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 .
Response to Amendment
The amendment filed on 12/1/2025 has been entered.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-7, 9-13, 15-17, 20-22, 24 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over USPAP 2007/0259169 to Williams in view of USPAP 2016/0024278 to Fricke, USPN 6,479,416 to Frank, USPN 8,691,007 to Samanta, and/or USPN 5,710,080 to Pellegrini.
Claims 1, 5-7 and 12, Williams discloses a synthetic fiber comprising a uniform, homogeneous mixture containing, based on the total weight of the synthetic fiber: 0.1 to 2.6 wt % aerogel particles, said aerogel particles having an average diameter of 0.1 mm or less; and 85 to 99.9 wt % polymer material, and wherein the aerogel particles are homogenously dispersed throughout the polymer material in said mixture (see entire document including [0004], [0005] and [0035]-[0059]).
Williams discloses that the aerogel particles having an average diameter of 0.1 mm or less [0054] which reads on the claimed range of 0.3 to 20 µm. Plus, Fricke discloses that it is known in the art to use aerogels having a diameter of 0.1 µm to several mm (see entire document including [0001] and [0042]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the aerogel particles with any suitable diameter, such as claimed, because it has been held to be within the general skill of a worker in the art to select a known aerogel particle size on the basis of its suitability and desired characteristics.
Williams does not appear to mention the synthetic fiber fineness but Frank discloses that it is known in the aerogel particle and fiber art to construct synthetic fibers with a denier of between 0.8 and 40 to provide products that are flexible (see entire document including column 1, lines 12-17, column 2, line 18 through column 6). Therefore, it would have been obvious to one having ordinary skill in the art to construct the synthetic fiber of Williams with the claimed denier to provide a product that is desirably flexible.
Claims 2 and 3, the aerogel particles comprise silica aerogel ([0026]).
Claim 4, Williams does not appear to mention the synthetic fiber being siliconized but Williams does disclose that the aerogel particles are present to provide insulating properties [0004]. Pellegrini discloses that it is known in the art to construct thermally insulating fibrous material with siliconized fibers to provide an end product with good hand characteristics (see entire document including column 1, lines 7-20 and column 3, lines 4-8). Therefore, it would have been obvious to one having ordinary skill in the art to use siliconized fibers to provide an end product with good hand characteristics.
Claims 9-11, Williams discloses that the polymer material may be nylon, polyester, acrylic, polyolefin, or a combination thereof [0045]. In addition, Frank discloses that it is known in the insulation art to construct fibers with polyester material such as polyethylene terephthalate (see entire document including column 2, line 18 through column 3, line 56). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the synthetic fibers from any suitable synthetic material, such as claimed, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 13, 15 and 16, Williams does not appear to mention specific fiber lengths but Frank discloses that it is known in the art to use staple fibers, continuous filaments, and/or crimped fibers (column 2, lines 18-58). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the synthetic fibers of Williams with any suitable fiber construction, such as claimed, based on the intended use and the desired fiber appearance and/or properties and because it is within the general skill of a worker in the art to select a known fiber structure on the basis of its suitability and desired characteristics. The examiner takes official notice (now admitted prior art) that staple fibers conventionally have a fiber length between about 5 to 120 mm.
Claim 17, Williams discloses batting, insulation material, or yarn comprising the synthetic fiber according to claim 1 [0035].
Claim 20, Williams discloses an article comprising the synthetic fiber according to claim 1 [0035].
Claim 21, Williams discloses that the article may be selected from the group consisting of an outerwear product, footwear, clothing, a sleeping bag, and bedding [0035]. In addition, Pellegrini discloses that it is known in the art to construct thermally insulating fibrous material into articles such as garments and sleeping bags (column 1, lines 52-60). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the synthetic fiber of Williams into an article such as claimed, to provide a garment or sleeping bag with insulating properties.
Claims 22 and 24, Williams discloses the claimed method of making the synthetic fiber ([0050]-[0053]). Plus, the examiner takes official notice (now admitted prior art) that the claimed method steps are conventional and thus obvious in the synthetic fiber making art.
Claim 27, Williams discloses the fiber may comprise 2 to 38 vol. % aerogel particles [0060].
Response to Arguments
Applicant's arguments filed 12/1/2025 have been fully considered but they are not persuasive.
The applicant asserts that there is no motivation to modify Williams such that the fiber of Williams has a denier of 0.1 to 9.0 denier. The examiner respectfully disagrees. Williams does not appear to mention the synthetic fiber fineness but Frank discloses that it is known in the aerogel particle and fiber art to construct synthetic fibers with a denier of between 0.8 and 40 to provide products that are flexible (see entire document including column 1, lines 12-17, column 2, line 18 through column 6). Therefore, it would have been obvious to one having ordinary skill in the art to construct the synthetic fiber of Williams with the claimed denier to provide a product that is desirably flexible.
The applicant asserts that Frank fails to disclose a synthetic fiber comprising a uniform and homogeneous mixture of polymer material and 0.1-2.6 wt% aerogel particles dispersed within the fiber polymer matrix. Applicant’s argument is not persuasive because Williams, not Frank, is the primary reference. Williams already teaches said limitations. Specifically, Williams discloses a synthetic fiber comprising a uniform, homogeneous mixture containing, based on the total weight of the synthetic fiber: 0.1 to 2.6 wt % aerogel particles, said aerogel particles having an average diameter of 0.1 mm or less; and 85 to 99.9 wt % polymer material, and wherein the aerogel particles are homogenously dispersed throughout the polymer material in said mixture (see entire document including [0004], [0005] and [0035]-[0059]). Frank is merely relied upon for disclosing that it is known in the aerogel particle and fiber art to construct synthetic fibers with a denier of between 0.8 and 40 to provide products that are flexible.
The applicant also asserts that Frank teaches away from incorporating aerogel into the interior of synthetic fibers. As stated above, Williams, not Frank, is the primary reference. Williams already teaches incorporating aerogel into the interior of synthetic fibers. Frank is merely relied upon for disclosing that it is known in the aerogel particle and fiber art to construct synthetic fibers with a denier of between 0.8 and 40 to provide products that are flexible.
The applicant also asserts that Frank teaches a higher aerogel loading than that claimed in new claim 27. As stated above, Williams, not Frank, is the primary reference. Williams already teaches the claimed aerogel loading amount [0060]. Frank is merely relied upon for disclosing that it is known in the aerogel particle and fiber art to construct synthetic fibers with a denier of between 0.8 and 40 to provide products that are flexible.
The applicant also asserts that one skilled in the art would not want to reduce aerogel in Williams below 5%. Applicant’s argument is not persuasive because Williams already discloses an aerogel amount of less than 5 wt% (0004], [0005], [0058] and [0059]). All the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art even though the art teachings relied upon are phased in terms of a non-preferred embodiment or even as being unsatisfactory for the intended purpose, In re Boe, 148 USPQ 507 (CCPA 1966); In re Smith, 65 USPQ 167 (CCPA 1945); In re Nehrenberg, 126 USPQ 383 (CCPA 1960); In re Watanabe, 137 USPQ 350 (CCPA 1963). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have “relatively acceptable dimensional stability” and “some degree of flexibility,” but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since “Gurley asserted no discovery beyond what was known in the art.” Id. at 554, 31 USPQ2d at 1132.). MPEP 2123.
The applicant also asserts that Williams in view of Chen fails to teach or suggest the claimed invention. Applicant’s argument is not persuasive because Chen is not cited in the rejection.
The applicant also asserts that there is not motivation for Williams to use aerogel with the claimed average diameter size. The examiner respectfully disagrees. Williams discloses that the aerogel particles having an average diameter of 0.1 mm or less [0054] which reads on the claimed range of 0.3 to 20 µm. Plus, Fricke discloses that it is known in the art to use aerogels having a diameter of 0.1 µm to several mm (see entire document including [0001] and [0042]). Therefore, even in the event that it is somehow shown that Williams fails to teach the claimed aerogel particle size, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the aerogel particles with any suitable diameter, such as claimed, because it has been held to be within the general skill of a worker in the art to select a known aerogel particle size on the basis of its suitability and desired characteristics.
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 ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789