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 .
Claim Objections
Claims 1 and 4 are objected to because of the following informalities:
Regarding claim 1, the claim includes a period at the close of line 3, and does not include a period at the end of the claim. Each claim must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations (see MPEP 608.01(b)).
Regarding claim 4, the claim is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n).
Appropriate correction is required.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of co-pending Application No. 18/247,221 (reference application) in view of Suzuki (JP 2010150676 A, hereinafter referring to the attached ESPACENET translation) and Tanaka (JP 2006169677 A, hereinafter referring to the attached ESPACENET translation).
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claim 1, claim 1 of the reference application teaches a polyurethane yarn comprising a combination of polyurethane polymers [A] and [B], which are formed from polymeric diols and diisocyanates, and wherein the fiber is specifically indicated as being elastic. Claim 1 of the reference application is silent with regard to the incorporation of rosin and cellulose ester components as claimed; however, Suzuki teaches the incorporation of rosin alongside thermoplastic polyurethane elastomers within spinnable fiber compositions, which provides excellent thermal adhesive strength while not compromising spinnability or stretchability ([0026]), and Tanaka teaches the incorporation of a cellulose ester dispersant alongside thermoplastic polyurethanes within spinnable fibers, which is useful for preventing aggregation of mineral-based fine particulates which, when included, impart functionality to the spun polyurethane fibers ([0052] and [0004]). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate both rosin and cellulose ester components to the formulation of claim 1 of the reference application, thus arriving at the claimed composition.
Regarding claim 2, the claims of the reference application are silent with regard to the claimed amount of thermoplastic polyurethane elastomer. However, Suzuki also teaches the incorporation of two polyurethanes including a polyurethane elastomer within spinnable compositions ([0009] and [0057]), and teaches that the thermoplastic polyurethane elastomer (which reads on the claimed “thermoplastic polyurethane elastomer”) is included in amounts ranging from 0.3 to 40 wt% ([0010]), which encompasses the claimed range of “0.3% by mass or more and 30% by mass or less,” establishing a prima facie case of obviousness.
Regarding claim 3, Suzuki teaches that the rosin component (which reads on the claimed “rosin and/or derivative thereof”) is included in amounts ranging from 0.1 to 20 wt% ([0010]), which encompasses the claimed range of “0.1% by mass or more and 10% by mass or less,” establishing a prima facie case of obviousness.
Regarding claim 4, Tanaka teaches that the cellulose ester component (which reads on the claimed “cellulose ester and/or a derivative thereof”), is included in amounts ranging from 1 to 50% ([0056]), which overlaps the claimed range of “0.5% by mass or more and 10% by mass or less,” establishing a prima facie case of obviousness.
Regarding claim 5, claim 5 of the reference application teaches the combination of the purportedly-inventive ingredients followed by spinning the resulting stock solution. Suzuki and Tanaka additionally teach the combination of individual inventive components’ solutions, followed by dry-spinning ([0073] of Suzuki and [0093] and [0095] of Tanaka), which reads on the claimed process.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (JP 2010150676 A, hereinafter referring to the attached ESPACENET translation) in view of Tanaka (JP 2006169677 A, hereinafter referring to the attached ESPACENET translation).
Regarding claim 1, Suzuki teaches polyurethane elastic yarn having excellent thermal adhesiveness ([0001]), suitable for forming fabrics ([0057]). Suzuki exemplifies the inventive formulation ([0073]-[0084]). Inventive Example 1 of Suzuki includes, inter alia, a series of components dissolved in dimethyl acetamide as follows ([0073]):
A polyurethane polymer composed of PTMG, MDI, and ethylenediamine and diethylamine (solution A1), which reads on the claimed “polyurethane whose main starting materials are a polymer diol and a diisocyanate”
a thermoplastic polyurethane elastomer (solution B1), which reads on the claimed “thermoplastic polyurethane elastomer”
a rosin which is dissolved in dimethyl acetamide and designated as solution C1, which reads on the claimed “rosin and/or derivative thereof”
Suzuki differs from claim 1 because it is silent with regard to the claimed “cellulose ester and/or derivative thereof.”
In the same field of endeavor, Tanaka teaches polyurethane yarn that has functionality imparted by functional materials, excellent heat-setting properties and heat-resistance, and which is useful for stretchable clothing ([0001]). Tanaka teaches the incorporation of a cellulose ester dispersant, which is useful for preventing aggregation of mineral-based fine particulates which, when included, impart functionality to the spun polyurethane fibers ([0052] and [0004]). Tanaka further specifies that the polyurethane within the inventive composition is preferably one formed from PTMG, MDI, and a diamine optionally including ethylenediamine ([0031]), which is highly similar to the main component of Suzuki, described above. Tanaka further contemplates the use of dimethyl acetamide solvent, similar to Suzuki ([0092]). Finally, Suzuki does not teach away from the incorporation of mineral materials, and Tanaka specifically indicates the usefulness of incorporating said minerals within similar formulations. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the cellulose ester dispersants of Tanaka within the formulation of Suzuki for the purpose of stabilizing formulations for mineral filler incorporation, with the ultimate goal of adding functionality to the fabric-suitable fiber material. In doing so, the formulation of Suzuki as modified by Tanaka would also include a cellulose ester, which reads on the claimed “cellulose ester and/or a derivative thereof.”
Regarding claim 2, Suzuki teaches that the thermoplastic polyurethane elastomer (which reads on the claimed “thermoplastic polyurethane elastomer,” as described above) is included in amounts ranging from 0.3 to 40 wt% ([0010]), which encompasses the claimed range of “0.3% by mass or more and 30% by mass or less,” establishing a prima facie case of obviousness.
Regarding claim 3, Suzuki teaches that the rosin component (which reads on the claimed “rosin and/or derivative thereof,” as described above) is included in amounts ranging from 0.1 to 20 wt% ([0010]), which encompasses the claimed range of “0.1% by mass or more and 10% by mass or less,” establishing a prima facie case of obviousness.
Regarding claim 4, Tanaka teaches that the cellulose ester component (which reads on the claimed “cellulose ester and/or a derivative thereof,” as described above), is included in amounts ranging from 1 to 50% ([0056]), which overlaps the claimed range of “0.5% by mass or more and 10% by mass or less,” establishing a prima facie case of obviousness.
Regarding claim 5, Suzuki teaches the combination of the individual components’ solutions, followed by dry-spinning ([0073]), which reads on the claimed process. Furthermore, Tanaka exemplifies the dissolution of the cellulose ester into dimethyl acetamide and subsequently combining with the other ingredient solutions followed by dry spinning ([0093], [0095]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762