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 .
Claims 1,3-11 and 14-19 are pending. Claims 1,6,7,10 and 11 have been amended. Claims 2,12 and 13 have been cancelled. Claims 17-19 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1,3-11,15 and 16 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 et forth below.
Claim 14 stands rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2004/0158935) in view of Deavenport (US 2015/0210627) and further in view of Matsui (JPH06248584A) for the reasons set forth below.
Claims 1,3-11 and 14-16 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11,14, 16-19,21 and 22 of copending Application No. 17/759964 in view of Smith (US 2004/0158935) for the reasons set forth below.
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 1,3-7 and14-16 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 recites the limitation "mechanically removing" in the second paragraph There is insufficient antecedent basis for this limitation in the claim as claim 1 prior to this doesn’t refer to a mechanical removing step as part of the claim. Applicant should amend the claim to indicate at the end of the first treatment step the presence of a mechanical removing step. Claims 3-7 and 14-16 are also rejected for being dependent upon claim 1 and inheriting the same deficiency.
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 1,3-11,15 and 16 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 steam process with an aqueous solution of a cationizing agent at about 35°C wherein 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 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). No heating is indicated for padding and squeezing so it would be at room temperature (25°C). Smith teaches the molar ratio of alkali metal hydroxide to cationizing agent 0.5:1 to 2.5:1 (paragraph 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). Smith teaches the fabric can be cationized by dipping to a desired degree of wet pick up such as 50 or 100% (paragraph 0182, 0192).
Smith does not specify a bis ether halogenated di-hydroxylated ammonium compound or the claimed times of treating with an aqueous solution, mechanically removing alone or further with treating with steam.
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 a bis ether halogenated di-hydroxylated ammonium compound, 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 claimed molar ratio, 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. 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).
Applying the claimed compounds of Davenport in the methods of Smith would be obvious as both compounds provide the cotton with cationic groups and Smith teaches application by exhaust and padding methods are both effective at cationizing the cotton in the presence of a cationizing agent and an alkali metal hydroxide. Using a padding method involves dipping in the cationizing agent solution until a desired wet pick up is achieved. Dipping is a short process which only requires a few seconds and Smith does not teach a heating step for padding, indicating it is performed at room temperature (25°C). Since the same compounds would be applied to the same fabric by the same padding and squeezing to the same degree of pickup (50-100%) as indicated in applicant’s specification, it is expected that this wet pick up padding time and squeezing time would be similar to applicant’s wet pick up padding and squeezing times of 1 second to one minute.
Regarding the time of steaming, selecting an amount of time to effectively fix the cationizing agent onto the cotton would be obvious and could be achieved through routine experimentation such that the padding, squeezing and steaming are all completed in 1-7 minutes. In summary, the times of treatment of claims 1,9-11, these can be adjusted through routine experimentation by one of ordinary skill in the art to maximize epoxide formation cationization of the cotton, removing excess solution and stem fixing of the cationic chemicals before dyeing.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2004/0158935) in view of Deavenport (US 2015/0210627) and further in view of Matsui (JPH06248584A).
Smith and Deavenport are relied upon as set forth above.
Smith and Deavenport do not teach viscosity enhancers.
Matsui teaches that viscosity adjusters are conventional additives used to adjust the permeability of cationizing compositions when being applied by padding to a cotton fabric (page 5, next to last paragraph; page 3, last paragraph).
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 and Deavenport by incorporating viscosity enhancers into the cationizing agent solution as Matsui teaches this is conventionally done when cationizing cotton by padding methods for the benefit of controlling penetration of the cationizing composition.
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 1,3-11 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11,14, 16-19,21 and 22 of copending Application No. 17/759964 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 does not specify steam treatment. Smith teaches similar method of cationizing cotton can be effectively achieved using dry heat or steam at the claimed temperatures. Using the steaming methods of Smith in the methods of the copending application would be obvious as both are equivalent in fixing the cationic agent onto the cotton substrate.
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. Applicant’s allegation of unexpected results are unpersuasive as they are not commensurate in scope with the claims or the prior art of record, The data provided are only for sodium hydroxide and a single species of cationizing agent bis[3-chloro-2-hydroxypropyldimethylammonium) ethyl]ether dichloride at a single concentration 70g/L. Only the third and fourth entries of the table on page 8/10 of applicant’s response have a steaming time commensurate in scope with the claims, but the third entry outside applicant’s ratio and steaming time provides similar results and no data is provided for dye coloration in the first entry. Accordingly, the data are not sufficient to provide unexpected results for the claims, wherein claim 1 includes and alkali metal hydroxide, any bis halogenated di-hydroxylated ammonium compound and the rejections are maintained..
In response to applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
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