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 .
Election Acknowledged
Applicant's election without traverse of the invention of Group I encompassing claims 1-10 and 19-21 in the reply filed on 5/15/2026 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4/30/2024, 10/15/2024, 2/11/2025, 4/30/2025, 7/10/2025 and 5/14/2026 were considered by the examiner.
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 1-9 and 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Green et al. (EP 1287197; of record), evidenced by Azo materials: Nylon-6 (1 page, https://www.azom.com/article.aspx?ArticleID=456) and Polymer Resources: Nylon-66( 7 pgs, https://prlresins.com/nylon-66-polymer-step-reaction-polymerization/).
Green describes yarns and fabrics having a durable non-electrically conductive topically applied metal-based finish wherein a substrate, such as a yarn, is treated with a finish composition and then treated with a binder formulation (‘imbibed’) (see abstract and claim 1) (see instant claims 1). The yarn is to be used in various textiles such as apparel (‘garment’) and gloves (‘skin guard’) (i.e. clothing) (see [0014]) (see instant claims 19-21). Exemplified yarn materials include spandex, polyurethane and nylon-6 (see [0002, 0009]). It is noted that spandex polyurethane, nylon-6 and nylon-6,6 are ‘elastomeric’ materials thereby rendering the final material ‘elastomeric’ (see Azo Materials: Nylon 6 and Polymer Resources: Nylon 66 as evidence of elastic/elastomeric properties) (see instant claims 2-4). Green’s treated yarn fibers may be knit/woven together with non-treated yarns (see [0034]) (see instant claim 5).
The finish composition applied to the yarn comprises an antimicrobial metal compound (i.e. antiseptic, antifungal) (see [0006]) (see instant claim 22) and the binder formulation may be crosslinked imidazolidinones and acrylic polymers (see [0006]). It is noted that the binder is to be hydrophobic (see [0024, 0027]) (see instant claims 8 and 9). Greene’s teaching that the finish is applied to the yarn by way of imbibing the yarn material in a solution containing the finish material (see Examples) is reasonable to conclude that the prior art would result in a similar structural outcome.
Thus, in all, Greene describes a garment similar to that claimed in that it provides a textile comprising an elastomeric yarn coated (imbibed) with a crosslinked hydrophobic polymer (e.g. a crosslinked acrylic polymer) and an active compound dispersed therein. The properties of releasing the agent on to the skin when the fabric is worn (as recited by claims 6 and 7) is an intended use limitation as it requires the textile be used in a specific way which does not limit the compositions’ structure but instead provides an avenue for how the composition may be used. See MPEP 2111.02(II).
Green’s yarn possesses superior wash durability wherein the metal finish is retained in the yarn after at least 10 washes (see [0006]) such that after 30 washes 70% of the antimicrobial metal particles are retained thereby retaining antimicrobial activity (see [0033]).
Regarding the limitation the textile possess ‘a reusable patch or section coupled to the woven or knitted fabric’, Greene teaches that the treated fibers be present on ‘at least a portion of the surface of the substrate’ thereby suggesting a patch or section like that claimed. Regarding the ‘reusable’ nature of the treated section, as noted above under section 13, the finished fibers have wash resistance and fibers which retain activity over periods of time.
The only difference between Greene and the instant claims is that Greene does not teach the specific combination of components as claimed in a single embodiment, or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Greene, but ‘such ‘picking and choosing’ within several variable does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. It's noted that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP 2141(I).
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Green et al. (EP 1287197; of record), evidenced by Azo materials: Nylon-6 (1 page, https://www.azom.com/article.aspx?ArticleID=456) and Polymer Resources: Nylon-66 (7 pgs, https://prlresins.com/nylon-66-polymer-step-reaction-polymerization/) as applied to claims 1-9 and 19-21 above, and further in view of Gusach et al. (EP 0890336).
Greene fails to teach their textile as comprising an indicator configured to determine a qualitative or quantitative amount of wash cycles experienced by the patch or section.
Gusach is directed to textiles having a bacteriostatic and fungistatic finish that is resistant to several washes and contains an indicator to indicate the level of the bacteriostatic/fungiostatic treatment. It is taught that the indicator is useful to present the number of washes that still maintain the efficacy of the treatment and when the indicator is absent, the material no longer possesses a bacteriostatic/fungiostatic property. It would have been obvious to modify Greene’s antimicrobial textile so as to include an indicator to inform the user of the functional activity of the textile. See MPEP 2143(I)(C).
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
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 1-10 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11633366 in view of Gusach et al. (EP 0890336).
Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims in all the applications are drawn to a machine-washable, reusable textile comprising: an imbibed yarn, wherein the imbibed yarn comprises a yarn imbibed with a cross-linked hydrophobic polymer comprising an initial amount of a biologically beneficial active compound, wherein the imbibed yarn is in a knitted or woven relationship with non-imbibed yarn; wherein the machine-washable textile delivery system retains an effective amount of the biologically beneficial active compound for releasing the biologically beneficial active compound to skin of a subject after at least 5 wash cycles. The treated portion of the reference garment is understood to be a section. The main difference is the reference patent does not describe the textile as comprising an indicator. However, Gusach teaches that bacteriostatic textiles may comprise an indicator to indicate the antimicrobial activity remaining in the material after successive washes. The claims of the patented document are not patentably distinct over the instantly claimed subject matter
Claims 1-9 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11690808 in view of Gusach et al. (EP 0890336).
Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims in the reference document is to an article of clothing comprising: (i) a yarn; (ii) a polymer matrix comprising: a polymer; and a biologically therapeutic active compound dispersed in the polymer, wherein the polymer matrix is imbibed on the yarn completely or partially along its length providing an imbibed yarn that releases the biologically therapeutic active compound from the polymer matrix; and (iii) non-imbibed yarn, wherein the polymer matrix is not imbibed along its length; wherein the imbibed yarn and the non-imbibed yarn are in a woven or knitted configuration as an article of clothing that is washable and reusable as the article of clothing. The main difference is the reference patent does not describe the textile as comprising an indicator. However, Gusach teaches that bacteriostatic textiles may comprise an indicator to indicate the antimicrobial activity remaining in the material after successive washes. The claims of the patented document are not patentably distinct over the instantly claimed subject matter
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Application No. 18/215445 in view of Gusach et al. (EP 0890336).
Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims in the reference document is to an article of clothing comprising: at least one yarn; a polymer matrix comprising: a polymer; and a biologically therapeutic active compound dispersed in the polymer, wherein the at least one yarn is treated with the polymer matrix, thereby providing at least one treated yarn that releases the biologically therapeutic active compound from the polymer matrix; and wherein the at least one treated yarn is in a woven or knitted configuration as the article of clothing that is washable and reusable as the article of clothing; wherein the article of clothing is constructed and configured to conform to at least one part of a body of a mammal, wherein the article of clothing is constructed and configured to contact the skin of the mammal with the at least one treated yarn; and wherein the biologically therapeutic active compound released by the at least one treated yarn is delivered to the skin of the mammal. The main difference is the reference patent does not describe the textile as comprising an indicator. However, Gusach teaches that bacteriostatic textiles may comprise an indicator to indicate the antimicrobial activity remaining in the material after successive washes. The claims of the patented document are not patentably distinct over the instantly claimed subject matter
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611
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