DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on May 1, 2026 has been fully considered. The amendment to instant claims 1, 6-13 is acknowledged. Specifically, claim 1 has been amended to recite “consisting of” transition phrase. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1-9, 11, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai et al (US 5,766,760) in view of Shindo et al (US 4,401,567).
4. Tsai et al discloses a porous fiber and nonwoven webs formed from said fibers (col. 2, lines 60-65, as to instant claims 1 and 13), the fibers made of polyethylene, polypropylene, polyamide or polyester (col. 3, lines 5-20) and
wherein the porous fiber comprises a plurality of voids or pores distributed over the outer surface of the fiber and also throughout the interior of the fiber (col. 8, lines 25-30); the voids are having length of not less than 0.1 micron (100 nm), or not less than about 0.2 micron (col. 8, lines 38-43) and an aspect ratio of at least 1.3 to 15 (col. 9, lines 1-8).
The porous fibers are having high liquid penetration and good mechanical properties (col. 1, lines 32-36).
5. As to instant claims 4-5, at least 60% of the total number of pores having a major axis length of 0.25-10 micron are on the fiber outer surface (col. 8, lines 57-63).
Given the major length of the pores is 10 micron and the aspect ratio of said pores is 15, then the other minor axis will intrinsically and necessarily have a size of 0.66 micron; given the major axis of the pores is 0.25 micron, and the aspect ratio is 1.3, then the minor axis length will intrinsically and necessarily be 0.19 micron; that is at least one size of the pores will be within the claimed range of 100 nm-1 micron (as to instant claims 1, 4-5).
6. It is further noted that, instant specification defines the term “size” of the pores as having one dimension of pores within the claimed range, and wherein the pores maybe of cylindrical or filamentous shape as well (see [0016] of instant specification), as also cited below:
PNG
media_image1.png
169
642
media_image1.png
Greyscale
PNG
media_image2.png
56
634
media_image2.png
Greyscale
7. Further, based on the teachings of Tsai et al, it would have been obvious to a one of ordinary skill in the art to choose and use the fiber having the substantially all of the pores, or at least 80%, having at least one (minor length) size being within the range of 0.19-0.25 micron, or at least within the range of 100 nm to 1 micron as required by instant claims 4-5, located on the fiber outer surface, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
8. As to instant claims 6-9, 11, based on the teachings Tsai et al that the fiber can be made of polyethylene, polypropylene, polyamide or polyester (col. 3, lines 12-20), it would have been obvious to a one of ordinary skill in the art to choose and use said fiber made only of one of said polymers, i.e. consisting of polyethylene, consisting of polypropylene, consisting of polyamide or consisting of polyester only, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Since the polymers used for making said porous fiber of Tsai et al are the same polymers as claimed in instant claims 6-12, therefore, said polymers of Tsai et al will intrinsically and necessarily be insoluble in water as well (as to instant claim 1). 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
9. Tsai et al does not explicitly teach the diameter and length of said porous fiber.
10. Shindo et al discloses porous fiber composed of polyethylene, having high water permeability and substantial mechanical strength (Abstract, col. 6, lines 62-66), the fibers having diameter of 50-2000 microns (col. 5, lines 20-25), or exemplified 210 micron (Table 1) or 250-300 micron (Table 3) and length of 5 cm or 9 cm (col. 8, lines 9-10, 25-28).
11. Since both Shindo et al and Tsai et al are related to porous fibers having high liquid permeability, mechanical strength, made from polyolefins such as polyethylene, and thus belong to the same field of endeavor, wherein Shindo et al teaches such porous fibers having diameter of about 210-300 micron and length of 5-9 cm, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Tsai et al and Shindo et al, and to prepare, or obvious to try to prepare the porous fibers of Tsai et al having diameter of 50-2000 micron, or 250-300 micron, and length of 5-9 cm (as to instant claims 1-3), since such porous fibers are taught in the art as being used for making said porous fibers used for separating proteins, enzymes, in ultrafiltration or microfiltration, as shown by Shindo et al (col. 7, lines 30-37 of Shindo et al), and it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
12. Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai et al (US 5,766,760) in view of Shindo et al (US 4,401,567) and Kopp et al (US 5,318,417).
13. The discussion with respect to Tsai et al (US 5,766,760) in view of Shindo et al (US 4,401,567) set forth in paragraphs 3-11 above, is incorporated here by reference.
14. Though Tsai et al recites the use of polyesters for making said porous fibers (col. 3, lines 18-19), Tsai et al does not specify said polyester being a polyethylene terephthalate, and does not teach the use of polyacrylonitrile for making said porous fibers.
15. However, Kopp et al discloses porous fibers having high water permeability with pores size of 0.20 microns, surface pore width of 1 micron (col. 6, lines 5-15), wherein said fibers are made not only from polypropylene, polyamide, but further from polyethylene terephthalate and polyacrylonitrile (col. 7, lines 34-47).
16. Since porous fibers having high water permeability are made not only from polypropylene, polyamide, but further from polyethylene terephthalate and polyacrylonitrile, as taught by Kopp et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kopp et al and Tsai et al, and to prepare, or obvious to try to prepare the porous fiber of Tsai et al from polyethylene terephthalate polymer only, or from polyacrylonitrile polymer only, as taught by Kopp et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image3.png
18
19
media_image3.png
Greyscale
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Response to Arguments
17. Applicant's arguments filed on May 1, 2026 have been fully considered but they are moot in light of new grounds of rejections set forth 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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. 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.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
Prosecution Insights