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 .
Election/Restrictions
Applicant's election with traverse of Group I, 1-17 drawn to the respiratory mask in the reply filed on 10/06/25 is acknowledged. The traversal is on the ground(s) that the nonelected process claims of Group II recite the limitations of the respiratory mask of Group I and that the restriction requirement should be reconsidered.
It is the position of the Office that the basis for a 371 restriction is that the special technical feature exists in each independent claim and does not provide a contribution over the prior art. USPUB 2015/203995A1 issued to Adams et al. was provided to show that the special technical feature was not a contribution and as such the independent claims were restricted on that basis. The requirement is still deemed proper and is therefore made FINAL.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-11 of U.S. Patent No. 11,738221. Although the claims at issue are not identical, they are not patentably distinct from each other because the embodiment of the instant claims would be rendered obvious by the embodiments of claims 1 and 7-11 of U.S. Patent No. 11,738,221.
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.
Claim(s) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPUB 2015/203995A1 issued to Adams et al. in view of EP 2344562B1 issued to Brown et al.
Regarding Claim 1, where Applicant seeks a respiratory mask (M) including a mask fabric body (1), having a first face and a second face, and one or more holding straps (3) for holding the mask body to the face of a user, the mask body being made of a woven fabric having weft yarns (12) and warp yarns (11), the weft and warp yarns (12, 11) having a count comprised between 10 and 1100 den, the warp density being between 14 - 130 warps/cm, the weft density being between 12 - 70 wefts/cm, wherein at least part of the body is provided with a liquid-repellent crosslinked polymer; Applicant is directed to the teachings of Adams et al., who disclose a respiratory mask including a mask fabric body [¶¶ 0113-0114; figs. 1A, 1B], having a first face and a second face, and one or more holding straps for holding the mask body to the face of a user; holding straps for facial masks are well known to the skilled person, and are therefore regarded as implicit), the mask body being made of a woven fabric having weft yarns and warp yarns [abstract; claim 1; ¶¶ 0010-0013, 0050-0053, 0067; figs. 1A, 1B], the weft and warp yarns having a count comprised between 10 and 1100 den [claims 5, 7, 10; ¶¶ 0026, 0027, 0046, 0050, 0051, 0059, 0060, 0075], the warp density being between 14-130 warps/cm, the weft density being between 12-70 wefts/cm [claim 18; ¶ 0080-0082], wherein at least part of the body is provided with a liquid-repellent polymer [¶ 0084].
Adams et al suggests that the fluoropolymer may contain oils, additional components and other agents but does not specifically state that the liquid repellent polymer is crosslinked.
This is remedied by the teachings of Brown et al.
Brown et al are from the same art of endeavor in that the y modified fluoropolymers to provide oil repellency, water repellency, and soil resistance to substrates such as fabrics.
Brown et al’s composition comprises an aqueous solution or dispersion of at least one polyurethane, said composition further comprises one or more agents providing at least one surface effect, said surface effect is selected from the group consisting of non-ironing, easy-ironing, shrinkage control, non-wrinkle, durable pressing, moisture control, softness, strengthening, anti-slip, anti-static, anti-hooking, anti-pilling, stain repellency, stain release, soil repellency, soil release, water repellency, oil repellency, anti-smudge control, anti-microbial and sun protection, and a surfactant, a pH adjusting agent, a crosslinking agent, a wetting agent (equivalent to the disclosure that the liquid-repellent, crosslinked polymer which includes at least one or more liquid-repellent polymers, one or more crosslinking agents, and optionally one or more wetting agents), a blocked isocyanate, a wax extender, or a hydrocarbon extender. The substrate is a fabric and the treated substrate can be used in a variety of applications and products, such as protective clothing.
Therefore, a person having ordinary skill in the art before the effective filing date of the invention would have found it obvious to have modified the composition of Adams et al with the crosslinking agents, the wetting agents or the antimicrobial agents to arrive at the claimed invention without much leap of inventiness. One would have been motivated to do so to exhault any or all of the aforesaid properties in the mask
Regarding Claim 2, where Applicant seeks that the mask (M) according to claim 1, wherein said liquid- repellent crosslinked polymer is provided at least on said first face and through at least part of the thickness of said body (1): Adam et al. at ¶0083 provide the latitude and teaching that once the fabric is constructed, the fabric may be treated with various coatings and finishes as may be desired. A person having ordinary skill in the art before the effective filing date of the invention would have found it obvious to have applied the liquid repellant polymer to at least the first face and through at least a part of the thickness. One would have been motivated to do so to only have specific parts of the mask be liquid repellant.
Regarding Claim 3, where Applicant seeks that the mask (M) according to claim 1, wherein the warp and/or weft yarns comprise yarns comprising staple fibers, having a count comprised between NE 5 and NE 80; Applicant is directed to ¶ 0010, where the instant reference teaches that the yarn may have a denier of 10 to about 1000 which overlaps with Applicant’s sought range of NE 5 and NE 80. To convert 10 denier to the English cotton count (Ne), the following formula was used: Ne=5315÷Denier so 𝑁𝑒=5315÷10 =531.5 Ne. The yarns can be staple as shown at ¶¶ 0008, 0015, 0046-0048 and 0075.
Regarding Claim 4, where Applicant seeks that the mask (M) according to claim 3, wherein said yarns comprising staple fibers comprise a core, comprising elastomeric fibers, and a sheath of staple fibers, the count of said elastomeric core being between 5 and 900 den; Applicant is directed to Adams et al. at ¶¶ 0065-0066 of the instant reference which teaches the use of elastomeric core/sheath fibers
Regarding Claim 5, where Applicant seeks that the mask (M) according to claim 1, wherein the warp and/or weft yarns comprise yarns consisting of man-made fibers, having a count comprised between 10 and 1000 den; Applicant is directed to Adams et al. at ¶¶ 0008, 0010, 0015, 0046-0048, 0075 and claims 3-5.
Regarding Claim 6, where Applicant seeks that the mask (M) according to claim 5, wherein said man- made fibers comprise one or more elastomeric filament, the total count of elastomeric filaments being between 5 and 900 den; Applicant is directed to Adams et al. at ¶¶ 0008, 0010, 0015, 0046-0048, 0075 and claims 3-5 for the denier and 0010, where the instant reference uses polyetherimide (PEI) filament. PEI is a man-made, synthetic material.
Regarding Claim 7, where Applicant seeks that the mask (M) according to claim 1 wherein said body is made from a woven fabric having a weight comprised between 60 and 500 g/m2, said weight being referred to said fabric provided with said liquid-repellent crosslinked polymer; Applicant is directed to ¶ 0090 where the instant reference teaches the basis weight of 1-10 osy of the untreated fabric. When converted this equals 33.9 to 339.1 g/m2. The teaching at ¶ 0090 does not expressively suggest that the liquid repellent crosslinked polymer is included in this weight measure. However, a skilled artisan would have found it obvious, that even with the fluorosilicone oil or a similar repellent agent plus the fabric would still fall within the range as claimed. It should be noted that coating or fabric weights are result effective variables. As the coating weight increases, the material becomes less breathable, so a very small amount of coating would have been applied. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the coating weight plus the weight of the fabric since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
Regarding Claim 8, where Applicant seeks that the mask (M) according to claim 1 wherein: the count of the warp and of the weft yarns is comprised between 20 and 600 den, the warp density is comprised between 50 and 100 warps/cm, and /or the weft density is comprised between 20 and 40 weft/cm; Applicant is directed to the rationale for the denier as set forth above for claims 5 and 6 and for the weave density Applicant is directed to ¶ 0080, where Adams et al show several examples that overlap with both the linear density and both directions of the warp and weft. It should be noted that where the difference between the claimed invention and the prior art is some range or other variable within the claims, applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990).
Regarding Claim 9, where Applicant seeks that the mask (M) according to claim1 wherein said body is made from a woven fabric having air permeability according to ASTM D0737 between 30 and 800 mm/s, said air permeability being referred to said fabric provided with said liquid-repellent crosslinked polymer; With regards to requirements of a woven fabric having air permeability according to ASTM D0737 between 30 and 800 mm/s, it is the position of the Office that the claimed resultant properties, would be inherent if not obvious to the composite of Adams modified by Brown et al. It is reasonable to presume so, as support for said presumption is found in the use of like materials. The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties as set forth above, it would obviously have been present once the composite of Adams modified by Brown et al. product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the providing of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, et al. (CCPA) 186 USPQ 80.
Regarding Claim 10, where Applicant seeks that the mask (M) according to claim 1 wherein said body is made from a woven fabric having elongation, after 3 home washes, in warp and/or weft direction comprised between 10 and 60% according to ASTM D3107; regarding the requirements woven fabric having elongation, after 3 home washes, in warp and/or weft direction comprised between 10 and 60% according to ASTM D3107, it is the position of the Office that the claimed resultant properties, would be inherent if not obvious to the composite of Adams modified by Brown et al. It is reasonable to presume so, as support for said presumption is found in the use of like materials. The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties as set forth above, it would obviously have been present once the composite of Adams modified by Brown et al. product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the providing of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, et al. (CCPA) 186 USPQ 80.
Regarding Claim 11, where Applicant seeks that the mask according to claim 1, wherein said liquid-repellent crosslinked polymer comprises at least one or more liquid-repelling polymers, one or more crosslinking agents, and optionally one or more wetting agents: Applicant is directed to rationale set forth above for Claim 1.
Regarding Claim 12, where Applicant seeks that the mask according to claim 11, wherein said liquid- repelling polymer is in an amount between 0.5-10 g/m2 of fabric; do not specifically teach the weight per surface area of the fiber mats; Neither reference specifically teaches the amount of the polymer applied. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of the polymer used the composite, since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed weight is critical and has unexpected results.
Regarding Claim 13, where Applicant seeks that the mask according to claim 1, wherein said liquid- repelling polymer is a fluoropolymer, selected from C6 based fluorocarbons, fluoro- silicone hybrids, C4 based fluoropolymers, and mixtures thereof; both references teach using a fluoropolymer. Adams ¶ 0084 and Brown entire reference.
Regarding Claim 14, where Applicant seeks that the mask according to claim 1, wherein said crosslinking agent is in an amount between 0.1-5 g/m2 of fabric, said crosslinking agent being selected from acrylic polymers and copolymers, resins, polyurethanes, blocked isocyanates, poly-isocyanates, polycarboimides, polycarbodiimides and mixtures thereof; Applicant is directed to Brown and rationale set forth above for claim 1. Brown ¶ 0012.
Regarding Claim 15, where Applicant seeks that the mask according to claim 11, wherein said wetting agent is in an amount between 0.001-0.2 g/m2 of fabric, said wetting agent being selected from ethoxylate, sulphonate and phosphonate nonionic wetting agents; Applicant is directed to Brown ¶ 0080 and the rationale set forth in claim 1 above. Regarding the amount it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of the polymer used the composite, since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed weight is critical and has unexpected results.
Regarding Claim 16, where Applicant seeks that the mask according to claim 11, wherein said crosslinked polymer further comprises an antimicrobial agent, in an amount between 0.002-0.3 g/m2 fabric, said antimicrobial agent being selected from metal ions and metal salts, quaternary ammonium compounds, poly biguanid compounds, triclosan, n-halamine compounds, chitosan, and peroxyacids; Applicant is directed to ¶ 0084 (metal ions such as silver are used). Adams et al do not expressively suggest the amount. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to have employed amount between 0.002-0.3 g/m2 of the silver ions, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
Regarding Claim 17, where Applicant seeks that the mask according to claim1, wherein the weave of the fabric (10) is selected from Sateen, Plain, Twill, Double Face, Panama, Ribs, and Mixed Dobby Weave; Applicant is directed to ¶¶ 0013 and 0052-0054, where the instant reference teaches that the woven fabric may be presented as a ripstop weave, a twill weave, a plain weave, an oxford weave, and a basket weave.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please review documents cited on the PTO-892.
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/Arti Singh-Pandey/
Primary Patent Examiner
Art Unit 1759
asp