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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 10-20 of copending Application No. 18/328,989 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the common claims overlaps and it is known that the basis weight of the tissues of the copending application are known to be within the claimed range and therefore, such property is inherent to the tissues of the copending application or at the very least obvious to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/925,260 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the common claims overlaps and it is known that the basis weight of the tissues of the copending application are known to be within the claimed range and therefore, such property is inherent to the tissues of the copending application or at the very least obvious to one of ordinary skill in the art. Note that the only difference is that the co-pending application recites a sanitary tissue product instead of a paper towel roll, yet sanitary tissues by definition covers bath tissues and towels and thus the sanitary tissues of the copending application includes paper towels as-well.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,952,724 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps and thus the US patent can be used to reject the claims of the current application. Note that claim 3 recites basis weight falling within the claimed range. Which evidences that the tissues/towels have basis weight in the same range.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,700,979 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the common claims overlaps and it is known that the basis weight of the tissues of the copending application are known to be within the claimed range and therefore, such property is inherent to the tissues of the copending application or at the very least obvious to one of ordinary skill in the art.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,633,076 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the common claims overlaps and it is known that the basis weight of the tissues of the copending application are known to be within the claimed range and therefore, such property is inherent to the tissues of the copending application or at the very least obvious to one of ordinary skill in the art. Note that the only difference is that the co-pending application recites a sanitary tissue product instead of a paper towel roll, yet the webs have the same or overlapping and thus the paper towel could be used as a sanitary tissue as-well. Note that the limitation on the tissue being made by a through-air-drying process is common in the art and obvious. Moreover, this is also evidenced by claims 10 and 11 of the current application that teach a through-air-dried web.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,447,916 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps and thus the US patent can be used to reject the claims of the current application.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,152,347 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the common claims overlaps and it is known that the basis weight of the tissues of the copending application are known to be within the claimed range and therefore, such property is inherent to the tissues of the copending application or at the very least obvious to one of ordinary skill in the art. Note that the current application follows the Roll Density vs Moment of Inertia relationship of the United State Patent as evidenced when using the moment of inertial values of claims 3 and 4. Note also that claims 3 and 4 evidences that the scope of the Moment of Inertia and Rol Density fall within eth claimed range.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,416,118 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps and thus the US patent can be used to reject the claims of the current application.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,520,973 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the common claims overlaps and it is known that the basis weight of the tissues of the copending application are known to be within the claimed range and therefore, such property is inherent to the tissues of the copending application or at the very least obvious to one of ordinary skill in the art.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wolkowicz et al, (hereafter Wolkowicz), US Patent No. 6,746,569 B1 as evidenced by Applicants Admission of Prior Art, (hereafter AAPA).
With regard to claims 1-3, 5 and 18-19, Wolkowicz teaches roll of papers including tissues and towels, having properties falling within the range of claim 1, i.e., Roll Density, Roll Diameter, as evidenced by AAPPA, page 17; see below:
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As can be seen the roll diameter is greater than 6.5 and shows Roll Diameter of 8 inches in all instances, the roll density is less than 0.100 g/cm3 for samples 4A-4B-prior art. The process of making the roll is disclosed on column 5, lines 31-41, which is common way of making a roll of paper, i.e., convoluting the web onto a core, and doing so for the prior art product disclosed by Wolkowicz is at the very least obvious. Figure 2 shows a roll convoluted onto a core.
Regarding to claim 4, Sample 4B shows moment of inertia which is greater than 2.0 g*m2; see table above.
With regard to claim 6, Wolkowicz shows that Example 4A has a core diameter of 1.5 inches that falls within the claimed range; see column 11, lines 45-55.
With regard to claims 7, while the reference does not explicitly teach the coefficient of friction, this property is considered to be inherent to the tissues of the reference, since they have all the other properties in the same range, or at the very least modifying the web to have the coefficient of friction falling within the claimed range would have been obvious to one of ordinary skill in the art.
With regard to claims 8-11 and 14, creping, embossing, perforating the web and adding papermaking additives, such as wet-strength agents, are common operations on the art1 and considered obvious absent a showing of unexpected results.
Regarding to claim 12, Wolkowicz teaches the making of single and multi-ply products; see column 4, lines 56-63, and therefore, making multi-ply product from the 4A web would have been obvious to one of ordinary skill in the art since he/she would have reasonable expectation of success if webs were plied to make a multi-ply product.
With regard to claim 13, since all the paper products have at least some permanent wet strengths, i.e., they won’t lose all its strength when wet and since no limits/range have been recited/claimed, then this limitation is inherently met.
Regarding to claims 15-17, packaging the products into multiple or single roll and wrapping it a film, or included in carton board, corrugated board, etc., are the common ways to present the final product to the consumer, including the intermediate consumer, i.e., the warehouses, supermarket, etc., and the final consumer, people buying the product, and thus presenting the product as claimed would have been obvious to one of ordinary skill in the art.
With regard to claim 20, Wolkowicz teaches that embossing increases the sheet bulk, but weakens the sheet which is detrimental; see column 3, lines 48-57. However, it is well-known that papermakers work based on trade-offs, i.e., papermakers know that the change of a property will affect other(s) and thus work on the balancing of the properties. Therefore, embossing of the web taught by Wolkowicz would have been obvious to one of ordinary skill in the art since he/she would have reasonable expectation of success if the web were embossed. This is more evident by the fact that the embossing increases bulk, which decreases the density, i.e., bulk=1/density, hence the density of the sheet/web of the reference is even lower than the ones of the table and thus falling within the claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Rolled Paper Towels.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached on MONDAY- FRIDAY 11:30 PM- 9:00 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 on 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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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 Again, the examiner takes official notice and will present evidence if required.
Prosecution Insights