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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/30/2025 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over JP2005009029 to Endou in view of USPN 3,859,390 to Tsuji and USPAP 2014/0166571 to Tai and further in view of (when necessary) USPN 4,307,151 to Yamauchi.
Claim 1, Endou discloses a polyvinyl alcohol-based fiber comprising: a polyvinyl alcohol-based polymer; and a layered silicate adsorbent having a particle size of less than 1 µm, the polyvinyl alcohol-based fiber having a crystallinity of polyvinyl alcohol ranging from 30% to 60%, wherein the polyvinyl alcohol-based fiber has a circular cross-sectional shape that is not hollow (see entire translation document including pages 2, 5 and 6). Regarding the claimed adsorbent having an average particle size of 1 µm or more, the claimed particle size (1 µm or more) and the prior art layered silicate particle size (less than 1 µm) are very similar and therefore the prior art establishes prima facie obviousness because one of ordinary skill in the art would have expected the prior art particle size to result in the same properties (see MPEP 2144.05).
Endou does not appear to mention the diameter of the fiber but Tai discloses that it is known in the art to construct PVA fibers, comprising an adsorbent, with a diameter within the claimed range of 5 μm to 1000 μm (see entire document including [0006], [0008], [0010]-[0012] and [0025]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the fiber of Endou with the claimed diameter, because it is within the general skill of a worker in the art to select a fiber diameter on the basis of its suitability and desired characteristics.
Endou does not appear to mention the specific surface area of the fiber but Tai discloses that the adsorption efficiency of a fiber is attributable to it surface area [0021]. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to vary the specific surface area of the fiber, such as claimed, based on the desired adsorption and because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
Endou discloses that the layered silicate adsorbent is contained in an amount of 0.1 to 30% by mass (page 5). Tsuji discloses that it is known in the PVA fiber art to include a halogen-containing polymer to provide a fiber with excellent mechanical strength, thermal resistance, dyeability, and weathering (see entire document including column 1, lines 14-43, column 2, lines 1-11 and column 5, lines 22-45). Tsuji discloses that the weight ratio of PVA polymer to halogen-containing polymer is from 2:8 to 8:2 (column 2, lines 1-11). Therefore, it would have been obvious to one having ordinary skill in the art to construct the polyvinyl alcohol-based fiber of Endou with 20% by mass polyvinyl alcohol-based polymer and 80% by mass halogen-containing polymer to provide a fiber with excellent mechanical strength, thermal resistance, dyeability, and weathering. The resulting fiber would comprise up to 150 parts by mass (30%) adsorbent with respect to 100 parts by mass (20%) of polyvinyl alcohol-based polymer.
In the event that it is shown that the layered silicate of Endou fails to sufficiently read on the claimed adsorbent (e.g. adsorbent size or mass), Endou discloses that the fiber may be used for various filters and may contain other components (page 6). Tai discloses that it is known in the filter fiber art to construct PVA fibers with one or more adsorbents, such as a porous carbon material adsorbent, present in an amount of 100 to 500 parts by mass of the adsorbent with respect to 100 parts by mass of a PVA polymer and with an average particle size ranging from 0.1 μm to 100 μm ([0023] and [0025]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to add a porous carbon adsorbent to the fiber of Endou, as taught by Tai, to provide the fiber of Endou with additional adsorbent capability and/or because it has been held to be within the general skill of a worker in the art to select a known adsorbent material on the basis of its suitability and desired characteristics.
Claim 2, Endou does not appear to specifically mention the effective utilization rate of the adsorbent but considering that the applied prior art discloses a substantially identical fiber in terms of materials, parts by mass adsorbent, PVA crystallinity, fiber diameter, and adsorbent particle size, the claimed effective utilization rate of the adsorbent appears to be inherent. Plus, it is understood by one of ordinary skill in the art that the effective utilization rate of the adsorbent determines the amount of adsorption. Therefore, it would have been obvious to one having ordinary skill in the art to vary the effective utilization rate of the adsorbent, such as claimed, based on the desired amount of adsorption.
Claim 3, Endou does not appear to specifically mention the fiber swelling degree but considering that the applied prior art discloses a substantially identical fiber in terms of materials, parts by mass adsorbent, PVA crystallinity, fiber diameter, and adsorbent particle size, the claimed fiber swelling degree appears to be inherent. Plus, Yamauchi discloses that it is known in the art to construct PVA fiber with a fiber swelling within the claimed range (see entire document including column 2, lines 37-48). Therefore, it would have been obvious to one having ordinary skill in the art to construct the fiber any desired amount of fiber swelling, such as the claimed, based on the desired adsorption.
Claims 4 and 5, the layered silicate adsorbent is made of at least one selected from the group consisting of a layered silicate, a porous carbon material, and an aluminosilicate (abstract and pages 2 and 5) and the claimed particle size (1 µm to 100 µm) and the prior art layered silicate particle size (less than 1 µm) are very similar and therefore the prior art establishes prima facie obviousness because one of ordinary skill in the art would have expected the prior art particle size to result in the same properties (see MPEP 2144.05). In the event that it is shown that the layered silicate of Endou fails to sufficiently read on the claimed adsorbent (e.g. adsorbent size or mass), Endou discloses that the fiber may be used for various filters and may contain other components (page 6). Tai discloses that it is known in the filter fiber art to construct PVA fibers with one or more adsorbents, such as a porous carbon material adsorbent, present in an amount of 100 to 500 parts by mass of the adsorbent with respect to 100 parts by mass of a PVA polymer and with an average particle size ranging from 0.1 μm to 100 μm ([0023] and [0025]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to add a porous carbon adsorbent to the fiber of Endou, as taught by Tai, to provide the fiber of Endou with additional adsorbent capability and/or because it has been held to be within the general skill of a worker in the art to select a known adsorbent material on the basis of its suitability and desired characteristics.
Claim 6, a fiber structure at least partially comprises the polyvinyl alcohol-based fiber (abstract).
Claim 7, the fiber structure is an adsorbent that adsorbs an adsorbate contained in a target object (abstract and pages 1 and 2).
Response to Arguments
Applicant's arguments filed 6/30/2025 have been fully considered but they are not persuasive.
The applicant asserts that all pending claims require an adsorbent having an average particle size of 1 µm or more while Endou teaches a particle size range of less than 1 µm. The applicant argues that the is no overlap in the ranges of the claims and the reference. Applicant’s argument is not persuasive. The claimed particle size (1 µm or more) and the prior art layered silicate particle size (less than 1 µm) are very similar and therefore the prior art establishes prima facie obviousness because one of ordinary skill in the art would have expected the prior art particle size to result in the same properties (see MPEP 2144.05).
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Waite, 168 F.2d 104, 108, 77 USPQ 586, 590 (CCPA 1948); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Swenson, 132 F.2d 1020, 1022, 56 USPQ 372, 374 (CCPA 1942); In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941); In re Becket, 88 F.2d 684 (CCPA 1937) (“Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.”); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., “not substantially less than 13%,” “not substantially below 17%,” and “between about 13[%] and 20%”); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); Gentiluomo v. Brunswick Bowling and Billiards Corp., 36 Fed. App'x 433 (Fed. Cir. 2002)(non-precedential)(disagreeing with argument that overlapping ranges were required to find a claim prima facie obvious); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of “less than 6 pounds per cubic feet” and the prior art range of “between 6 lbs./ft3 and 25 lbs./ft3” were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
In the event that it is shown that the layered silicate of Endou fails to sufficiently read on the claimed adsorbent (e.g. adsorbent size or mass), Endou discloses that the fiber may be used for various filters and may contain other components (page 6). Tai discloses that it is known in the filter fiber art to construct PVA fibers with one or more adsorbents, such as a porous carbon material adsorbent, present in an amount of 100 to 500 parts by mass of the adsorbent with respect to 100 parts by mass of a PVA polymer and with an average particle size ranging from 0.1 μm to 100 μm ([0023] and [0025]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to add a porous carbon adsorbent to the fiber of Endou, as taught by Tai, to provide the fiber of Endou with additional adsorbent capability and/or because it has been held to be within the general skill of a worker in the art to select a known adsorbent material on the basis of its suitability and desired characteristics.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789