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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 22, 2026, 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 1-13 and 15-20 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.
Regarding claims 1-20, claims 1 and 20 recite the aliphatic polvester biopolymer B being a succinate based aliphatic polymer “such as” polybutylene succinate, polybutylene succinate adipate and polvethylene succinate and the aliphatic polyester of biopolymer B being a succinate based aliphatic polymers “such as” polybutylene succinate, polybutylene succinate adipate and polyethylene succinate. The recitation of “such as” renders each of the claims indefinite, as it is unclear if the limitations following “such as” are necessarily required embodiments of the claim, or not required as being directed to merely exemplary embodiments.
Additionally, regarding claims 1-19, claim 1 recites stretching the tow in exposure to steam at a temperature between 30ºC and 80ºC and a stretching rate between 1.2 and 6.0. It is unclear if the claimed temperature is directed to the temperature conditions generally when stretching, or if the claimed temperature is directed to the temperature of the steam specifically when stretching. Note that Applicants’ specification does not appear to provide support for the latter interpretation, although it is unclear if Applicants intended differently.
Regarding claims 12 and 13, claim 12 recites that the aliphatic polyester of biopolymer B includes repeat units of at least 5 carbon atoms and claim 13 recites that the aliphatic polyester of biopolymer B is selected from the claimed group. The claims are dependent from claim 1, which requires that the aliphatic polyester biopolymer B being a succinate based aliphatic polyester. It is unclear if claims 12 and 13 are consistent with claim 1, as the requirements of claims 12 and 13 appear to broaden the scope of the claim from which they depend.
Regarding claim 13, the claim recites the aliphatic polyester of biopolymer B being selected from the group “(consisting of)” the claimed polymers. It is unclear if Applicants intended the claimed group to be interpreted as a Markush group, as the recitation of consisting of in parentheses renders the interpretation unclear and indefinite.
Regarding claim 18, the claim recites “in particular received from a wet-laid procedure.” The recitation of “in particular” render the claim indefinite, as it is unclear if the limitation following “in particular” is a necessary requirement of the claim, or not required as being directed to a merely exemplary embodiment.
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 1-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,177,193 to Tsai in view of US Pub. No. 2017/0121860 to Dahringer and WO 2005/064052 to Okaya, as evidenced by the machine translation.
Regarding claims 1-13 and 15-20, Tsai teaches biodegradable hydrophilic binder fibers produced by co-spinning a high-melting aliphatic polyester core material with a highly wettable aliphatic polyester blend sheath material, wherein the blend comprises an unreacted mixture of an aliphatic polyester polymer, such as a polybutylene succinate polymer or a polybutylene succinate-co-adipate polymer (Tsai, Abstract, column 4 lines 25-65, claims 2 and 3). Tsai teaches that the aliphatic polyester polymers exhibit weight average molecular weights that are beneficially between about 10,000 to about 2,000,000, suitably between about 100,000 to about 300,000 (Id., column 5 lines 28-50), and a melt flow rate that is beneficially between about 1 gram per 10 minutes to about 200 grams per 10 minutes (Id., column 6 lines 5-14). Tsai teaches that the high-melting aliphatic polyester core material includes polylactide having a melt temperature around 175ºC, and having a melting temperature of the core material at least 20ºC higher than the sheath material (Id., column 13 lines 1-22). Tsai teaches the high-melting aliphatic polyester core material with a highly wettable aliphatic polyester blend are biodegradable (Id., column 4 lines 55-65, column 13 lines 1-22). Note that although Tsai does not appear to teach ASTM D5338-15, since Tsai teaches substantially similar biopolymers as claimed, the biopolymers of Tsai appear to be biologically degradable as claimed.
Regarding the claimed properties, including the fibre withstanding temperatures up to 100ºC, as set forth above, Tsai teaches substantially similar components A and B as claimed. Additionally, Tsai teaches that major difficulty in the thermal processing of the aliphatic polyester polymers into binder fibers is the sticky nature of the polymers (Tsai, column 8 lines 41-59). Tsai teaches that the multicarboxylic acid enhances the overall crystallinity of the system and reduces the tackiness of the fibers and eliminating problems such as fiber aggregation during drawing (Id.).
Additionally, Dahringer teaches a polymer fiber with improved dispersibility and suitable for producing aqueous suspensions which are used in the formation of textile fabrics (Dahringer, Abstract). Dahringer teaches that the polymer fiber may be a bicomponent fiber, wherein the melting point of thermoplastic polymer in the core is preferably at least 10ºC higher than the melting point of the thermoplastic polymer in the cladding (Id., paragraphs 0039-0040). Dahringer teaches that the synthetic polymers which form the dispersion medium are particularly preferably synthetic biopolymers (Id., paragraph 0012), in particular polylactic acids (Id., paragraphs 0021-0022). Dahringer teaches that polylactic acids used according to the invention having a number average molecular weight (Mn) of min. 500 g/mol and preferably max 1,000,000 g/mol (Id., paragraph 0027), a weight average molecular weight (Mw) preferably in the range from 750 g/mol to 5,000,000 g/mol (Id., paragraph 0028), a polydispersity in the range from 1.5 to 5 (Id.), and an inherent viscosity measured in chloroform at 25ºC, 0.1% polymer concentration, in the range of 0.5 dl/g to 8.0 dl/g (Id., paragraphs 0029-0030). Dahringer teaches that the thermoplastic polymers have a glass transition higher than 20ºC, and a melting point in particular in the range of 175ºC to 195ºC (Id., paragraphs 0031-0032). Dahringer teaches dispersing silicone in the cladding (Id., paragraph 0039). Dahringer teaches that the fibers can be stretched into tows to produces textile surfaces by means of wet laying methods (Id., paragraphs 0069-0079). Dahringer teaches that the fibers having improved dispersibility and good pumpability (Id., paragraph 0078), in addition to improved haptics and improved softness (Id., paragraph 0081).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the biodegradable fiber of Tsai, wherein the polylactic acid polymer comprises the polylactic acid of Dahringer, for use in aqueous suspensions, as taught and suggested by Dahringer, motivated by the desire of forming a conventional bicomponent fiber having improved properties including dispersibility and haptics, such that the fibers are suitable for producing aqueous suspensions which are used in the formation of textile fabrics.
Additionally, regarding the claimed stretching in steam, Dahringer teaches similar fibres which are formed into tows and stretched at a stretching ratio preferably from 1.25 to 4 (Dahringer, paragraphs 0069-0070). Similar to Applicants’ specification, the stretching can be executed as a single-stage or two-stage stretching process for example USPN 3,816,486 (Id., paragraph 0071). Dahringer teaches that the fibres can be crimped or textured by steam-assisted fibre crimping at a temperature in the range of 50º to 100ºC (Id., paragraph 0072).
Additionally, Okaya teaches similar biodegradable composite fibers comprising a biodegradable aromatic aliphatic polyester first component having a melting point in the range of 180ºC to 250ºC, and a second component containing a biodegradable thermoplastic polyester component having a melting point in the range of 80ºC to 150ºC, having a dry heat shrinkage temperature of 3% or less at 100ºC, and 8% or less at 140ºC (Okaya, Abstract, paragraphs 0015-0019). Okaya teaches that the biodegradable thermoplastic polyester components include polyethylene succinate and polybutylene succinate (Id., paragraphs 0050-0051). Okaya teaches heat-treating the stretched filament under tension, with a stretching temperature within the range of 30ºC to 95ºC and a stretching ratio of 1.5 times or more (Id., paragraphs 0056-0058). Okaya teaches that heat treatment under tension may be performed using dry heat, moist heat, or steam, in a temperature range above the glass transition temperature of the first component and below the melting point of the second component (Id., paragraph 0058). Okaya teaches that by heat-treating the stretched filament under tension, the crystallization of the first component is promoted, and the thermal shrinkage rate of the stretched filament can be reduced while increasing bulk (Id., paragraphs 0034, 0046, 0051, 0058).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the biodegradable fiber of the prior art combination, wherein the fibers are formed into a tow and stretched in steam at a temperature and stretching ratio, such as within the claimed ranges, as taught by Dahringer and Okaya, motivated by the desire of forming a conventional bicomponent fiber formed by a process known in the art to predictably result in a bulky biodegradable composite having low heat shrinkage.
Additionally, the remaining process limitations are interpreted as product by process limitations. Absent a showing to the contrary, it is 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 Applicants to show unobvious differences 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. It is noted that if Applicants intend to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicants should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Additionally, the prior art combination teaches substantially similar components A and B as claimed, including substantially similar structures and compositions. Therefore, any remaining claimed properties and property relationships, such as not sticking, appear to naturally flow from the invention of the prior art combination. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claims 3-5, the prior art combination teaches an exemplary poly(lactic) acid polymer having a weight average molecular weight of 187,000, a number average molecular weight of 118,000, and a polydispersity of 1.58 (Tsai, column 19 lines 58-60, Table 1).
Regarding claim 6, the prior art combination does not appear to teach the claimed inherent viscosity. However, since the prior art combination teaches a substantially similar poly(lactic) acid as claimed, including overlapping molecular weights and polydispersity, it is reasonable for one of ordinary skill to expect that the claimed property is inherent to or naturally flows from the teachings of the prior art combination. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claims 7 and 11, the prior art combination does not appear to teach the claimed glass transition temperature relationships. However, the prior art combination teaches a substantially similar poly(lactic) acid as claimed, including overlapping molecular weights and polydispersity, having a melt temperature around 175ºC. Additionally, the prior art combination teaches exemplary polybutylene succinate polymer having a melting temperature of 95ºC (Tsai, column 19 lines 61-65, Table 1). Based on the prior art combination teaching a substantially similar structure and substantially similar compositions as claimed, it is reasonable for one of ordinary skill to expect that the claimed glass transition temperature relationships are inherent to or naturally flow from the teachings of the prior art combination. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claim 15, the prior art combination teaches similar fibres which are formed into tows and stretched at a stretching ratio preferably from 1.25 to 4 (Dahringer, paragraphs 0069-0070). Similar to Applicants’ specification, the stretching can be executed as a single-stage or two-stage stretching process for example USPN 3,816,486 (Id., paragraph 0071). Additionally, as set forth above, the prior art combination teaches a substantially similar manner of forming the fibers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the biodegradable fiber of the prior art combination, wherein the fibers are formed into a tow and stretched, as taught by Dahringer, motivated by the desire of forming a conventional bicomponent fiber formed into a structure which can be stored, and crimped or textured, based on the desired application.
Regarding claims 16 and 17, the prior art combination teaches that the aliphatic polyester polymers exhibit weight average molecular weights that are beneficially between about 10,000 to about 2,000,000. Additionally, the prior art combination teaches various viscosities @ 1000s-1 at 150ºC and 160ºC (Tsai, Table 3). Although the prior art combination does not appear to teach the specific melt viscosity at the claimed temperature, since the prior art combination teaches a substantially similar polybutylene succinate as claimed, including overlapping molecular weights and melt flow rates, it is reasonable for one of ordinary skill to expect that the claimed property is inherent to or naturally flows from the teachings of the prior art combination. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claim 18, the prior art combination teaches biodisintegradable nonwoven materials using the binder fibers, including in the form of a fibrous nonwoven web (Tsai, column 17 lines 10-25; Dahringer, Absract).
Regarding claim 20, Tsai does not appear to teach the claimed yarn count. However, Dahringer teaches that the individual titre of the polymer fibers is between 0.3 and 30 dtex, and between 0.3 and 3 dtex (Dahringer, paragraph 0038). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the biodegradable fiber of the prior art combination, wherein the fibers comprise a titre, such as within the claimed range, as taught by Dahringer, motivated by the desire of forming a conventional bicomponent fiber having properties suitable for the formation of bicomponent fibers.
Response to Arguments
Applicants’ arguments filed June 22, 2026, have been fully considered but they are not persuasive. Applicants argue that the combination does not teach biopolymer B (shell) being an aliphatic polyester of at least 5 carbon atoms including succinate-based aliphatic polyester, as Tsai discloses a sheath blend of at least three components. Examiner respectfully disagrees. Note that claims 1 and 20 do not require the at least 5 carbon atom limitation. Additionally, as set forth above, the prior art teaches an aliphatic polyester blend sheath material, wherein the blend comprises an unreacted mixture of an aliphatic polyester polymer, such as a polybutylene succinate polymer or a polybutylene succinate-co-adipate polymer. Note that the claims do not limit the sheath to consist of biopolymer B.
Applicants argue that the combination does not Tsai does not teach or suggest steam exposure during stretching nor characterize the fibre as one that can withstand temperatures up to 100ºC without sticking. Examiner respectfully disagrees, in that the Rejection does not rely on Tsai alone to teach the claimed limitations, although Tsai teaches reducing tackiness.
Applicants argue that Tsai does not teach the wet-laid or aqueous suspension suitability emphasized in claims 18 and 19. Examiner respectfully disagrees. As set forth above, Tsai teaches use as binder fibers. Additionally, Dahringer establishes use of the fibers in aqueous suspensions to form fabrics.
Applicants argue that Dahringer contains no disclosure of succinate-based polymers. Examiner respectfully disagrees. Dahringer is not relied on to teach the claimed polymers.
Applicants argue that Dahringer does not teach or suggest steam stretching of the tow or the fiber withstanding temperature up to 100ºC without sticking. Examiner respectfully disagrees. Dahringer teaches that the fibres can be crimped or textured by steam-assisted fibre crimping at a temperature in the range of 50º to 100ºC. Additionally, the limitations are rendered obvious by the inclusion of the Okaya reference.
Applicants’ remaining arguments have been considered but are moot based on the new ground of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786
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