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 .
Amendments to claim 13 and the cancellation of claim 15, in the response filed October 12, 2025, have been entered.
Claims 1-14 and 16-17 are currently pending in the above identified application.
Claims 1-12 are withdrawn from consideration as being directed towards a non-elected invention.
Claim Rejections - 35 USC § 102 / 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 13-14 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JPS60119258 to Yamaoka, optionally as evidenced by Basic Polymer Engineering Data to Rao.
NOTE: The English machine translation of JP 60119258 is being used for prior art mapping.
Regarding claims 13-14 and 16-17, Yamaoka teaches an uniform web of continuous polyester (thermoplastic resin) filaments formed from a spunbond method (spunbond nonwoven fabric) that contacts the filament with a contact plate (metal member) to generate contact frictional electrification, wherein the contact plate contains bismuth along or 50% by weight or more bismuth (Yamaoka, p. 1-2), reading on a fiber web containing thermoplastic resin filament. Yamaoka teaches the method opening a group of the continuous filament by colliding the group of filament with the contact plate (Id.). Yamaoka teaches the web being uniform (Id., p. 1-2).
Regarding the claimed residual amount of bismuth of 0.1 ppmw to 10.0 ppmw, in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art does not disclose this feature, the claimed properties are deemed to be inherent to the structure in the prior art since Yamaoka teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Yamaoka teaches contacting the thermoplastic polyester filaments on a bismuth containing contact plate to generate frictional electrification. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding the claimed quality index, in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art does not disclose this feature, the claimed properties are deemed to be inherent to the structure in the prior art since Yamaoka teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Yamaoka teaches contacting the thermoplastic polyester filaments on a bismuth containing contact plate to generate frictional electrification to open the filaments and form a uniform web. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date to form the web of Yamaoka, wherein the web is uniform, such as results in a quality index as claimed, motivate by the desire to form a uniform web taught as desirable and result in uniform appearance and properties.
Additionally, the limitation “[a] spunbond nonwoven fabric which is obtained by the method according to claim 1”, wherein claim 1 recites the limitations “the method comprising the steps of: melt-spinning a thermoplastic resin to obtain a continuous filament bundle; allowing the continuous filament bundle to collide with a metal member containing bismuth (Bi) or a bismuth alloy to obtain filaments opened by frictional charging; and converging the opened filaments on a continuous conveyor net to form a fiber web” are interpreted as product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claim 14, Yamaoka does not teach the use of lead (Yamaoka, all). Therefore, the spunbond nonwoven fabric would have a residual amount of lead of 0.1 ppmw or less, absent evidence to the contrary.
Regarding claims 16-17, Yamaoka teaches the filaments being polyethylene terephthalate or polybutylene terephthalate (Yamaoka, p. 2). Polyethylene terephthalate has a melting point of 250-160°C as evidence by Rao (Rao, Table).
Claim Rejections - 35 USC § 103
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaoka, as applied to claims 13-14 and 16-17 above, in view of US Pub. No. 2012/0231689 to Kim.
Regarding claim 14, in the event that the lead content as claimed is not inherent, Kim teaches a lead free process being environmentally friendly in fiber processing (Kim, title, abstract, para 0004). It would have been obvious to one of ordinary skill in the art to form the web of Yamaoka, wherein the lead content in minimized, such as within the claimed range, in order to form and use environmentally friendly processing and resultant product as taught by Kim as being achieved when no lead is used.
Response to Arguments
Applicant's arguments filed October 12, 2025 have been fully considered but they are not persuasive.
Applicant argues, with regards to the application of Yamaoka, that Yamaoka does not disclose a spunbond nonwoven fabric product defined by specific, quantified residual amounts of bismuth and lead as claimed and focuses on opening filaments to achieve uniform web formation. Applicant argues that quality index is a specifically defined, quantitative parameter based on optical density, whereas Yamaoka only evaluates web uniformity by basis weight fluctuation and apparent quality on a five-step visual scale that are technically distinct and not interchangeable. Examiner respectfully disagrees. Yamaoka teaches a uniform web comprising polyester, including polyethylene terephthalate, formed by contacting filaments with a bismuth content plate to generate contact frictional electrification and good fiber opening. Yamaoka teaches a very low area weight fluctuation, specifically 3.5% and a filament charge voltage of 40 versus 8 and 2 for copper and iron, respectively (Yamaoka, Table 1). Comparative Example 2 using copper as well and shows a charge generation of -925 versus as charge generation of -3350 for bismuth (see Table 1 of instant disclosure). This aligns with a similar degree of voltage change in Yamaoka. While the prior art does not explicitly teach the quality index being 250-350, the nonwoven web would necessarily have a quality index. Additionally, as the fibers are contacted with a bismuth contact plate and a charge is imparted, residual bismuth is expected. Based on the similarities of the invention of the prior art, Examiner has shifted the burden to Applicant to provide evidence that the web of the prior art does not have the claimed quality index and bismuth content. Applicant has provided no evidence that the web of the prior art would be outside of the claimed ranges and merely relies upon the absence of an explicit teaching.
Additionally, Yamaoka teaches a uniform filament density and uniform web. If the fiber density is uniform, the optical density would also be expected to be uniform. As evidence that the basis weight, also called areal density, correlates with optical density or light transmittance, Dooley teaches an analysis of the coefficient of variation of local light transmission and local grammage having a linear correlation for scales (Dooley, abstract, Figures 4, 5, 7, and 9). Dooley teaches formation, i.e. , is often assessed both qualitatively and quantitatively by light transmission and teaches distribution of mass is an important property of the sheet since it influences strength (Id., p. 1 Introduction, p. 10 Discussion, Conclusions). Therefore a uniformity of web, such as having low variation of basis weight, would also have low variation in optical density. It is unclear how the optical density could be uniform, thereby having a low quality index, if the basis weight and fiber density is not also uniform. While optical density and fiber density are separate measurements, there are still inter-related. None of the comparative examples in the instant disclosure use bismuth or bismuth alloy. The opening width appears to correspond with the quality index. As the good fiber opening is taught by Yamaoka, bismuth is used for the contact plate, and the web is taught as uniform, the quality index would be expected to also fall within the claimed range. Applicant has provided no evidence to the contrary.
Applicant argues that the parameter is critical in ensuring both structural integrity and superior opening quality of the nonwoven fabric. However, Yamaoka is explicitly directed towards good single filament opening properties and the formation of a uniform web (Yamaoka, p. 1). As shown by Dooley, the distribution of mass is an important property of the sheet since it influences strength (Dooley, p. 1 Introduction, p. 10 Discussion, Conclusions). It appears uniformity is important for the structural integrity, which encompass low variation in basis weight, or mass distribution. As discussed above, Applicant has provided no evidence that the invention of Yamaoka is outside the claimed range and relies upon a mere absence.
Applicant argues that the bismuth-containing metal member of the instant invention demonstrates a significantly extended use period, however, this is related to the apparatus and not the formed nonwoven. This is not an advantageous for the product but the apparatus or process. Yamaoka already establishes the use of bismuth and therefore the benefit of extended life would necessarily be present. Additionally, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). As Yamaoka already establishes the use of bismuth contact plate, the argued result would flow naturally from the teachings of Yamaoka
Therefore, Examiner maintains the rejection detailed above.
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 JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
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.
/JENNIFER A GILLETT/Examiner, Art Unit 1789