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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/7/26 has been entered.
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, 6, 8-12, 17, 18, 20, 22, 31, 92, 93, 97, 99, 115, 117, 119-125 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,946,173 in view of Zhu et al, U.S. Patent Application Publication No. 2005/0204718. Although the claims at issue are not identical, they are not patentably distinct from each other because each claims yarns comprising the same blends of fibers in the same proportions and fabrics made from the yarns. The fabric of US ‘173 can have a basis weight of 2-15 osy. See claim 6.
U.S. ‘173 differs from the claimed invention because it does not disclose the amount of fiber dyed modacrylic fibers by weight of the fabric.
However, Zhu et al discloses yarns comprising 40-70 wt% modacrylic fibers, 5-20 wt% para aramid fiber, 10-40 wt% M aramid fibers, (see paragraph 0007-0009), which can further include 1-5 wt% antistatic fibers, see paragraph 0026.
Therefore, it would have been obvious to have selected amounts of modacrylic fibers from within the range as taught by Zhu in order to provide a yarn having the desired properties such as fire resistance.
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) 1-3, 6, 8-12, 17, 18, 20, 22, 31, 92, 93, 97, 99, 115, 117, 119-125 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al, U.S. Patent Application Publication No. 2005/0204718 in view of Lawson, III et al, U.S. Patent Application Publication No. 2014/0290560 and Ashley et al, U.S. Patent Application Publication No. 2006/0292953.
Zhu et al discloses yarns comprising 40-70 wt% modacrylic fibers, 5-20 wt% para aramid fiber, 10-40 wt% M aramid fibers, (see paragraph 0007-0009), which can further include 1-5 wt% antistatic fibers, see paragraph 0026. The yarns can be formed into woven and knitted fabrics. See paragraph 0030. The fabrics can have a basis weight of 8-12 osy which meets the limitations of new claim 121. See paragraph 0031. Example 2 discloses a fabric having a construction of 27 ends X21 picks per CM, (68 ends X52 picks per inch which meets the limitations of new claim 120. See paragraph 0060. The fabrics can be formed into garments. The fabric does not include cellulosic or nylon fibers.
Zhu differs from the claimed invention because it does not disclose that the fibers are solution, (fiber) dyed.
However, Lawson teaches that it was known to solution dye flame retardant fibers including aramids and modacrylic fibers. See paragraph 0003, 0006.
Therefore, it would have been obvious to have solution dyed the fibers of Zhu in order to provide fibers having a particular appearance or color. Solution dyeing the flame retardant fibers of Zhu which can be present in amounts of up to 70 wt percent modacrylic, 20 wt% p-aramid and 40 wt% m-aramid would arrive at a yarn including 70 wt% or more of solution dyed fibers. With regard to the claimed basis weight, Zhu teaches values about 8 osy which would at least render obvious a value of 7.5 osy. See paragraph 0031. Zhu further teaches at paragraph 0031 that the degree of protection afforded by the material correlates with the amount of material. Therefore, Zhu teaches that the amount of material, (basis weight), is a result effective variable and therefore it would have been obvious to one of ordinary skill in the art to have selected a value of basis weight which provided the desired degree of protection.
With regard to the claims 117 and 122, since Zhu teaches the claimed fiber blend, it is reasonable to expect that the yarn of Zhu would meet the claimed standard. Further, it would have been obvious to have dyed all the fibers so that the yarn had a uniform appearance, or to dye only some fibers in order to provide a yarn having different colors within the same yarn.
Zhu does not disclose the claimed tear strength, tensile strength or arc rating. However, since Zhu teaches the same fibers in the same proportions made into yarns which are made into fabrics having the claimed basis weight and construction, it is reasonable to expect that the claimed properties would necessarily be present or else it would have been obvious to have selected the proportions of each type of fiber within the broader ranges disclosed by Zhu to provide a fabric having the desired properties.
Zhu differs from the claimed invention because it does not disclose the claimed basis weight.
However, Ashley discloses fabrics which are made from yarns which are a blend of aramid and modacrylic fibers. Ashley discloses that the fabrics can have basis weights of from 4-10.5 osy and meet ASTM F1506. See abstract.
Therefore, it would have been obvious to one of ordinary skill in the art to have formed the fabric of Zhu so that it had a lighter weight as taught by Ashley in order to provide a lighter and more comfortable but still protective fabric.
Applicant's arguments and amendments filed 5/7/26 are sufficient to overcome the previous rejection. A new rejection is set forth in view of the amended claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789
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