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 filed November 3, 2025. Claims 1-9 are pending. Claims 6-9 are new. Claims 2 and 3 have been amended.
The rejection of Claim 2 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s amendments to the claims.
Claims 1-5 stand rejected under 35 U.S.C. 103 as being unpatentable over Iwaki (US 2004/0249029) in view of Ami (US 4,197,087) for the reasons set forth below.
The rejection of Claims 1-5 under 35 U.S.C. 103 as being unpatentable over Iwaki (US 2004/0249029) in view of Ami (US 4,197,087) and further in view of Birbaum (US 5,591,850) is withdrawn in view of applicant’s amendments to the claims.
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.
Claims 6-9 are 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 6 recites the dyeing rate change rate is in a range of 100 to 200 but only has basis for 100-120, (applicant’s specification paragraph 0076). Values of less than 100 and 121 or greater were taught as inappropriate and 200 was never disclosed in the range (applicant’s paragraph 0076). Claims 7-9 were also rejected for being dependent upon claim 6 and inheriting the same deficiency.
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 7 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. The dyeing temperature of 100°C claim 7 is outside the testing ranges for the properties recited in claim 6. The color difference properties and dyeing rate change rate seem to be properties of the dye and flame retardant composition and not for the method of dyeing polyester of the claims, which makes the claim confusing. The examiner suggests applicant amend claim 6 to clarify that the color difference properties and dyeing rate change rate are properties of the dye and flame retardant mixture and not dyeing steps in the polyester dyeing method.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Iwaki (US 2004/0249029) in view of Ami (US 4,197,087).
Iwaki teaches dyed and flame retardant finished polyester based fiber products wherein the flame retardant is a phosphoramidate compound of formula (II) wherein Ar1, Ar2 and R1 is aryl and R2 is hydrogen, in particular anilino diphenyl phosphate of particle size 0.526µm (paragraph 0016, 0022-0023, 0054,0056-0058, example 1). Iwaki teaches disperse dyeing in a bath with 3% on weight fabric (owf) disperse dye and 15% owf flame-retardant agent of applicant’s claimed formula (V) and dyeing by exhaustion in a dye bath at 130°C for 60 min (paragraphs 0080-0082). Iwaki teaches that 15% owf results in 2.3% owf attached flame retardant (Table 3, example A). Iwaki further teaches that 1-50% solids of flame retardant may be used in the bath and that 0.05-30% owf of flame retardant is attached to the fiber (paragraph 0050). Since 15% owf anilino diphenyl phosphate in the treatment bath attaches 2.3% owf, lower values including 0.5 to 10% owf in the treatment bath can be used to arrive at values below 2.3% and down to 0.05% owf.
Iwaki does not specify the claimed disperse yellow dyes of applicant’s formulas (A) (1)-(4) or the color difference properties of dyeing rate change rate of claims 6-9.
Ami teaches that polyester fibers can effectively be colored with disperse yellow dyes such as disperse yellow 42 (applicant’s claimed formula (II) as defined in applicant’s specification paragraph 0039) with dye particle sizes of less than 1 µm used in dye baths at 2.5% owf at temperatures of 130°C for 60 minutes (Table 2, sample D, example 3).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the dyed and flame retardant finished polyester based fibers by using Disperse Yellow 42 at the claimed particle sizes as Ami teaches these dyes are effective at coloring polyester fibers under the same exhaust dyeing conditions as Iwaki for the benefit of producing polyester dyed with brilliant colors and high color fastness. Substituting the claimed Disperse Yellow 42 for the Disperse dyes in the examples of Iwaki is obvious as Iwaki invites the inclusion of dispersion dyes to the dye bath including the flame retardant. Selecting the desired coloration would be a design choice and using a known dispersion dye effective for coloring the polyester to produce brilliant colors and high color fastness would be desirable.
Regarding applicant’s claimed limitation of the phosphoramidate at a concentration in a range of 0.5 to 10% owf, this value can be arrived at through routine experimentation from the teachings of Iwaki. Iwaki teaches in Table 3, example A that 15% owf anilino diphenyl phosphate in the treatment bath results in 2.3% owf of the flame retardant attached. Iwaki further teaches that 1-50% solids of flame retardant may be used in the bath and that effective amounts of flame retardant attached to the polyester fiber include 0.05-30% owf. As a result, Iwaki clearly teaches that lower values the 15% owf flame retardant in the treatment bath, including 0.5 to 10% owf in the treatment bath, can be used to arrive at values below 2.3% owf attachment and down to 0.05% owf. Reducing the amount owf of flame retardant in the treatment bath would also reduce the amount attached owf to the fiber.
Regarding the color difference properties and dyeing rate change rate of claims 6-9, these are properties of the dyed fabric and since Iwaki and Ami in combination render obvious combining similar dyes in similar concentrations and applying the dyes by exhaustion at 130°C to similar polyester-based fibers, it is expected that the color difference properties and dyeing rate change rate would be the same as this would be a property determined by the interaction of the phosphoramidate and yellow dyes and the polyester fabrics. The same compounds applied to the same fabrics under the same conditions would produce a dyed product with the same color difference properties and dyeing rate change rate properties. These properties could further be adjusted through routine experimentation to arrive at a polyester dyed to a desired shade and degree of flam retardance.
Response to Arguments
Applicant's arguments filed regarding Iwaki in view of Ami have been fully considered but they are not persuasive. The examiner argues selecting from the 38 phosphoric compounds of Iwaki and the 24 dyes of Ami is obvious as both references teach treating polyester fibers and Iwaki invites the inclusion of dyes into the treatment bath comprising flame retardants for the benefit of imparting both coloration and flame retarding properties to the polyester. 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). It would be obvious to combine the claimed yellow disperse dye of Ami into the methods of Iwaki absent a showing of unexpected results. Applicant’s data in the specification Tables 1-9 show selection of the claimed dyes and the claimed phosphoramidate provide the claimed same color difference properties and dyeing rate change rate properties of new claim 6, but the data are not commensurate in scope with the claims. The data provided test the compounds at specific concentration ranges and particle sizes and only on polyester fabric, whereas the independent claims are directed to any concentration and any particle size and no specific type of fabric is indicated in the color difference and dyeing rate change rate clauses. The data of the tables cannot be extended to all particle sizes and concentrations. Further in claim 6, the upper limit for the dyeing rate change rate is 200, which the examiner believes is a typographical error by applicant as applicant’s specification indicated values above 120 are inappropriate. Comparative examples 12,15 and 21 also meet the values claimed.
Further the color difference properties and dyeing rate change rate seem to be properties of the dye and flame retardant composition and not for the method of dyeing polyester by immersing and heating a polyester-based fiber product in a processing bath containing the claimed yellow disperse dye and the phosphoramidate. of the claims, which makes the claim confusing. The dyeing temperature of 100°C claim 7 is outside the testing ranges for the properties recited in claim 6. The data for unexpected results should test and be commensurate in scope with the method of the claims. Accordingly the data are not sufficient to demonstrate unexpected results as they are not commensurate in scope with the instant claims and directly comparing to the prior art of record.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761