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 .
Status of Application
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/27/2026 has been entered.
Response to Arguments
With respect to the rejection of Claims 12-21 under 35 U.S.C. 112(b), as being indefinite as understood the traversal relies on amendments. The portion of the specification that directs to examples of synthetic fibers has been amended to recite “The synthetic fiber is not restricted in particular, and specific examples thereof include … (5) cellulose-based synthetic fibers, and (6) lignin-based synthetic fibers.”. This cures the indefiniteness issue as now all examples of synthetic fibers are understood to be created even if some have natural base materials. The rejection is WITHDRAWN.
With respect to the rejection of Claims 12-17 and 19-21 under 35 U.S.C. 103 as being unpatentable over Iwashita et al., as understood the traversal relies on amendments. Applicant has amended Claim 12 to require “wherein the (poly)oxyalkylene derivative is prepared by adding an alkylene oxide to an alcohol under presence of a catalyst having a boron atom in its molecule, the alcohol being a monohydric aliphatic alcohol having an alkyl chain with 12, 13, or 14 carbon atoms in its molecule and having a hydroxy group at a β-position of the alkyl chain”. This is understood to be a product-by-process limitation, that is to say that the limitation affects only the final product and does not actually require the process steps to be performed. MPEP 2113. In other words performing the step of “adding an alkylene oxide to an alcohol under presence of a catalyst having a boron atom in its molecule” is not required, merely/rather that the final product is the same as what would have been created when an alcohol and alkene oxide react with a boron catalyst. Regarding the alcohol “having an alkyl chain with 12, 13, or 14 carbon atoms in its molecule and having a hydroxy group at a β-position of the alkyl chain”, the Applicant acknowledges that this is not new in the sense that Iwashita et al. broadly discloses alcohols (“Iwashita discloses only very broad alcohol ranges (e.g., 4-24 carbons, more preferably 8-18) and generically states "primary or secondary alcohols" are preferred [Iwashita, para. [0046]]” [Remarks, Page 8, Paragraph 3]) and argues that the claims are specific and narrow enough to not be obvious over the broad disclosure of Iwashita et al. (“Iwashita is silent regarding positional specificity of secondary alcohols (e.g., β- vs. γ- or δ- positions) and provides no embodiment of 2-dodecanol, 2-tridecanol, or 2-tetradecanol. Constraining both chain length to three discrete values (C12-C14) and the secondary position to the β-carbon is a selection from two independent genera that Iwashita presents without any pointer, preference, or rationale to converge on this particular subgenus.” [Remarks, Page 8, Paragraph 3]). Applicant further argues “KSR requires more than the mere capability to pick items from different lists; there must be a reasoned motivation to combine them and an expectation of success toward the same objective. Iwashita supplies neither.” [Remarks, Page 9, Paragraph 2]. This is persuasive. The rejections have been WITHDRAWN.
Applicant further argues “amended claim 12 requires that "the content of boron atoms detected by ICP emission spectrometry from the nonvolatile content of the treatment agent is not less than 0.1 ppm and not more than 40 ppm." Iwashita discusses optional residual catalyst amounts generically (e.g., "preferably 300 ppm or less ... most preferably 20 ppm or less") but is explicitly silent on what analytical method is used and does not specify measurement on the nonvolatile fraction. Selecting ICP emission spectrometry as the defined method and applying it to the nonvolatile content to establish and control a 0.1-40 ppm window is itself a distinct constraint. The Examiner's position that method choice is immaterial is unsupported, particularly because ICP of the nonvolatile fraction can yield different quantitative outcomes than other methods applied to the bulk mixture-thereby affecting whether a composition falls within the claimed ppm window. Iwashita's generic ppm statements, absent any method or fraction definition, do not disclose or suggest the claimed measurement condition coupled with the specific ppm range.” [Remarks, Page 8, Paragraph 4- Page 9, Paragraph 1]. This is unpersuasive. The Examiner’s position is that 20 ppm or less is the preferred embodiment of Iwashita et al., for the range of 0.1-40 ppm as measured by ICP emission spectrometry to be considered novel there would have to exist a good faith showing that ICP emission spectroscopy was such an inaccurate tool that if a hypothetical composition contained exactly 20 ppm boron that it would be impossible for ICP emission spectroscopy to have measured the boron amount within the range of 0.1-40 ppm. Currently it is understood that if a composition contained exactly 20 ppm boron then ICP emission spectroscopy would measure an amount of boron that is about 20 ppm, such as 18-22 ppm or 19-21 ppm or 19.9-20.1 ppm, etc. In other words the boron amount in the preferred composition of Iwashita et al. as measured by ICP emission spectroscopy would have been 20 ± x ppm, wherein x is the experimental error. Said experimental error is assumed to be low (10-0.1%) otherwise one with ordinary skill in the art would immediately recognize ICP emission spectroscopy as a poor tool for measuring the boron amount. Furthermore Claim 12 is directed to a composition of matter, not a method of analyzing a composition for boron content. Measuring a known composition with a new tool cannot make that old composition patentable to the measurer.
Applicant further argues “In Iwashita, the catalyst for forming its polyoxyalkylene ether is expressly "not particularly limited," and a list of unrelated alternatives is provided (including boron trifluoride), but with no preference or teaching toward boron-containing catalysts over other options. A disclosure of a non-preferred item in a laundry list does not, by itself, motivate its selection for any particular purpose. Absent a teaching of why a boron-containing catalyst should be chosen especially in conjunction with the claim's other constraints-picking "boron" from an undirected list is an exercise in hindsight assembly, not a reasoned modification supported by the reference.” [Remarks, Page 8, Paragraph 2]. This is unpersuasive. Iwashita et al. does not merely disclose the existence of boron trifluoride in a laundry list without directing the reader towards any particular purpose. Iwashita et al. discloses that boron trifluoride (as well as other chemicals) is an effective catalyst for the reaction of forming a polyoxyalkylene from an alcohol and an alkylene oxide. This makes it prima facie obvious to use boron trifluoride as a catalyst for the reaction of forming a polyoxyalkylene from an alcohol and an alkylene oxide. This represents using a known material for its intended purpose to produce a predictable result. The fact that other catalysts are also known to be effective for the same reaction is immaterial. To whatever degree boron trifluoride is the best catalyst within the list disclosed by Iwashita et al. (no such concession is given) finding the optimal catalyst by experimentation on a known and finite list is routine optimization as does not represent a patentability distinct discovery. MPEP 2143 I.(E) & 2144.07.
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 12, 14, and 18-21 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 claims contain subject matter that 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. Claims 12, 14, and 18-21 are directed towards a synthetic fiber treatment agent. As of the amendments presented on 12/18/2025 the scope of “synthetic fiber” has been changed from including cellulose and lignin fibers to cellulose and lignin based synthetic fibers. This is new matter not supported by the specification as filled.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 12, 14, and 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 105189856 Iwashita et al. in view of JP 2004183124 A Toshio et al. Claim 12 requires “A synthetic fiber treatment agent comprising a smoothing agent and a (poly)oxyalkylene derivative”. Iwashita et al. discloses “the treating agent of the present invention preferably contains a polyoxyalkylene alkyl ether represented by the general formula (1) and a polyoxyalkylene alkyl ether ester represented by the general formula (2).” [0098]. The polyoxyalkylene alkyl ether is identified as a polyoxyalkylene derivative and the polyoxyalkylene alkyl ether ester is identified as the smoothing agent. Both the instant application specification (“Examples of the smoothing agent contained in the treatment agent of the present embodiment include a silicone and an ester” [0043]) and Iwashita et al. (“Generally, synthetic fiber treatment agents are composed mainly of smoothing agents such as polyoxyalkylene alkyl ether, polyether compounds, and ester compounds” [0005]) recognize esters as smoothing agents.
Claim 12 further requires “wherein the (poly)oxyalkylene derivative is prepared by adding an alkylene oxide to an alcohol under presence of a catalyst having a boron atom in its molecule”. Iwashita et al. discloses “The method for producing the polyoxyalkylene alkyl ether represented by the general formula (1) can be carried out in the presence of a catalyst. The catalyst is not particularly limited, and examples thereof include: … boron trifluoride, and boron trifluoride diethyl ether” [0049]. The method of Iwashita et al. does not require a boron containing catalyst however its selection would have been obvious because it is listed as an effective catalyst for performing the required reaction. MPEP 2143 I.(E) & 2144.07.
Claim 12 further requires “the alcohol being a monohydric aliphatic alcohol having an alkyl chain with 12, 13, or 14 carbon atoms in its molecule and having a hydroxy group at a β-position of the alkyl chain”. Iwashita et al. discloses “Examples of the monohydric alcohol include aliphatic monohydric alcohols. … The monohydric alcohol is preferably a primary alcohol or a secondary alcohol … The monohydric alcohol preferably has 4 to 24 carbon atoms, more preferably 8 to 22 carbon atoms, and even more preferably 8 to 18 carbon atoms” [0046]. In other words Iwashita discloses a range of alcohols that can be effectively used which contain the claimed range of alcohols, however Iwashita does not specifically limit the position of the hydroxyl group within the alcohol to the β-position.
Toshio et al. is similarly directed to a synthetic fiber treatment agent comprising polyoxyalkylene derivatives. Toshio et al. discloses “In the hydroxy compound represented by formula 1 used in the synthetic fiber treating agent for papermaking according to the present invention (hereinafter simply referred to as the treating agent of the present invention), R in formula 1 is a residue obtained by removing a hydroxyl group from a monovalent secondary alcohol having 8 to 22 carbon atoms. Examples of R include residues obtained by removing a hydroxyl group from a monovalent secondary alcohol having 8 to 22 carbon atoms, such as 4-octanol, 4-decanol, 2-dodecanol, 4-dodecanol, 5-tridecanol, 7-tridecanol, 2-tetradecanol, 3-tetradecanol, 3-hexadecanol, 9-octadecanol, and 6-ethyl-6-hexadecanol. Of these, residues obtained by removing a hydroxyl group from a monovalent secondary alcohol having 10 to 16 carbon atoms, such as 2-dodecanol, 4-dodecanol, 5-tridecanol, 7-tridecanol, 2-tetradecanol, 3-tetradecanol, and 3-hexadecanol, are preferred.” [3.]. Of the preferred alcohols of Toshio et al. 2-dodecanol and 2-tetradecanol are identified as a monohydric aliphatic alcohol having an alkyl chain with 12 or 14 (respectively) carbon atoms in its molecule and having a hydroxy group at a β-position of the alkyl chain. Furthermore an embodiment using 2-dodecanol is used by Toshio et al. as example 1 “The following 1) to 24) are examples of embodiments of the treatment agent of the present invention. 1) A treatment agent comprising 79% by weight of the following hydroxy compound (A-1) …
Hydroxy compound (A-1): A hydroxy compound represented by formula 1 in which R in formula 1 is a residue obtained by removing hydroxyl groups from 2-dodecanol” [8.-9.].
It would have been obvious to one of ordinary skill in the art to have combined the method of forming a synthetic fiber treatment agent of Iwashita et al. with the alcohol employed by Toshio et al. in the process of making a synthetic fiber treatment agent for at least the reason that both inventors are trying to solve a similar problem within the same field.
The motivation to have included the preferred alcohols from Toshio et al. in place of the general alcohols disclosed as effective by Iwashita et al. is given by Toshio et al. Specifically it is noted that treatment liquid “P-1” which contains the hydroxyl compound “A-1” which is made from 2-dodecanol ([15.]) was tested in Table 2 and got the highest possible rating, indicating it had no air bubble adhesion observed and good formation, no fiber bundles such as adductor muscles observed [19.]. Therefore one of ordinary skill in the art would have expected that by using 2-dodecanol as suggested by Toshio et al. that the detrimental bubble formation and adductor muscles would be avoided during fiber treatment.
Claim 12 further requires “the content of boron atoms detected by ICP emission spectrometry from the nonvolatile content of the treatment agent is not less than 0.1 ppm and not more than 40 ppm.”. Regarding the amount of catalyst remaining in the final product Iwashita et al. discloses “The amount of the catalyst remaining after removal is not particularly limited, but is preferably 300 ppm or less, more preferably 200 ppm or less, further preferably 100 ppm or less, particularly preferably 50 ppm or less, and most preferably 20 ppm or less.” [0074]. It is noted that Iwashita et al. does not disclose what particular method was used to assess the content of boron, however if the composition of Iwashita et al. contained the preferred 20 ppm or less of boron remaining then using ICP emission spectroscopy to measure the content of boron would have returned similar results, namely a boron content of about 20 ppm, such as 18-22 ppm or 19.9-20.1 ppm for example. There is no reason to expect that a composition containing 20 ppm of boron atoms would have been measured outside of the range of 0.1-40 ppm if ICP emission spectroscopy had been used as the measurement tool.
Claim 14 requires “the (poly)oxyalkylene derivative includes a compound in which an alkylene oxide with 2 to 4 carbon atoms is added at a ratio of 1 to 30 moles in total to 1 mole of an alcohol.”. Iwashita gives a generic formula (1) for the polyoxyalkylene ether of “RO-(EO)a-[(PO)b/(EO)c]-(EO)d-H” [0036]. It is understood that RO corresponds to the ether formed from the alcohol (“an alcohol represented by the following general formula (A) … ROH (A)” [0044-0045]) and the EO and PO correspond to ethylene oxide and propylene oxide (“PO represents oxypropylene, and EO represents oxyethylene.” [0037]). Therefore the ratio of alkylene oxide to alcohol is given by (a+b+c+d):1. Regarding a, b, c, and d Iwashita discloses “The average number of added moles a in the general formula (1) is not particularly limited, but is usually 1 to 10 mol, preferably 2 to 6 mol, and more preferably 3 to 4 mol.” [0038], “The average added molar numbers b and c in the general formula (1) are not particularly limited, but b is usually 1 to 10 mol, preferably 2 to 8 mol, more preferably 3 to 4 mol, and c is usually 1 to 10 mol, preferably 2 to 8 mol, more preferably 3 to 6 mol.” [0039], and “The average added mole number d in the general formula (1) is not particularly limited, but is usually 1 to 40 mol, preferably 2 to 30 mol, more preferably 3 to 20 mol, and most preferably 4 to 10 mol.” [0040]. Therefore using the broadest range disclosed by Iwashita et al. yields a ratio of 4-70:1 and using the most preferred range the ratio is 13-24:1, both of which read on the claimed range of 1-30:1.
Claim 19 requires “if the sum of the contents of the (poly)oxyalkylene derivative and the smoothing agent is taken as 100 parts by mass, the content of the (poly)oxyalkylene derivative is 10 to 70 parts by mass and the content of the smoothing agent is 90 to 30 parts by mass.” Iwashita et al. discloses “the weight ratio of polyoxyalkylene alkyl ether [the (poly)oxyalkylene derivative] to polyoxyalkylene alkyl ether ester [the smoothing agent] (polyoxyalkylene alkyl ether:polyoxyalkylene alkyl ether ester) is preferably 20:80 to 99:1, more preferably 40:60 to 95:5, and further preferably 55:45 to 90:10.” [0099]. In other words the content of the (poly)oxyalkylene derivative is 20 to 99 parts by mass and the content of the smoothing agent is 80 to 1 parts by mass, which has significant overlap with the range claimed.
Claim 20 requires “the synthetic fiber is a carbon fiber precursor.”. Iwashita is silent towards carbon fiber, however Claim 20 modifies the preamble of Claim 12 which is considered intended use. MPEP 2111.02(II) states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. In this case the body fully sets forth all of the limitations of the claimed invention (a mixture comprising a polyoxyalkylene derivative and smoothing agent) while the preamble merely suggests an intended use (treating synthetic fibers/carbon fiber precursors). There are no limitations to the mixture suggested by the use of treating synthetic fibers or treating synthetic fibers that are later converted into carbon fibers and therefore the scope of Claim 12 and 20 is the same. Additionally and/or alternatively, titling the synthetic fiber as a carbon fiber precursor is, at best, a mere difference in nomenclature, which, without more, cannot connote non-obviousness. See Ex parte Stanley, 121 USPQ 621, 625 (BPAI 1958) (holding that mere nomenclature differences do not patentably distinguish a claim from the prior art), and Sellers v. Cofrode 35 F. 131 (C.C.E.D. Pa. 1888) (per curiam) (stating that a difference in naming “does not tend to distinguish”). See also In re Skoner, 517 F.2d 947, 950 (CCPA 1975) (reaching conclusion so as to prevent “the allowance of claims drawn to unpatentable subject matter merely through the employment of descriptive language not chosen by the prior art”).
Claim 21 requires “A synthetic fiber to which the synthetic fiber treatment agent according to claim 12 is adhered.”. Iwashita et al. discloses “The method for applying the synthetic fiber treating agent of the present invention to the (raw material) synthetic fiber filaments is not particularly limited, and a known method can be adopted. Typically, there are methods of applying oil to (raw) synthetic fiber filaments during the spinning process or the stretching process, or applying oil to the (raw) synthetic fiber filaments using an oil roller, an oil guide, etc.” [0121].
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 105189856 Iwashita et al., in view of JP 2004183124 A Toshio et al., in further view of WO 2017169632 A1 Hashimoto et al. Regarding Claim 18, Iwashita et al. in view of Toshio et al. disclose all of the limitations of Claim 12. Claim 18 further requires “the smoothing agent contains an amino-modified silicone.”. Iwashita et al. and Toshio et al. are silent towards amino-modified silicone.
Hashimoto et al. is similarly directed to agents for the treatment of fibers (see Abstract). Hashimoto et al. discloses “That is, the treatment agent for acrylic fibers of the present invention contains an amino-modified silicone and a polyoxyalkylene alkyl ether” [6]. It would have been obvious for one of ordinary skill in the art to have combined the treatment agent of Iwashita et al. with the amino-modified silicone of Hashimoto et al. because they both similarly related to compositions for treating fibers. The motivation to include the amino-modified silicone of Hashimoto et al. is to prevent the fusion of fibers “By using amino-modified silicone and polyoxyalkylene alkyl ether in combination and setting the ratios P(10), P(30), and P(120) within the prescribed ranges, it is possible to suppress fusion of fibers” [30].
Conclusion
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/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/DANIEL BERNS/Primary Examiner, Art Unit 1736