FINAL 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 .
Status of the Claims
This action is in response to papers filed 07/14/2025 in which the Abstract was amended; the specification was amended; claims 1-40, and 42-43 were canceled; claims 47 and 56 were withdrawn; claims 41, 44, and 48-50 were amended; and claims 58-59 were newly added. All the amendments have been thoroughly reviewed and entered.
Claims 41, 44-46, 48-55 and 57-59 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
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.
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.
Claim(s) 41, 44-46, 48-49, and 51-55 and 57-58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amari et al (WO 2018/124227 A1; English translation and citation via US 2019/0343731 A1), and as evidenced by Cutler et al (Journal of the European Ceramic Society, 2009, 29: 3211-3218).
It is noted that the recitation of “for forming a coating film” as recited in claims 41, and 44-46 and “for forming a thin film” as recited in 48-53, are intended uses. In the instant claims, the body of the claims fully and intrinsically sets forth all of the limitations of the claimed composition or claimed short fiber, the “for forming a coating film” and “for forming a thin film” do not structurally limit the claimed composition or claimed short fiber, respectively. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020), Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Regarding claim 41, Amari teaches a coating formulation comprising (i) a fiber having an average fiber diameter of less than 3,000 nm (3 µm), preferably about 1 µm, and a fiber length of 50 µm or more; and (ii) a volatile substance comprising ethanol and/or water, wherein the fiber content in the coating formulation is from 2% by mass to 50% by mass and the volatile substance is present in the coating formulation in an amount from 50% to 94% by mass (Abstract; [0006], [0011], [0016]-[0050], [0060]-[0067] and [0088]-[0118]; Examples 1-14 and Table 1-5). Amari teaches the fiber comprises an acrylic resin ([0029], [0088], [0137], and Tables 1 and 4). Amari teaches a coating formulation containing 42.6% by mass of ethanol, 0.2% by mass of water, and 20.4% by mass of fiber (alkylacrylate/octylacrylamide copolymer – an acrylic resin) (Tables 1 and 4).
With respect to the claimed aspect ratio as recited in claim 41, as discussed above, Amari teaches a fiber having an average fiber diameter of less than 3,000 nm (3 µm), preferably about 1 µm, and a fiber length of 50 µm or more, and thus, would arrive at aspect ratios which overlaps the claimed “aspect ratio of the short fiber [(average fiber length)/(average fiber diameter)] is 20 or more and 200 or less.” Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the aspect ratio of the fiber would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
With respect to the claimed [(average fiber diameter)2/(fiber content)] (µm2/mass%) as recited in claim 41, as discussed above, Amari teaches a fiber having an average fiber diameter of less than 3,000 nm (3 µm), preferably about 1 µm. Furthermore, as discussed above, the fiber content in the coating formulation is from 2% by mass to 50% by mass. Furthermore, as discussed above, Amari teaches a coating formulation containing 42.6% by mass of ethanol, 0.2% by mass of water, and 20.4% by mass of fiber. Thus, at points within the disclosed diameter and mass content of fiber from Amari would allow or arrive at the claimed ratio [(average fiber diameter)2/(fiber content)] (µm2/mass%) of 0.05 or more and 4 or less.
With respect to the claimed total content of the component (a) (fiber) and the component (b) (volatile component) as recited in claim 41, as discussed above, Amari teaches a coating formulation containing 42.6% by mass of ethanol, 0.2% by mass of water, and 20.4% by mass of fiber, which equates to a total content 63.2% by mass, and thus, reads on the claimed “a total content of the component (a) and the component (b) is 97 mass% or less.”
With respect to the claimed CV value as recited in claim 41, as discussed above, Amari teaches a fiber length of 50 µm or more. Thus, the coefficient of variation (CV) is a characteristic of the length of the fiber and the fiber length of Amari having to overlapped a claimed fiber length range of instant invention would be reasonably expected to have a CV value of “59% or more and 100% or less,” as claimed, absence of evidence to the contrary. Given that the fiber of Amari is substantially the same in structure as the claimed fiber, the courts have stated “[w]here 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 44, as discussed above, Amari teaches the volatile substance comprises water.
Regarding claim 45, Amari teaches the coating formulation further contain an oil agent such as hydrocarbon oil, ester oil, and silicone oil, and a polyol such as propylene glycol and glycerol ([0031]-[0045] and [0080]-[0108]; Examples 1-14 and Table 1-5; claims 4 and 8).
Regarding claim 46, Amari teaches the coating formulation has a viscosity in the range of 10 mPas to 5,000 mPas ([0050] and [0118]).
Regarding claims 48, 54 and 57, Amari teaches a coating formulation in the form of a coating film comprising a fiber having an average fiber diameter of less than 3,000 nm (3 µm), preferably about 1 µm, and a fiber length of 50 µm or more (Abstract;[0006], [0011], [0016]-[0050], [0060]-[0067] and [0088]-[0118]; Examples 1-14 and Table 1-5). It is noted that the diameter of about 1 µm as disclosed in Amari is specific point within the claimed range of “0.5 µm or more and 4 µm or less.” Amari teaches the fiber comprises acrylic resin ([0029], [0088], [0137], and Tables 1 and 4).
It have been obvious to optimize the length of the fiber of Amari to length as claimed, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Amari teaches that fiber length can vary from 50 µm or more, which is a range that overlaps the claimed range of “40 µm or more and 150 µm or less”. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the length of the fiber would have been obvious before the effective filing date of applicant's invention. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP §2144.05 (I)-(II).
With respect to the claimed CV value as recited in claim 48, as discussed above, Amari teaches the fiber length of 50 µm or more, which overlaps the claimed fiber length range of “40 µm or more and 150 µm or less.” Thus, the coefficient of variation (CV) is a characteristic of the length of the fiber and the fiber length of Amari having to overlapped the claimed fiber length range would be reasonably expected to have a CV value of “59% or more and 100% or less,” absence of evidence to the contrary.
With respect to the claimed “a proportion of the number of fibers having a length of 40 µm or more in the whole short fiber is 5% or more and 100% or less” as recited in claim 48, as discussed above, Amari teaches the fiber length of 50 µm or more, which is a range with overlaps the claimed range of “40 µm or more,” thereby allowing for the claimed and the number of fibers having the disclosed fiber length would be reasonably expected to be less than 100%, absence of evidence to the contrary. Given that the fiber of Amari is substantially the same in structure as the claimed fiber, the courts have stated “[w]here 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 49, Amari teaches the fiber comprises polyester, polylactic acid, polystyrene resin, polyvinyl butyral resin, polyethylene resin, polyurethane resin, polyamide resin, polyamideimide resin, or combinations thereof ([0029], [0088], [0107]-[0108]; Examples 1-14 and Table 1-5).
Regarding claim 51, Amari teaches the fiber can be formed a polymer that is water-soluble ([0027]-[0028] and [0087]), thereby the fiber of Amari has biodegradability.
Regarding claim 52, Amari teaches the fiber is formed from polyvinyl butyral ([0029], [0088], [0107]-[0108]; Examples 1-14 and Table 1-5). As evidenced by Cutler, polyvinyl butyral has molecular weights in the range between 40,000 and 120,000 g/mol (Cutler: Abstract; pages 3211-3212)
Regarding claim 53, as discussed above, Amari teaches a fiber having an average fiber diameter of less than 3,000 nm (3 µm), preferably about 1 µm, and a fiber length of 50 µm or more, thereby would arrive at aspect ratios which overlaps the claimed “aspect ratio of the short fiber [(average fiber length)/(average fiber diameter)] is 8 or more and 300 or less.” As discussed above, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results from the claimed parameters, the optimization of the aspect ratio of the fiber would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claim 55, Amari teaches the coating formulation contains a volatile solvent to which the fiber is dispersed therein ([0025]-[0026] and [0030]).
Regarding claim 58, Amari teaches the fiber comprises polyester, polylactic acid, polystyrene resin, polyvinyl butyral resin, polyethylene resin, polyurethane resin, polyamide resin, polyamideimide resin, or combinations thereof ([0029], [0088], [0107]-[0108]; Examples 1-14 and Table 1-5).
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 48-49, 51-55 and 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2001064153 A (HYODO SHOJI, 13 March 2001; cited in IDS filed 11/29/2021 and having Eng. Trans and JP original; hereafter as “Hyodo”), and as evidenced by Davidson et al (Polymer, 2000, 41: 3357-3364).
It is noted that the recitation of “for forming a thin film” as recited in 48-49 and 51-53 is an intended use. In the instant claims, the body of the claims fully and intrinsically sets forth all of the limitations of the claimed short fiber, the “for forming a thin film” does not structurally limit the claimed composition. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020), Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Regarding claims 48, 54, and 57, Hyodo teaches a composition in the form a thin film comprising a ultrafine synthetic fiber having a diameter of about 2 µm and which is cut to a length of 5-50 µm (pages 3-7). Hyodo teaches the ultrafine synthetic fiber is used to develop a thin coating film and is suitable to be incorporated in cosmetic formulation (pages 3-4). It is noted that the diameter of about 2 µm as disclosed in Hyodo is specific point within the claimed range of “0.5 µm or more and 4 µm or less.” Hyodo teaches suitable synthetic fibers include acrylic fibers (page 4 and paragraph [0006]).
It have been obvious to optimize the length of the fiber of Hyodo to length as claimed, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Hyodo teaches that fiber length can vary from 5-50 µm, which is a range that overlaps the claimed range of “40 µm or more and 150 µm or less”. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the length of the fiber would have been obvious before the effective filing date of applicant's invention. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP §2144.05 (I)-(II).
With respect to the claimed CV value as recited in claim 48, as discussed above, Hyodo teaches the fiber length of 5-50 µm, which overlaps the claimed fiber length range of “40 µm or more and 150 µm or less.” Thus, the coefficient of variation (CV) is a characteristic of the length of the fiber and the fiber length of Hyodo having to overlapped the claimed fiber length range would be reasonably expected to have a CV value of “59% or more and 100% or less,” as claimed, absence of evidence to the contrary.
With respect to the claimed “a proportion of the number of fibers having a length of 40 µm or more in the whole short fiber is 5% or more and 100% or less” as recited in claim 48, as discussed above, Hyodo teaches the fiber length of 5-50 µm, which is a range with overlaps the claimed range of “40 µm or more,” thereby allowing for the claimed and the number of fibers having the disclosed fiber length would be reasonably expected to be less than 100%, absence of evidence to the contrary.
Given that the fiber of Hyodo is substantially the same in structure as the claimed fiber, the courts have stated “[w]here 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 49, Hyodo teaches suitable synthetic fibers include polyesters fibers, polyamide fibers and acrylic fibers (page 4 and paragraph [0006]).
Regarding claim 51, Hyodo teaches the synthetic fibers has hydrophilic nature (page 4 and paragraph [0006]), thereby has biodegradability characteristic.
Regarding claim 52, as discussed above Hyodo teaches acrylic fibers as the suitable synthetic fibers. As evidenced by Davidson, acrylic fiber has an average molecular weight in the range of 50,000 g/mol to 90,000 g/mol (Davidson: page 3358, right column).
Regarding claim 53, as discussed above, Hyodo teaches fiber having a diameter of about 2 µm and which is cut to a length of 5-50 µm, thereby would arrive at aspect ratios which overlaps the claimed “aspect ratio of the short fiber [(average fiber length)/(average fiber diameter)] is 8 or more and 300 or less.” As discussed above, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results from the claimed parameters, the optimization of the aspect ratio of the fiber would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claim 55, Hyodo teaches the composition contains a volatile solvent to which the fiber is dispersed therein (pages 5 and 6).
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 07/14/2025 have been fully considered but they are not persuasive.
Applicant’s arguments on pages 10-13 of the Remarks filed 07/14/2025 relied on the Declaration from Yuki Kondo, submitted on 07/14/2025 as the rebuttal for nonobviousness. Thus, Applicant’s arguments in view of the Declaration will be address together as set forth below.
The “Yuki Kondo” Declaration under 37 C.F.R. §1.132 filed 07/14/2025 and evidence provided therein, are considered, but found insufficient to overcome the 103 rejections as set forth in this office action for the reasons set forth below.
Applicant argues that “Amari does not support the proposition that the coefficient of variation is a "characteristic of the length of the fiber.”” Applicant alleges that “merely stating the mean fiber length or minimum length does not determine the coefficient of variation” and thus, “as Amari only discloses a minimum fiber length, Amari does not teach the coefficient of variation of length as recited in Claim 41.” Applicant further alleges ‘one of ordinary skill in the art would not expect, based only on a minimum fiber length, that the fibers of Amari would inherently have a coefficient of variation of length adhering to Claim [4]1.” Applicant submitted a Declaration under 37 C.F.R. §1.132 containing additional experimental evidence showing that the coefficient of variation is not determined only by average or minimum fiber length. Applicant alleged that “[a]s shown in Table 1 of the Declaration, samples of fibers having a length which adheres to Amari, and to Claim 41 do not inherently have a coefficient of variation that adheres to Claim 41.” (Remarks, pages 10-12).
In response, the Examiner disagrees. Applicant’s evidence of nonobviousness via the Kondo Declaration is not sufficient to obviate the standing 103 rejections because i) Applicant nor the Declarant have provided an explanation of the proffered evidence/data as shown in Comparative Examples 3 and 4; ii) independent claims 41 and 48 are not adequately commensurate in scope with the acrylic resin Examples in Tables 1 and 2 of the specification; and iii) with any evidence of unexpected results, said evidence of unexpected results must be compared to the closest prior art.
With respect to i) Applicant nor the Declarant have provided an explanation of the proffered evidence/data as shown in Comparative Examples 3 and 4, it is noted that while the Examiner can make out which acrylic resin was used in Comparative Examples 3 and 4 from Table 1 of the specification using the information provided in Tables 1 and 2 of the specification (assuming that acrylic resin (*1) in the comparative examples 3-4 are the same as the acrylic resin (*1) from the examples from Tables 1 and 2 of the specification), the information regarding sample A and sample B from comparative Example 4 are vague and has not been explained by Applicant nor the Declarant. It is not clear what those Sample A and Sample B encompassed and how such mixture of Sample A and Sample B might have played a critical role in providing the results as shown in Table 1 of the Kondo Declaration, particularly to the CV values. Furthermore, it appeared that the rotation speed and shearing time for Comparative Examples 3 and 4 of the Declaration differ substantially from the rotation speed and shearing time used in the acrylic resin examples from Tables 1 and 2 of the specification. For example, Comparative Example 3 using the same acrylic resin (*1) component yet the rotation speed of 1500 rpm and a shearing time of 5 mins, which are much lower than all the acrylic resin (*1) examples from Tables 1 and 2 of the specification (i.e., Example 1 from Table 1 used a rotation speed of 8000 rpm and a shearing time of 15 mins). Thus, it is not clear whether the variations of rotation speed and shearing time, especially the substantial differences with respect to rotation speed and shearing time between Declarant’s Comparative Examples 3 and 4 and the Examples from Tables 1 and 2 of the specification, may have played a significant role in affecting the coefficient of variation (CV) of the fiber length. As such, due the above issues, the results from comparative examples shown in the Kondo Declaration cannot be determined to be truly unexpected, thereby Applicant and the Declarant have failed provide adequate objective evidence showing “samples of fibers having a length which adheres to Amari, and to Claim 41 do not inherently have a coefficient of variation that adheres to Claim 41” as alleged by Applicant. Accordingly, Applicant via the Kondo Declaration have not provided sufficient evidence to the contrary to what was indicated in the standing 103 rejection. Applicant is noted that "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
With respect to ii) independent claims 41 and 48 are not adequately commensurate in scope with the acrylic resin Examples in Tables 1 and 2 of the specification, it is noted that all the acrylic resin Examples in Tables 1 and 2 of the specification used particularly octylacrylamide/hydroxypropyl acrylate/butylaminoethyl methacrylate copolymer as the acrylic resin, and particularly water as the volatile component. Thus, claims 41 and 48 are not commensurate in scope with the Examples from Tables 1 and 2 of the specification, respectively. It is noted that [w]hether 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) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). See MPEP 716.02(d).
With respect to iii) regarding evidence of unexpected results must be compared to the closest prior art, as discussed in the standing 103 rejection, it is noted that Amari teaches substantially the same in structure as the claimed fiber, and thus, Applicant and the Kondo Declaration failed to compare the alleged unexpected results to the closest prior art of Amari, showing that the fiber used in the coating film formulation of Amari did not achieve the results of improvements in adhesivity, uniformity, spreadability, and network formation to the same extent as shown in the Tables 1 and 2 of the specification. Particularly, Applicant and the Kondo Declaration have also failed to show that the fiber used in the coating film formulation of Amari did not exhibit “a coefficient of variation (CV) value of … 59% or more and 100% or less” as claimed. It is noted that [a]n 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. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP 716.02 (e).
For at least the reasons discussed above, Applicant arguments and the Kondo Declaration are insufficient to obviate the standing 103 rejections as set forth in this office action.
Applicant argues “the composition of the present claims, including acrylic resin fibers having a mean diameter, length, aspect ratio, and coefficient of variation that adhere to the present claims, is associated with unexpected results related to the adhesivity, uniformity, spreadability, and network formation.” Applicant further alleges that “as evidenced by Table 1 above and Comparative Examples 1 and 2 of Table 2 of the specification, the recited values are critical for achieving these unexpected improvements. For example, Comparative Example 4 includes fibers having an average fiber length of 100 µm, similar to Example 9 in Table 1and within the range recited in the present claims, but having a coefficient of variation that does not adhere to the present claims. Comparative Example 4 does not show the unexpected improvements in adhesivity, uniformity, spreadability, and network formation.” (Remarks, page 13, 1st paragraph).
In response, the Examiner disagrees. Applicant’s alleged evidence of unexpected results as shown in the Tables 1 and 2 of the specification are considered, but found insufficient to obviate the standing 103 rejections as set forth in this office action for the reasons discussed below.
First, it is noted that Applicant’s allegation that “Comparative Example 4 includes fibers having an average fiber length of 100 µm, similar to Example 9 in Table 1 and within the range recited in the present claims,” is misplaced because as discussed above, the information in the Kondo Declaration regarding sample A and sample B from comparative Example 4 are vague and has not been explained by Applicant nor the Declarant. It is not clear what those Sample A and Sample B encompassed and how such mixture of Sample A and Sample B might have played a critical role in providing the results as shown in Table 1 of the Kondo Declaration, particularly to the CV values. Furthermore, it appeared that the rotation speed and shearing time for Comparative Examples 3 and 4 of the Declaration differ substantially from the rotation speed and shearing time used in the acrylic resin examples from Tables 1 and 2 of the specification including Example 9 from Table 1. The polymer concentration of Example 9 from Table 1 of the specification is also different from the polymer concentration used in Comparative Example 4 of the Kondo Declaration. Thus, Comparative Example 4 from the Kondo Declaration is not similar to the Example 9 of from Table 1 of the specification. As such, as discussed above, it is not clear whether these differences, especially the substantial differences with respect to rotation speed and shearing time between Declarant’s Comparative Examples 3 and 4 and the Examples from Tables 1 and 2 of the specification, may have played a significant role in affecting the coefficient of variation (CV) of the fiber length. As such, due the above issues, the results from comparative examples shown in the Kondo Declaration and from the Examples of Table 1 and 2 of the specification cannot be determined to be truly unexpected, thereby Applicant and the Declarant have failed to provide adequate objective evidence showing “samples of fibers having a length which adheres to Amari, and to Claim 41 do not inherently have a coefficient of variation that adheres to Claim 41,” as alleged by Applicant. Accordingly, Applicant via the Kondo Declaration have not provided sufficient evidence to the contrary to what was in the standing 103 rejection. Applicant is noted that "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
Second, as discussed above, it is reiterated that all the acrylic resin Examples in Tables 1 and 2 of the specification used particularly octylacrylamide/hydroxypropyl acrylate/butylaminoethyl methacrylate copolymer as the acrylic resin, and particularly water as the volatile component. Thus, claims 41 and 48 are not commensurate in scope with the Examples from Tables 1 and 2 of the specification, respectively. It is noted that [w]hether 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) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). See MPEP 716.02(d).
Third, as discussed above, it is noted that Amari teaches substantially the same in structure as the claimed fiber, and thus, Applicant and the Kondo Declaration failed to compare the alleged unexpected results to the closest prior art of Amari, showing that the fiber used in the coating film formulation of Amari did not achieve the results of improvements in adhesivity, uniformity, spreadability, and network formation to the same extent as shown in the Tables 1 and 2 of the specification. Particularly, Applicant and the Kondo Declaration have also failed to show that the fiber used in the coating film formulation of Amari did not exhibit “a coefficient of variation (CV) value of … 59% or more and 100% or less” as claimed. It is noted that [a]n 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. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP 716.02 (e).
For at least the reasons discussed above, Applicant arguments and Applicant’s alleged evidence of unexpected results shown in the Kondo Declaration and from Tables 1 and 2 of the specification are insufficient to obviate the standing 103 rejections as set forth in this office action.
As a result, for at least the reasons discussed above, claims 41, 44-46, 48-55 and 57-59 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejections as set forth in this office action.
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 41, 44-46, 48-55 and 57-59 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12280127 in view of Amari et al (WO 2018/124227 A1; English translation and citation via US 2019/0343731 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘127 significantly overlap with the subject matter of instant claims, i.e., a composition for forming a coating film comprising a volatile component comprising water and/or ethanol, an oil agent, and a fiber, wherein the fiber, at 0.5 mass% or more and 10 mass% or less based on the total composition having an average fiber diameter of 0.1 µm or more and 7 µm or less, wherein [(average fiber diameter)2/fiber content)] (µm2/mass%) is 0.005 or more and 7 or less and a CV value of the fiber length of the fiber is 100% or less, wherein the volatile component such as water and alcohol is present in the composition in an amount between 15 mass% or more and 90 mass% or less.
While the composition in the claims in the Patent ‘127 recites the oil agent as being selected from the group consisting of an ester oil, an ether oil, a hydrocarbon oil, and a higher alcohol, it would have been obvious to use or incorporate an ester oil, an ether oil, a hydrocarbon oil, or a higher alcohol as the oil agent in the composition of the instant claims in view of the guidance from Amari, which teaches a coating formulation comprising (i) a fiber having an average fiber diameter of less than 3,000 nm (3 µm), preferably about 1 µm, and a fiber length of 50 µm or more; (ii) a volatile substance selected from water and alcohols, and (iii) an oil agent selected from an ester oil, a hydrocarbon oil, and a higher alcohol, wherein the fiber content in the coating formulation is from 2% by mass to 50% by mass and the volatile substance is present in the coating formulation in an amount from 50% to 94% by mass (Amari: Abstract; [0006], [0011], [0016]-[0050], [0060]-[0067] and [0088]-[0118]; Examples 1-14 and Table 1-5).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 12280127 in view of Amari.
Claims 41, 44-46, 48-55 and 57-59 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18253941 (reference application) in view of Amari et al (WO 2018/124227 A1; English translation and citation via US 2019/0343731 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application ‘941 significantly overlap with the subject matter of instant claims, i.e., a composition for forming a coating film comprising a non-volatile oil agent, and a fiber, wherein the fiber, at 0.5 mass% or more and 10 mass% or less based on the total composition having an average fiber diameter of 0.1 µm or more and 7 µm or less and a fiber length of 20 µm or more and 300 µm or less, wherein [(average fiber diameter)2/fiber content)] (µm2/mass%) is 0.005 or more and 7 or less and a CV value of the fiber length of the fiber is 100% or less, wherein the volatile component such as water and alcohol is present in the composition in an amount between 15 mass% or more and 90 mass% or less.
While the composition in the claims in the copending application ‘941 contains an ultraviolet absorber, it would have been obvious to include an ultraviolet absorber in the composition of the instant claims in view of the guidance from Amari, which teaches a coating formulation comprising (i) a fiber having an average fiber diameter of less than 3,000 nm (3 µm), preferably about 1 µm, and a fiber length of 50 µm or more; (ii) an oil agent selected from an ester oil, a hydrocarbon oil, and a higher alcohol, and (iii) UV protection agent, wherein the fiber content in the coating formulation is from 2% by mass to 50% by mass (Amari: Abstract; [0006], [0011], [0016]-[0050], [0060]-[0067] and [0088]-[0118]; Examples 1-14 and Table 1-5).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18253941 in view of Amari.
This is a provisional nonstatutory double patenting rejection.
Claims 41, 44-46, 48-55 and 57-59 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18254895 (reference application) in view of Amari et al (WO 2018/124227 A1; English translation and citation via US 2019/0343731 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application ‘895 significantly overlap with the subject matter of instant claims, i.e., a composition for forming a coating film comprising a volatile component, a nonvolatile oil, and a fiber, wherein the fiber, at 0.5 mass% or more and 10 mass% or less based on the total composition having an average fiber diameter of 0.1 µm or more and 7 µm or less and a fiber length of 20 µm or more and 300 µm or less, wherein [(average fiber diameter)2/fiber content)] (µm2/mass%) is 0.005 or more and 7 or less, a CV value of the fiber length of the fiber is 100% or less and the aspect ratio of 10 or more and 300 or less.
While the composition in the claims in the copending application ‘895 contains a silicone-based film-forming agent, it would have been obvious to include a silicone-based film-forming agent in the composition of the instant claims in view of the guidance from Amari, which teaches a coating formulation comprising (i) a fiber having an average fiber diameter of less than 3,000 nm (3 µm), preferably about 1 µm, and a fiber length of 50 µm or more; (ii) a volatile substance selected from water and alcohols, (iii) an oil agent selected from an ester oil, a hydrocarbon oil, and a higher alcohol, and (iv) an silicone film-forming agent, wherein the fiber content and amount of silicone film-forming agent in the coating formulation is from 2% by mass to 50% by mass (Amari: Abstract; [0006], [0011], [0016]-[0050], [0060]-[0067] and [0088]-[0118]; Examples 1-14 and Table 1-5).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18254895 in view of Amari.
This is a provisional nonstatutory double patenting rejection.
Claims 41, 44-46, 48-55 and 57-59 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 of copending Application No. 18254901 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application ‘901 significantly overlap with the subject matter of instant claims, i.e., a composition for forming a coating film comprising a volatile component such as water, a nonvolatile oil, and a fiber, wherein the fiber, at 0.5 mass% or more and 10 mass% or less based on the total composition having an average fiber diameter of 0.1 µm or more and 7 µm or less and a fiber length of 20 µm or more and 300 µm or less, wherein [(average fiber diameter)2/fiber content)] (µm2/mass%) is 0.005 or more and 7 or less, a CV value of the fiber length of the fiber is 100% or less and the aspect ratio of 10 or more and 300 or less.
While the composition in the claims of the copending application ‘901 contains a powder, it would have been obvious to include a powder in the composition of the instant claims in view of the guidance from Amari, which teaches a coating formulation comprising (i) a fiber having an average fiber diameter of less than 3,000 nm (3 µm), preferably about 1 µm, and a fiber length of 50 µm or more; (ii) a volatile substance selected from water and alcohols, and (iii) an oil agent selected from an ester oil, a hydrocarbon oil, and a higher alcohol, wherein the fiber content in the coating formulation is from 2% by mass to 50% by mass, and wherein the composition can further contain a powder such as a color pigment in an amount of 0.1% by mass to 30% by mass (Amari: Abstract; [0006], [0011], [0016]-[0050], [0060]-[0067] and [0088]-[0118]; Examples 1-14 and Table 1-5). Thus, it would also have been obvious to optimize the mass ratio of fiber to powder (color pigment) to the mass ratio as claimed in the copending application ‘901, as the amounts of fiber and color pigment as taught in the instant claimed invention and in Amari, respectively, overlaps the claimed mass ratio of the copending application ‘901. As such, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.