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 .+
Claims 1-3 and 5-16 are currently pending. Claim 16 has been added as new. Claim 4 has been canceled. Claims 1-3, 5-8 and 14-15 have been currently amended. Claims 9-13 have been withdrawn.
Terminal Disclaimer
The terminal disclaimer filed on 11/13/2025 disclaiming the terminal portion of any patent granted on this application been reviewed and is accepted. The terminal disclaimer has been recorded.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 17/954,502 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending application No. ‘502 have claims drawn to a liquid crystal polyester fiber having a total amount of carboxy end groups of 5.0 mEq/Kg or less and a tenacity of 18 cN/dtex or higher, wherein the liquid crystal polyester fiber is heat treated ( see claims 4-7 of copending application ‘502). Both the instant claims and copending application ‘502 recite open claim language, “comprising”; therefore, other components may be included in their respective inventions such as metallic element selected from Group 8 to 11 of Periodic Table. Therefore, it would have been obvious to modify the heat-treated liquid crystal polyester fiber of copending application ‘502 to include metallic compound as recited by the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5-6, 8, 14 and 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ikehata et al. (US 2023/0055144 A1).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claims 1, 3, 5-6, 8, 14 and 16, Ikehata et al. teach ( see abstract, claims and examples) comprising a heat-treated liquid crystal polyester fiber ( see abstract, examples and paragraphs [0076, 0084 & 0098]), wherein the heat-treated liquid crystal polyester fiber has a tenacity of 18 cN/dtex or higher ( abstract, claims and examples) and at least one metallic element selected from the group consisting of metallic elements from Group 8 to Group II in Periodic Table ( Iron (Fe); [0097]). The liquid crystal polyester constituting the heat-treated liquid crystal polyester consist of a combination of structural units represented by formulas (1) to (16) and (18) ( See tables 2, 3 and 4 in paragraphs [0040-0042]). The liquid crystal polyester fiber has single fiber fineness of 0.5 to 50 dtex ( See Examples and [0059]). The liquid crystal polyester suitably used in Ikehata may preferably have a melting point in the range from 250 to 380° C [0047]. Ikehata et al. teach that the amount of CO2 gas generation amount was evaluated by pyrolysis GC-BID method for the heat-treated liquid crystal polyester fiber ( see Examples and [0124]).
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.
Claim(s) 1-3, 5-8, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (WO 2020/166316 A1; citations from EP 3926081 A1).
Regarding claims 1-3, 5-8 and 14-16, Tanaka et al. teach a heat-treated liquid crystal polyester fiber (abstract, claims, examples and paragraphs [0002 and 0013]) comprising at least one metallic element selected from the group consisting of metallic element from Group 8 to Group II in Periodic Table ( iron (Fe); [0033 & 0056] and examples) and a content amount of 10.0 wt% or less of an alkaline earth metal or alkaline metal [0057-0059]. Tanaka et al. teach a single fiber fineness of 0.5 to 50 dtex ( 1 to 30 dtex; [0038]). Tanaka et al. teach a liquid crystal polyester having the structural units of formula (1) as instantly claimed ( see claims 8 and 9).
Tanaka et al. recognize that the liquid crystal polyester fiber is obtained by melt spinning to obtain an as spun-yarn and subjecting the yarn to a heat treatment ( [0041-0050] and examples. Further regards to instant claims, it is noted that Tanaka et al.. teach the same liquid crystal polyester as well as the same liquid crystal polyester fiber recited by independent claim 1 and 15. Therefore, the chemical properties of total CEG amount, total amount of one-end groups, fiber fineness, tenacity and melting point of the liquid crystal polyester as well as liquid crystal polyester fiber would inherently be included in the liquid crystal polyester of Tanaka et al. A reference that is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
It is noted that Tanaka et al. teach the same metallic compounds as recited by independent claims. Therefore, the chemical properties of melting point would inherently be included in the metallic compounds of Tanaka et al. A reference that is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Further regards to the instant claims, it is noted that the temperature, molecular weight, melting point, , tenacity and etc. are all well-known to one of ordinary skill in the art to be optimizable. Although Tanaka et al. et al. may not specifically recite one or more properties of the liquid crystal composition, polyester or fibers as instantly claimed, a person skilled in the art could, as appropriate, for example, optimize the molecular weight, etc. of a liquid-crystal polyester in accordance with desired physical properties, regulate the melting point of a starting material in accordance with desired processability, or adopt a method in which a melt-kneaded mixture is ejected from a nozzle and spun in liquid crystal polyester fiber production. No special effect is considered to be produced by any of these features. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 5-8 and 14-16 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.
Response to Declaration
Applicant’s declaration with respect to claim(s) 1-3, 5-8 and 14-16 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 declaration
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 CHANCEITY N ROBINSON whose telephone number is (571)270-3786. The examiner can normally be reached Monday-Friday (8:00 am-6:00 pm; IFP; PHP).
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/CHANCEITY N ROBINSON/Primary Examiner, Art Unit 1737