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 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 4, the claim recites that the at least one biodegradable binder comprises the bio-based binder based on modified biopolymers and natural plant compounds, and wherein the bio-based binder comprises n-octyltriethoxysilane, zirconium acetate, and urethane. Applicants’ specification as originally filed does not appear to teach the bio-based binder comprising each of n-octyltriethoxysilane, zirconium acetate, and urethane in combination. Therefore, the limitation constitutes new matter.
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 4 is 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 claim 4, the claim recites that the at least one biodegradable binder comprises the bio-based binder based on modified biopolymers and natural plant compounds, and wherein the bio-based binder comprises n-octyltriethoxysilane, zirconium acetate, and urethane. Claim 4 is dependent from claim 1, which recites at least one biodegradable and/or bio-based binder. The recitation of “at least one biodegradable and/or bio-based binder” appears to indicate that the binder is separately biodegradable or bio-based or both biodegradable and bio-based. However, the claim recites that the biodegradable binder comprises the bio-based binder. The verbiage of the claim is unclear as to what exactly is claimed, including how many binders are required by the claim.
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.
Claims 1-3, 5, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2008/0287026 to Chakravarty in view of US Pub. No. 2009/0246258 to Shukla.
Regarding claims 1-3, 5, and 20, Chakravarty teaches a biodegradable nonwoven laminate comprising a meltblown layer containing an aliphatic polyester sandwiched between spunbond layers containing an aliphatic polyester (Chakravarty, Abstract, paragraphs 0029, 0040, Fig. 2). Chakravarty teaches that the fibers used in the nonwoven layers of the multi-laminate may have any desired configuration, wherein the spunbond filaments may also contain one or more strength-enhancing polymers as a component or constituent, wherein the polymers are biodegradable including polylactic acid (Id., paragraphs 0034-0036). Chakravarty teaches that the meltblown fibers include one or more strength-enhancing polymers as a component, including polylactic acid (Id., paragraphs 0037-0038). Chakravarty teaches that the fibers may constitute the entire fibrous component of a nonwoven layer or blended with other types of fibers (Id., paragraph 0038). Chakravarty teaches that the nonwoven laminate may comprise an SMS laminate or an SMMS laminate (Id., paragraph 0039).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the laminate of Chakravarty, wherein each of the layers comprise polylactic acid in a configuration, such as claimed, motivated by the desire of forming a conventional biodegradable nonwoven laminate having the desired properties based on the totality of the teachings of the prior art.
Chakravarty teaches that the laminate may be treated to impart desirable characteristics, such as antimicrobial agents (Chakravarty, paragraph 0049). Chakravarty does not appear to teach the claimed binder and antimicrobial agent. However, Shukla teaches an antimicrobial and odor absorbing fabric substrate and at least a portion of the surface is coated with a finish containing silver particle containing compounds, potassium citrate, and a polyurethane binder (Shukla, Abstract). Note that potassium citrate is known in the art as being biodegradable and derived from citric acid, which is a natural plant compound. Shukla teaches that the fabric may comprise synthetic fibers such as polyester (Id., paragraph 0009). Shukla teaches that the silver particle may comprise a nanoparticle (Id., paragraphs 0030-0032). Shukla teaches that the treated substrates exhibit durable odor control and durable softness, reduced wrinkling, and improved moisture wicking capability (Id., paragraph 0012).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the laminate of Chakravarty, and providing an antimicrobial coating to at least a portion of the surface with a silver nanoparticle coating, as taught by Shukla, motivated by the desire of forming a conventional biodegradable nonwoven laminate comprising an antimicrobial coating known in the art as being predictably suitable for fabrics, where odor control and softness, among other properties, are desirable.
Alternatively, note that the recitation of a biobased binder is interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even 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, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicants intend to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicants should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claim 20, the prior art combination teaches that the nonwoven laminate may comprise an SMS laminate or an SMMS laminate. Additionally, the limitation directed to the layers being formed separately is interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even 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, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Claims 1-3, 5, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2008/0287026 to Chakravarty in view of US Pub. No. 2009/0246258 to Shukla and US Pub. No. 2015/0284587 to Schallenberger.
Regarding claims 1-3, 5, and 20, the prior art combination teaches a bio-based binder as claimed. Additionally, Schallenberger teaches an antimicrobial polymeric coating formulation composed of a biodegradable polymeric carrier and an antimicrobial agent (Schallenberger, Abstract, paragraph 0009). Schallenberger teaches that the polymer may be biodegradable and biocompatible polymers including polycaprolactones, polyethylene glycols, polyhydroxyalkanoates, polylactides, and polyurethanes (Id., paragraph 0015). Schallenberger teaches that the antimicrobials may comprise silver nanoparticles (Id., paragraph 0024).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coated laminate of the prior art combination, wherein the binder is a biodegradable polyurethane or biocompatible polymer, such as claimed, as taught by Schallenberger, motivated by the desire of forming a conventional biodegradable nonwoven laminate comprising an antimicrobial coating which is advantageously biodegradable, such that the entirety of the laminate is environmentally friendly.
Claims 1-3, 5, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Chakravarty in view of US Pub. No. 2017/0156340 to Toreki.
Regarding claims 1-3, 5, 20, and 21, the teachings of Chakravarty set forth above are incorporated herein. Chakravarty teaches that the laminate may be treated to impart desirable characteristics, such as antimicrobial agents (Chakravarty, paragraph 0049). Chakravarty does not appear to teach the claimed binder and antimicrobial agent. However, Toreki teaches durable antimicrobial coatings for textiles and other substrates with long-lasting efficacy (Toreki, Abstract). Toreki teaches a liquid water-born formulation comprising a metal derivative, a polymer, and hydrogen peroxide, wherein the metal derivative is an oxide of a metal selected from the group including zinc oxide nanoparticles (Id., paragraph 0025, claims 1 and 8). Toreki teaches that the polymer is selected from the group including cellulose acetate, polylactic acid, and polycaprolactone (Id., paragraphs 0027-0028). Toreki teaches that the textile article comprises cotton, rayon, polyester, nylon, acrylic, or a mixture thereof, in the form of a sheet, clothing, or protective garment (Id., paragraphs 0047-0048). Toreki teaches that the coating imparts a durable and long-lasting antimicrobial effect to the surface sufficient to reduce or eliminate the proliferation and spread of pathogenic organisms (Id., paragraphs 0077-0080).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the laminate of Chakravarty, and providing an antimicrobial coating to at least a portion of the surface with a comprising a zinc nanoparticle and polylactic acid, as taught by Toreki, motivated by the desire of forming a conventional biodegradable nonwoven laminate comprising an antimicrobial coating known in the art as being predictably suitable for fabrics, where a durable and long-lasting antimicrobial effect are desirable. Note that Chakravarty establishes that polylactic acid is biodegradable.
Additionally, note that the recitation of a biobased binder is interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even 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, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicants intend to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicants should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Response to Arguments
Applicant's arguments filed December 15, 2025, have been fully considered but they are not persuasive. Applicants argue that the layers of Chakravarty are different from the claimed at least three laminated layers, and that there is no evidence that Chakravarty teaches an additional PLA layer as claimed. Examiner respectfully disagrees. Chakravarty teaches that the nonwoven laminate may comprise an SMS laminate or an SMMS laminate, wherein each layer comprises polylactic acid.
Applicants argue that the binder in Shukla is a polyurethane binder and that there is no evidence that Shukla describes a biodegradable and/or bio-based binder. Examiner respectfully disagrees. Shukla teaches an antimicrobial and odor absorbing fabric substrate and at least a portion of the surface is coated with a finish containing silver particle containing compounds, potassium citrate, and a polyurethane binder. The inclusion of potassium citrate renders the binder bio-based. Additionally, as set forth above, the limitation “bio-based” is interpreted as a product by process limitation as it is directed to the starting materials of the binder.
Applicants argue that “bio-based binder” is not a product by process limitation as the claims do not recite any kinds of process. Examiner respectfully disagrees. Claim 1 recites that binder is “bio-based.” Such a limitation is clearly directed to the starting materials for the binder and are not necessarily directed to the final product. For example, claim 3 further recites a bio-based binder “based on modified biopolymers and natural plant compounds.” If Applicants intended for the final binder product to comprise modified biopolymers and natural plant compounds, the claims may be amended in such a manner.
Additionally, although Applicants argue that the pending claims are directed towards an article of manufacture and not an article made by a specific process or method, as the claims do not recite any kind of process are therefore clearly different than product by process claims, it is noted that MPEP § 2113 provides for product by process limitations. Additionally, it is noted claim 20 clearly recites a product by process limitation, as the claim recites that the spunbond layers “are formed separately from the at least one middle layer.”
Applicants argue that there is no evidence that Shukla teaches that an antimicrobial agent is provided within the binder. Examiner respectfully disagrees. Shukla teaches at least a portion of the surface is coated with a finish, the finish containing silver particle-containing compounds, potassium citrate, and a polyurethane binder. Tables 1 and 2 show that the finishes contain the aforementioned materials. It is unclear how the teachings of Shukla would lead one of ordinary skill in the art to necessarily expect that the antimicrobial agent is not within the finish.
Applicants argue that Schallenberger is non-analogous art, as Schallenberger does not relate to fabrics, and as there is no indication in Schallenberger that the antimicrobial coatings for medical devices are relatable to nonwoven fabrics. Examiner respectfully disagrees. The Rejection is based on the totality of the teachings of the prior art. Chakravarty already establishes that multilayer laminates, such as SMS and SMMS laminates, were known in the art to be treated with antimicrobial agents. Shukla already establishes that antimicrobial coatings for fabrics were known in the art to include well-known antimicrobial agents such as silver particle containing compounds in a finish. Schallenberger is relied on to teach that it was known to include antimicrobials such as silver nanoparticles in a polymeric coating formulation composed of a biodegradable polymeric carrier. Similar to Shukla which teaches a polyurethane binder, Schallenberger teaches that biodegradable polymers include a biodegradable polyurethane or biocompatible polymer. Therefore, the totality of the teachings of the prior art establishes antimicrobial coatings including silver nanoparticles and a biodegradable binder or biocompatible polymer, which is predictably suitable for use on fabrics, such as taught by Chakravarty. Applicants have not established to the contrary.
Additionally, although Applicants argue that Schallenberger is not reasonably pertinent to the problem with which the Applicant is concerned, it is unclear exactly what problem the inventor is trying to solve. As set forth above, the claimed invention is directed to a nonwoven fabric and an antimicrobial agent provided within a binder. Such applications of antimicrobial agents in a binder, such as an antimicrobial agent in a polymeric coating, are well-known in the art, as established by at least the prior art references set forth above. Since Schallenberger is only relied on to teach that it was known to include antimicrobials such as silver nanoparticles in a polymeric coating formulation composed of a biodegradable polymeric carrier, Schallenberger is clearly analogous to Applicants’ invention, including use of an antimicrobial agent in a coating. Applicants have not established to the contrary. Note that Chakravarty establishes that the nonwoven laminate is suitable for use in medical products (Chakravarty, paragraph 0050).
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786