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 .
Election/Restrictions
2. Applicant's election with traverse of Group I, claim 1-13 in the reply filed on December 22, 2025 is acknowledged. The traversal is on the ground(s) that claims of Groups I and II, Groups II and III, and Groups I and III are interrelated and interdependent of a single invention. This is not found persuasive because of the following.
The explanation of how these inventions are independent or distinct, each from the other, was provided in paragraph 2 of an Office action (Restriction Requirement) mailed on October 27, 2025, incorporated here by reference;
specifically using guidance from MPEP 806.5.
Inventions Group I and Group II are related as process of making and product made.
Inventions of Group I and Group III are related as product and process of use.
Inventions of Groups II and III are directed to related processes.
Further, since said Groups I-III require different areas for search, it would provide a serious search and/or examination burden if restriction were not required.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 22, 2025.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al (US 2013/0196405) in view of Miyoshi et al (US 2006/0204750).
4. Singh et al discloses a porous fiber having a core-shell configuration, wherein the pores on the fiber are configured to encapsulate a biological material (Abstract, [0014]), and used in medical industries and bioremediation ([0041], [0042]),
wherein the plurality of pores present along the length of the fiber and on the surface of the fiber,
the pores are present in the core and in the shell ([0039]) and the pores extend into the fiber from the surface of the fiber ([0031]),
the porous fiber is an electrospun fiber, produced by electrospinning ([0038], [0063]) and having:
- diameter of 1000 nm to 10 micron ([0038], as to instant claims 1-3);
- pore size of 10 nm to 1000 nm, or 900 nm-1000 nm ([0036], as to instant claims 1, 4-5).
5. Since Singh et al discloses the pore sizes of 10 nm to 1000 nm, or preferably 900 nm-1000 nm, and said pore are present on the surface of the fiber, therefore, it would have been reasonable to expect that substantially all of the pores, or at least 80% of the pores on the surface will have a size of 10 nm to 1000 nm, or 900 nm to 1000 nm, as well (as to instant claims 4-5). 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.
6. The fiber is formed from an electrospinnable polymer including polyamide, a polyolefin, a polyester, a polyacrylonitrile, a polyethylene, a polyethylene terephthalate ([0064], [0065], [0076], as to instant claims 6, 8-12). Since said polymers are the same as those claimed in instant invention, therefore, said polymers will intrinsically and necessarily be insoluble in water as well (as to instant claim 1).
Though Singh et al discloses the use of polyethylene as the polyolefin, but does not exemplify the use of a polypropylene, since Singh et al broadly discloses the use of polyolefins as the fiber material, it would have been obvious to a one of ordinary skill in the art to choose and use not only polyethylene, but further polypropylene as the polyolefin used for making fiber as well, 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
7. It is noted that the porous fiber of Singh et al is produced using a sacrificial template as a pore-forming material ([0085]).
It is further noted that the porous fibers of instant invention are produced using a sacrificial pore-forming material by electrospinning as well ([0045], [0047], [0074] of instant specification).
8. As to instant claim 13, the nanofibers or microfibers are used to form a membrane, said fibers are collected/stacked until a desired membrane thickness ([0052]).
Given the porous fibers are stacked in the form of membrane, therefore, it would have been obvious to a one of ordinary skill in the art that such membrane will be nonwoven material. 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. Though Singh et al does not explicitly recite the length of said fibers, and does not explicitly teach nonwoven material prepared from said fibers,
Miyoshi et al discloses porous fiber and fiber structures including nonwoven material (Abstract, [0049], [0050], as to instant claim 13), produced by electrospinning and used in tissue engineering (Abstract),
wherein said porous are produced by electrospinning and comprises;
- fiber diameter of 0.1-20 micron, or 0.2-15 micron ([0061]) and
- fiber length most preferably of 1 mm or more ([0062]).
10. Since both Miyoshi et al and Singh et al are related to porous fibers having diameter of 10 micron or more, produced by electrospinning and used in medical applications, and thereby belong to the same field of endeavor, wherein Miyoshi et al further teach the length of said fibers being preferably 1 mm or more, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Singh et al and Miyoshi et al, and to prepare the porous fibers of Singh et al having length of at least 1 mm as well, since the porous fiber having such length is taught in the art as being preferably used for making such porous fibers used in medical applications as well. 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). 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:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(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
11. Claims 1, 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al (US 2013/0196405) in view of Miyoshi et al (US 2006/0204750) and Scholl et al (US 2018/0291530).
12. The discussion with respect to Singh et al (US 2013/0196405) in view of Miyoshi et al (US 2006/0204750) set forth in paragraphs 3-10 above, is incorporated here by reference.
13. Though Singh et al in view of Miyoshi et al disclose the use of polyolefins for making the porous fiber, Singh et al in view of Miyoshi et al do not explicitly recite said polyolefin being a polypropylene.
14. However, Scholl et al discloses porous fibers having pores with size of 100-5000 nm ([0091]), produced by mixing polymers with nanoinclusion/microinclusion domains forming pores upon drawing ([0043], [0091], [0092]), wherein the used polymers include polyamide, polyethylene terephthalate, polyethylene and further polypropylene ([0069], as to instant claims 6-11).
15. Since not only polyamide, polyethylene terephthalate, and polyolefin such as polyethylene, but further polypropylene is taught in the art as the polymer/polyolefin used for making porous fibers, as shown by Scholl et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine teachings of Singh et al in view of Miyoshi et al and Scholl et al, and to use, or obvious to try to use polypropylene as well as polyethylene as the polyolefin polymers for making porous fibers of Singh et al in view of Miyoshi et al as well, 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Conclusion
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.
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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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764