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, claims 1-13 in the reply filed on June 20, 2025 is acknowledged. The traversal is on the ground(s) that there is no technical aspect or other specific detail added by any of the product claims beyond the language and technical aspect of claim 1. Indeed, the application as filed makes clear that, for example, for use in preparing a carpet using these fibers, “Any method known in the art of preparing carpet from a fiber may be used.” See the parent application, PCT publication WO 2022/005725, at page 14, lines 4-7 and 22-31. For at least these reasons, we respectfully urge that (1) the technical aspect of the method claims is effectively the same as that for product claim 1; and (2) no significant additional searching would be required for the Examiner to consider the product claims along with the method claims. Accordingly, the restriction requirement should be reconsidered and withdrawn. This is not found persuasive because while Group II, claims 14-18, require the fibers produced by the method of claim 1 of Group I, such method is not a special technical feature as it does not make a contribution over the prior art in view of the prior art rejections below. Although there may be some overlap of the search for the two inventions of Groups I and II there is nothing to indicate that the search for both inventions would be coextensive and/or because the examination on the merits of product claims differs from the examination on the merits of method claims. Therefore, the extra search and/or examination for both inventions poses a serious burden on the examiner making the restriction requirement proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 20, 2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 1 recites “winding … by any suitable means” which is understood to be a winder as disclosed by the specification (p. 18, lines 26-28).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites “to about 80” which is indefinite. About 80 what? The examiner suggests the following amendments: “to about 80%”. Claim 5 recites “a range from about 10% to about 20% “ and “a range from about 90% to about 80” which is indefinite. Percent (%) of what (weight, volume, mole)? Note that the subject matter of claim 5 is NOT disclosed in the disclosure. Thus, there is no original disclosure of the % being weight, volume or mole percents, and thus adding weight, volume or mole percents to claim 5 would be new matter. The examiner suggests cancelling claim 5.
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) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110528115 in view of Chang et al. (US 2007/0035057).
CN 110528115 (references are to the English translation; see entire English translation) discloses a method to make bicomponent fibers [0013]-[0016] comprising:
a) extruding a first and second component on a spinning machine capable of producing two or more independent melt streams [0037]-[0038];
b) combining the melt streams in a spinneret suited for making bicomponent fibers [0039];
c) quenching (cooling) the bicomponent fibers produced in step (b) [0016];
d) drawing (stretching) and heat setting the quenched bicomponent fibers [0016]; and
e) winding up the bicomponent fibers in step (d) by any suitable means [0009], [0016]; wherein the first extruded component has a moisture level less than the second extruded component ([0013]-[0024], [0035]-[0040]; example 1, wherein moisture level of the first component, PET, was 30 ppm and of the second component PA6, was 200 ppm; see other examples).
However, CN 110528115 does not disclose quenching in air, as recited by claim 1.
Chang et al. (US 2007/0035057) discloses a method to make bicomponent fibers comprising:
a) extruding a first and second component on a spinning machine capable of producing two or more independent melt streams [0077];
b) combining the melt streams in a spinneret 3 suited for making bicomponent fibers [0077], [0106];
c) quenching in air 1 the bicomponent fibers produced in step (b) (fig. 1; [0106]);
d) drawing and heat setting the quenched bicomponent fibers (fig. 2; [0107]-[0109]); and
e) winding up the bicomponent fibers in step (d) by any suitable means (fig. 2; [0108], [0110], [0122]; windup (winder) 17).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the method of CN 110528115 wherein the method includes quenching in air the bicomponent fibers, as disclosed by Chang et al. (US 2007/0035057), because such a modification is known in the art and would provide an alternative configuration for the method for making bicomponent fibers known to be operable in the art.
CN 110528115 further discloses the method:
(Claim 2) wherein the first and second component is independently selected from the group consisting of: polyesters, nylons, and combinations thereof ([0007]; [0011]-[0012]; [0037]-[0038], Example 1, PET (polyester) and PA6 (nylon); see other Examples);
(Claim 6) wherein the first component has a moisture level of about 50 ppm or less and the second component has a moisture level greater than about 50 ppm ([0037]-[0038], Example 1, PET (polyester) at 30 ppm and PA6 (nylon) at 200 ppm; see other Examples);
(Claim 9) wherein the first and second components of the bicomponent fiber are present in a weight percent ratio ranging from 20:80 to 80:20 ([0039], Example 1, mass fraction ratio of 50:50; see other Examples);
(Claim 10) wherein the bicomponent fiber is in a configuration selected from the group consisting of: side-by-side, eccentric sheath core configuration, and trilobal ([0021], [0041], side by side, sheath core (polymer A is inserted into the interior of polymer B). (Note that Chang et al. (US 2007/0035057) also discloses side-by-side and eccentric sheath core [0024].);
(Claim 12) wherein an extruder temperature of one of the components in step (a) is in a range from about 240° C to about 320° C ([0037]-[0038], Example 1 temperatures; see other Examples);
(Claim 13) wherein an extruder temperature of one of the two extruded components in step (a) is selected from the group consisting of: 260° C, 270° C, 280° C, 290° C, 300° C, 310° C, and 320° C ([0037]-[0038], Example 1 temperatures; see other Examples).
As to claims 3-4, CN 110528115 further discloses that the polyester component can be poly(trimethylene terephthalate) (PTT), poly(ethylene terephthalate) (PET), and poly(butylene terephthalate) (PBT) [0011]. Chang et al. (US 2007/0035057) further discloses that the first and second components are both polyesters, wherein the polyesters can be the same or different ([0004], different polyesters PET and PTT; [0008], [0077]-[0079], same polyesters PTT and PTT). It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to further modify the first and second components to be both polyesters, wherein the polyesters can be the same or different, as disclosed by Chang et al. (US 2007/0035057), because such a modification is known in the art and would provide an alternative configuration for the first and second components known to be operable in the art. Further, CN 110528115 discloses that polyesters known in the art include poly(trimethylene terephthalate) (PTT), poly(ethylene terephthalate) (PET), and poly(butylene terephthalate) (PBT), as mentioned above.
As to claims 5, 7-8 and 11, Chang et al. (US 2007/0035057) further discloses that moisture content (level) affects/changes intrinsic viscosity (IV) of a component, wherein the higher the moisture level results in a decreased IV [0084], wherein the greater the difference in IV of the two components, the greater the crimp contraction (stretch) and hence the greater the value (stretch) of the resulting bicomponent fiber [0086], wherein the crimp contraction is determined by the Crimp Contraction method [0116]-[0119], wherein examples of crimp contraction (stretch measurement) range from 7.3% to 43.7% (Table 1).
(Claim 5) It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to further modify the method wherein the first component has moisture level in a range from about 10% to about 20% and the second component has a moisture level in a range from about 90% to about 80% because such moisture levels would have been found in view of the teachings above of Chang et al. (US 2007/0035057) in varying the difference in IV of the two components by varying the moisture levels in the two components to obtain varying crimp contraction (stretch) of the fibers.
(Claims 7-8 and 11) It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to further modify the method with the crimp contraction (stretch measurement) percentages (%), as recited by claims 7-8 and 11, because such crimp contraction (stretch measurement) percentages (%) would have been found in view of the teachings above of Chang et al. (US 2007/0035057) in varying the difference in IV of the two components by varying the moisture levels in the two components to obtain varying crimp contraction (stretch measurement) percentages (%) of the fibers. As mentioned above, Chang et al. (US 2007/0035057) discloses examples of crimp contraction (stretch measurement) ranging from 7.3% to 43.7%. Further, as to claim 7, as mentioned above, Chang et al. (US 2007/0035057) further discloses that the greater the difference in IV of the two components, the greater the crimp contraction (stretch). Thus, for example, a stretch measurement would be increased for a greater difference in IV of the first and second components relative to a stretch measurement with a lesser difference in IV, wherein the first extruded component did not have a moisture level less than the moisture level of the second extruded component (e.g., the moisture levels for the first and second being the same such that there is zero difference in IV between the two components).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S LEYSON whose telephone number is (571)272-5061. The examiner can normally be reached M-F 8am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Xiao Zhao can be reached at 5712705343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.S.L/Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744