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 dated December 10, 2025. Claims 1,2,6-10,14,17,18 and 21-24 are pending. Claims 3-5,11-13,15,16, 20 and 25 have been cancelled. Claims 1 and 14 have been amended. Claims 23 and 24 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The rejection of Claim 14 is under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s amendments to the claims.
The rejection of Claims 1-5,11,14,16 and 17 under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated Smith (US 2004/0158935) is withdrawn in view of applicant’s amendments to the claims.
The rejection of claims 11,14,16-19 and 22 under 35 U.S.C. 103 as being unpatentable over Smith (US 2004/0158935) is withdrawn in view of applicant’s amendments to the claims.
Claims 1,6-10,14,17,18,21 and 22 stand rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2004/0158935) in view of Deavenport (US 2015/0210627) for the reasons set forth below.
The rejection of claims 1,6-10,14,16-19,21 and 22 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13,15 and 16 of copending Application No. 17/760132 is withdrawn in view of applicant’s amendments to the claims.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites “padding treating a textile” which is awkward phrasing and would be clearer if it was written “treating a textile by padding”. 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 2 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. Claim 2 recites the cancelled species from claim 1 and therefore lacks antecedent basis because claim 1 requires di-quaternized not mono-quaternized cationizing agents.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 14 recites the treating step is in the range of 90-100°C, but this claim depends from claim 1 and teaches the treatment is padding. Applicant’s specification nowhere indicates the padding is done at this temperature range, rather only the heating is performed at the claimed 90-100°C (see applicant’s pgpub, paragraph 0026). Applicant teaches padding is performed at temperatures not greater than 35°C (see applicant’s pgpub paragraph 0056). Accordingly padding treatment at 90-100°C is new matter. For examination purposes, the examiner interpreted the treating temperature of claim 14 to be the heating temperature not the padding treating.
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 1,2,6-10,14,17,18,21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2004/0158935) in view of Deavenport (US 2015/0210627).
Smith teaches treating natural fibers such as cotton by a pad-dry, pad-steam or pad-dry-cure process with a aqueous solution of a cationizing agent such as CHTAC (mono-quaternized cationizing agent, 3-chloro-2-hydroxypropyl trimethyl ammonium chloride) which in the presence of hydroxide creates an compound with an epoxide group (EPTAC; paragraph 0028, Scheme I, first reaction). Smith teaches treating with CHTAC in the presence of NaOH (alkali metal hydroxide) by padding, drying at 20-100°C for 1-15 minutes (paragraphs 0148-0153). Smith teaches steam heating at 95-105°C (claims 137-159). Smith teaches drying at 90°C for 2,5,7 and 10 minutes (paragraph 0260, Table 21, last entry). Smith teaches the molar ratio of alkali metal hydroxide to cationizing agent 4.43:1 (Table 12, sample 7). Smith teaches pad dry cure where fabrics were padded to 100% wet-pickup and dried at 90°C for 2,5,7 and 10 minutes (paragraph 0253-0254, table 1, last entry). Smith teaches performing padding at a saturation expression to a controlled degree of wet pickup (paragraph 0182) and dipping into a treatment solution to achieve the desired wet pickup (paragraph 0192).
Smith teaches that padding involves the saturation of the substrate with a liquor followed by squeezing to leave a specific quantity of liquor, which meets the claimed limitation of mechanically removing a portion of the aqueous solution from the fabric after treating with the aqueous solution (paragraphs 00181-0183). Smith further teaches cotton by a pad dry cure process with a aqueous solution of a cationizing agent and drying at 20-100°C for 1-15 minutes followed by curing at 40-130°C for 1-30 minutes (paragraph 0153Smith also teaches drying at about 35°C and steaming is performed at 95-105°C for a period of time wherein in some embodiments alkaline compounds are mixed in to the cationizing agent and drying and/or curing is performed at such as 1 to 15 min (abstract; paragraphs 0141-0147,0153). Smith teaches the operations of padding are used in dyeing (paragraph 0181) and the treatment with alkaline makes the cotton more receptive to dyeing (paragraph 0178). In paragraph 0258 Smith teaches padding but does not specify heat being added during the padding which indicates a room temperature process of 25°C.
Smith does not teach padding time in seconds and a bis ether halogenated di-hydroxylated ammonium compound.
Deavenport teaches when cationizing cotton to increase dye uptake, dye fixative agents such as those of formula (I) and in paragraphs 0016-0017 (meets the limitation of (bis ether halogenated di-hydroxylated ammonium compound capable of generating two epoxide groups in the presence of alkali metal hydroxide particularly the compound of paragraph 0016, which is the compound of claim 5, paragraph 0022) are effective at cationizing cotton when applied in the presence of sodium hydroxide with a 1:1 molar ratio of hydroxide to cationizing agent plus additional NaOH to catalyze the reaction, resulting in a greater than 1:1 ratio of hydroxide to cationizing agent (paragraph 0022). Deavenport teaches epoxy groups are produced (paragraph 0022) and steps of dyeing the cotton and treating with water and acetic acid after cationizing, which would neutralize the hydroxide base, are subsequently performed (example 2, paragraphs 0021-0024).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Smith by incorporating the cationic compounds of Deavenport at the molar ratios of Smith, neutralizing with acid and dyeing after cationizing as Deavenport teaches the claimed compounds are effective at cationizing cotton and generating epoxide groups to provide dye uptake enhancement. Using a known effective cationizing compound for producing cationic cotton in a method also for cationizing the same cotton is obvious. Deavenport is not limited to the molar ratios of hydroxide to cationizing agent of example 1 and using the molar ratios of similar quaternizing agents of Smith would be obvious to try as Smith teaches treating similar fabrics with quaternizing agents at ratios from 0.51:1 to 11.06:. Trying similar molar ratios of similar sodium hydroxides and quaternary cationizing agents would be obvious.
Both references teach the benefit of enhanced dye uptake by the cotton. Performing neutralization of the fabric in acid solution after steaming would be obvious as Deavenport teaches that the cationized fabrics are treated in water and acetic acid after being treated with the claimed compounds in the presence of basic hydroxides. The acid would neutralize the hydroxide base. The order of doing this neutralization step is not considered critical as both methods produce a neutral cationized fabric. Changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442 (POBA 1959). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Smith by selecting padding the textile with the cationizing agent and alkali solution at the claimed ratio for 1 to 10 seconds and treating the textile at 90-100°C, in heat for 1-10 minutes, treating with the cationizing agent at temperatures of less than 35°C for 1 to 10 seconds as Smith clearly teaches treatment steps of preparing CHTAC and NaOH, padding it onto fabric by dipping to a desired degree of wet-pickup, squeezing away excess liquor. drying and curing or steaming with heat, of which all three are heating steps. Smith recognizes that padding is typically performed for a period to a controlled degree of wet saturation via dipping. Dipping is a short process of only seconds and can be adjusted by dipping into the treatment agent until the desired level of wet pickup is achieved. Both the prior art references and teach a wet-pickup of similar compositions on similar fabric to 50-100%, the same as applicant. Therefore the same amount of time as applicant would be required to get the same cotton fabric to absorb the same level of alkali and cationizing agent under the same conditions as applicant.
It would be obvious to select the appropriate treatment temperatures and treatment times to maximize epoxide formation, penetration of the cationizing agent into the cotton, reaction between the cationizing agent and the cotton and fixation of the cationizing agent on the cotton. Selecting from known treatment, drying, curing and steaming times and temperatures for the same benefit of effectively cationizing cotton is obvious as Smith teaches this prepares cotton for future dye uptake in subsequent drying operations. Padding is a continuous and fast process which would apply the cationizing agent and squeeze it out in a minute or less, and this can be determined through routine experimentation.
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 1,2,6-10,14,17,18,21 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13,15 and 16 of copending Application No. 17/760132 in view of Smith (US 2004/0158935). The copending application teaches treating textiles with di-quaternized cationizing agents and heating at overlapping temperatures for the same amount of time. The copending application specifies steam treatment as the method of heating the textile, and meets the claimed limitation of heating the textile. Performing the treatment by padding would be obvious as Smith teaches similar cationizing in the presence of quaternized cationizing agents and alkali metal hydroxides can be effectively performed using padding. Using a known effective technique for applying hydroxides and cationizing agents to similar fabrics is obvious
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed regarding Smith in view of Deavenport have been fully considered but they are not persuasive. The examiner argues it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Smith by selecting padding the textile with the cationizing agent and alkali solution at the claimed ratio for 1 to 10 seconds and heat treating the textile at 90-100°C for 1-10 minutes, treating with the cationizing agent at temperatures of less than 35°C for 1 to 10 seconds as Smith clearly teaches treatment steps of preparing CHTAC and NaOH, padding it onto fabric by dipping to a desired degree of wet-pickup, squeezing away excess liquor. drying and curing or steaming with heat, of which all three are heating steps. Smith recognizes that padding is typically performed for a period to a controlled degree of wet saturation via dipping. Dipping is a short process of only seconds and can be adjusted by dipping into the treatment agent until the desired level of wet pickup is achieved. Both the prior art references and teach a wet-pickup of similar compositions on similar fabric to 50-100%, the same as applicant. Therefore the same amount of time as applicant would be required to get the same cotton fabric to absorb the same level of alkali and cationizing agent under the same conditions as applicant. The treatment from about 80 min to about 100 min refers to an exhaust treatment process and nowhere specifies this is for padding. All the padding embodiments do not specify a time, rather the time is determined through wet pick up by dipping. Using the di-quaternized compounds of Deavenport in addition to or as a substitute for the mono-quaternized in the methods of Smith would be obvious as Deavenport teaches the claimed compounds are effective at producing the same benefit cationizing cotton and generating epoxide groups to provide dye uptake enhancement. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding applicant’s allegation of unexpected results, the examiner argues the results no data have been provided which are commensurate in scope with the claims to demonstrate the effect, rather applicant just provides conclusory arguments. The arguments are conclusory statements not supported by factual evidence, see In re Lindner, 457 F.2d 506, 173 USPQ 356 (CCPA 1972). Deavenport is not limited to the molar ratios and treatment temperatures of a single example. A reference is not limited to the working examples, see In re Fracalossi, 215 USPQ 569 (CCPA 1982). Further applicant’s specification does not teach a padding treatment at the claimed temperatures as shown in the 112 first paragraph rejection above. The reaction conditions used in Smith can also be used in Deavenport as this is obvious to try through routine experimentation since both references teach quaternizing the cotton fabric in the presence of alkali metal hydroxide. Deavenport using an exhaust method different than padding so the temperature and time conditions would be different than that of padding, as Smith teaches different conditions for padding and exhaustion. Since Smith teaches cationization can be effectively performed by padding or exhaust application, using padding methods with different temperature and time conditions with the compounds of Deavenport would be obvious to try as another effective cationizing method for cotton prior to dyeing.
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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/AMINA S KHAN/Primary Examiner, Art Unit 1761