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 .
Response to Amendment
The amendment filed on 10/20/2025 has been entered.
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.
Claims 1-12 are 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.
Claim 1 requires an amorphous phase having a percentage of at least 10% as determined by the crystallinity ratio. Crystallinity ratio is a measure that quantifies the proportion of crystalline material. Therefore it is unclear if the claim requires 10% crystalline material or 10% amorphous material. Further, the claim does not state that the fiber has an amorphous percentage of at least 10% but rather states that the amorphous phase has a percentage of at least 10%. It is unclear how an amorphous phrase can have an (amorphous) phase percentage of less than 100% because an amorphous phase is 100% amorphous. Further, crystallinity ratio is not always measured in mass, it can also be measured by volume. Therefore, it is also unclear if the claimed amorphous phase percentage is a mass or volume percentage.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over USPAP 2020/0325599 to Mason in view of USPAP 2009/0155326 to Mack.
Claims 1 and 3, Mason discloses a biodegradation-enhanced synthetic polymer fiber comprising: 0.1 to 5.0 wt. % of a biodegradation-inducing additive with respect to the total weight of the synthetic polymer fiber (see entire document including the title, [0002], [0010], [0033], [0038], [0039], [0042], [0047], [0066], [0068], [0069], [0089] and [0090]).
Mason discloses that the fiber has a controlled biodegradation rate [0087] but Mason does not appear to mention forming the fiber with an amorphous phase. Mack discloses that it is known in the biodegradable fiber art to include both an amorphous portion and a crystalline portion because the amorphous portion allows for controlled release of an additive while the crystalline portion provides structural integrity (see entire document including [0093] and [0095]). Therefore, it would have been obvious to one having ordinary skill in the art to construct the fiber of Mason with an amorphous portion, the amorphous portion incorporating/dispersing the (biodegradation-inducing) additive of Mason, to allow for controlled release of the (biodegradation-inducing) additive while also preserving fiber structural integrity with a crystalline portion. It would have been obvious to one having ordinary skill in the art to vary the amount of amorphous phase, such as claimed, based on the desired/required amount of controlled release of the biodegradation-inducing additive for the intended application.
Claim 2, the synthetic polymer fiber is a polyester fiber or a polyamide fiber [0033].
Claim 4, the synthetic polymer fiber is made of a polymer is selected from the disclosed materials [0033].
Claim 5, the biodegradation-inducing additive is selected from polysaccharide, polylactic acid, polycaprolactone, polybutylene succinate, polybutylene terephthalate-coadipate, furanone, glutaric acids, or carboxylic acids [0047].
Claim 6, the biodegradation-inducing additive is a starch-based polymer [0047].
Claim 7, the biodegradation-inducing additive is present in a concentration of between 0.5 to 3.0 wt % with respect to the total weight of the synthetic polymer fiber [0038].
Claims 8-10, Mason does not appear to mention the synthetic polymer fiber further comprises a carrier polymer but Ohuchi discloses that it is known in the art to mix or spin polyester with wool (column 1, lines 21-30). The Office takes official notice (now admitted prior art) that polyester/wool combinations conventionally comprise somewhere between 10-90% polyester and 10-90% wool. Therefore, it would have been obvious to one having ordinary skill in the art to mix or spin the polyester with wool, within the claimed amount, 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.
Claim 11, Mason does not appear to specifically mention the fiber comprising a flame retardant additive but Mason discloses a variety of fiber uses [0066] and the examiner takes official notice (now admitted prior art) that it is well-known to include flame retardants within fibers in one or more of the disclosed applications. Therefore, it would have been obvious to one having ordinary skill in the art to include a flame retardant additive in the fibers of Mason to provide the resulting products with flame retardancy.
Claim 12, Mason does not disclose the additive forming any intramolecular chemical bonds with the synthetic polymer fiber and regarding the claimed methods of incorporation, it is the examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over USPAP 2020/0325599 to Mason in view of USPN 3,627,734 to Ohuchi.
Claims 1 and 3, Mason discloses a synthetic polymer fiber comprising: 0.1 to 5.0 wt. % of a biodegradation-inducing additive with respect to the total weight of the synthetic polymer fiber wherein the biodegradation-inducing additive may be homogeneously present throughout the polymer (see entire document including [0002], [0010], [0033], [0038], [0039], [0042], [0047], [0066], [0068], [0069], [0089] and [0090]).
Mason discloses that the polyester fiber may be made by a conventional mixing method wherein a polyester polymer and an additive are mixed and then extruded into fiber form [0013] but Mason does not appear to mention forming the fiber by an additive diffusion method. Ohuchi discloses that it is known in the art to construct a polyester fiber comprising an additive by the conventional mixing method or by an additive diffusion method wherein an additive-free polyester fiber is subject to heat and swelling resulting in an amorphous phase and then incorporating/dispersing the additive inside said amorphous phase to facilitate the diffusion of the additive throughout the polyester (see entire document including column 3, line 43 through column 4, line 56). Therefore, it would have been obvious to one having ordinary skill in the art to construct the polyester fiber of Mason by any suitable method, such as the claimed additive diffusion method (comprising an amorphous phase incorporating/dispersing the additive), to facilitate the technical advantage of diffusion of the additive throughout the polyester fiber and because it is within the general skill of a worker in the art to select a known forming method on the basis of its suitability and desired characteristics. It is noted that the additive diffusion method disclosed by Ohuchi is substantially identical to the heat induced swelling method disclosed in the current specification ([0041] and [0042]).
Claim 2, the synthetic polymer fiber is a polyester fiber or a polyamide fiber [0033].
Claim 4, the synthetic polymer fiber is made of a polymer is selected from the disclosed materials [0033].
Claim 5, the biodegradation-inducing additive is selected from polysaccharide, polylactic acid, polycaprolactone, polybutylene succinate, polybutylene terephthalate-coadipate, furanone, glutaric acids, or carboxylic acids [0047].
Claim 6, the biodegradation-inducing additive is a starch-based polymer [0047].
Claim 7, the biodegradation-inducing additive is present in a concentration of between 0.5 to 3.0 wt % with respect to the total weight of the synthetic polymer fiber [0038].
Claims 8-10, Mason does not appear to mention the synthetic polymer fiber further comprises a carrier polymer but Ohuchi discloses that it is known in the art to mix or spin polyester with wool (column 1, lines 21-30). The Office takes official notice (now admitted prior art) that polyester/wool combinations conventionally comprise somewhere between 10-90% polyester and 10-90% wool. Therefore, it would have been obvious to one having ordinary skill in the art to mix or spin the polyester with wool, within the claimed amount, 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.
Claim 11, Mason does not appear to specifically mention the fiber comprising a flame retardant additive but Mason discloses a variety of fiber uses [0066] and the examiner takes official notice (now admitted prior art) that it is well-known to include flame retardants within fibers in one or more of the disclosed applications. Therefore, it would have been obvious to one having ordinary skill in the art to include a flame retardant additive in the fibers of Mason to provide the resulting products with flame retardancy.
Claim 12, Mason does not disclose the additive forming any intramolecular chemical bonds with the synthetic polymer fiber and regarding the claimed methods of incorporation, it is the examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter.
Response to Arguments
Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive.
Missing Documentation
The response filed 10/20/2025 indicates that an IDS was filed concurrently but no IDS was filed.
Mason in view of Mack
Mason discloses that the fiber has a controlled biodegradation rate [0087] but Mason does not appear to mention forming the fiber with an amorphous phase. Mack discloses that it is known in the biodegradable fiber art to include both an amorphous portion and a crystalline portion because the amorphous portion allows for controlled release of an additive while the crystalline portion provides structural integrity (see entire document including [0093] and [0095]). Therefore, it would have been obvious to one having ordinary skill in the art to construct the fiber of Mason with an amorphous portion, the amorphous portion incorporating/dispersing the (biodegradation-inducing) additive of Mason, to allow for controlled release of the (biodegradation-inducing) additive while also preserving fiber structural integrity with a crystalline portion. It would have been obvious to one having ordinary skill in the art to vary the amount of amorphous phase, such as claimed, based on the desired/required amount of controlled release of the biodegradation-inducing additive for the intended application.
In response, the applicant admits that Mack teaches one skilled in the art to construct the polymer fiber of Mason with an amorphous polymer phase configuration to control release of the biodegradation additive of Mack but the applicant asserts that controlled release of the biodegradation additive is not desired by Mason. The examiner respectfully disagrees. Constructing the fiber of Mason with controlled release of the biodegradation additive would allow for controlled release of the biodegradation additive onto the surface of the fiber which is precisely the location that Mason discloses is desired for the biodegradation additive [0041].
Mason in view of Ohuchi
Mason discloses a synthetic polymer fiber comprising: 0.1 to 5.0 wt. % of a biodegradation-inducing additive with respect to the total weight of the synthetic polymer fiber wherein the biodegradation-inducing additive may be homogeneously present throughout the polymer (see entire document including [0002], [0010], [0033], [0038], [0039], [0042], [0047], [0066], [0068], [0069], [0089] and [0090]). Mason discloses that the polyester fiber may be made by a conventional mixing method wherein a polyester polymer and an additive are mixed and then extruded into fiber form [0013] but Mason does not appear to mention forming the fiber by an additive diffusion method. Ohuchi discloses that it is known in the art to construct a polyester fiber comprising an additive by the conventional mixing method or by an additive diffusion method wherein an additive-free polyester fiber is subject to heat and swelling resulting in an amorphous phase and then incorporating the additive inside said amorphous phase to facilitate the diffusion of the additive throughout the polyester (see entire document including column 3, line 43 through column 4, line 56). Therefore, it would have been obvious to one having ordinary skill in the art to construct the polyester fiber of Mason by any suitable method, such as the claimed additive diffusion method (comprising an amorphous phase incorporated with the additive), because it is within the general skill of a worker in the art to select a known forming method on the basis of its suitability and desired characteristics. It is noted that the additive diffusion method disclosed by Ohuchi is substantially identical to the heat induced swelling method disclosed in the current specification ([0041] and [0042]). It is additionally noted that applicant admits that “It is not desired to add the biodegradation additive during master batch or extrusion…because adding the biodegradation additive in the master batch would encapsulate the biodegradable additive and it will not be accessible to microorganisms to activate biodegradation” (page 7 of the response filed 3/24/2025).
In response, the applicant asserts that Ohuchi fails to teach the additive being a biodegradation-inducing additive. Applicant’s argument is not commensurate in scope with the rejection. Mason, the primary reference, teaches the claimed biodegradation-inducing additive. Ohuchi is relied upon to teach the claimed amorphous phase and incorporating an additive inside an amorphous phase.
The applicant also asserts that the applied prior art fails to teach including an additive in an amorphous phase and that there is no motivation to include the biodegradation-inducing additive of Mason into an amorphous phase. The examiner respectfully disagrees. Ohuchi discloses that it is known in the art to construct a polyester fiber comprising an additive by an additive diffusion method wherein an additive-free polyester fiber is subject to heat and swelling resulting in an amorphous phase and then incorporating the additive inside said amorphous phase to facilitate the technical advantage of diffusion of the additive throughout the polyester fiber (see entire document including column 3, line 43 through column 4, line 56). Therefore, it would have been obvious to one having ordinary skill in the art to construct the polyester fiber of Mason by any suitable method, such as the claimed additive diffusion method to facilitate the technical advantage of diffusion of the additive throughout the polyester and because it is within the general skill of a worker in the art to select a known forming method on the basis of its suitability and desired characteristics.
Conclusion
Applicant's amendment necessitated any new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789