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 .
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, 81, 92-94, 97, 99, 115 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.
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.
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.
Applicant's arguments filed 12/18/25 have been fully considered but they are not persuasive.
Applicant argues that there would have been no reason or motivation to fiber dye the fibers of Zhu. However, Lawson teaches that solution dyed fibers, in particular flame resistant solution dyed fibers, retain their color far better than piece-dyed or yarn-dyed fibers after significant exposure to heat, flame and/or UV-light See paragraph 0006. Lawson teaches suitable fibers for solution dyeing include aramid and modacrylic fibers See paragraph 0027. Therefore, it would have been obvious to have solution dyed the fibers of Zhu in order to provide a fabric having improved color retention when exposed to heat, flame or UV light. Therefore, there would have been a reason to fiber dye the fibers of Zhu.
Applicant argues that it would not have been a simple change and is not always possible. However, Lawson teaches a reason to fiber dye the fibers of Zhu and therefore, there would be both a reason to fiber dye the fibers and a reasonable expectation of success in fiber dyeing the fibers since Lawson teaches fiber dyeing the same types of fibers and teaches a benefit which results from fiber dyeing the same fibers. To say that something would have been obvious to one of ordinary skill in the art is not to say something is simple or not simple, but rather that one of ordinary skill would have had a reason to make the change and a reasonable expectation of success in making the change.
Applicant argues that Lawson does not teach the claimed blend of fibers. However, Zhu already teaches the claimed blend in the amounts claimed. Lawson clearly teaches a benefit to fiber dyeing flame regardant fibers including those claimed and therefore, the combination of the two references teaches the claimed invention.
Applicant argues that Lawson only teaches fiber dyeing a blend of p-aramid fibers and polybenzimidazole fibers. However, Lawson teaches suitable fibers for solution dyeing include aramid and modacrylic fibers See paragraph 0027. Lawson is not limited to teaching fiber dyeing, (solution dyeing), the claimed fibers.
Applicant argues that changing the way the fibers are dyed can result in significant changes such as in arc rating and that therefore one of ordinary skill in the art would not have known if the change in how the fibers were dyed would allow the fibers to maintain the arc rating of the invention of Zhu. However, absolute certainty is not required in making a combination. Lawson specifically relates to flame resistant fibers and teaches a benefit from solution/fiber dyeing. Therefore, there would have been at least a reasonable expectation of success in making the combination while still maintaining suitable flame resistance, since Lawson specifically relates to flame resistant fibers.
With regard to the proportion of fiber dyed fibers, the claims recite 75% or more, and therefore, since Lawson teaches a benefit from fiber dyeing the fibers, the person of ordinary skill would have preferentially dyed all the fibers in order to derive a benefit to the entire fabric.
Applicant argues that Zhu teaches including nylon fibers. However, in Zhu ‘718 nylon is not required, but is added if additional abrasion resistance is needed. Note that the independent claims do not include nylon in Zhu ‘718. Further, Zhu does not disclose incorporating cellulosic fibers into the fiber blend making up the yarn.
Applicant argues that Lawson does not teach solution dying modacrylic or meta-aramid fibers or solution dyeing all inherently flame retardant fibers.
However, Lawson teaches that solution dyed fibers, in particular flame resistant solution dyed fibers, retain their color far better than piece-dyed or yarn-dyed fibers after significant exposure to heat, flame and/or UV-light See paragraph 0006. Lawson teaches suitable fibers for solution dyeing include aramid and modacrylic fibers See paragraph 0027. Therefore, it would have been obvious to have solution dyed the fibers of Zhu in order to provide a fabric having improved color retention when exposed to heat, flame or UV light.
With regard to Zhu, Applicant argues that Zhu does not teach excluding nylon and cellulosic fibers. However, in Zhu ‘718 nylon is not required, but is added if additional abrasion resistance is needed. Note that the independent claims do not include nylon in Zhu ‘718. Further, Zhu does not disclose incorporating cellulosic fibers into the fiber blend making up the yarn. See paragraph 0024 of Zhu that states “Additionally an abrasion resistant fiber may be added to the yarn to improve durability via improved abrasion resistance. By abrasion resistant it is meant the ability of a fiber or fabric to withstand surface wear and rubbing. Preferably the abrasion resistant fiber is a nylon”. Thus, it is clear that adding an abrasion resistant fibers was an option in Zhu, not a requirement, and that while it was preferred to add nylon if an abrasion resistant fiber was going to be included, it was not required that the abrasion resistant fiber be nylon. Thus, Zhu clearly teaches embodiments which do not include nylon.
The Declaration under 37 CFR 1.132 filed 12/18/25 is insufficient to overcome the rejection of claims based upon Zhu in view of Lawson as set forth in the last Office action because:
The Declaration states that the change of dyeing method is not simple and can affect the properties of the resulting fabric.
However, the rejection does not state that the change is simple. Obviousness is not a test of whether a modification is simple or not simple, but rather whether it would have been obvious. In the instant case, since the Lawson teaches a benefit which results when flame resistant fibers are fiber dyed, there would have been a reason for one of ordinary skill to do so. Additionally, with regard to the flame resistance of the fabric after fiber/solution dyeing, since Lawson is also specifically concerned with flame resistant fibers, there would have been at least a reasonable expectation that changing the way the fibers of Zhu are dyed would still maintain the flame resistant properties.
The Declaration states that it is known that changing the dyeing method can significantly change the resulting fabric. Applicant argues that one of ordinary skill would not have been able to predict that changing from jet dyeing to fiber dyeing would result in a fabric which meets the requirements of ASTM F1506. However, the test for obviousness is not absolute certainty but a reasonable expectation of success. In the instant case, since Lawson is also directed to flame resistant fibers and fabrics, there would be a reasonable expectation that changing the dye method would still result in a suitable flame resistant fabric.
The Declaration states that Lawson does not teach the identically claimed fiber blend. However, Lawson is not relied on for this teaching. Zhu teaches the claimed fiber blend. Lawson teaches a benefit in fiber dyeing relative to solution dyeing of flame resistant fibers, wherein the flame resistant fibers are not limited to para aramid fibers and polybenzimidazole fibers, but include aramid and modacrylic fibers See paragraph 0027.
The Declaration states that it was unexpected that a fabric as claimed having a basis weight of 2-7.5 osy would have the ASTM rating as claimed. However, Zhu teaches basis weights of about 8 which would reasonably encompass values of 7.5. 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.
The Declaration and Applicant’s arguments have been carefully considered. Based on the totality of the record, the rejection is maintained for the reasons set forth above.
THIS ACTION IS MADE FINAL. 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 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELIZABETH M IMANI/ Primary Examiner, Art Unit 1789