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
Applicant’s amendment filed on January 29, 2026 has been entered. Claims 1, 6-12, 15, and 18 have been amended. As such, Claims 1, 6-12, and 14-20 are currently pending in the application.
Terminal Disclaimer
The terminal disclaimer filed on February 3, 2026 has been disapproved by the OPLC technology center because the wrong form was submitted. The OPLC has asked that the terminal disclaimer be resubmitted using PTO/AIA 25 (4-13), with no fee required.
Claim Rejections - 35 USC § 103
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, 6, 8, 9, 11, 12, 14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,234,720 to Neal et al. (“Neal”).
With regard to Claims 1, 6, 12, and 14, Neal discloses a process for preparing synthetic fibers by coating the fibers with a hydrophilic lubricant prior to feeding the fibers into a crimping device. See, e.g., Abstract, entire document. Neal teaches that the preferred synthetic fibers are polyester fibers or cellulose acetate fibers. Column 12, lines 5-35; see also column 13, lines 8-15 (“The most preferred polymers for use in the present invention are (1) relatively unoriented and relatively oriented poly(ethylene terephthalate) (PET); (2) copolyesters based on poly(ethylene terephthalate), particularly those suitable for use as binder fibers, (3) poly(ethylene terephthalate) containing cellulosic additives and/or modified starch, such as starch acetate, and (4) cellulose acetate fibers.”) (emphasis added). Neal discloses that cellulose acetate synthetic fibers can have a crimp rate of 12 to 14 crimps per inch (falling within the claimed parameter of 10-30 CPI) when provided at a staple length of 51 mm (falling within the claimed parameter of 55 mm or less). Column 27, lines 47-51. Neal also discloses that staple fiber can be provided with a denier per filament as low as 0.7. Column 13, lines 60-62. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Neal teaches that the synthetic fiber can be combined or blended with a binder fiber and undergo heat/compression treatment to form a thermally bonded nonwoven fabric. Column 7, lines 27-31. Neal teaches that binder fiber can be included in an amount of 20% by weight. Column 28, lines 21-23. As such, the person having ordinary skill in the art would readily expect a synthetic fiber amount of about 80% by weight, to balance out the binder fiber content, would be suitable in the nonwoven fabric. Neal discloses that the synthetic fibers can be provided as non-round fibers in crimpled staple form. Column 13, lines 26-31. For example, Neal teaches that the cellulose acetate fiber can have a Y-shaped cross-section. Column 27, lines 8-15. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a nonwoven fabric comprising a fiber blend that includes a non-round cellulose acetate staple fiber having a cut length of 55 mm or less with a denier per filament of less than 2.0 and a binder fiber because Neal discloses using synthetic polyester fiber having the described dimensions in combination with a binder fiber in the manufacture of a nonwoven fabric, Examples 7 and 9, and because Neal teaches that cellulose acetate fiber having similar dimensions can be used as the synthetic fiber in place of polyester.
Neal does not specifically address the property of clo value per millimeter of loft of a nonwoven web comprising the fiber blend being greater than 0.180, or being greater than 0.210, nor does Neal specifically address the clo value per gram basis weight of at least 0.030. Nonetheless, it is reasonable to presume that these properties would be inherent to the nonwoven fabric comprising the fiber blend of cellulose acetate fiber and binder fiber taught by the Neal. Support for the presumption is found because Neal renders obvious the combination of limitations recited in Claim 1 of a staple fiber formed from cellulose acetate with a crimp frequency of 10 to 30 crimps per inch with a length less than 55 mm and a denier per filament less than 2.0, and having a Y-shaped cross-section in combination with a binder fiber in a similar weigh ratio to form the fiber blend. “[I]nherency may supply a missing claim limitation in an obviousness analysis where the limitation at issue is the natural result of the combination of prior art elements.” Persion Pharmaceuticals. V. Alvogen Malta Oper., 945 F.3d 1184, 1191 (Fed. Cir. 2019). The burden is on the Applicant to show otherwise.
With regard to Claim 8, Neal teaches that the synthetic fiber can comprise polyester, cellulose acetate, and suitable blends thereof. Column 12, lines 10-14. With regard to Claim 9, Neal teaches that nonwoven fabric can contain a mixture of synthetic fibers. Column 12, lines 13-14. As such a blend of two different types of cellulose acetate, such as two cellulose acetate fibers having a different denier or different crimp rate, would be obvious in order to vary the properties, such as basis weight or loft, of the final nonwoven product. With regard to Claim 11, Neal teaches that CELBOND sheath/core fiber, which comprises a polyester core and a polyolefin sheath, can be used as a bicomponent binder fiber. Column 20, lines 23-29. With regard to Claim 18, Neal discloses that nonwoven fabrics are suitable for use in a broad range of products, such as absorbent products, cleaning wipes, and insulation. Column 1, lines 32-35. With regard to Claim 19, Neal teaches that the synthetic fiber can comprise polyester, cellulose acetate, and suitable blends thereof. Column 12, lines 10-14. With regard to Claim 20, Neal teaches that the nonwoven fabrics are generally useful as an incontinence structure. Colum 1, line 38. As such, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the nonwoven fabric into a garment structure, such as a diaper, in order to provide the feature of an incontinence structure, as taught by Neal.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Neal in view of U.S. Patent No. 5,783,505 to Duckett et al. (“Duckett”).
With regard to Claim 7, Neal does not disclose providing a fiber blend comprising wool, cotton, flex, or hemp. Duckett is also related to nonwoven fabrics for disposable articles that include cellulose acetate fibers. See, e.g., Abstract, entire document. Duckett teaches that blending cellulose acetate fibers with cotton fibers to form a nonwoven fabric is well known and beneficial because the cotton can increase natural comfort. Column 2, lines 48-51. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include natural fiber, such as cotton, in the nonwoven fabric disclosed by Neal, in order to increase natural comfort of the resulting product, as shown to be known by Duckett.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Neal in view of U.S. Patent No. 5,334,446 to Quantrille et al. (“Quantrille”).
With regard to Claim 10, Neal teaches polyester and copolyester can both be used in the binder fiber. Column 20, lines 7-29. However, Neal does not specifically disclose that the binder fiber is a bicomponent fiber comprising both a polyester component and a copolyester component. Quantrille is also related to nonwoven fabrics useful in disposable articles and products that can contain staple fibers, such as cellulose acetate. See, e.g., Abstract, column 8, lines 26-34, entire document. Quantrille teaches that a usable binder fiber in such applications include core/sheath polyester/copolyester binder fiber. Column 8, lines 20-25. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include bicomponent polyester/copolyester as a binder fiber in the nonwoven fabric disclosed by Neal, since Quantrille generally teaches that such fiber is suitable for use in general nonwoven products, and 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. In re Leshin, 227 F.2d 197 (CCPA 1960).
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Neal in view of U.S. Patent Application Publication No. 2004/0180592 to Ray (“Ray”).
With regard to Claims 15-17, Neal does not disclose that the nonwoven fabric is air-laid, lapped horizontally, and comprises a plurality of vertical pleats. Ray is related to an insulation sheet material comprising a nonwoven fabric that can be thermoformed. See, e.g., Abstract, entire document. Ray teaches that the nonwoven fabric can be formed by air-laying and cross-lapping the fibers. Paragraph [0014]. Ray also teaches that the nonwoven fabric can further be subjected to vertical pleating to improve sound absorption. Paragraph [0017] and Figure 4. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the nonwoven fabric taught by Neal as an air-laid, cross-lapped material with vertical pleats in order to improve the acoustical insulation of the fabric, as shown to be known by Ray.
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, 6-12, and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 10-14, and 16-20 of copending Application No. 18/002/290 (“the ‘290 Application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘290 Application also recites a fiber blend that comprises cellulose acetate staple fibers and binder fibers, wherein the cellulose acetate staple fibers have a dpf of 2.0 or less, and the fiber blend can be formed into a nonwoven web having an initial clo value per mm of at least 0.210. Although the ‘290 Application further contains structural staple fibers having a dpf of 6.0 or more, the presence of such fibers are not precluded from the present claims, and dependent Claim 8 further recites the presence of other synthetic fibers. The ‘290 Application further recites overlapping dependent claim features, such as crimps per inch of the staple fiber and length of the staple fiber. Although different properties are recited between the applications, the materials that are claimed possess significant overlap, thus indicating that similar properties would also be present.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed January 29, 2026 have been fully considered but they are not persuasive.
Applicant argues that Neal does not disclose any desired result relating to the clo insulating characteristic of a nonwoven web, or any desired result relating to the clo insulating characteristic of a nonwoven web. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Neal teaches that polyester or cellulose acetate staple fiber can be provided with a denier per filament as low as 0.7. Column 13, lines 60-62. Neal teaches that the staple fiber can be combined or blended with a binder fiber and undergo heat/compression treatment to form a bonded nonwoven fabric. Column 7, lines 27-31. Neal teaches that binder fiber can be included in an amount of 20% by weight. Column 28, lines 21-23. Neal discloses that the synthetic fibers can be provided as non-round fibers in crimpled staple form. Column 13, lines 26-31. Neal also discloses that cellulose acetate synthetic fibers can have a crimp rate of 12 to 14 CPI, which is within the claimed range. As such, Neal discloses a combination of features that address each of the structural and materialistic claim limitations of Claim 1. The Office has set forth the minimum requirements to allege inherency of the new property now claimed by Applicant. The claiming of previously unknown property lacks the sufficiency, in and of itself, to render the claim patentable. M.P.E.P. 2112(I). Applicant has failed to provide sufficient evidence to show that the properties are not inherent to the material disclosed by Neal, nor has Applicant provided a claim limitation that falls outside of the materials disclosed by Neal. As such, the prima facie obviousness rejection is maintained.
Applicant argues that the results achieved by the invention provide excellent flexibility where insulation weight is important by allowing one to either maintain equivalent clo while lowering thickness, all without having to add additional fibers to achieve these results. In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., not having to add additional fibers) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant claims the opposite of this allegedly inventive feature in dependent Claim 7, which requires the presence of additional natural fiber, and in dependent Claim 8, which requires the presence of additional synthetic fibers.
Applicant argues that Neal does not disclose how selection of polyester versus cellulose acetate, the combination of fibers, their relative amounts, their denier per filament within disclosed ranges, or their shapes affects insulation values, or for that matter, any value. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Neal teaches that polyester or cellulose acetate staple fiber can be provided with a denier per filament as low as 0.7. Column 13, lines 60-62. Neal teaches that the staple fiber can be combined or blended with a binder fiber and undergo heat/compression treatment to form a bonded nonwoven fabric. Column 7, lines 27-31. Neal teaches that binder fiber can be included in an amount of 20% by weight. Column 28, lines 21-23. Neal discloses that the synthetic fibers can be provided as non-round fibers in crimpled staple form. Column 13, lines 26-31. Neal also discloses that cellulose acetate synthetic fibers can have a crimp rate of 12 to 14 CPI, which is within the claimed range. As such, Neal discloses a combination of features that address each of the structural and materialistic claim limitations of Claim 1.
Applicant argues that comparing examples 8 and 9 in the present specification shows that a small drop from 3 to 1.8 dpf between equivalent shapes at 40% cellulose acetate slightly dropped the clo/basis weight from 0.0266 down to 0.0248. However, the prior art of record relied upon in the rejection, does not utilize an amount of cellulose acetate as low as 40% by weight. Rather, Neal teaches that cellulose acetate is present in an amount of about 80% by weight.
Applicant argues that examples 1 and 2 in the present specification show that a drop in dpf from 3 to 1.8 increased the clo/basis weight. However, if the Applicant intends to rely on Examples in the specification to show non-obviousness, the Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art. In this instance, both examples 1 and 2 are an illustration of cellulose acetate fiber having a round cross-section. However, Claim 1 requires the cellulose acetate fiber have a Y-shaped cross-section. Therefore, examples 1 and 2 are not commensurate in scope with the claims. And it is important to recognize that clo/basis weight is a property discovered by Applicant. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Applicant’s ability to manipulate the results of their new property does not serve as a basis for patentability of the material that is being manipulated, so long as the material, itself, is obvious over the prior art.
Applicant argues that “comparing examples 3 and 10, both are trilobal with a dpf of 1.8, but the quantity is also a tied variable without which one cannot achieve the claimed insulation values. Even at the same high concentration of cellulose acetate at 80 wt.%, two non-round fibers do not achieve the same results as can be seen in examples 3 and 4, such that a non-round hollow cross section is inferior.” Page 8. However, Neal teaches that the cellulose acetate fiber can have a Y-shaped cross-section. Column 27, lines 8-15. Applicant has not provided sufficient evidence to show that the material of Neal, which is structurally and chemically similar to the combination of limitations presented in Claim 1, does not also possess the property that comes about from the combination of those materials. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003).
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 JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 pm.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789