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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/02/2026 has been entered.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-16, 19-21 and 23-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 16, it is noted the claim language of “such thermoplastic polymer generally refers to homopolymers of lactic acid such as poly (L-lactic acid), poly (D-lactic acid), poly (DL-lactic acid).” does not require the thermoplastic polymer to be homopolymer and the cited art meets the present claim language. The present claim language merely states what is generally and is not required by the claim language. Further, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 1-16, 19-21 and 23-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kondo et al. (US Pat. 5,593,778) in view of Ozeki et al. (US Pat. 5,760,144).
Regarding claims 1-2 and 13, Kondo et al. teach a bicomponent fiber with a core-shell structure [Fig. 5] with component A (considered to be the core which is more degradable) forming the core and component B (considered to be the sheath or shell) forming the shell of the fiber. The component A in the core comprises a thermoplastic polymer A (polylactic acid) all of which his considered to be thermoplastic polymer A and the component B in the shell comprises a thermoplastic polymer (polylactic acid) all of which is thermoplastic polymer B. It is noted the claim language of “such thermoplastic polymer generally refers to homopolymers of lactic acid such as poly (L-lactic acid), poly (D-lactic acid), poly (DL-lactic acid).” does not require the thermoplastic polymer to be homopolymer and the cited art meets the present claim language.
Kondo et al. teach the fiber is used for its adhesiveness and therefore it would have been obvious to one of ordinary skill in the art to have the melting point of the thermoplastic polymer itself in component A in the core is at least 5°C, preferably at least 10°C, higher than the melting point of the thermoplastic polymer itself in component B in the shell in order for the fiber to provide adhesive property and arrive at the claimed invention.
The component A has a higher biodegradability than the component B and the component B and component A has an additive [13:6-17, 25:18-23 and 31:17-32 and 35:3-11]. It is noted Kondo et al. is silent regarding the method of measuring the biodegradability.
However, Although Kondo et al. does not disclose the method of measuring biodegradability, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed method and given that Kondo et al. meets the requirements of the claimed fiber, Kondo et al. clearly meet the requirements of present claims fiber. Further, it is believed Kondo et al. fiber would inherently possess the biodegradability by the claimed measurement methods given Kondo et al. teach such a similar fiber made of such a similar composition with such similar properties.
Thermoplastic B is a synthetic biopolymer (PLA).
Kondo et al. teach additives, but are silent regarding the claimed specific additive. However, Ozeki et al. teach inclusion of an additive including poly-3-hydroxybutyrate (aliphatic polyester) in order to increase biodegradation. It would have been obvious to one of to use the additive of Ozeki et al. in component A in Kondo et al. in order to increase biodegradation and arrive at the claimed invention.
Regarding claims 3-5, Kondo et al. teach thermoplastic polymer A and/or thermoplastic polymer B are synthetic biopolymers. The synthetic biopolymers may be one or more aliphatic, araliphatic polyesters or copolyesters which are produced from polyols, and aliphatic and/or aromatic dicarboxylic acids or their derivatives (anhydrides, esters) by polycondensation, wherein the polyols may be substituted or unsubstituted, and the polyols may be linear or branched polyols [25:18-22]. Dicarboxylic acid component is taught by Kondo. The polyols contain 2 to 8 carbon atoms, (ii) the aliphatic dicarboxylic acids comprise substituted or unsubstituted, linear or branched, non-aromatic dicarboxylic acids selected from the group formed by aliphatic dicarboxylic acids containing 2 to 12 carbon atoms and cycloaliphatic dicarboxylic acids containing 5 to 10 carbon atoms, wherein the cycloaliphatic dicarboxylic acids may also contain heteroatoms in the ring, (iii) the aromatic dicarboxylic acids comprise substituted or unsubstituted, aromatic dicarboxylic acids selected from the group formed by aromatic dicarboxylic acids containing 6 to 12 carbon atoms, wherein these carboxylic acids may also comprise heteroatoms in the aromatic ring and/or in the substituents, (iv) the substituted aromatic dicarboxylic acids contain 1 to 4 substituents selected from halogens, C6-C10 aryl and C1-C4 alkoxy. The synthetic biopolymer is selected from the group formed by aliphatic polyesters with repeat units of at least 4 carbon atoms. It is noted the “may” statements are not required by the present claim language.
Regarding claim 6, the synthetic biopolymer is an aliphatic polyester comprising repeat units of lactic acid (PLA), hydroxy fatty acid (PHF) (also known polyhydroxyalkanoate PHA), in particular hydroxybutanoic acid (PHB) and succinate-based aliphatic polymers, for example polybutylene succinate, polybutylene succinate adipate and polyethylene succinate).
Regarding claim 7, Kondo et al. teach the glass transition as a results effective variable and teaches how to modify the glass transition [27:6-11] and therefore, it would have been obvious to one of ordinary skill in the art to arrive at the claimed glass transition through routine experimentation in order to achieve the desired Tg.
Regarding claim 8, the thermoplastic polymer A and/or B has a melting temperature in the range 120°C to 285°C, in particular in the range 150°C to 270°C, particularly preferably in the range 175°C to 270°C [5:41-50].
Regarding claim 9, the thermoplastic polymer A and/or B is/are selected from the group formed by polylactic acids (PLA) as well as their copolymers, polyhydroxy fatty acid esters (PHF) as well as their copolymers, as well as blends of said polymers.
Regarding claim 10, the thermoplastic polymer A and/or the thermoplastic polymer B is/are selected from the group formed by melt spinnable synthetic biopolymers. The preferred statement is not required by the present claim language.
Regarding claim 11, the bi-component polymer fiber is a bi-component fiber in which the component A forms the core and the component B forms the shell and the melting point of the thermoplastic polymer in component A is at least 5°C, preferably at least 10°C, higher than the melting point of the thermoplastic polymer in component B. [23:20-29].
Regarding claim 12, the fiber has (i) at least one additive A in the component A or (ii) at least one additive B in the component B or (iii) at least one additive A in the component A and at least one additive B in the component B, with the proviso that the additive A and the additive B are different or insofar as at least one additive A is present in the component A and at least one additive B is present in the component B, the additive A and the additive B may also be identical, when the thermoplastic polymer A and thermoplastic polymer B are different. Kondo teaches the additive can be in component A and not in component B.
Regarding claim 14, the additive A has a proportion of the component A which is preferably between 0.005% by weight and 20% by weight, particularly preferably between 0.01% by weight and 5% by weight, with respect to the total weight of the component A and the additive B has a proportion of the component B which is preferably between 0.005% by weight and 20% by weight, particularly preferably between 0.01% by weight and 5% by weight, with respect to the total weight of the component B. [5:47-48; 11:3-9; 15:57-61]. It is noted that additive A and B are not required by the language of claim 14 and can be met by either additive A or additive B being present in the claimed amount.
Regarding claim 15, the fiber is a continuous filament.
Regarding claim 16, Kondo et al. teach a bicomponent fiber with a core/shell structure wherein component A forms the core and component B forms the shell of the fiber and the component A in the core comprises at least one thermoplastic A and component B comprises at least one thermoplastic B. It is noted the claim language of “such thermoplastic polymer generally refers to homopolymers of lactic acid such as poly (L-lactic acid), poly (D-lactic acid), poly (DL-lactic acid).” does not require the thermoplastic polymer to be homopolymer and the cited art meets the present claim language. The melting point of the thermoplastic polymer in the component A in the core is at least 5°C higher than the melting point of the thermoplastic polymer in the co-mponent B in the shell [23:20-29], and component A has a higher biological degradability than the component B. It is noted the preferably statements are not required by the present claim. The multicomponent fiber has an increased biological degradability compared to a multicomponent fiber without the additives A and/or B. Although Kondo et al. do not disclose the claimed method by determining the biological degradability, the biological degradability by the claimed methods is inherent to the multicomponent fiber given Kondo et al. teach such a similar multicomponent fiber made of such similar materials arranged in such a similar way. The fiber and its components has the claimed biological degradability and biological degradability compared to a multicomponent fiber without the additives A and/or B.
The fiber and its components has the claimed biological degradability and biological degradability compared to a multicomponent fiber without the additives A and/or B. Although Kondo et al. do not disclose the claimed method by determining the biological degradability, the biological degradability by the claimed methods is inherent to the fiber and components given Kondo et al. teach such a similar multicomponent fiber made of such similar materials arranged in such a similar way. Further, although Kondo et al. does not disclose the claimed method of measuring the biological degradability, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed method of measuring the biodegradability and given that Kondo et al. meets the requirements of the claimed fiber and components, Kondo et al. clearly meet the requirements of present claims fiber and components.
Kondo et al. teach additives in component A, but are silent regarding the claimed specific additive. However, Ozeki et al. teach inclusion of an additive including poly-3-hydroxybutyrate (aliphatic polyester) in order to increase biodegradation. It would have been obvious to one of to use the additive of Ozeki et al. in component A in Kondo et al. in order to increase biodegradation and arrive at the claimed invention.
Regarding claim 19, the additive A and/or B are aliphatic polyesters.
Regarding claim 20, the thermoplastic polymer A and/or the thermoplastic polymer B comprises at least one polyester, with the proviso that the polyester is an araliphatic polyester or copolyester in the case in which the additive A and/or B is an aliphatic polyester. [25:18-31].
Regarding claim 21, additive B is taught as butyl stearate (fatty acid esters) [25:49-64].
Regarding claims 23-25, Kondo et al. teach use of the fiber in a spunbond nonwoven (textile fabric) with the claimed basis weight [Table 6].
Response to Arguments
Applicant's arguments filed 06/02/2026 have been fully considered but they are not persuasive.
Applicant argues they could not find where the paragraph that was pointed to in the previous Office Action is. This paragraph is located at 30:57-64 and states “ The polyesters containing the lactic acid component as a main component are polymers containing at least 50% of the lactic acid component such as L-lactic acid and/or D-lactic acid, and comprehend poly-L-lactic acid homopolymer, poly-D-lactic acid homopolymer, L-lactic acid/D-lactic acid copolymer, and these polymers into which not more than 50% of a second or third component is included by copolymerization or mixing. They are easily degradable (co)polyesters.”.
Applicant argues the claim language requires that the polymer matrix in each component be a single, uniform thermoplastic polymer (typically a homopolymer or standard commercial polymer such as the long list provided for polymer B, or the specifically defined PLA homopolymers). This is not the case. As set forth in the rejection above, the claim language of “such thermoplastic polymer generally refers to homopolymers of lactic acid such as poly (L-lactic acid), poly (D-lactic acid), poly (DL-lactic acid).” does not require the thermoplastic polymer to be homopolymer and the cited art meets the present claim language. The present claim language merely states what is generally and is not required by the claim language. Therefore, the copolymers of Kondo read on the present claims. Further, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Applicant argues Kondo does not teach a separate additive. Ozeki teaches a separate additive added. Applicant is invited to amend the claims over the cited art.
Art Not Used by Relevant
PG Pub. 2014/0272362 teaches a bicomponent fiber with additives.
Conclusion
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/Shawn Mckinnon/Examiner, Art Unit 1789
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