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 Rejections – 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-10 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claim 1 recites a filament that is “ultra-fine” and “uniform”. The terms “ultra-fine” and “uniform” are not defined in the claims or in the specification.
The terms “ultra-fine” and “uniform” are relative terms because they require a comparison to another filament having a different degree of fineness or a different degree of variability. However, the claims and specification do not provide such a point of comparison by which to judge the scope of the terms.
The terms “ultra-fine” and “uniform” are subjective because they require one to exercise judgment with respect to whether any particular shape or size of a filament is “ultra-fine” or else more fine or less fine than “ultra-fine”; and whether any particular degree of variability of the filament falls within the scope of “uniform” or else is more variability than “uniform”.
The specification does not contain a disclosure of an objective standard by which to determine whether or not any particular degree of fineness or degree of variability of a filament is sufficient or necessary to be considered “ultra-fine” and “uniform”. The specification also does not explain which characteristics, such as the diameter, aspect ratio, surface roughness, or other physical qualities, are considered in the assessment of the ‘uniformity’ of a filament.
Absent any controlling definition or objective standard by which to judge the scope of the terms, different persons may reach different conclusions as to the scope of “ultra-fine” and “uniform” filaments. See MPEP 2175.05(b)(IV). Because one of ordinary skill in the art would need to exercise subjective judgment to make such a determination, the claim as read in light of the specification does not set forth the scope of the claimed invention with reasonable clarity.
Claims 2-10 are ultimately dependent upon independent claim 1, and claim 10 also recites the terms “ultra-fine” and “uniform”; and they are indefinite for the same reasons.
Independent claim 1 recites a step of cutting tubes into a plurality of “short” tubes. The term “short” is not defined in the claims or in the specification.
The term “short” is a relative term because it requires a comparison to another tube having a different, longer length. However, the claims and specification do not provide such a point of comparison by which to judge the scope of the term.
The term “short” is subjective because they require one to exercise judgment with respect to whether any particular length of a tube is “short” or else longer than “short”.
The specification does not contain a disclosure of an objective standard by which to determine whether or not any particular length of a tube is sufficient or necessary to be considered “short”.
Absent any controlling definition or objective standard by which to judge the scope of the terms, different persons may reach different conclusions as to the scope of “short” tubes. See MPEP 2175.05(b)(IV). Because one of ordinary skill in the art would need to exercise subjective judgment to make such a determination, the claim as read in light of the specification does not set forth the scope of the claimed invention with reasonable clarity.
Claims 2-10 are ultimately dependent upon independent claim 1, and they are indefinite for the same reasons.
Independent claim 1 recites a step of “naturally” drying a filament. The claims and the specification do not explain the manner in which the drying is a result of nature or what conditions constitute ‘natural’ drying.
In the description of the process illustrated in Fig. 1, the specification states the following: “Two ends of the expanded filament of the acrylic acid-acrylamide copolymer or the expanded filament of the acrylamide homopolymer obtained in step 105 are fixed so that the expanded filament is naturally dried at room temperature” (Spec. p. 9, ¶ [0050]). This disclosure is not a definition of the term “naturally”, and thus the claimed drying step is not necessarily at room temperature. The examiner finds no further disclosure regarding the conditions that may constitute ‘natural’ drying.
Claims 2-10 are ultimately dependent upon independent claim 1, and they are indefinite for the same reasons.
Claim Rejections – 35 U.S.C. §§ 101, 112
The following is a quotation of 35 U.S.C. § 101:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 10 is rejected under 35 U.S.C. § 101 as being drawn to a nonstatutory subject matter and under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 10 is drawn to “using” a filament, and “using” is not one of the four categories of patent eligible subject matter. The claim thereby fails to comply with 35 U.S.C. § 101. The claim also does not set forth any particular steps of a method of performing the recited “using”, and therefore the claim does not inform one skilled in the art about the scope of the recited “using” with reasonable clarity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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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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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764