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 .
Specification
The disclosure is objected to because of the following informalities: the status of the related applications should be updated in the response to this office action.
Appropriate correction is required.
The abstract of the disclosure is objected to because it does not describe what it is claimed. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,751,728 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps. Note that the non-recited properties not recited in the US Patent are, such as the properties of claims 2-5, are common for the product of the US Patent and thus considered to be inherent and obvious to one of ordinary skill in the art. Claim 6 of the US Patent recites a functionalized polyvinylamine which is a specie of the functionalize vinylamine of claim 6 and thus reads in that claim as-well.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,297,598 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps. The only difference is the recitation on claim 1 that the paper towel is free from latex or formaldehyde, but claim 2, of the US Patent recites that the product is free of latex and thus the scope overlaps. Moreover, making product free of formaldehyde is nowadays common in the art for environmental reasons.
Claims 1, 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,590,413 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps. The only difference is the recitation on claim 1 that the paper towel is free from latex or formaldehyde, but claim 1, of the US Patent recites that the product is free of formaldehyde and thus the scope overlaps.
Claims 1, 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,478,224 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps. The only difference is the recitation on claim 1 that the paper towel is free from latex or formaldehyde, but making product free of formaldehyde is nowadays common in the art for environmental reasons.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,952,721 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps. The only difference is the recitation on claim 1 that the paper towel is free from latex or formaldehyde, but claim 2, of the US Patent recites that the product is free of latex and thus the scope overlaps. Moreover, making product free of formaldehyde is nowadays common in the art for environmental reasons.
Claims 1-5 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 18/428,151 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlaps.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Baker et al., (hereafter Baker) US Patent Application Publication No. 20180344120 A1.
With regard to claims 1 and 3, Baker teaches an absorbent product comprising cellulosic fibers and having cross directional (CD) wet strength falling within the claimed range, see below. The web is made without the use of polyaminoamide-epihalohydrin, PAE, which as it is well-known and stated on pages 4 and 5 of this application is the cause of the contamination of the product with the recited AOX, i.e., dichloropropanol and chloropropanediol, and since “less than” includes zero (0) as the lower limit; therefore, the web of the reference would not have any of those compounds, since as stated above, it does not contain PAEs, and thus reads on the claims. Baker on ¶-[0135] teaches that the web has a wet CD strength from about 50 g/in (gli) through 1500 g/in (gli), the range converts to (19.30 N/m through 579.15 N/m), which falls within the claimed range. Baker teaches that the product can be formed by the wet laying process using polyacrylates as wet strength agent; see ¶-[0149]-[0152].
Regarding to claim 2, Baker teaches the use of latex only on the airlaid web (¶-[0144]), but not for the wet-laid product; see ¶-[0149]-[0152] and thus the reference reads on the claim for the wet-laid products.
With regard to claim 4, the creping of wet-laid absorbent product is common in the art1 and considered obvious to one of ordinary skill in the art.
With regard to claim 5, even though Baker did not measure the absorbency, this property would be considered inherent to the absorbent product of the reference, since the other measured properties are within the claimed range and the products are made using the same/similar processes.
With regard to claim 6, Baker teaches the use of glyoxylated polyacrylates, polyvinylamide and complex; see ¶-[0082] which read on as one of the specie of the claim.
Regarding to claim 7, Baker is silent with regard to the use of plastic or extruded polymers and thus it is considered that the product of the reference does not contain said materials.
Claim 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sumnicht et al., (hereafter Sumnicht), US Patent Application Publication No. 2017/0254023 A1.
With regard to claims 1 and 3, Sumnicht teaches an absorbent product comprising cellulosic fibers and having wet CD strength falling within the claimed range; see below. The web is made without the use of polyaminoamide-epihalohydrin, PAE, since it uses glyoxylated polyacrylamide as a wet-strength agent; see ¶-[0054]-[0055]. It is well-known and stated on pages 4 and 5 of this application that PAE is the cause of the contamination of the product with the recited AOX, i.e., dichloropropanol and chloropropanediol, and since “less than” includes zero (0) as the lower limit; therefore, the web of the reference would not have any of those compounds, since as stated above, it does not contain PAEs, and thus reads on the claims. Sumnicht teaches CD wet tensile of at least 500 g/3 in which converts to at least 64.35 N/m; ¶-0165] and on ¶-[0171] teaches CD wet strength from 100 to 500 g/in, which converts to 38.61 N/m to 193.05 N/m, which falls within the claimed range. Note also that table 1 show CD wet strength of 1,011 g/3 in and 1097 g/3 in (converts to 130 N/m and 141.18 N/m), which falls within the claimed range. Sumnicht teaches the making of the web by a wet-laying process; see ¶-[0032], [0052]-[0057], which teach the making of the web in a papermaking machine, including the slurry of the fibers which are deposited on foraminous wire using a headbox, etc. Note that tissues basesheet are generally presented in roll-form, therefore, presenting the wipes/tissues as a retail roll would have been obvious to one of ordinary skill in the art. Sumnicht teaches two plies products having CD wet strength falling within the claimed range; see ¶-[0170]. Which teaches CD wet strength from 75 g/in through 500 g/in, which converts to 28.96 N/m through 193.05 N/m.
Regarding to claim 2, Sumnicht teaches that the airlaid webs of the prior art contains latex, but not the product of its invention; see ¶-[0117], and thus the reference reads on said claim.
With regard to claim 4, Sumnicht teaches the creping of the web; see ¶-[0058]-[0060].
With regard to claim 5, even though Sumnicht did not measure the absorbency, this property would be considered inherent to the absorbent product of the reference, since the other measured properties are within the claimed range and the products are made using the same/similar processes.
With regard to claim 6, Sumnicht teaches the use of glyoxylated polyacrylates, polyvinylamide and complex; see ¶-[0054], [0057], which reads on as one of the specie of the claim.
Regarding to claim 7, Sumnicht is silent with regard to the use of plastic or extruded polymers and thus it is considered that the product of the reference does not contain said materials.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph and Double Patenting, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach nor fairly suggest a multi-ply tissue product having the combination of properties as claimed, i.e., CD wet strength, Basis weight, chloropropanediol and the claimed amount of polyamidoamine- epihalohydrin.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Absorbent Products.”
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 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 The examiner takes official notice of this fact and will provide evidence if necessary.
