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 .
This office action is in response to applicant’s claims filed on March 6, 2023. Claims 1-20 are pending.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 14-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-7 of copending Application No. 18/117692. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 2-13 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. Claims 2,4,8 and 9 recite the limitation “based on 100 parts by weight of shaving leather”, the limitation is indefinite since the composition itself contains no leather and it is not a method of applying the composition to leather. The composition components cannot be based on a shaving leather to which the composition has not yet been not applied as the composition is an independent invention from the method of using the composition. The examiner considers this limitation intended use and for examination purposes interpreted the claim concentrations to be in terms of parts of the composition, not of the substrate to which the compositions has not been applied. Claims 3,5-7 and 10-13 are also rejected for being dependent upon claims 2,4,8 or 9 and inheriting the same deficiency.
Claim Rejections - 35 USC § 102
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.
Claims 1-4,8 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shen (CN 104341891A).
Shen teaches compositions comprising 2-5 parts magnesium hydroxide, 2-5 parts borax, 5-10 parts water (first liquid), 2-5 parts acetone (second liquid), 2-5 parts titanium dioxide, and 2-5 parts silicon dioxide (silica; abstract). The ranges of magnesium hydroxide to borax are identical and one of ordinary skill could at once envisage using a 1:1 ratio of hydroxide to borax. Applicant’s limitation “for manufacturing leather” is intended use and Shen teaches a composition combining identical components which would be capable of treating leather. Regarding the magnesium hydroxide concentration, due to the small range, one of ordinary skill in the art could at once envisage using 2 parts magnesium as this is an endpoint of the very narrow usable range disclosed. Regarding the limitation “based on 100 parts by weight of shaving leather”, the limitation refers to the use of the composition not the composition itself. Since no leather is actually present in the composition, the composition components cannot be based on a shaving leather not applied. The examiner considers this limitation intended use. Even though Shen does not teach a leather treatment use of his composition, the two different intended uses are not distinguishable in terms of the composition, see In re Thuau, 57 USPQ 324; Ex parte Douros, 163 USPQ 667; and In re Craige, 89 USPQ 393.
Accordingly, the teachings of Shen are sufficient to anticipate the material limitations of the claims.
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.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shen (CN 104341891A).
Shen is relied upon as set forth above.
Shen does not specify the weight ratio of hydroxide to borax and the total weight ratio of the first and second liquid agents to borax.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to select from the disclosed concentration ranges of 2-5 parts magnesium hydroxide, 2-5 parts borax, 5-10 parts water (first liquid), 2-5 parts acetone (second liquid),to arrive at the claimed ratios as the values taught by Shen are all taught as effective in providing leather treatment compositions. Selecting from art recognized useful ranges for known ingredients is obvious absent a showing of unexpected results for the criticality of a particular range.
Claims 1-4,8,9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Caldwell (WO 96/36758).
Caldwell teaches coatings for natural leather (page 23, lines 22-25) comprise additives or modifiers which impart flame retardance such as borax, aluminum hydroxide and magnesium hydroxide (page 46, lines 9,10 and 21) , silicones (page 43, line 5), silica fillers or flattening agents (page 43, lines 5-7, page 46, lines 6-7; page 47, lines 13-14), dimethylpolysiloxane as a water repellent (page 49, line 26) and titanium dioxide as a UV absorber (page 40, lines 21-27; page 49, line 21). Caldwell teaches adding the flame retardants, fillers, aluminum hydroxide, flattening agents, agents in effective amounts typically at 0.1-20% by weight (page 54, lines 10-15). Caldwell teaches diluents may be added to the compositions including water (page 59, lines 29-33) and methyl ethyl ketone (butanone, page 60, line 2) as well as other diluents.
Caldwell does not teach all the claimed components at the claimed concentrations or ratios in a single example, but one of ordinary skill in the art at the time the invention was made could select the claimed components at the claimed concentrations or ratios to prepare a leather treatment composition.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to prepare from the teachings of Caldwell a leather coating composition comprising borax, aluminum hydroxide, magnesium hydroxide, titanium dioxide and silica at the claimed concentrations and ratios into the leather treatment coatings as Caldwell teaches these components can be added in effective amounts to provide, flame retardance, filling or flattening effects, water repellence, UV absorption and dilution to the compositions and coatings. Using known conventional additives used to coat and finish leather in effective amounts to provide the respective benefits is obvious. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding the amounts of each component and the first, second and third liquid, and the ratios of the components, it is noted that these components are all combined by mixing into in a single composition. Caldwell teaches three diluents and all the claimed components combined in a single coating composition. Selecting the claimed additives and modifiers to be combined with the claimed diluents and applied to leather for the benefit of providing benefits to the leather is obvious. Since the first, second and third liquid are mixed into a single composition, applicant has not demonstrated the criticality that the components are mixed in the form of three separate liquid components as they all become a single composition with the same three diluents and additives. The end result composition is the same and the mixing can be done immediately at the time of use. Selecting the effective concentrations and ratios of components to provide the claimed benefit at a desired level can be determined through routine experimentation.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Caldwell (WO 96/36758) and further in view of Schaefer (US 2014/0101974).
Caldwell is relied upon as set forth above.
Caldwell does not teach ceramic and quartz.
Schaefer teaches adding fine particles ceramic powder and quartz powder at 0.3-10% to coatings of leather provides vapor permeability and temperature dissipation effects in vehicle seats (paragraph 0017-0121).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Caldwell by incorporating ceramic and quartz into the leather coatings for vehicle seats as Schaefer teaches adding fine particles ceramic powder and quartz powder at 0.3-10% to coatings of leather provides vapor permeability and temperature dissipation effects in vehicle seats. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980). Regarding the amounts of each component, selecting the effective concentration of components to provide the claimed temperature dissipation and vapor permeability benefit at a desired level can be determined through routine experimentation.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Caldwell (WO 96/36758) and further in view of Li (CN104513874A).
Caldwell is relied upon as set forth above.
Caldwell does not teach dimethyl siloxane.
Li teaches adding dimethyl siloxane to leather coating compositions used for sun screen, burn protection, moisturizing and maintaining leather car seats (abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Caldwell by incorporating dimethyl siloxane as a softening agent into the leather coating compositions as Li teaches dimethyl siloxane is a conventional component in leather coating compositions used for sun protection. burn protection, moisturizing and maintaining leather car seats. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980). Regarding the amounts of each component, selecting the effective concentration of components to provide the claimed burn protection, moisturizing and maintenance benefits to leather car seats at a desired level can be determined through routine experimentation.
Claims 14,16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR20050103125A) in view of Duan (US 2017/0114424).
Shin teaches a method of manufacturing a leather fabric (leather sheet meets the claimed limitation of leather fabric) for vehicle seat covers (page 2, paragraph 5) comprising soaking fleshing, liming, reliming, band knifing to separate the skin and flesh, deliming and bating of leather, tanning with chrome, aluminum, vegetable oil or mimosa, shaving the leather to an accurate re-adjusted thickness, neutralizing to a pH of 4.5 to 6.5, retanning, dyeing, fatliquoring and drying (page 3, 1A,1B,1C,1F,2A, 2B, 2D,2F,2G, 2H,3A,3B,4A,4B,4C,4D; claim 1, example 1). Shin teaches shaving the leather to a uniform thickness of 1-1.2mm (example 1).
Shin does not teach flame retardant processing of the leather.
Duan teaches it is known to treat leather with flame retardants in tanning, rewet, retanning, greasing or coating steps wherein retanning, greasing or coating are performed after shaving (paragraphs 0017, 0020).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Shin by treating leather with a flame retardant as a finishing step after shaving and prior to retanning and then drying the flame retardant leather as Duan teaches that in automobile leathers it is desirable to provide flame retardancy for safety purposes and avoid the use of chrome tanning agents to avoid chrome pollution (paragraphs 0009,0010,0012, 0015). Duan invites the inclusion of flame retardant application in steps prior to retanning. Shin invites the inclusion of leather manufacturing for automobile seats and teaches finishing process are performed. Using the known flame retardant treatments taught to be useful in Duan in the analogous automobile leather processing methods of Shin to provide additional vehicle safety from fires would be obvious to achieve the predictable result of providing a flame retardant dry leather for use in leather vehicle upholstery. Both Shin and Duan teach alternatives to chrome tanning agents and Duan specifies the advantages of avoiding chrome tanning for the benefit of reducing pollution from the tanning process. Using a more environmentally friendly non-chrome tanning agent to achieve the same tanning and preservation effect on leather is obvious.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR20050103125A) in view of Duan (US 2017/0114424) and further in view of Gamarino (US 2012/0058357).
Shin and Duan are relied upon as set forth above.
Shin and Duan do not teach methods without pickling.
Gamarino teaches leather tanning of outstanding quality can be achieved using non-metal tanning agents and tanning can be carried out directly on a bated substrate (paragraph 0007,0168, claim 2).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Shin and Duan by incorporating leather tanning without pickling as Gamarino teaches using non-metal tanning agents can produce outstanding leather in the absence of a pickling step. Using known leather processing and tanning methods which omit pickling is obvious as Gamarino teaches outstanding leather can be produced. Shin teaches using non-metal tanning agents and Duan teaches adding flame retardants in steps other than pickling, therefore it would be obvious to use the tanning agents which require no picking and adding flame retardant in retanning, greasing or coating steps to still obtain outstanding leather
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR20050103125A) in view of Duan (US 2017/0114424) and Gamarino (US 2012/0058357) and further in view of Lipowski (US 3,106,541).
Shin, Duan and Gamarino are relied upon as set forth above.
Shin, Duan and Gamarino do not teach nitrogen-based syntans
Lipowski teaches nitrogen based synthetic tanning agents are effective for direct tanning of calfskin and sheepskin (column 1, lines 28-43).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Shin, Duan and Gamarino by incorporating nitrogen based syntans in direct tanning methods as Lipowski teaches nitrogen based synthetic tanning agents are effective for direct tanning of calfskin and sheepskin. Using a known tanning agent well suited for tanning leather in the absence of pickling is obvious and known to produce outstanding leather. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Conclusion
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/AMINA S KHAN/Primary Examiner, Art Unit 1761