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 .
DETAILED ACTION
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 Jan. 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.
Claims 1 and 5 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.
Claim 1 recites the limitation "the base fiber" in line 11. There is insufficient antecedent basis for this limitation in 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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (JP 2010/106316 A, published 13 May 2010, hereinafter Cho) in view of Se et al. (KR 2022/0053857 A, published 02 May 2022, hereinafter Se) and evidence provided by Textile Yarn (“Polyester fabric: What it is, How polyester fiber is made,” published 30 Sep. 2025, hereinafter Textile Yarn).
Regarding claims 1 and 5, Cho teaches a method for producing electroconductive fibers by pretreating the polymeric textile material with a palladium organometallic complex in a supercritical environment followed by a plating method (Abstract and Claims 1, 11, and 14). Cho teaches the synthetic fiber is nylon, polyester, or propylene (paragraph 0021). Cho teaches that the organometallic complex becomes embedded in the gaps formed on the surface of the polymeric fiber from the swelling of the fiber in the supercritical fluid, after a reduction treatment converts the palladium organometallic complex to palladium metal (paragraph 0018).
Thus, it is the examiner’s position that palladium would then exist both inside the fiber and on its surface.
As evidenced by Textile Yarn, polyethylene terephthalate is the most produced polyester polymer fiber (page 2, 2nd paragraph). Therefore, it is the examiner’s position that one of ordinary skill in the art would select a polyethylene terephthalate fiber as the polyester fiber taught by Cho.
Cho does not disclose inclusion of a carbon material in the base material of the fiber.
Se teaches a plated molding polymeric product composed of 1 to 7 parts by weight of an additive for shortening plating based on 100 parts polymeric material (Abstract), and this additive is carbon nanotubes, carbon black, or graphene (claim 2).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of a carbon-based compound from the overlapping portion of the range taught by Se because overlapping ranges have been held to be prima facie obviousness.
Given that Cho and Se are drawn to plated polymeric materials, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the carbon materials and in the amounts taught by Se in the fiber of the conductive plated fiber taught by Cho. Since Cho and Se are both drawn to plated polymeric materials, one of ordinary skill in the art would have a reasonable expectation of success in incorporating the carbon materials and in the amounts taught by Se in the fiber of the conductive plated fiber taught by Cho. Further, Se teaches the presence of the carbon material in the polymeric material shortens the required plating time without deteriorating the surface appearance of the plated object (paragraph 0037).
Cho in view of Se does not disclose that the palladium inside the fiber is agglomerated around the carbon material.
However, Cho in view of Se teaches the same fiber, palladium, and type and amount of carbon material and the same processing steps as disclosed in the current invention; therefore, the palladium inside the fiber of Cho in view of Se would have the same distribution on the inside of the fiber as the claimed invention, and therefore, the palladium inside the fiber of Cho in view of Se would be agglomerated around the carbon material.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Hori and Cho (JP 2007/056287 A, published 08 Mar. 2007, hereinafter Hori) in view of Se et al. (KR 2022/0053857 A, published 02 May 2022, hereinafter Se) and evidence provided by Textile Yarn (“Polyester fabric: What it is, How polyester fiber is made,” published 30 Sep. 2025, hereinafter Textile Yarn).
Regarding claims 1-2 and 4, Hori teaches a plating pretreatment method for producing electroconductive textile materials by placing the polymeric textile material and an organometallic complex in a supercritical environment before plating the textile material (Abstract). Hori teaches the synthetic fiber is nylon, polyester, or propylene (paragraph 0030). Hori teaches the organometallic complex contains palladium (claim 14). Hori teaches the polymeric fiber swells in the supercritical fluid; the organometallic complex becomes embedded in the gaps created by swelling; and the metal of the organometallic complex is exposed via a reduction treatment (paragraph 0018). Hori teaches that the fiber is then plated (claim 1).
Thus, it is the examiner’s position that palladium would then exist both inside the fiber and on its surface.
As evidenced by Textile Yarn, polyethylene terephthalate is the most produced polyester polymer fiber (page 2, 2nd paragraph). Therefore, it is the examiner’s position that one of ordinary skill in the art would select a polyethylene terephthalate fiber as the polyester fiber taught by Hori.
Hori does not disclose inclusion of a carbon material in the base material of the fiber.
Se teaches a plated molding polymeric product composed of 1 to 7 parts by weight of an additive for shortening plating based on 100 parts polymeric material (Abstract), and this additive is carbon nanotubes, carbon black, or graphene (claim 2).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of a carbon-based compound from the overlapping portion of the range taught by Se because overlapping ranges have been held to be prima facie obviousness.
Given that Hori and Se are drawn to plated polymeric materials, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the carbon materials and in the amounts taught by Se in the fiber of the conductive plated fiber taught by Hori. Since Hori and Se are both drawn to plated polymeric materials, one of ordinary skill in the art would have a reasonable expectation of success in incorporating the carbon materials and in the amounts taught by Se in the fiber of the conductive plated fiber taught by Hori. Further, Se teaches the presence of the carbon material in the polymeric material shortens the required plating time without deteriorating the surface appearance of the plated object (paragraph 0037).
Hori in view of Se does not disclose that the palladium inside the fiber is agglomerated around the carbon material.
However, Hori in view of Se teaches the same fiber, palladium, and type and amount of carbon material and the same processing steps as disclosed in the current invention; therefore, the palladium inside the fiber of Hori in view of Se would have the same distribution on the inside of the fiber as the claimed invention, and therefore, the palladium inside the fiber of Hori in view of Se would be agglomerated around the carbon material.
Claim 1 is-rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al. (JP 2022/098980 A, published 04 Jul. 2022, priority 22 Dec. 2020, hereinafter Sakai) in view of Se et al. (KR 2022/0053857 A, published 02 May 2022, hereinafter Se).
Regarding claim 1, Sakai teaches a metal coated liquid crystalline polyester (LCP) multifilament obtained by contacting the LCP multifilament with a high-pressure carbon dioxide fluid containing a palladium complex followed by coating the palladium-containing LCP multifilament with a metal (that is, plating) (Abstract). Sakai teaches carbon black may be incorporated into the LCP resin as an additive (paragraph 0025). Sakai teaches that a portion of the palladium complex penetrates into the interior of the fiber (paragraph 0046).
Thus, it is the examiner’s position that palladium would then exist both inside the fiber and on its surface.
Sakai does not disclose the amount of carbon black in the LCP multifilament.
Se teaches a plated molding polymeric product composed of 1 to 7 parts by weight of an additive for shortening plating based on 100 parts polymeric material (Abstract), and this additive is carbon black (claim 2).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of a carbon-black from the overlapping portion of the range taught by Se because overlapping ranges have been held to be prima facie obviousness.
Given that Sakai and Se are drawn to plated polymeric materials, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate carbon black in the amounts taught by Se in the fiber of the conductive plated fiber taught by Sakai. Since Sakai and Se are both drawn to plated polymeric materials, one of ordinary skill in the art would have a reasonable expectation of success in incorporating the carbon black in the amount taught by Se in the fiber of the conductive plated fiber taught by Sakai. Further, Se teaches the presence of the carbon material in the polymeric material shortens the required plating time without deteriorating the surface appearance of the plated object (paragraph 0037).
Sakai in view of Se does not disclose that the palladium inside the fiber is agglomerated around the carbon material.
However, Sakai in view of Se teaches the same fiber, palladium, and type and amount of carbon material and the same processing steps as disclosed in the current invention; therefore, the palladium inside the fiber of Sakai in view of Se would have the same distribution on the inside of the fiber as the claimed invention, and therefore, the palladium inside the fiber of Sakai in view of Se would be agglomerated around the carbon material.
Response to Arguments
Applicant's arguments filed 23 Jan. 2026 have been fully considered, but they were not persuasive.
Applicant cancelled claims 2 and 4 and added claim 5.
Applicant argues that paragraph 0060 of Cho discloses that the activated catalytic active sites are exposed on the fiber surface and an activated metal with an anchoring is formed on the fiber surface and therefore there is no disclosure in Cho that the palladium organometallic complex penetrates into the interior of the fiber.
However, paragraph 0060 also discloses that when the fiber surface of a multifilament yarn treated by the plating pretreatment method comes into contact with a supercritical fluid or subcritical fluid, the fiber swells, and the palladium organometallic complex contained in the supercritical fluid or subcritical fluid becomes embedded in the gaps created by the swelling. Given that the palladium organometallic complex is disclosed as being embedded in the gaps which are in the fiber, the palladium organometallic complex would have to necessarily penetrate the fiber to some degree. Further, Cho teaches the same supercritical treatment of the fibers as the present invention, so the penetration of the palladium would have to be the same as that of the present invention. As set forth on page 11 of Applicant’s Arguments/Response filed 23 Jan. 2026, the carbon material draws palladium into the interior of the base material; therefore, given that Cho in view of Se disclose plated material as presently claimed made by same process of the present invention, the palladium would necessarily inherently be inside the fiber.
Applicant argues that Cho does not teach the same supercritical treatment given that Cho’s fiber lacks a carbon material and that neither Cho or Se discloses a supercritical treatment that is applied to the Office Action’s modified fiber.
However, in response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Given that Se is combined with Cho, the supercritical treatment of the fibers disclosed by Cho would be applied to the same fiber as presently claimed.
Applicant argues that Cho and Se fail to disclose that the palladium inside the fiber is agglomerated around the carbon material inside the raw material and that the carbon material is contained in an amount of 0.1 mass% or more and 3.0 mass% or less with respect to the fiber as now required in claim 1.
However, as presented above, Se teaches the relative amount of carbon material in the thermoplastic material of the fiber of Cho.
Further, Cho in view of Se teaches the same fiber, palladium, and type and amount of carbon material and the same processing steps as disclosed in the current invention; therefore, the palladium inside the fiber of Cho in view of Se would have the same distribution on the inside of the fiber as the claimed invention; therefore, the palladium inside the fiber of Cho in view of Se would be agglomerated around the carbon material.
Applicant argues that the gaps disclosed by Hori are on the surface of the fiber and do not penetrate into the interior of the fiber and points to paragraph 0018 of Hori that states that the plating treatment can be performed on the material surface.
However, paragraph 0018 also discloses that the palladium organometallic complex contained in the supercritical fluid or subcritical fluid becomes embedded in the gaps created by the swelling. Given that the palladium organometallic complex is disclosed as being embedded in the gaps which are in the fiber, the palladium organometallic complex would have to necessarily penetrate the fiber to some degree. Further, Hori teaches the same supercritical treatment of the fibers as the present invention, so the penetration of the palladium would have to be the same as that of the present invention. As set forth on page 11 of the response, the carbon material draws palladium into the interior of the base material; therefore, given that Hori in view of Se disclose plated material as presently claimed made by same process of the present invention, the palladium would necessarily inherently be inside the fiber.
Applicant argues that Hori does not teach the same supercritical treatment given that Hori’s supercritical treatment is applied to a composite fiber material different than recited in claim 1.
However, in response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Given that Se is combined with Hori, the supercritical treatment of the fibers disclosed by Hori would be applied to the same fiber as presently claimed.
Applicant argues that Hori and Se fail to disclose that the palladium inside the fiber is agglomerated around the carbon material inside the raw material and that the carbon material is contained in an amount of 0.1 mass% or more and 3.0 mass% or less with respect to the fiber as now required in claim 1.
However, as presented above, Se teaches the relative amount of carbon material in the thermoplastic material of the fiber of Hori.
Further, Hori in view of Se teaches the same fiber, palladium, and type and amount of carbon material and the same processing steps as disclosed in the current invention; therefore, the palladium inside the fiber of Hori in view of Se would have the same distribution on the inside of the fiber as the claimed invention, and therefore, the palladium inside the fiber of Hori in view of Se would be agglomerated around the carbon material.
Applicant argues that Se is silent with respect to palladium and any effects that palladium and carbon black might have on the metal plating.
However, note that while Se does not disclose all the features of the present claimed invention, Se is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely the relative amount of carbon material in a thermoplastic to aid the plating process, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that their data shows unexpected results when the carbon material is contained in an amount of 0.1 to 3 mass%
However, the data is not persuasive given that it is not commensurate in scope with the scope of the present claims. The claims recite any base material in any form, any amount of palladium, and any carbon material of any size; whereas the data utilized one base material, one amount of palladium, and one type of carbon material of a single size.
Further, it is not clear from Figure 5 what carbon contents were tested, i.e. were experiments conducted at both 0.1 mass% and 3 mass%?
Applicant argues that applicant clearly discloses that the base material can be a PET resin, a polypropylene, a nylon, a polyacrylate or the like and that none of the written description associated with Applicant’s Figure 5 specifies a particular one of these materials. Further, applicant’s entire written description is silent with respect to an amount of palladium and a specific size of the carbon material.
However, the specific types of fiber are not in claim 1. Further, while paragraph 0023 of the preset specification discloses that the Example uses a plurality of types of fibers, there is no indication what these fibers are (i.e. were each of PET resin, a polypropylene, a nylon, a polyacrylate base material tested?) and no disclosure in Figure 5 of the results of these different fibers. The examples in Figure 5 would necessarily have to use a specific base material, a specific amount of palladium, and a specific type and amount of carbon material in a specific size, but there is no indication from Figure 5 what these type/amount/size are; therefore, there the examiner’s position remains that the data is not commensurate in scope with the claims. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Applicant may amend the claims or submit further data, such that the data is commensurate in scope with the claims, and unexpected results are demonstrated over the teachings in the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M-F 8:00 am to 5:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached at telephone number 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787