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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 in the reply filed on 23 December 2025 is acknowledged.
Claims 8-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 23 December 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
Claims 1-7 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.
In claim 1, line 2, the term “preferably” renders the claim indefinite because it is not clear if the subsequent expression is, or is not, a claim limitation.
In claim 2, line 7, the term “preferably” renders the claim indefinite because it is not clear if the subsequent expression is, or is not, a claim limitation.
In claim 4, line 4, the term “preferable” renders the claim indefinite because it is not clear if the subsequent expression is, or is not, a claim limitation.
In claim 7, line 3, the expression “the non-woven fiber layer” does not have clear and proper antecedent basis in the claims.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stigsson (U.S. Patent Application Publication 2020/0299416 A1) in combination with Wlodzimierz et al (PL 214565 B1) and Turunen et al (U.S. Patent No. 4,583,984 A).
Regarding claim 1, Stigsson (see the entire document, in particular, paragraphs [0001], [0007], [0023], [0024], [0030], [0031], [0033] and [0037]) teaches a process (see paragraph [0001] (method for producing regenerated cellulose fibers) of Stigsson), including (a) extruding a spinning solution into a coagulation bath which contains a salt and optionally an alkali to produce a fiber tow (see paragraphs [0007] (wet-spinning an alkaline spindope composition) and [0030] (coagulation liquid includes sodium hydroxide (i.e., an alkali) and sodium carbonate or sodium sulfate (i.e., a salt)) of Stigsson); (a)(1) the spinning solution including cellulose dissolved in an aqueous solvent including sodium hydroxide (see paragraph [0024] (cellulose dope is manufactured by providing cellulose slurry and aqueous sodium hydroxide) of Stigsson); (a)(2) the coagulation bath having a pH of at least seven (see paragraph [0023] (coagulation bath having a pH above about 7) of Stigsson); (b) stretching the fibers in the fiber tow to a final cellulose specific diameter (see paragraphs [0031] (stretching the fibers) and [0037] (cutting the regenerated cellulosic fiber to obtain staple fiber; cutting is not limited to before drying or after drying) of Stigsson); and (c) orienting the fibers in the fiber tow to a final state (see paragraphs [0033] (washing) and [0037] (bleaching; cutting the regenerated cellulosic fiber to obtain staple fiber; cutting is not limited to before drying or after drying) of Stigsson). Stigsson does not teach (1) a spinning solution including zinc oxide, (2) stretching the fibers before being cut to staple fibers in an undried state, or (3) orienting the fibers before being cut to staple fibers in an undried state. Wlodzimierz et al (see the entire document, in particular, pages 1 and 2 of the translation) teaches a process (see page 1 (method of producing cellulose fibers) of Wlodzimierz et al), including a spinning solution including zinc oxide (see page 2 (aqueous cellulose solution including sodium hydroxide and zinc oxide; fibers are stretched, cut to staple fibers and then dried) of Wlodzimierz et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a spinning solution including zinc oxide in the process of Stigsson in view of Wlodzimierz et al for better solubility of the cellulose (see col. 3, lines 39-41 (zinc oxide is added to the solution for better solubility of the cellulose) of Turunen et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to stretch and orient the fibers before being cut to staple fibers in the process of Stigsson in view of Wlodzimierz et al in order to provide staple fibers for further processing and because in Stigsson, cutting is not limited to before drying or after drying.
Regarding claim 6, see paragraph [0037] (bleaching, drying) of Stigsson.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stigsson (U.S. Patent Application Publication 2020/0299416 A1) in combination with Wlodzimierz et al (PL 214565 B1) and Turunen et al (U.S. Patent No. 4,583,984 A) as applied to claims 1 and 6 above, and further in view of Morimoto (U.S. Patent No. 3,084,021 A).
Regarding claim 2, Stigsson (in combination with Wlodzimierz et al and Turunene et al) does not teach (1) a conditioning bath including between about 10 percent to about 30 percent by weight of a salt. Morimoto (see the entire document, in particular, col. 1, lines 10-12 and 31-55; col. 5, lines 23-63; col. 11, lines 12-14; Figure 1) teaches a process (see col. 1, lines 10-12 (processes for producing regenerated cellulose fibers) of Morimoto), including a conditioning bath including between about 10 percent to about 30 percent by weight of a salt (see col. 5, lines 45-63 (third bath, 30 – 120 g/l sodium sulfate, stretch of 30 – 100%; fourth bath, 0 – 200 g/l sodium sulfate, stretch of 10 – 80%) of Morimoto), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a conditioning bath including between about 10 percent to about 30 percent by weight of a salt in the process of Stigsson (in combination with Wlodzimierz et al and Turunene et al) in view of Morimoto in order to produce regenerated cellulose fibers with excellent properties, including high tenacity and increased fatigue resistance (see col. 1, lines 31-55 of Morimoto).
Regarding claim 3, see Figure 1; col. 5, lines 23-63 (primary bath temperature of 45 - 80°C; secondary bath temperature of 5 - 30°C; third bath temperature of 10 - 50°C; fourth bath temperature of 50 - 100°C; each of the bath temperatures are independently set and controlled) of Morimoto.
Regarding claim 4, see paragraph [0033] (washing) of Stigsson, and col. 11, lines 12-14 (article is then washed to finish) of Morimoto.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stigsson (U.S. Patent Application Publication 2020/0299416 A1) in combination with Wlodzimierz et al (PL 214565 B1) and Turunen et al (U.S. Patent No. 4,583,984 A) as applied to claims 1 and 6 above, and further in view of Schirk et al (CA 3145647 A1).
Regarding claim 5, Stigsson (in combination with Wlodzimierz et al and Turunene et al) does not teach (1) suspending cut fibers and collecting cut fibers in a nonwoven fiber layer, and (2) pressing the nonwoven fiber layer to impose a natural crimp on the fibers. Schirk et al (see the entire document, in particular, page 1, lines 1-2; page 3, lines 22-23; page 4, line 6; page 5, lines 4-5) teaches a process (see page 1, lines 1-2 (method for the production of lyocell (i.e., cellulose) fibers) of Schirk et al), including suspending cut fibers and collecting cut fibers in a nonwoven fiber layer, and pressing the nonwoven fiber layer to impose a natural crimp on the fibers (see page 4, line 6 (forming a nonwoven fleece from staple fibers and pressing the nonwoven fleece); page 5, lines 4-5 (due to the final process steps, the fibers of the nonwoven exhibit permanent crimp) of Schirk et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to suspend cut fibers and collecting cut fibers in a nonwoven fiber layer, and press the nonwoven fiber layer to impose a natural crimp on the fibers in the process of Stigsson (in combination with Wlodzimierz et al and Turunene et al) in view of Schirk et al in order to provide an improved method for the production of crosslinked lyocell fibers (see page 3, lines 22-23 of Schirk et al; see instant claim 6).
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-7 of co-pending Application No. 18/292,610 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the elimination of an element (i.e., elimination of suspending cut fibers and collecting cut fibers in the form of a nonwoven layer, and pressing the nonwoven fiber layer thereby imposing a natural crimp on the fibers) and its function is obvious if the function of the element is not desired (see MPEP §2144.04(II)(A); see also instant claim 5 and claim 2 of co-pending Application No. 18/292,610).
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zhu et al (CN 103147144 A), see paragraphs [0003] (method for preparing regenerated cellulose fibers) and [0041] (second coagulation bath, 2 – 15 wt% sodium sulfate) of Zhu et al.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEO B. TENTONI whose telephone number is (571)272-1209. The examiner can normally be reached 7:30-4:00 ET M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A. Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LEO B. TENTONI
Primary Examiner
Art Unit 1742
/LEO B TENTONI/Primary Examiner, Art Unit 1742