DETAILED ACTION
Claims 1-2, 4-20, and 28 were rejected in the Office Action mailed 08/26/2025.
Applicant filed a response and affidavit and amended claims 1 and 11 on 12/26/2025.
Claims 1-2 and 4-28 are pending, of which claims 21-27 are withdrawn.
Claims 1-2, 4-20, and 28 are rejected.
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 .
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 1-2, 4-20, and 28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an active fiber material, comprising: a cellulose or semi-cellulose carrier material comprising viscose; and a plurality of mineral particles disposed within the cellulose or semi-cellulose carrier, wherein the mineral particles comprise silicon carbide (SiC), calcium carbide (CaC2), or mixtures thereof, and wherein the mineral particles comprise 1.25% to 10% by weight of the active fiber material, wherein the active fiber material is configured to absorb light, convert the absorbed light into infrared light, and emit the infrared light, does not reasonably provide enablement for the active fiber material provides an increase in an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling
[regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of an active fiber material provides an increase in an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator can be used as claimed and whether an active fiber material provides an increase in an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to an active fiber material, comprising: a cellulose or semi-cellulose carrier material comprising viscose; and a plurality of mineral particles disposed within the cellulose or semi-cellulose carrier, wherein the mineral particles comprise silicon carbide (SiC), calcium carbide (CaC2), or mixtures thereof, and wherein the mineral particles comprise 1.25% to 10% by weight of the active fiber material, wherein the active fiber material is configured to absorb light, convert the absorbed light into infrared light, and emit the infrared light, wherein the active fiber material provides an increase in an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claim 1 read on an active fiber material providing an increase in an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator at any distance and any temperature, while the Specification discusses a difference in emitted power difference form 2.5 to 20 microns at 35°. Paragraph [0187].
(b) There is no direction or guidance presented for any type of fiber material comprising any type of cellulose or semi-cellulose carrier material comprising viscose in any amount any type of mineral particles comprising silicon carbide, calcium carbide, or mixtures thereof in an amount from 1.25 to 10% by weight of the fiber material providing an increase in an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator. Does the increase in an emitted power difference rely on the type of carrier material, the mineral particles, or both? Is there a specific amount of viscose required in the active fiber material or a specific amount of silicon carbide, calcium carbide, or mixtures thereof required in the active material to attain the emitted power difference? What is the placebo comparator? Is it any type of fiber material? Or any type of fiber material comprising a cellulose or semi-cellulose carrier material comprising viscose? Or any type of fiber material comprising any type of mineral particles in an amount from 1.25 to 10% by weight of the fiber material? What material is necessary and in what quantities to attain the emitted power difference?
(c) There is an absence of working examples concerning any type of active fiber material providing an increase in an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator. The Specification provides no working examples.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-2, 4-20, and 28.
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 1-2, 9-16, 20, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Schnurer et al. (US 2004/0043174) (Schnurer) in view of Canova et al. (US 2011/0059037) (Canova) and Blaney et al. (US 2016/0076170) (Blaney), taken in view of evidence provided by Miyamoto et al. (US 2019/0203408) (Miyamoto).
Regarding claims 1-2, 9, 11, and 20
Schnurer teaches combining electromagnetically-active particles with carrier materials such as resins to produce fibers for textiles, such as textiles for clothing applications. The active particles are selected based on their optical properties. The textile comprising the active particle carrying fibers improve body circulation and provide greater comfort in end products. See, e.g., abstract and paragraphs [0003], [0019], [0022-0023], [0028-0033], and [0059].
Schnurer teaches the active particles including titanium dioxide, quartz, and aluminum oxide are dispersed in the polymeric resin in an amount of about 0.5% to about 20% of the total weight of the composition. The fibers carrying the active particles are in the form of a yarn. Paragraphs [0006], [0008], [0022], and [0039] and claims 26-28. Given the active particles are present in the polymeric resin in an amount of about 0.5% to about 20% by weight of the total composition, and given the total composition is used to form the fibers, it follows the active particles account for about 0.5% to about 20% of the fibers.
It should be noted that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Schnurer teaches the optically responsive yarn, when applied excitation from ambient light, translates the light into infrared light, and emits infrared light for various beneficial effects for the wearer. The electromagnetically active fiber material provides an improvement in circulation. Abstract, paragraphs [0061-072], [0081-0086] and [0092-0098] and FIG. 1-2.
Schnurer teaches rayon is a suitable carrier material. Paragraph [0024]. However, Schnurer does not explicitly teach the rayon is viscose rayon (A) or the presence of silicon carbide, calcium carbide, or mixtures thereof (B).
With respect to the difference, Canova (A) teaches yarns shaped from polymeric compositions containing additives having properties of emission and/or absorption of radiation in the long infrared region, for the purpose of stimulating blood microcirculation and providing comfort. See, e.g., abstract and paragraphs [0008-0010] and [0040-0041].
Canova teaches the additives have a capacity for emission and/or absorption of infrared radiation in the wavelength range between 2 and 20 microns. The additives include filler chosen from the oxide group, including titanium dioxide and silicon dioxide. Paragraphs [0011-0012] and [0016-0018]. Canova teaches cellulosic polymers such as a blend of rayon and viscose is suitable for use as the polymeric carrier. Paragraph [0015] and claim 32.
Canova and Schnurer are analogous art as they are both drawn to yarns comprising polymeric compositions comprising active particles for use in promoting circulation and comfort.
In light of the disclosure of Canova, it therefore would have been obvious to one of ordinary skill in the art to use a blend of viscose and rayon as the carrier material in the optically responsive yarn of Schnurer, in order to form an optically responsive yarn with predictable success, as Canova teaches a blend of viscose and rayon is suitable for use in an optically responsive yarn carrying active particles, 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 198 (CCPA 1960), and thereby arrive at the claimed .
With respect to the difference, Blaney (B) teaches an IR-emitting polymer fiber for use in garment applications. The polymer fiber includes IR-emitting powder. The IR-emitting powder refers to any material that is capable of absorbing visible radiation then re-emitting some or all of that energy in the infrared range. Suitable IR-emitting powder include silicon carbide. Blaney teaches these IR-emitting powders are especially beneficial in enhancing healthy biological activity in living tissue, such as enhancing blood flow, blood oxygen levels, and improving nutrient transport in and out of cells. See, e.g., abstract and paragraphs [0002-0005], [0021], [0025], [0036], [0040], and [0042].
Blaney and Schnurer in view of Canova are analogous art as they are both drawn to yarns comprising active particles for use in promoting circulation.
In light of the disclosure as provided by Blaney, it therefore would have been obvious to one of ordinary skill in the art to include silicon carbide particles in the active particles of the yarn of Schnurer in view of Canova, as these particles are known to enhance healthy biological activity in living tissue, and thereby arrive at the claimed invention.
Given the active particles of Schnurer in view of Canova and Blaney are capable of absorbing light, converting the absorbed light into infrared light, and emitting the infrared light, it follows the yarn is configured to absorb light, convert the absorbed light into infrared light, and emit the infrared light.
Given that the material and structure of the optically responsive yarn of Schnurer in view of Canova and Blaney is substantially identical to the material and structure as used in the present invention, including the amount of specific active particles, as set forth above, it is clear that the optically responsive yarn of Schnurer in view of Canova and Blaney would intrinsically provide an increase in an emitted power difference of at least 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparartor, as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 10
Schnurer further teaches particle size and shape of the active materials in the powder affect the end product by controlling the wavelength of light that is allowed to pass through the particles. The active particles possess an approximate particle size of about 0.5 to about 2.0 microns, wherein a particle of about 1.4 microns or smaller is used for aluminum oxide, particle size of 1.5 microns or smaller is used for quartz, and a particle size of about 2 microns or smaller is used for titanium dioxide. Paragraphs [0034] and [0036-0038]. Therefore, it would be obvious to one of ordinary skill in the art to ensure the silicon carbide particles of Schnurer in view of Canova and Blaney possess a particle size of 0.5 to about 2.0 microns, in order to ensure provide reflection through beneficial wavelengths of light, and thereby arrive at the claimed invention.
Regarding claim 12
Schnurer further teaches controlling the size and shape of the active particles in order to control the wavelength of electromagnetic radiation passing through the particles. Paragraphs [0027] and [0034].
Schnurer teaches controlling the general size distribution of the particles to 2 microns and lower in order to obtain desirable filtering and changes, such as having band pass in the 600 to 800 nm band range. Paragraph [0036]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to ensure the optically responsive yarn of Schnurer in view of Canova and Blaney permits band pass in the 600 to 800 nm band range, and thereby arrive at the claimed invention.
It should be noted that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 13
Schnurer further teaches carrier materials with transparency in the range of about 0.5 microns to about 11 microns are preferable. Paragraphs [0019], [0024], and [0036]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to ensure the carrier material of the optically responsive yarn of Schnurer in view of Canova and Blaney is transparent to electromagnetic radiation having a wavelength of between about 0.5 to about 11 microns, in order to form an optically responsive yarn useful for applications related to infrared light, and thereby arrive at the claimed invention.
Regarding claim 14
Schnurer further teaches the active particles absorb the IR light emission of the human body, including 1,500 to 6,000 nm. paragraphs [0020] and [0029]. It should be noted that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Further, given that the structure and material, including the size of the optically responsive particles utilized, of the optically responsive yarn of Schnurer in view of Canova and Blaney, is substantially identical to the structure and material as used in the present invention, as set forth above, it is clear that the optically responsive yarn of Schnurer in view of Canova and Blaney, would intrinsically absorb electromagnetic radiation in the range between about 400 nm to about 14,000 nm, as presently claimed. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Alternatively, with respect to the difference, Canova teaches yarns shaped from polymeric compositions containing additives having properties of emission and/or absorption of radiation in the long infrared region, for the purpose of stimulating blood microcirculation and providing comfort. See, e.g., abstract and paragraphs [0008-0010].
Canova teaches the additives have a capacity for emission and/or absorption of infrared radiation in the wavelength range between 2 and 20. The additives include filler chosen from the oxide group, including titanium dioxide and silicon dioxide. Paragraphs [0011-0012] and [0016-0018]. Canova teaches cellulosic polymers such as a blend of rayon and viscose is suitable for use as the polymeric carrier. Paragraph [0015] and claim 32.
Canova teaches the composition comprising a polymer and inorganic fillers exhibits a number of infrared radiation absorption peaks of greater than 10 in the following ten frequency ranges: 3.00+/−0.30 μm, 6.20+/−0.50 μm, 8.00+/−0.25 μm, 8.50+/−0.25 μm, 9.00+/−0.25 μm, 9.50+/−0.25 μm, 10.00+/−0.25 μm, 10.50+/−0.25 μm, 11.00+/−0.25 μm, 14.60+/−2.10 μm, at least 1 peak being present in at least 7 of these ten frequency ranges. Paragraph [0012].
As Canova expressly teaches, a polymeric composition, comprising inorganic fillers possessing a capacity for emission and/or absorption of infrared radiation in the wavelength range between 2 and 20 µm, absorbing electromagnetic radiation in the ranges between 3.00+/−0.30 μm, 6.20+/−0.50 μm, 8.00+/−0.25 μm, 8.50+/−0.25 μm, 9.00+/−0.25 μm, 9.50+/−0.25 μm, 10.00+/−0.25 μm, 10.50+/−0.25 μm, 11.00+/−0.25 μm, 14.60+/−2.10 μm resulted in an increase in blood microcirculation. Paragraph [0103].
Canova and Schnurer in view of Canova and Blaney are analogous art as they are both drawn to yarns comprising polymeric compositions comprising active particles for use in promoting circulation and comfort. See Canova, paragraph [0008].
In light of the motivation provided by Canova, it therefore would have been obvious to one of ordinary skill in the art to ensure the optically responsive yarn of Schnurer in view of Canova and Blaney absorbs electromagnetic radiation in the ranges between 3.00+/−0.30 μm, 6.20+/−0.50 μm, 8.00+/−0.25 μm, 8.50+/−0.25 μm, 9.00+/−0.25 μm, 9.50+/−0.25 μm, 10.00+/−0.25 μm, 10.50+/−0.25 μm, 11.00+/−0.25 μm, 14.60+/−2.10 μm, in order to ensure an increase in blood microcirculation in the end product, and thereby arrive at the claimed invention.
It should be noted that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 15
Schnurer further teaches polarization of the light in the fiber caused by the resin material as well as the particles further enhances the ability of the resin and particulate system to modify the distribution of wavelengths in the visible and near IR light applied to the wearer. Paragraph [0099]. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the particles of titanium dioxide, alumina, quartz, and silicon carbide together to ensure the optically responsive yarn of Schnurer in view of Canova and Blaney polarizes electromagnetic radiation in the range between about 400 nm to about 14,000 nm, in order to enhance the ability of the resin and particulate system to modify the distributions of wavelengths in the visible and near IR light applied to the wearer, and thereby arrive at the claimed invention.
In the alternative, given that the structure and material, including the size of the optically responsive particles utilized, of the optically responsive yarn of Schnurer in view of Canova and Blaney, is substantially identical to the structure and material as used in the present invention, as set forth above, it is clear that the optically responsive yarn of Schnurer in view of Canova and Blaney, would intrinsically polarize electromagnetic radiation in the range between about 400 nm to about 14,000 nm, as presently claimed. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 16
Schnurer further teaches the titanium dioxide, alumina, and quartz alter the spectral distribution of the light emerging from the wearable fiber material, such that the wearable fiber material exhibits a spectral distribution pattern in the following ranges (all in nm): 400, 420, 443, 458, 462, 474, 490, 512, 540 to 550, 550 to 565, 570 to 595, 598, 602, 620, 590 to 630, 625 to 648, 633 to 670, 665 to 680, 686 to 703, 710 to 770, 700 to 740, 708 to 734, 737 to 770, 750 to 790, 800, 880, 870 to 910, 920 to 940, 933 to 960, 905 to 950, 940 to 970. (i.e., range between about 200 nm and about 1,100 nm). Paragraphs [0092-0097]. Therefore, it would be obvious to one of ordinary skill in the art to ensure the optically responsive yarn of Schnurer in view of Canova and Blaney, emits light in the range between about 200 nm and about 1,100 nm, as Schnurer teaches the resultant spectral distribution pattern providing selective illumination of the wearer is advantageous to the wearer, and thereby arrive at the claimed invention.
In the alternative, given that the structure and material, including the size of the optically responsive particles utilized, of the optically responsive yarn of Schnurer in view of Canova and Blaney, is substantially identical to the structure and material as used in the present invention, as set forth above, it is clear that the optically responsive yarn of Schnurer in view of Canova and Blaney, would intrinsically emit light in the range between about 400 nm to about 14,000 nm, as presently claimed. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 28
Schnurer further teaches active particles are used to provide heat to an object. The active particles include aluminum oxide particles which absorb IR light from the human body and then emit longer infrared wavelengths back into the human body in order to improve circulation of the human body. Paragraphs [0004], [0019], and [0029].
In view of evidence provided by Miyamoto, the infrared wavelengths emitted by aluminum oxide, stated otherwise, generate heat. Paragraphs [0008] and [0025].
In the alternative, given that the active particles, the cellulose carrier, and the amount of active particles of the optically responsive yarn of Schnurer in view of Canova and Blaney is substantially identical to the active particles, the cellulose carrier, and the amount of active particles as used in the present invention, as set forth above, it is clear that the optically responsive yarn of Schnurer in view of Canova and Blaney would intrinsically be capable of emitting heat related to at least one of the absorbed light or the infrared light, as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claims 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Schnurer et al. (US 2004/0043174) (Schnurer) in view of Canova et al. (US 2011/0059037) (Canova) and Blaney et al. (US 2016/0076170) (Blaney), as applied in claim 1 above, and further in view of Dimensions (V is for Viscose).
Regarding claims 4-8
Schnurer in view of Canova and Blaney teaches the carrier material of the optically responsive yarn comprises a blend of viscose and rayon. However, Schnurer in view of Canova and Blaney does not explicitly teach the blend of viscose and rayon is made from bamboo, soy, sugar cane, or tree wood.
With respect to the difference, Dimensions teaches viscose is a popular clothing for clothing. Viscose is made from fast growing regenerative trees such as eucalyptus, beech and pine as well as plants such as bamboo, soy and sugar cane. Page 2, lines 1-6.
Dimensions and Schnurer in view of Canova and Blaney are analogous art as they are drawn to fabrics comprising viscose for clothing.
In light of the disclosure of Dimensions, it therefore would have been obvious to one of ordinary skill in the art to use viscose made from beech, pine, bamboo, sugar cane, or soy as the viscose of Schnurer in view of Canova and Blaney, in order to form viscose with predictable success, as Dimensions teaches beech, pine, bamboo, sugar cane, or soy are suitable for forming sustainable viscose, 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 198 (CCPA 1960), and thereby arrive at the claimed invention.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Schnurer et al. (US 2004/0043174) (Schnurer) in view of Canova et al. (US 2011/0059037) (Canova) and Blaney et al. (US 2016/0076170) (Blaney), as applied in claim 1 above, and further in view of Li et al. (US 2014/0075659) (Li).
Regarding claim 17
Schnurer in view of Canova and Blaney, teaches all of the limitation of claim 1 above, however does not explicitly teach the dry tenacity of the optically responsive yarn.
With respect to the difference, Li teaches a yarn comprising about 45% to about 85% by weight of regenerated cellulose fibers, the regenerated cellulose fiber having a dry tenacity of about 27 cN/tex or more, for use in a garment, wherein rayon is a suitable regenerated cellulose fiber. See, e.g., abstract and paragraph [0012].
As Li expressly teaches, regenerated cellulose fibers typically exhibit a degree of softness and moisture regain that makes them particularly useful in producing textile materials that are comfortable when worn. Paragraph [0013].
As Li expressly teaches, using regenerated cellulose fibers exhibiting a dry tenacity of 27 cN/tex or more is advantageous as the weakness of regenerated cellulose fibers is their lack of durability in the textile material end product. Paragraph [0013].
Li and Schnurer in view of Canova and Blaney, are analogous art as they are both drawn to garments.
In light of the motivation of using rayon fibers exhibiting a dry tenacity of 27 cN/tex or more, it therefore would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the optically responsive yarn of Schnurer in view of Canova and Blaney, to achieve a suitable dry tenacity in the range of 27 cN/tex or more, in order to produce an optically responsive yarn with durability as well as softness and moisture regain, and thereby arrive at the claimed invention. It should be noted that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Schnurer et al. (US 2004/0043174) (Schnurer) in view of Canova et al. (US 2011/0059037) (Canova) and Blaney et al. (US 2016/0076170) (Blaney), as applied in claim 1 above, and further in view of Hays et al. ( US 2017/0044695) (Hays).
Regarding claim 18
Schnurer in view of Canova and Blaney, teaches all of the limitation of claim 1 above, however does not explicitly teach the breaking elongation (dry conditions) of the optically responsive yarn.
With respect to the difference, Hays teaches a long-term cooling material including a yarn, comprising rayon, for use in clothing. See, e.g., abstract and paragraphs [0039], [0064-0065], and [0083].
As Hays expressly teaches, a filament of the long-term cooling material exhibits a wet/dry tenacity of 4.0-7.2/3.7-6.2, breaking elongation of 17-45%, and an elastic recovery of 98-100%, and therefore can be strong when wet or dry, recovers shape after stretching, and/or performs well in rough use. Paragraph [0058].
Hays and Schnurer in view of Canova and Blaney, are analogous art as they are both drawn to yarns for clothing.
In light of the motivation of ensuring the material possesses a wet/dry tenacity of 4.0-7.2/3.7-6.2, breaking elongation of 17-45%, and an elastic recovery of 98-100%, it therefore would have been obvious to one of ordinary skill in the art to ensure the optically responsive yarn of Schnurer in view of Canova and Blaney exhibits a wet/dry tenacity of 4.0-7.2/3.7-6.2, breaking elongation of 17-45%, and an elastic recovery of 98-100%, in order to ensure the optically responsive yarn can be strong when wet or dry, recovers shape after stretching, and/or performs well in rough use, and thereby arrive at the claimed invention.
It should be noted that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Schnurer et al. (US 2004/0043174) (Schnurer) in view of Canova et al. (US 2011/0059037) (Canova) and Blaney et al. (US 2016/0076170) (Blaney), as applied in claim 1 above, and further in view of Ogata (US 2004/0154343).
Regarding claim 19
Schnurer in view of Canova and Blaney, teaches all of the limitation of claim 1 above, however does not explicitly teach a finish on the optically responsive yarn.
With respect to the difference, Ogata teaches an insulated knitted fabric subjected to water absorptive finish for use in general clothes material and sports clothes materials. See, e.g., abstract.
Ogata teaches the insulated knitted fabric picks up 0.25 to 0.50% by weight of the hydrophilizing agent of the water absorptive finish. Paragraph [0022].
As Ogata expressly teaches, the water absorptive finish is important in order to ensure a water absorbing property, such that the skin does not become sticky during perspiration and hand feeling does not become hard. Paragraphs [0003], [0022], and [0024].
Ogata and Schnurer in view of Canova and Blaney are analogous art as they are both drawn to sports clothes material. See Schnurer, paragraph [0003].
In light of the motivation of applying a water absorptive finish to fabric material for use in sports clothing material, it therefore would have been obvious to one of ordinary skill in the art to apply to the optically responsive yarn of Schnurer in view of Canova and Blaney 0.25 to 0.50% by weight of a hydrophilizing agent based on the weight of the optically responsive yarn, in order to improve the water absorptive property of the optically responsive yarn, and thereby arrive at the claimed invention.
It should be noted that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Claim 19 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Schnurer et al. (US 2004/0043174) (Schnurer) in view of Canova et al. (US 2011/0059037) (Canova) and Blaney et al. (US 2016/0076170) (Blaney), as applied in claim 1 above, and further in view of Hines et al. (US 2015/0191856) (Hines).
Regarding claim 19
Schnurer in view of Canova and Blaney, teaches all of the limitation of claim 1 above, however does not explicitly teach a finish on the optically responsive yarn.
With respect to the difference, Hines teaches spun yarns, fabrics, and garments with a balance of high thermal and comfort properties. See, e.g., abstract.
Hines teaches the yarns include small amounts, less than 5% by weight of finishes, wherein performance finishes include antimicrobial, permanent press, stain resistance, insect repellent, or durable water repellant. Paragraphs [0036] and [0088].
In light of the disclosure of Hines, it therefore would have been obvious to one of ordinary skill in the art to apply a suitable amount of a finish to the optically responsive yarn of Schnurer in view of Canova and Blaney, in order to achieve a suitable antimicrobial, permanent press, stain resistance, insect repellent, or durable water repellent property, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233, as described in MPEP 2144.05.
Response to Arguments
In view of the amendments to the claims, the previous 35 U.S.C. 112(b) rejections are withdrawn. However, the amendment necessitates a new set of 35 U.S.C. 112(a) rejections, as set forth above.
The previous rejection of claims 1-2, 4-20, and 28 are substantially maintained. Any modification to the rejection is in response to the amendment of claim 1.
Applicant's arguments and affidavity filed 12/26/2025 have been fully considered but they are not persuasive, as set forth below.
Applicant primarily argues none of the cited references teaches the active fiber material provides an increased in an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator” as recited in amended claim 1.
Remarks, page 9.
The Examiner respectfully disagrees, as follows:
It is not clear how the prior art can disclose the same cellulose or semi-cellulose material and mineral particles and same structure as presently claimed comprising the same amount of mineral particles as presently claimed and not possess the properties claimed. The Office realizes that the claimed properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients and claimed amounts. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. If it is Appellant’s position that this would not be the case: (1) evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.”
Applicant further argues a fabric with Celliant polyester content of 100% provides an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator. The comparison provided in the Declaration (i.e., between Celliant polyester content and a placebo comparator) fairly compares with the cited art. The cited art (i.e., Schnurer) does not disclose silicon carbide (SiC), calcium carbide (CaC2), or mixtures thereof. Therefore, the comparison provides the results of at least one difference between the claimed subject matter of claim 1 and the cited art.
Applicant further argues the Celliant polyester content in Table 6 is commensurate with the claims because the Celliant polyester content includes “mineral particles that include silicon carbide (SiC), calcium carbide (CaC2), or mixtures thereof and mineral particles that include 1.25% to 10% by weight. Even though Celliant polyester is polyester, according to the Declaration in paragraph 8, “in this case, testing conducted on polyester-based fabrics is applicable to viscose-based fabrics incorporating the mineral composition at comparable concentrations.” This is because neither polyester nor viscose substantially interferes with the minerals’ ability to absorb heat emitted from the human body and re-emit that energy in the infrared spectrum.
Applicant further argues the magnitude of difference (i.e., 0.25 mW/cm2) indicates that the inclusion of silicon carbide (SiC), calcium carbide (CaC2), or mixtures thereof at 1.25% to 10% by weight has an effect that a person of ordinary skill in the art would not predict in light of the cited references. Remarks, page 9 and Affidavit, pages 1-2.
The Examiner respectfully disagrees, as follows:
It is noted overcoming a rejection based on unexpected results requires the combination of three different elements: (i) the results must fairly compare with the closest prior art in an affidavit or declaration under 37 CFR 1.132, (ii) the claims must be commensurate in scope, and (iii) the results must truly be unexpected. MPEP 716.02. It is Applicants’ burden to explain why their proffered results are considered to be unexpected, are considered to be commensurate in scope with the claimed subject matter, and are considered to be the consequence of a comparison to the closest prior art. See, e.g., In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). It is the Examiner’s opinion Applicant has not met this burden, for the reasons set forth below.
Firstly, it is not clear how the comparison provided in the Declaration fairly compares with the cited art. There is no information on the type of material used in the comparison white knit fabric besides the fact that the white knit fabric contains 0% Celliant polyester fibers. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. It is not clear if the white knit fabric comprises viscose fibers, if the white knit fabric comprises mineral particles and if so, in what amount? Is the white knit fabric a fabric lacking polyester fibers and lacking mineral particles? If so, Schnurer and Blarney are both closer prior art to the claimed invention than the white knit fabric. Schnurer teaches a rayon or polyester fiber comprising 0.25 to 15% by weight of mineral particles. Paragraphs [0008] and [0028] and claim 1. Blarney teaches a polyester fiber comprising at least about 10% silicon carbide. Paragraphs [0011-0012] and [0027]. Applicant has not shown that the claimed subject matter has been compared to the closest prior art (emphasis added).
Secondly, it is not clear if a fabric with Celliant polyester content of 100% is commensurate in scope with the claims (emphasis added). While the affidavit states polyester nor viscose substantially interferes with the minerals’ ability to absorb heat emitted from the human body and re-emit that energy in the infrared spectrum, evidence is required to obtain the assurances this is correct, especially since polyester is not commensurate in scope with the claim. The fact remains claim 1 requires a cellulose or semi-cellulose carrier comprising viscose, polyester is not commensurate with this material. Furthermore, it is not clear the amount of mineral particles present in the knit fabric or the type of mineral particles present in the knit fabric. Is a specific type of mineral particle required? It’s not clear since the knit fabric does not specify the specific mineral particle used. Further, is a specific amount required? It’s not clear since the knit fabric does not specify the amount used. Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (emphasis added). Since it’s not even clear the amount of mineral particles present in the knit fabric, it follows the result do not provide evidence the unexpected results occur over the entire claimed range.
Thirdly, Applicant has not explained why their proffered results are considered to be unexpected (emphasis added). The affidavit states “It is unexpected that a fabric with a Celliant polyester content of 100% would provide an emitted power difference of at least about 0.25 mW/cm2 compared to a baseline emitted power difference for a placebo comparator” in section 8. There is no explanation as to why this is. Blarney teaches silicon carbide is an IR emitter. Paragraph [0012]. Therefore, it is the Examiner’s opinion one of ordinary skill in the art would expect a fabric comprising silicon carbide to produce an improved emissivity in comparison to a fabric lacking silicon carbide.
Conclusion
Applicant's amendment necessitated any new grounds 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.
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/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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