DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on October 22, 2025 have been entered into the file. Currently claims 4-5 are amended, claim 9 is withdrawn, claim 12 is cancelled, and claims 13-14 are new, resulting in claims 1-8, 10-11, and 13-14 pending for examination.
Claim Rejections - 35 USC § 102/103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 5, 7, 10-11, and 13-14 is/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 Sugiyama (US 2008/0045104)1.
With respect to claims 1, 5, 10, and 13-14, Sugiyama teaches a flameproof artificial leather of suede finish that contains a phosphorous compound as a flame retarder (functional agent) (paragraph [0015]). The artificial leather comprises a surface layer (A) and a layer (B) that is other than the layer (A) (paragraph [0017]). The fiber forming the layer (A) is an extremely fine thermoplastic fiber such as polyester having a size of 0.5 dtex or less (about 6.8 microns or less)2 (paragraph [0018]). The artificial leather further comprises a water-soluble polyurethane resin (elastomer) (paragraph [0017]). The artificial leather is identified as suede (paragraph [0015]) and has a surface which is buffed (paragraph [0109]), therefore one surface is a napped surface. The layer (B) comprises a phosphorous-containing flameproof thermoplastic polyester synthetic fiber (resin layer) (paragraph [0019]) in the form of a scrim (the flame retardant surface has a plurality of opening portions) (paragraph [0026]).
Sugiyama teaches the claimed invention above but does not expressly teach the flame retardant (functional agent) having a tackiness of 0.1 N/cm2 or more and 2.0 N/cm2 or less. It is reasonable to presume that the tackiness is inherent to Sugiyama.
Support for said presumption is found in that Sugiyama teaches the same materials as the claimed invention and therefore is expected to have the same properties of the claimed invention. The instant invention teaches at paragraph [0082] the flame retardant may be contained in a resin, and a suitable resin includes polyester. The instant invention further teaches at paragraph [0084] that it is preferable to use a dehalogenated flame retardant such as a phosphorus-containing compound. Similarly, Sugiyama teaches a flameproof thermoplastic synthetic fiber comprising a phosphorous-containing polyester fiber (paragraph [0024]). The phosphorous flame retardant comprises no halogen compounds (paragraph [0015]). Since Sugiyama uses the same materials for the flame retardant surface as the present invention, the flame retardant of Sugiyama is expected to have the same properties as the claimed invention.
In the alternative it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tackiness of the layer (B) comprising the flame retardant of Sugiyama in order to provide the necessary peel strength to the laminate (see e.g., paragraph [0068] of Sugiyama).
With respect to claim 7, Sugiyama teaches all the limitations of claim 1 above. Sugiyama further teaches that the flame retardant is a phosphorus compound (paragraph [0015]).
With respect to claim 11, Sugiyama teaches a flameproof artificial leather of suede finish that contains a phosphorous compound as a flame retarder (functional agent) (paragraph [0015]). The artificial leather comprises a surface layer (A) and a layer (B) that is other than the layer (A) (paragraph [0017]). The fiber forming the layer (A) is an extremely fine thermoplastic fiber such as polyester having a size of 0.5 dtex or less (about 6.8 microns or less)3 (paragraph [0018]). The artificial leather further comprises a water-soluble polyurethane resin (elastomer) (paragraph [0017]). The artificial leather is identified as suede (paragraph [0015]) and has a surface which is buffed (paragraph [0109]), therefore one surface is a napped surface. The layer (B) comprises a phosphorous-containing flameproof thermoplastic synthetic fiber (paragraph [0019]) in the form of a scrim (paragraph [0026]).
Sugiyama teaches the claimed invention above but does not expressly teach the flame retardant (functional agent) surface having a Kinetic friction coefficient of 0.15 or more and 0.60 or less and the artificial leather or backing material having a stiffness of 30 mm or more and 150 mm of less. It is reasonable to presume that the Kinetic friction coefficient and stiffness are inherent to Sugiyama.
Support for said presumption is found in that Sugiyama teaches the same materials as the claimed invention and therefore is expected to have the same properties of the claimed invention. The instant invention teaches at paragraph [0082] the flame retardant may be contained in a resin, and a suitable resin includes polyester. The instant invention further teaches at paragraph [0084] that it is preferable to use a dehalogenated flame retardant such as a phosphorus-containing compound. Similarly, Sugiyama teaches a flameproof thermoplastic synthetic fiber comprising a phosphorous-containing polyester fiber (paragraph [0024]). The phosphorous flame retardant comprises no halogen compounds (paragraph [0015]). Sugiyama further teaches methods to obtain a smooth sheet using the phosphorous-containing polyester fiber. Sugiyama also teaches the artificial leathers a flexible (paragraphs [0110], [0156]-[0157]). Since Sugiyama uses the same materials for the flame retardant surface as the present invention, the flame retardant and artificial leather of Sugiyama is expected to have the same properties as the claimed invention.
In the alternative it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the smoothness of the layer (B) comprising the flame retardant of Sugiyama in order to provide the desired high grade feel for artificial leather (see e.g., paragraph [0043] of Sugiyama) and to have modified the stiffness of the artificial leather to provide the desired flexibility.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugiyama (US 2008/0045104)4 as applied to claim 1 above.
With respect to claim 6, Sugiyama teaches all the limitations of claim 1 above. Sugiyama further teaches the layer (A) is used in an amount of from 10 to 60% by weight based on the base fabric (paragraph [0034]). Since the remainder of the base fabric comprises the layer (B) which includes the flameproof fibers (paragraphs [0017], [0026]), flame retardant surface comprises 40-90% (0.4-0.9) by weight of the base fabric.
While the percentages of Sugiyama are with respect to weight, it is reasonable to presume they also represent the thickness ratio of the two layers. Since both layers are used together in an artificial leather, it is reasonable to assume their surface areas are the same. Additionally, both layers use polyester fibers (paragraphs [0018], [0026]), therefore the densities of the materials used are also the same. As such in order to vary the weight of each layer it is necessary to change the thickness or depth of the layers as suggested by Sugiyama at paragraph [0034]. Therefore the weight percentages reasonably represent the claimed thickness ratio.
The thickness ratio range of Sugiyama substantially overlaps the claimed range in the instant claim 6. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Sugiyama, because overlapping ranges have been held to establish prima facie obviousness.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugiyama (US 2008/0045104)5 as applied to claim 1 above, and further in view of Sugiura (US 2015/0299944)1.
With respect to claims 2-3, Sugiyama teaches all the limitations of claim 1 above.
Sugiyama is silent as to some of the scrim openings being through holes, and the opening ratio being 1% or more and 40% or less.
Sugiura teaches perforation processing to obtain moisture permeability and air permeability in a laminated sheet used as synthetic leather (paragraph [0011]). The sheet has a plurality of air holes that penetrate in the thickness direction (Fig. 1; paragraph [0017]). From the viewpoint of achieving both air permeability and strength of the laminate the aperture ratio is preferably 5 to 20%, more preferably 10 to 15% (paragraph [0100]).
Since both Sugiyama and Sugiura teach artificial leathers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the artificial leather of Sugiyama to include air holes that penetrate through the thickness of the artificial leather at an aperture ratio of 5-20%, preferably 10-15%, in order to provide an artificial leather which is strong while providing air and moisture permeability.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugiyama (US 2008/0045104)1 as applied to claim 1 above, and further in view of Ebata (JP 2007-138310)1,6,7.
With respect to claim 4, Sugiyama teaches all the limitations of claim 1 above.
Sugiyama is silent as to the nonwoven including a woven or knitted fabric.
Ebata teaches a flame-retardant leather-like sheet comprising a fiber entangled nonwoven fabric impregnated with a polymeric elastomer with a back coating of a flame retardant liquid (paragraph [0008]). Ebata further teaches a woven or knitted fabric may be inserted into the nonwoven fabric to maintain the strength of the leather-like sheet (paragraph [0011]).
Since both Sugiyama and Ebata teach nonwoven artificial leathers comprising flame retardant back surfaces, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the nonwoven of Sugiyama to include an inserted woven or knitted fabric in order to increase and/or maintain the strength of the artificial leather.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugiyama (US 2008/0045104)8 as applied to claim 1 above, and further in view of Kimura (JP 2019-060060)1,9,10.
With respect to claim 8, Sugiyama teaches all the limitations of claim 1 above.
Sugiyama is silent as to the fiber entanglement including the elastomer having a density of 0.20-0.50 g/cm3.
Kimura teaches a sheet-like material having excellent strength and flame retardancy obtained by impregnating a fiber-entangled body formed by laminating and entangling a nonwoven fabric and a woven fabric each made of ultrafine fibers with a polymeric elastomer (paragraph [0001]). Kimura further teaches that when the apparent density of the nonwoven fabric between 0.15-0.45 g/cm3 the artificial substrate can be sufficient shape stability and dimensional stability as well as maintaining sufficient space (paragraph [0066]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the density of the nonwoven and the elastomer to include the claimed range. One would have been motivated to provide a nonwoven sheet that has sufficient shape stability and dimensional stability while maintaining the desired pore structure of the substrate. 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. See MPEP 2144.05(II).
Response to Arguments
Response – Claim Rejections 35 USC §112
The rejections of claims 4-5 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 pre-AIA the applicant regards as the invention, are overcome by Applicants amendments to the claims in the response filed October 22, 2025.
Response – Claim Rejections 35 USC §102 and 103
The rejection of claim(s) 12 under 35 U.S.C. 103 as being unpatentable over Sugiyama (US 2008/0045104) has been withdrawn in light of the cancellation of claim 12 in the response filed October 22, 2025.
Applicant’s arguments filed October 22, 2025 have been fully considered but they are not persuasive.
On page 5 of the response Applicant submits that Sugiyama does not explicitly or implicitly describe the claim 1 requirement that the “flame retardant surface has a plurality of opening portions”.
These arguments are not persuasive. As described in the rejection of claim 1 above the layer (B) comprises a phosphorous-containing flameproof thermoplastic polyester synthetic fiber in the form of a scrim (paragraphs [0019], [0026]). A person of ordinary skill in the art would recognize that a scrim is a fabric of open construction (“Scrim”; The Complete Textile Glossary), i.e., has a plurality of opening portion.
On pages 5-6 of the response Applicant submits that the Examiner must establish that the flameproof artificial leather of Sugiyama is substantially identical to Applicant’s artificial leather and that the process of making the flameproof artificial leather is substantially identical to Applicant’s. Applicant further identifies that the Office Action fails to identify any reinforcing fibers contained in a thermoplastic resin layer that are substantially identical to Applicant’s in terms of composition and process.
These arguments are not persuasive. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01(I). As discussed in the rejection of claim 1 above, Sugiyama teaches the same materials as the claimed invention and therefore is expected to have the same properties of the claimed invention. The instant invention teaches at paragraph [0082] the flame retardant may be contained in a resin, and a suitable resin includes polyester. The instant invention further teaches at paragraph [0084] that it is preferable to use a dehalogenated flame retardant such as a phosphorus-containing compound. Similarly, Sugiyama teaches a flameproof thermoplastic synthetic fiber comprising a phosphorous-containing polyester fiber (paragraph [0024]). The phosphorous flame retardant comprises no halogen compounds (paragraph [0015]). Since Sugiyama uses the same materials for the flame retardant surface as the present invention, the flame retardant of Sugiyama is expected to have the same properties as the claimed invention. The Office Action has established that the claimed product and the prior art product are substantially identical, therefore a prima facie case of anticipation has been established.
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. See MPEP 2112.01(I). Applicant submits that the Office Action fails to identify any reinforcing fibers contained in a thermoplastic resin layer that are substantially identical to Applicant’s. It is respectfully submitted that neither the claims nor the specification as filed discuss a reinforcing fiber contained in a thermoplastic resin layer. As described above Sugiyama teaches the same resin material (polyester) and flame retardant (non-halogenated phosphorous-containing compound) as the instant invention.
On page 6 of the response Applicant submits that the fibers containing the flame-retardant components are laminated as a non-woven fabric, however the claimed invention is not so limited. Applicant further submits that tackiness is generally measured on a uniform surface and not on an irregular fiber surface, and that even if an irregular fiber surface were measured the tackiness would not be identical to that of a uniform surface because the contact area is different.
These arguments are not persuasive. As acknowledge by Applicant the flame-retardant surface is not limited, therefore a nonwoven flame-retardant component is within the scope of claim 1. Since the claim is not limited to a uniform surface the tackiness of an irregular surface is within the scope of claim 1. It is noted that claim 5 further limits the flame retardant surface to being a woven or knitted fabric (b) similar to Sugiyama which also teaches the scrim may be woven or knitted fabrics (paragraphs [0049]-[0050]), both of which would have an irregular surface for the tackiness measurement.
On pages 6-7 of the response Applicant submits that the purpose of claiming tackiness in claim 1 is not to provide the laminate with the necessary peel strength but rather to improve processability for forming the openings of requirement 1.
In response to applicant's argument that the purpose for providing tackiness is not to provide peel strength but rather to improve processability for forming the openings, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
It is noted that paragraph [0080] of the specification as filed also states that the when the tackiness of the functional agent is 0.10 N/cm2 or more, preferably 0.15 N/cm2 or more, and more preferably 0.20 N/cm2 or more, the functional agent is secured to the fiber entanglement with sufficient adhesiveness and the functional agent after drying does not fall off even in a high-temperature environment. It therefore appears that peel strength is also a consideration of the disclosed invention.
On pages 7-8 of the response Applicant submits that the background of Sugiyama discloses that application of flame retardant by back coating (such as in claim 11 of the present invention) provides artificial leathers that are undesirably rough and stiff. Similar to the prior art referred to in Sugiyama, Applicant submits that a higher bending resistance may be desired in the present invention.
These arguments are not persuasive. As mentioned above, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01(I). As discussed in the rejection of claim 11 above, Sugiyama teaches the same materials as the claimed invention and therefore is expected to have the same properties of the claimed invention. The instant invention teaches at paragraph [0082] the flame retardant may be contained in a resin, and a suitable resin includes polyester. The instant invention further teaches at paragraph [0084] that it is preferable to use a dehalogenated flame retardant such as a phosphorus-containing compound. Similarly, Sugiyama teaches a flameproof thermoplastic synthetic fiber comprising a phosphorous-containing polyester fiber (paragraph [0024]). The phosphorous flame retardant comprises no halogen compounds (paragraph [0015]). Sugiyama further teaches methods to obtain a smooth sheet using the phosphorous-containing polyester fiber. Sugiyama also teaches the artificial leathers a flexible (paragraphs [0110], [0156]-[0157]). Since Sugiyama uses the same materials for the flame retardant surface as the present invention, the flame retardant and artificial leather of Sugiyama is expected to have the same properties as the claimed invention. Therefore, a prima facie case of anticipation has been established.
Additionally, the rejection proposes that in the alternative it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the stiffness of the artificial leather to provide the desired flexibility.
It is further noted that claim 11 is not limited to application of a flame retardant via a back coating as discussed in the background of Sugiyama and there is no evidence in Sugiyama or the instant specification that the structure disclosed by Sugiyama cannot achieve the claimed stiffness. As discussed above, Sugiyama teaches an artificial leather within the scope of claim 11, and therefore is expected to have the same properties as the claimed invention.
On page 9 of the response Applicant submits that Sugiyama teaches a laminated layer of flame-retardant fiber, while the Sugiura application does not contain a flame-retardant surface and is instead impregnated with a flame retardant. Applicant concludes that the configurations of Sugiyama and Sugiura are different from each other and from those of Applicant.
These arguments are not persuasive. It is respectfully submitted that Sugiura was relied on to teach the opening ratio of the scrim, not the location of the flame-retardant. Sugiura teaches that from the viewpoint of achieving both air permeability and strength of the laminate the aperture ratio is preferably 5 to 20%, more preferably 10 to 15% (Sugiura; paragraph [0100]). The rationale to add the opening ratio taught by Sugiura does not rely on the location of the flame retardant, nor suggests modifying the flame retardant to be impregnated rather than as a surface layer. Therefore, the combination of Sugiyama in view of Sugiura discloses an artificial leather with a flame retardant surface and an aperture ration of 5 to 20%m, preferably 10 to 15% as claimed.
On page 9 of the response Applicant submits that comparted to the suede-like artificial leather of the present application, which does not have a resin layer on the surface but instead a raised nap layer, they synthetic leather described in Sugiura would have a significantly reduced amount of air permeability comparted to the artificial leather of the present application.
These arguments are not persuasive. It is respectfully submitted that Sugiura was not relied on to teach the napped surface or the location of a resin layer, but rather was used as a secondary reference to teach the aperture ratio. As described in the rejections above, Sugiyama teaches an artificial leather with a napped surface without a resin layer. It is further noted that exclusion of a resin layer and a specific air permeability is not claimed.
Conclusion
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 Larissa Rowe Emrich whose telephone number is (571)272-2506. The examiner can normally be reached Monday - Friday, 7:30am - 4:00pm EST.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Previously presented
2 Calculated with a density of 1.38 g/cm3 for polyester and a circular fiber cross-section
3 Calculated with a density of 1.38 g/cm3 for polyester and a circular fiber cross-section
4 Previously presented
5 previously presented
6 Machine translation used as reference
7 Cited in IDS
8 Previously presented
9 Machine translation used as reference
10 Cited in IDS