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 .
Prosecution Reopened
Applicant's arguments filed in the Brief 11/7/2025 have been fully considered and in view of the Brief filed 11/7/2025, PROSECUTION IS HEREBY REOPENED. Ex Parte Prosecution is reopened because upon further consideration of the prior art, Renner et al. (US 2012/0144597) do not teach the claimed limitation to when the pelt has been basified. New grounds of rejections are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
Claim Interpretation
BRI of claim language to “…a pelt that retains water…” is an animal hide. Examiner’s claim interpretation is supported by Applicant’s specification [0003] “The untanned leather hide is known as a pelt.“
BRI of claim language to “…limiting a total amount of the water in the container to be equal to or less than 110% of a maximum water retention capacity of the pelt; and limiting a total amount of the tanning agent in the container to be equal to or less than 110% of a maximum tanning agent retention capacity of the pelt…” as required in clam 1, and similar language required in claims 7-8, 13-15, 19-20 is to mean saturate as supported in Applicants specification [0005-0006] & [0014-0016] and [0025] disclosing a bath water content of the container is 100% of the water amount which can be retained by the hide, with very little excess tanning agent for the hide to absorb, to control cost and waste.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 and 10-20 have been considered but are moot because the new ground of rejection below.
Applicants urge that example 1 of Renner does not teach the claimed pressure. In response, Examiner understands the pressure disclosed in Example 1 is outside of the claimed range. Examiner is relying upon example 4 disclosure of atmospheric pressure to meet the pressure as claimed.
Applicant’s also urge that Renner et al. do not teach the claimed range of tanning agent. In response, Renner et al. claim 1 teach fully saturated animal hides wherein the tanning solution contains the tanning agent to be imbibed by the animal hide in an amount not exceeding 80% which is less than the claimed 110%, thus Applicants arguments are not persuasive. Accordingly, the claims are addressed below.
The rejection of claim 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn upon further consideration.
New Grounds of 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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 6 and 12 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.
It is unclear and indefinite how the claim 1 language to “…finalizing the process when the pelt has been basified…” is unclear and indefinite as to when the basifying process is in claim 1.
Claims 6 and 12 limitations to deliming is unclear and indefinite since none of the claims recite a positive step of liming so it is unclear and indefinite where the deliming required in claims 6 and 12 occurs in relation to the placing, limiting and finalizing process steps within claim 1.
Claims 6 and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 6 and 12 recite limitation to further comprising step of deliming which is not further limiting claim 1 which has no step of liming.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Renner et al. (US 20120144597A1) in view of Silvestre et al. (EP0408097A1).
With respect to claim 1 step of placing into a container: a pelt that retains water, and a tanning agent, Renner et al. teach a process for tanning animal hides comprising treating the animal hide containing the tanning solution with compressed gas in a pressurized container for a period of at least 15 minutes. Such a process is substantially waste waterless, optionally even completely waste waterless, and delivers high-quality through-tanned leathers or furs after short treatment times. See abstract and examples 1 and 4. Renner et al. example 1 teaches 65 g of chromium sulfate tanning agent in 310 g of water. See [0029]. It is the Examiner’s position that this encompasses the tanning agent of claim 1 as explained by Applicant’s specification in at least [0027] teaching chromium methane sulfonate tanning agent.
Claim 1 step of limiting a total amount of the water in the container to be equal to or less than 110% of a maximum water retention capacity of the pelt during the process is met by Renner [0015-0016] teaching their fully saturated animal hide has about half the liquid it contains removed from it. And at least some of the liquid removed from the animal hide in the reducing step is replaced by a tanning solution which the liquid-reduced animal hide ideally imbibes completely. [0006-0007] teaches full saturation which is BRI of the material limitation to limiting a total amount of the water in the container to be equal to or less than 110% of a maximum water retention capacity of the pelt. However there is no teaching that this is the maximum water that can be retained. Examiner notes that Applicant’s specification [0025] correlates the claim language of “can be retained” to saturation and [0006-0007] teaches full saturation.
Claim 1 step of limiting a total amount of the tanning agent in the container to be equal to or less than 110% of a maximum tanning agent that can be retained by the pickled animal hide is suggested by Renner et al. example 1 illustrating a hide weight of 600g was contacted with 400g of tanning solution and the hide had imbibed the 400 g ie 100% of the total tanning agent. However there is no teaching that this is the maximum tanning agent that can be retained. Examiner notes that Applicant’s specification [0025] correlates the claim language of “can be retained” to saturation and Renner et al. claim 1 teach fully saturated animal hides wherein the tanning solution contains the tanning agent to be imbibed by the animal hide in an amount not exceeding 80% which is less than the claimed 110%.
Claim 1 step of finalizing the process when the pelt has been basified to bind the tanning agent in the pelt suggested in [0007] teaching their tanning liquor contains sodium bicarbonate and the pH is raised between values of 3.6 and 4.
Claim 1 step of maintaining a pressure inside the container within a range of 50% of atmospheric pressure to 150% of atmospheric pressure is met by example 4 teaching atmospheric pressure. [0036].
Renner et al. do not exemplify the finalizing the process when the pelt has been basified as is required in independent claim 1. Examiner notes that [0007] teaches the tanning liquor contains sodium bicarbonate and the pH is raised between values of 3.6 and 4. However, the examples do not teach basifying.
Silvestre et al. teach tanning process for raw hide is commonly known to include preparing an organic liquid bath of mineral tanning agents, (b) suspending in said organic bath a mineral tanning agent based on a metallic compound, (c) adjusting the hydration rate of the skins in a range between: a minimum threshold of 200% (weight of water relative to the dry weight of skin) from which all of the fibers of the skin are impregnated with water and a maximum threshold corresponding to the limit of total retention of water. See claim 1. Silvestre et al. example 1 teach it is commonly known to basify skins after chromium tanning teaching a gradual and controlled basification of the skins in the tanning bath. See the example 1 linking pages 4-5 of the Google Patents translation.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrive at the claimed finalizing step where the pelt has been basified to bind the tanning agent in the pelt as required by claim 1, because Renner et al. guide one of ordinary skill to modify their examples with a tanning liquor containing sodium bicarbonate in a similar waste waterless process of tanning with chromium sulphate where the hide imbibes the tanning agent in their atmospheric pressure assisted tanning process in general and Silvestre et al. example 1 teach it is commonly known to basify skins after chromium tanning in a similar tanning process having a maximum threshold corresponding to the limit of total retention of water. See claim 1 of Silvestre et al. One of ordinary skill is motivated to combine the teachings of Renner with Silvestre since both are in the analogous art of tanning hide.
Regarding the instant claim 2, wherein the animal hide is sammied prior to providing the animal hide in the container, see [0028] example 1, where a raw hide (pickled pelt from the cow) having a weight of 1000 g was mechanically sammied. Hide weight after this operation was 600 g. The hide was then contacted with 400 g of tanning solution.
Regarding claims 3 and 4, Renner et al. teach an aqueous tanning solution consisted of 310 g of water, 65 g of chromium sulphate and 25g of salt. [0029].
Regarding claim 5, Renner et al. teach a subsequent addition of fatliquors to provide the softness required of the final leather in [0009].
Regarding claims 6 and 11 limitation to wherein a total amount of water that can be retained in the animal hide is calculated based on the initial weight of the animal hide prior to a de-liming step of the animal hide is reduced to approximately 50-90% of the total amount of water that can be retained by the pickled animal hide prior to providing the animal hide in the container is met by Renner et al. teaching in [0015-0016] the hides obtained after the bating and pickling step typically contain about 70% to 75% by weight of liquid, based on their total weight (dry hide plus liquid). The reducing step reduces the liquid content of the animal hide by from 5% to 90%, preferably by from 20% to 70% and more preferably by from 30% to 50%.
Regarding the claims 7, 10, 13, 14, wherein the total amount of water in the container is no more than 99% of the total amount of water that can be retained by the pickled animal hide is met by Renner teach their fully saturated animal hide has about half the liquid it contains removed from it. [0015]. At least some of the liquid removed from the animal hide in the reducing step is replaced by a tanning solution which the liquid-reduced animal hide ideally imbibes completely. To achieve this, float ratios not more than 2 and more preferably it has a value below 1 [0016]. Examiner notes that Applicants specification [0006] discloses a float ratio of 8:1 to 1:1 and it is the Examiner’s position that the material limitations of the total amount of water in the container is met by Renner describing a waste waterless process (abstract) with a float ratio within the same ranges meets the claim limitations.
Claims 8, 12 and 15 recite material limitation to wherein the total amount of tanning agent in the container is no more than 100% of the total amount of tanning agent that can be retained by the pickled animal hide and wherein the total amount of tanning agent is calculated based on the initial weight of the animal hide prior to a de-liming step of the animal hide is met by the example 1 of Renner et al. teaching 1000g raw hide was sammyed to a hide weight of 600g was contacted with 400g of tanning solution and the hide had imbibed the 400 g ie 100% of the total tanning agent.
The pH in example 1 is 3.7 meeting the pH of claims 9, and 16-18.
The pressure range of claims 19-20 is taught in example 4 teaching atmospheric pressure.
Conclusion
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/PREETI KUMAR/ Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/ Supervisory Patent Examiner, Art Unit 1761