which give values of about 4.2 for Table IVA and about 5.2 for Table IVB. Also, Phan teaches pitches as the distance in millimeters of the features (col. 22), wherein the difference between the high and low GL values as recited above is divided by the average pitch for the three samples giving an estimated Gray Level Contrast Slope range of 14.5-25.5 for Table IVA and 19.9-36.2 for Table IVB.
It would have been obvious to one of ordinary skill in the art at the time of invention to directly derive/relate a gray level value obtained from measuring an approximately 4”x4” sample differing in properties such as regional basis weight due to a plurality of forming belt formed features, wherein a standard deviation could easily be ascribed to both values. One of ordinary skill in the art would have been motivated to further define a shaped nonwoven based on beneficial measurement technique that measures property differences in three-dimensional features (col. 42, lines 2-9), wherein any obtained value/range would be standardized between similar parts of each the nonwoven and among different nonwovens processed under identical conditions and identical belt patterns.
Further regarding claims 1, 8, and 17, while both Ashraf and Phan emphasize regular/non-random patterns, neither indicates a method for measuring this feature.
Franke teaches a nonwoven comprising a Haralick value, wherein the regularity of a pattern can be estimated using by attributing the gray values to a Haralick Correlation feature (standard deviation from the mean contrast), wherein the 1973 Haralick paper in incorporated entirely by reference (col. 10, line 50 – col. 11, line 36).
It would have been obvious to one of ordinary skill in the art at the time of invention to apply the desirable gray values to a Haralick contrast function. One of ordinary skill in the art would have been motivated to obtain a uniform measurement for the regularity/crispness of a desired regular/non-random pattern, wherein any obtained value/range would be standardized between similar parts of each the nonwoven and among different nonwovens processed under identical conditions and identical belt patterns.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-5 & 7-10 of U.S. Patent No. 11,505,884 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the package claimed wherein at least some of the disposable absorbent articles comprise the nonwoven fabric of claim 1 [claim 7], wherein the first visually discernible zones of the nonwoven fabrics of claim 1 are required to have the Gray Level Variation within the range as claimed [claims 1-3] and are required to have a Maximum Mean Contrast Value within the range as claimed [claims 4-5], wherein claims 2-4 correspond to claims 8-10.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-6 & 7 of U.S. Patent No. 12,270,134 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the absorbent article claimed is substantially similar in claimed properties and is set forth to be packaged along with other identical nonwovens formed on the same line/belt with an identical (irregular) repeating pattern (col. 18, line 59 – col. 19, line 57) and thus should retain any identical pattern properties across multiple repeating patterns or it would have been obvious to provide for product consistency standards.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JEFFREY A VONCH whose telephone number is (571)270-1134. The Examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Frank J Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A VONCH/Primary Examiner, Art Unit 1781 October 2nd, 2026
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