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 1, amendments to the specification, and the cancellation of claims 2 and 11, in the response filed December 12, 2025, have been entered.
Claims 1, 3-10, and 12 are currently pending in the above identified applications.
Claims 8-10 are withdrawn from consideration as being directed towards non-elected inventions.
Specification
The amendment filed December 12, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Specifically, for amending the structure of the titanium-based chelate Chemical Formula 2. In the Remarks filed December 12, 2025, Applicant argues that specification of “Ti2-“ was clearly a typographical error.” Attorney arguments is not proper evidence to consider changing the chemical structure of the disclosed chelate. Applicant may submit factual affidavits under 37 CFR 1.132 or cite references to show what one skilled in the art knew at the time of filing the application. A declaration or affidavit is, itself, evidence that must be considered. The weight to give a declaration or affidavit will depend upon the amount of factual evidence the declaration or affidavit contains to support the conclusion of enablement. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (Stating that an "expert’s opinion on [an] ultimate legal conclusion must be supported by something more than a conclusory statement"); cf. In re Alton, 76 F.3d 1168, 1174, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996) (declarations relating to the written description requirement should have been considered). The foreign prior document contains the originally filed Chemical 2 Formula as well as the Korean patent KR102439706 B1 sharing priority.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Interpretation
The limitation “a fineness of 0.3 to 3 de” in claim 1 is interpreted as 0.3 to 3.0 denier, aligned with p. 3 of the originally filed disclosure.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-7, and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, the amendment changing the chemical structure of the titanium-based compound represent by Chemical Formula 1. The originally filed disclosure had the central titanium molecule with a negative 2 charge. The amended claim contains no charge on the central titanium atom. . In the Remarks filed December 12, 2025, Applicant argues that specification of “Ti2-“ was clearly a typographical error.” Attorney arguments is not proper evidence to consider changing the chemical structure of the disclosed chelate. Applicant may submit factual affidavits under 37 CFR 1.132 or cite references to show what one skilled in the art knew at the time of filing the application. A declaration or affidavit is, itself, evidence that must be considered. The weight to give a declaration or affidavit will depend upon the amount of factual evidence the declaration or affidavit contains to support the conclusion of enablement. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (Stating that an "expert’s opinion on [an] ultimate legal conclusion must be supported by something more than a conclusory statement"); cf. In re Alton, 76 F.3d 1168, 1174, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996) (declarations relating to the written description requirement should have been considered). The foreign prior document contains the originally filed Chemical 2 Formula as well as the Korean patent KR102439706 B1 sharing priority. Therefore, the amendment introduces new matter.
To overcome this rejection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended claim or modify this limitation as originally disclosed in the originally filed disclosure.
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.
Claims 1, 3-7 and 12 are 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 1 recites the limitation “wherein the polyester has 33 to 39 carboxyl groups.” However, the claim does not contain a basis for the carboxyl group, such as per molecule or eq/106 grams polymerized product. It is also unclear how the carboxyl group is determined. Claim 1 also recites the limitation “wherein the titanium-based compound is comprised in an amount of 10 to 20 ppm based on a titanium element among the total weight of the polymerization reactants.” It is unclear to the if this limitation is part of the product-by-process limitation and describes the process of forming the claimed product or is limiting in the amount of the titanium-based compound in the finally formed and claimed product, such as having 10 to 20 ppm in the finally formed polyester based on the reacted polymerization reactants.
The remaining claims are rejected based on their dependency on rejected claim(s).
Response to Arguments
Applicant’s arguments with respect to the pending claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Examiner would also like to note that Applicant appears to argue the carboxyl group is directly linked to strength and touch by comparing Examples 1-1, 1-2, 1-3 and 1-5 to Comparative Examples 1-1 and 1-3. However, Comparative Examples 1-5, 1-6, 1-7, and 1-8 all have carboxyl group being 33 with some having strength and touch that are similar to inventive but also outside. It does not appear that correlation is direct.
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Comparative Example 1-8 has all the criteria required by claim 1 apart from the dispersibility. The length is different from the invention fibers. Claim 3 limits the range of the fiber length. If fiber length is critical to achieving the dispersibility, it should be included in the independent claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub. No. 2013/0012665 to Nozawa teaches a polyester and teaches it is known that the rate of hydrolysis of a polyester becomes higher as a content of a carboxyl end group in a molecular chain of the polyester increases and that too low is a tradeoff with polycondensation reaction efficiency and thermal decomposition in the extrusion.
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.
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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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/JENNIFER A GILLETT/Examiner, Art Unit 1789
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