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 .
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.
Status of Claims
This action is in reply to the communication filed on August 27, 2025.
Claims 1 and 14 have been amended and are hereby entered.
Claims 15 and 16 have been cancelled. Claims 2 – 10 and 13 have been cancelled previously.
Claims 1, 11, 12 and 14 are currently pending and have been examined.
This action is made FINAL.
Response to Amendments
Applicant's amendments to the claims, filed August 27, 2025, caused the withdrawal of the rejection of claims 1, 11, 12 and 14 – 16 under 35 U.S.C. 112(a) as failing to comply with the written description requirement as set forth in the office action filed May 27, 2025.
Response to Arguments
Applicant's arguments filed August 27, 2025 have been fully considered but they are not persuasive.
Applicant argues that the claims specifically recite that the profiled fiber is prepared by spinning using a polymer masterbatch as material. Applicant argues that the product-by-process position taken by the office ignores the exception wherein the manufacturing process imparts distinctive structural characteristics to the final product. Applicant argues that the polymer masterbatch spinning process is different from the melt-spinning process disclosed in Chen and that the differences in processes result in variations in fiber internal orientation and surface morphology, which consequently affect infrared performance. Examiner respectfully disagrees. Chen discloses a spinning process as claimed, i.e. a melt-spinning process. The melt-extrusion process discussed in the Examples of the instant specification do not appear to be claimed and therefore any structural differences between a melt-extrusion fiber and a melt-spun fiber are not commensurate in scope with the claims. Additionally, Applicant appears to be arguing structural differences between the fibers of Chen and the fibers of the instant invention, alleging differences in fiber orientation and surface morphology without specifically explaining what the particular differences are, how they relate to the infrared performance of each of the fibers, nor providing evidence to substantiate the allegation.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 11, 12 and 14 – 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 14 have been amended to require the profiled fiber has a temperature rise of at least 1.9 to 2.2°C and an emissivity of at 0.9 to 0.94. Applicant cites Example 13 of the specification and supplemental examples 1, 4, and 7 in the declaration previously filed October 9, 2024 as evidence for the claimed limitation. Examiner notes that Example 13 of the specification teaches a semi dull polyurethane yarn with a triangle cross section that has an emissivity of 0.9 and a temperature rise of 1.9°C. The declaration of October 9, 2024 teaches that fully drawn PET yarns have an emissivity of 0.94, 0.92 and 0.90 and temperature rises of 1.9, 2.1, and 2.2°C for bright, dull and semi-dull yarns, respectively. These examples are not commensurate in scope with the claimed properties as the claim does not require a level of orientation in the yarn or a level of brightness in the resulting yarns. Therefore, the amendments to the claim do not appear to be supported by the specification as originally filed and appear to constitute new matter.
Claims 11, 12, 15 and 16 are rejected as being dependent on claims 1 and 14.
Claim Rejections - 35 USC § 102 / § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 and 12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chen (US20030096114A1) as evidenced by Yamamoto (JP2016056464A, using the previously provided machine translation).
As per claim 1, Chen teaches:
A profiled fiber, wherein a cross-sectional shape of the profiled fiber is a non-hollow triangle (In Example 3, Chen teaches a melt dope containing R-PET is extruded and formed into filaments with a triangular cross-section ([0032]). A picture of the cross section is shown in Fig. 2 )
Wherein the profiled fiber does not comprise an infrared additive (Since Chen does not discuss the addition of an infared additive, it is reasonable to expect that the fiber does not include one, as claimed.)
Regarding the claimed “infrared radiation material,” temperature rise and emissivity properties, Chen teaches the same composition and fiber cross-section as that claimed, therefore, the claimed properties are considered to be inherent (and would be expected to fall within the range in the claim), absent evidence otherwise. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. When the structure recited in the prior art reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Applicant bears responsibility for proving that the reference composition does not possess the characteristics recited in the claims. See MPEP 2112. Furthermore, Yamamoto teaches that a multilobal cross section improves the far infrared radiation performance of fibers as compared with a circular cross section ([0022]). Therefore, the cross section of Chen is interpreted as being an infrared radiation material as claimed.
Regarding the phrase “prepared by spinning using a polymer masterbatch material, wherein the polymer masterbatch material comprises one or more polyethylene terephthalate…”, Examiner notes that the claim limitation is a product by process limitation. Absent a showing to the contrary, it is Examiner's position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, 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.
As per claim 12, since two of the alternative options are that the yarn is drawn or undrawn, it would naturally follow that Chen teaches the claim limitations as a yarn would necessarily be one or the other.
Claim Rejections - 35 USC § 103
Claim 14 is rejected under 35 U.S.C. 103 as obvious over Chen (US20030096114A1) as evidenced by Yamamoto (JP2016056464A, using the previously provided machine translation) as applied to claims 1 and 12 above.
As per claims 14, the teachings of Chen above are incorporated herein. Chen teaches a particular example of a PET fiber with a triangular cross section. Chen does not explicitly teach the use of that fiber in a fabric as required by claim 14.
Chen teaches an object of the present invention is to provide fabrics or textiles that are made of non-hollow fibers or filaments having regular polygonal cross-sections with equilateral sides so that the resulting fabrics or clothes have superior windproof characteristics ([0009]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the PET triangular cross section fibers in a fabric as claimed, motivated by the desire to predictably produce fabrics with superior windproof characteristics as taught by Chen ([0009]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (US20030096114A1) as evidenced by Yamamoto (JP2016056464A, using the previously provided machine translation) as applied to claims 1 and 12 above and further in view of Abe (US6620505B1).
As per claim 11, the prior art combination does not teach:
Wherein the polymer masterbatch further comprises a delustering agent
Abe teaches triangular cross-section fibers (Abstract), which are the same cross section as the fibers of Chen. Abe further teaches that titanium oxide is preferably included in the fibers as a delusterant because it prevents unfavorable glittering of the product, rendering it unsuitable for clothing applications and lowers the coefficient of friction so that the fiber does not deteriorate in the spinning process ([Column 6, Lines 14 - 25]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the synthetic fibers of Chen to include the claimed delustering agent motivated by the desire to predictably produce a fiber without undesirable glittering and a fiber that does not deteriorate in the spinning process as taught by Abe ([Column 6, Lines 14 - 25]).
Conclusion
Applicant's amendment necessitated any 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA N CHANDHOK whose telephone number is (571)272-5780. The examiner can normally be reached on Monday through Friday from 6:30 - 3:30.
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, Marla McConnell can be reached on (571) 270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789