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 .
This office action is in response to applicant’s amendments filed December 1, 2025. Claims 1-4,6,10-20 and 26 are pending. Claims 5,7-9,21-25 and 27 have been cancelled. Claims 1,2,4,6 and 15 have been amended. Claim 18-20 and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The objection to Claim 15 is withdrawn in view of applicant’s amendments to the claims
Claim 15 stands rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth below.
All other rejections are withdrawn in view of applicant’s amendments to the claims.
Claim Objections
Claim 1 is objected to because of the following informalities: in the second paragraph, “dicyclohexyl carbodiimide” is recited twice in the Markush group. Appropriate correction is required.
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.
Claim 15 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation olefin, and the claim also recites polyethylene-polypropylene which is the narrower statement of the range/limitation. Olefins can be other than polyethylene-polypropylene. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4,6, and 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Altman (WO 2017/011679).
Altman teaches articles comprising a coated substrate wherein the coating comprises silk fibroin with an average molecular weight of from about 5- about 10kDA, about 6- about 16kDA, about 17- about 38kDa, about 39-about 80kDa, about 60 – about 100 kDA or about 80 – about 144 kDa wherein the silk based protein or fragments have a polydispersity of about 1.5- about 3 and wherein the proteins or protein fragments, prior to coating the fabric, do not spontaneously or gradually gellate and do not visibly change in color or turbidity when in a solution for at least 10 days, which meets the claimed limitation of stable in solution (page 28, lines 8-15). Altman teaches the article is a fiber, or yarn (page 28, lines 16-14), fabric, which meets the limitation of textile or cloth, (page 29, lines 20-27). Altman teaches treating woven or nonwoven fabrics and textiles (page 27, lines 10-13). Altman teaches the fiber or yarn comprises cotton, alpaca fleece, alpaca wool, lama fleece, lama wool, cashmere, sheep fleece, sheep wool, polyester, nylon, polyester-polyurethane copolymer (page 28, lines 18-23), byssus, chiengora, quiviut, yak, rabbit, lambswool, Mylar, mohair wool, camel hair, angora wool, silkworm silk, abaca fiber, coir fiber, flax fiber, jute fiber, kapok fiber, kenaf fiber, raffia fiber, bamboo fiber, hemp, modal fiber, pina, ramie, sisal, mineral wool, mineral cotton, man-made mineral fiber, fiberglass, glass, glasswool, stone wool, rock wool, slagwool, glass filaments, asbestos fibers, ceramic fibers, aramid, rayon, acetate, acrylic, polylactide, polyamide-lurex, olefin and polyethylene-polypropylene (page 83, lines 5-18). Altman teaches the silk fibroin has amino acid residues which must be a terminal or side group (page 4, lines 4-8).
Altman teaches the compositions contain crosslinkers of N-hydroxysuccinimide ester, imidoester, dicyclohexyl carbodiimide, maleimide, haloacetyl, pyridyl disulfide, hydrazide, alkoxyamine, aryl azide, diazirine, azide-phosphine, (page 149, lines 17-28). The crosslinkers of Altman contain the groups of claim 6 for example aryl groups in in aryl azides. Altman teaches the silk fibroin groups being crosslinked with the substrate article (claim 51).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use silk fibroin solutions containing claimed average weight average molecular weight silk fibroin with the claimed polydispersity and the claimed crosslinkers to apply silk fibroin coatings to the claimed substrates as Altman teaches attaching through crosslinking the same silk fibroin fragments with the same amino groups via a reaction with the same crosslinkers with the same crosslinking groups to the same substrates with the same reactive groups for durable silk coatings onto the articles. Using known silk fibroin fragments and attaching them through known crosslinkers to fabric, fiber or yarn substrates is obvious as Altman teaches this is known and advantageous in the art to prepare performance apparel with surprisingly improved moisture management properties, resistance to microbial growth increased abrasion resistance and flame resistance (abstract).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Altman (WO 2017/011679) in view of Wang (CN 107033366A).
Altman is relied upon as set forth above.
Altman does not specify the side and terminal groups of the silk fibroin.
Wang teaches silk fibroin contains carboxyl, amino and hydroxyl groups which are available to be crosslinked with carbodiimide and hydroxysuccinimide crosslinking agents (page 2, next to last paragraph).
It would have been obvious to one of ordinary skill in the art at the time the invention was made that the silk fibroin of Altman would have side or terminal amine, carboxyl or hydroxyl groups which are crosslinked by carbodiimide and hydroxysuccinimide crosslinking agents to bind the silk fibroin to the substrate as Wang teaches silk fibroin contains carboxyl, amino and hydroxyl groups which are available to be crosslinked with carbodiimide and hydroxysuccinimide crosslinking agents.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1,6 and 10-13 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,2,4,17 and 18 of copending Application No. 17/793342. Although the claims at issue are not identical, they are not patentably distinct from each other because the same leather hide substrates are treated with the same silk fibroin and same crosslinkers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMINA S KHAN/
Primary Examiner, Art Unit 1761