DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on January 26, 2026 have been entered into the file. Currently claim 1 is amended and claims 17-18 are cancelled, resulting in claims 1-16 and 19-27 pending for examination.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 7, 9-10, 13-16, and 24-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawabata (JP H06-184958)1,2.
With respect to claim 1, Kawabata discloses an interwoven pile fabric made by mixing two or more pile yarns (2) (3) having different dyeability in a tufted base fabric (1) (physical cue) and printing the fabric by spraying a dye that selectively dyes one of the pile yarns (2) (3) in accordance with a desired pattern (paragraph [0006]). The pile yarns include combinations such as acrylic fibers and polyester fibers and nylon fiber and polyester fibers (paragraph [0007]). The pile yarns (2) define the claimed area A1 containing a first tufted design TD1 and the pile yarns (3) define the claimed area A2 containing a second tufted design TD2.
Kawabata further discloses that both pile yarns (2) (3) may be dyed by printing in multiple stages or at least one type of pile-yarn may be not be printed so that the color of the original yarn or original-dyed yarn may be used (a print composition on at least a portion of area A1, a print composition on at least a portion of A2, or a print composition on at least a portion of both area A1 and area A2) (paragraph [0011]).
The limitation "designed to be affixed to a building surface” is a use limitation and does not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Kawabata teaches the claimed structure as well as that pile fabrics are suitable for applications that place them on the floor such as bath mats and kitchen mats (paragraph [0003]). Since Kawabata teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
The limitation “recognized by a digital printing machine for determining the selective application of the print composition to the textile substrate” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because as described above, Kawabata teaches the use of pile fibers with different dyeability (physical cue), allowing for selective dyeing of the pile fabric (paragraph [0006]). It is noted that the instant specification states that suitable physical cues include yarn composition (see e.g., paragraph [0013] of the specification as filed).
With respect to claims 2 and 13, Kawabata discloses all the limitations of claim 1 above. Kawabata further discloses the interwoven pile fabric may be any fabric in which two or more types of pile yarns are mixed and planted in a tufted and embroidery base fabric (paragraph [0008]). The form of the planted pile yarn is not important, such as the height, basis weight (variation in tufting density), the proportion and arrangement of different types of pile yarns, and whether the planted pile yarns are looped, cut, or a mixture of these (variation in yarn construction) (paragraph [0008]). The pile yarns include combinations such as acrylic fibers and polyester fibers and nylon fiber and polyester fibers (variation in yarn composition) (paragraph [0007]). The yarns selected are able to be selectively dyed, leaving the other yarn undyed (variation in print composition) (paragraph [0009]).
With respect to claim 3, Kawabata discloses all the limitations of claim 2 above. Kawabata further discloses Figure 1(b) which shows a union fabric tufted into loops of different heights (differences in yarn height) (Fig. 1(b); paragraph [0020]). In another example the acrylic yarn (2) was dyes with yellow, red, and blue cationic dye whereas the polyester yarn (3) was not dyed and remained white (differences in yarn color) (paragraphs [0015]-[0016]). The pile yarns (2) (3) may be looped, cut, or a mixture (paragraph [0008]).
With respect to claims 5 and 7, Kawabata discloses all the limitations of claim 3 above. Kawabata further discloses Figure 1(b) which shows a union fabric tufted into loops of different heights (Fig. 1(b); paragraph [0020]). The polyester yarn (3) (first tuft height) is taller than the acrylic yarn (2) (second tuft height) (Fig. 1(b); paragraph [0020]). In the example only the acrylic yarn (2) (second tuft height) was dyed and the polyester yarn (3) (first tuft height) was not dyed (paragraph [0021]).
With respect to claims 9-10, Kawabata discloses all the limitations of claim 5 above. Kawabata further teaches the polyester yarn (3) (first tuft height) has a height of 6mm and the acrylic yarn (2) (second tuft height) has a height of 3mm (the first tuft height is 100% greater than the second tuft height) (paragraph [0020]).
With respect to claim 14, Kawabata discloses all the limitations of claim 2 above. Kawabata further discloses the pile yarns (2), (3) have different dyeability where a dye selectively dyes only one of the pile yarns (2), (3) in accordance with a desired pattern (paragraph [0006]). As mentioned above, the pile yarns (2) define the claimed area A1 and the pile yarns (3) define the claimed area A2. Since the pile yarns (2) and (3) have different dyeabilities the area A1 includes a print composition PC1 that is different than a print composition PC2 in the area A2.
With respect to claims 15-16, Kawabata discloses all the limitations of claim 14 above. The limitations “wherein PC1 forms a print pattern PP1 and PC2 forms a print pattern PP2, wherein PP1 differs from PP2” in claim 15, “wherein PC1 differs in quantity applied to A2 from PC2 applied to A2” in claim 16, and “wherein PC1 differs in quantity … applied to A1 from PC2 applied to A2” in claim 18 are aesthetic design choices directed to matters relating to ornamentation only which has no mechanical function, and therefore cannot be relied upon to distinguish the claimed invention from the prior art. See MPEP 2144.04(I).
With respect to claim 24, Kawabata discloses all the limitations of claim 1 above. As discussed above, the pile yarns (2), (3) have different dyeability where a dye selectively dyes only one of the pile yarns (2), (3) in accordance with a desired pattern (paragraph [0006]). The pile yarns (2) define the claimed area A1 and the pile yarns (3) define the claimed area A2. Therefore the dye pattern applied to the pile yarn (2) will be in register with the tufted yarns in area A1 and the dye pattern applied to the pile yarn (3) will be in register with the tufted yarns in area A2.
With respect to claim 25, Kawabata discloses all the limitations of claim 1 above. Kawabata further discloses printing the textile with yellow, red, and blue colored printing paste (chromophore-containing ink) (paragraph [0016]).
Claim(s) 1-3, 5, 8, and 19-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kiff (US 7435264)3.
With respect to claims 1-3, 8, and 19, Kiff discloses a textile having regions of color contrast and corresponding regions of sculpted three-dimensional surface geometry (abstract). Fig. 2 shows a textile 20 with a first region 23 (area A1) providing a first pile height 33 (first tufted design T1) and a second region 24a (area A2) providing a second pile height 34 (second tufted design T2) (physical cues) (col. 4, lines 25-35). The entire textile is dyed (a print composition one at least a portion of both area A1 and area A2) (col. 4, line 58 – col. 5, line 17).
The limitation "designed to be affixed to a building surface” is a use limitation and does not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Kiff teaches the claimed structure. Since Kawabata teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
The limitation “recognized by a digital printing machine for determining the selective application of the print composition to the textile substrate” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because as described above, Kiff teaches a dyed textile with different physical cues of pile height.
With respect to claim 5, Kiff discloses all the limitations of claim 3 above. Kiff further discloses the second pile height 34 is less than the first pile heigh 33 (col. 4, lines 25-35).
With respect to claims 20-23, Kiff discloses all the limitations of claim 1 above. Kiff further discloses there could be multiple pile height areas, including 3 or 4 pile height areas (col. 3, line 62 – col. 4, line 6).
With respect to claim 24, Kiff discloses all the limitations of claim 1 above. The process of Kiff includes dyeing the textile in a base shade and etching to form areas of different pile heights (Fig. 3; col. 4, line 58 – col. 5, line 26). This results in the first region 23 providing a first color shade and first pile height 33 and a second region 24a which exhibit a second pile height 34 and a second color shade that differs from the color shade of the first region 23 (col. 3, lines 25-51). Therefore, the print composition is present in-register with the pile yarns in both A1 and A2.
With respect to claim 25, Kiff discloses all the limitations of claim 1 above. The process of Kiff includes dyeing the textile in a base shade and etching to form areas of different pile heights (Fig. 3; col. 4, line 58 – col. 5, line 26). Since the dye of Kiff provides color to the pile, it is a chromophore-containing ink.
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.
The factual inquiries 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.
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) 4, 6, 8, 11-12, 15-16, and 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawabata (JP H06-184958)4,5 as applied to claims 1, 3, 5, and 14 above.
With respect to claim 4, Kawabata discloses all the limitations of claim 3 above. Kawabata further teaches the pile yarns (2) (3) may be looped, cut, or a mixture (paragraph [0008]). To one of ordinary skill in the art it would have been obvious to try the pile being cut, looped, or both, in order to determine which provides the desired pattern and texture (see e.g., paragraph [0008]). See MPEP 2143.
With respect to claims 6 and 8, Kawabata discloses all the limitations of claim 5 above. Kawabata further teaches that both pile yarns (2) (3) may be dyed by printing in multiple stages or at least one type of pile-yarn may be not be printed so that the color of the original yarn or original-dyed yarn may be used (paragraph [0011]).
To one of ordinary skill in the art it would have been obvious to try dyeing both the taller polyester yarn (3) (first tuft height) and the shorter acrylic yarn (2) (second tuft height), dyeing just the taller polyester yarn (3) (first tuft height), or dyeing just the shorter acrylic yarn (2) (second tuft height) in order to determine which provides the desired color tones and patterns (see e.g., paragraph [0012]). See MPEP 2143.
With respect to claims 11-12, Kawabata discloses all the limitations of claim 5 above. Kawabata further teaches the height of the piles (2), (3) may differ to form a complex texture in combination with the dyeing and patterns (paragraph [0008]). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the pile height difference to include the claimed ranges. One would have been motivated to provide a pile surface with the desired texture. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routing experimentation. See MPEP 2144.05(II).
With respect to claims 15-16, Kawabata discloses all the limitations of claim 14 above. Kawabata further discloses any desired pattern can be printed onto the union fabric (paragraphs [0006], [0010]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have chosen a design, including where there is more or less pile yarn (2) in A1 than pile yarn (3) in A2, requiring the dye applied in A1 (PC1) to differ in quantity from the dye applied in A2 (PC2).
With respect to claim 20-23, Kawabata discloses all the limitations of claim 1 above. Kawabata further teaches the interwoven pile fabric may comprise two or more types of pile yarns which are mixed and planted in a tufted and embroidery base fabric (paragraph [0008]). The form of the planted pile yarn is not important, such as the height, basis weight (variation in tufting density), the proportion and arrangement of different types of pile yarns, and whether the planted pile yarns are looped, cut, or a mixture of these (variation in yarn construction) (paragraph [0008]). These aspects, combined with the dyeing and patterns, create a complex texture (paragraph [0008]).
To one of ordinary skill in the art before the effective filing date of the claimed invention it would have been obvious to try multiple combinations of different types of piles as disclosed by Kawabata, including three and four different types of piles, in order to determine which provides the desired pattern and texture. See MPEP 2143.
Claim(s) 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over (JP H06-184958)6,7 as applied to claim 1 above, and further in view of Kimball (US 2007/0014921)2.
With respect to claims 26-27, Kawabata discloses all the limitations of claim 1 above. Kawabata further discloses dyeing the acrylic pile (2) with textile with yellow, red, and blue colored printing paste (chromophore-containing ink) leaving the polyester yarn (3) not dyed (free from chromophore-containing ink) (paragraphs [0016] and [0019]).
Kawabata is silent as to the composition containing a wetting agent.
Kimball teaches a method of applying a composition to a surface by applying an effective amount of a composition in a preselected pattern to a selected surface to affect a color change thereon (paragraph [0012]). The surface includes soft surfaces such as carpets, rugs, draperies, curtains, upholstery, and the like (paragraph [0042]). The décor composition may include a wetting agent incorporated prior to application of the décor composition to a surface (paragraph [0064]). The wetting agent promotes colorant and/or filler wetting, improves the flow and/or leveling of a finished cured product, and may promote wet-out during the cure reaction, which may improve adhesion and/or corrosion resistance (paragraph [0176]).
Since both Kawabata and Kimball teach coloring pile surfaces, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the printing compositions of Kawabata to include a wetting agent in order to promote colorant and/or filler wetting, improve the flow and/or leveling of a finished cured product, and promote wet-out during the cure reaction, which may improve adhesion and/or corrosion resistance.
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/403,8448 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to the instant claims 1-2, claims 1-2 of MacMeccan claims a textile substrate comprising a pattern, said pattern characterized by having at least one area containing physical cues (area A1 containing a first tufted design TD1) and at least one area free from physical cues (area A2 containing a second tufted design TD2), said physical cues being selected from print composition, tufting density, yarn construction, yarn composition, and combinations thereof, said pattern further characterized by having one of the following: (a) printing ink on at least a portion of the area containing physical cues, (b) printing ink on at least a portion of the area free from physical cues, or printing ink on at least a portion of the area containing physical cues and the area free from physical cues, said textile substrate designed for use on a horizontal surface, wherein the textile substrate contains areas of tufted yarns (MacMeccan; claims 1-2).
The limitation “recognized by a digital printing machine for determining the selective application of the print composition to the textile substrate” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because as described above, MacMeccan teaches the presence of different physical cues.
With respect to the instant claims 3 and 5, claim 3 of MacMeccan further claims wherein the textile substrate contains areas of tufted yarns having at least one of high and low tuft (variations in yarn height include yarns having a first tuft height that is greater than a second tuft height) (MacMeccan; claim 3).
With respect to the instant claim 4, claim 4 of MacMeccan further claims wherein the tufted yarns are further characterized as being loop pile, cut pile, and combinations thereof (MacMeccan; claim 4).
Claims 1-3, 5-8, 14, 19, and 24 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, and 7 of copending Application No. 18/403,8479 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to instant claims 1-3 and 5-8, claim 1 of McCay claims a textile substrate comprising a patter, sad pattern characterized by having at least one topographical area containing tufted yarns of a first height (area A1 containing a tufted design TD1) and of a second heigh (area A2 containing a tufted design TD2), said pattern further characterized by having only one of the following: (a) printing ink A, B, or C on at least a portion of the tufted yarns having a first height (area A1), (b) printing ink A, B, or C on at least a portion of the tufted yarns having a second height (area A2), or (c) printing ink A, B, or C on at least a portion of the tufted yarns having a first height (area A1) and a second height (area A2), said substrate designed for use on a horizontal surface (McCay; claim 1).
The limitation “recognized by a digital printing machine for determining the selective application of the print composition to the textile substrate” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because as described above, McCay teaches the physical cues of different pile heights.
With respect to instant claim 14, claim 4 of McCay further claims wherein each of printing inks A, B, and C contains a different composition (McCay; claim 4).
With respect to instant claim 19, claim 5 of McCay further claims wherein at least two of printing inks A, B, and C contain the same composition (McCay; claim 5).
With respect to instant claim 24, claim 7 of McCay further claims wherein the textile substrate contains printing ink in-register with the at least one topographical area containing tufted yarns of a first height and a second height (McCay; claim 7).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response – Claim Rejections 35 USC §112
The rejection of claim 17 under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, is overcome by Applicants amendments to the claims in the response filed January 26, 2026.
Response – Claim Rejections 35 USC §102 and 103
The arguments in the response filed January 26, 2026 have been fully considered and are not persuasive.
On pages 5 and 6 of the response Applicant submits that Kawabata does not teach the amended physical cues which provide instruction for a digital printing machine for selective printing.
The Examiner respectfully disagrees. Kawabata discloses an interwoven pile fabric made by mixing two or more pile yarns (2) (3) having different dyeability in a tufted base fabric (1) (physical cue) and printing the fabric by spraying a dye that selectively dyes one of the pile yarns (2) (3) in accordance with a desired pattern (paragraph [0006]). The pile yarns (2) define the claimed area A1 containing a first tufted design TD1 and the pile yarns (3) define the claimed area A2 containing a second tufted design TD2.
The limitation “recognized by a digital printing machine for determining the selective application of the print composition to the textile substrate” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because as described above, Kawabata teaches the use of pile fibers with different dyeability (physical cue), allowing for selective dyeing of the pile fabric (paragraph [0006]). It is noted that the instant specification states that suitable physical cues include yarn composition (see e.g., paragraph [0013] of the specification as filed).
On page 6 of the response Applicant submits that Kiff does not teach the amended limitation.
The Examiner respectfully disagrees. The limitation “recognized by a digital printing machine for determining the selective application of the print composition to the textile substrate” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because as described above, Kiff teaches a dyed textile with different physical cues of pile height.
On page 7 of the response Applicant submits that Kawabata teaches preventing bleed patterns whereas the teachings of Kimball encourage color flow/bleed, therefore the Kawabata and Kimball teach away from their combination.
These arguments are not persuasive. Kimball is completely silent as to the inks disclosed resulting in a printed pattern where the ink bleeds/flows in areas it was not intended to. The flow additives of Kimball are utilized to reduce or prevent cratering of a finished cured product and/or to include flow or leveling (paragraph [0174]). The ordinary artisan would recognize that the flow additives are not present so as to provide bleeding into other non-printed areas but rather to ensure the ink dyes the entirety of the intended fiber. Additionally it is noted that even if the flow agent of Kimball bleeds into unintended areas, the goal of Kawabata is achieved by providing fibers of different dyeabilities. Therefore any bleeding outside of the pattern would not actually dye the different material fiber, retaining the crisp pattern of Kawabata.
On page 7 of the response Applicant submits that the rationale for combination Kawabata and Kimball is not understood by Applicant.
Kimball teaches the wetting agent promotes colorant and/or filler wetting, improves the flow and/or leveling of a finished cured product, and may promote wet-out during the cure reaction, which may improve adhesion and/or corrosion resistance (paragraph [0176]).
Since both Kawabata and Kimball teach coloring pile surfaces, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the printing compositions of Kawabata to include a wetting agent in order to promote colorant and/or filler wetting, improve the flow and/or leveling of a finished cured product, and promote wet-out during the cure reaction, which may improve adhesion and/or corrosion resistance.
The combination proposes that the addition of the wetting agent not only improves adhesive of the colorant and provides corrosion resistant, but also promotes colorant wetting, improves the flow and leveling of a finished cured product, and promotes wet-out during a curing reaction. As explained by Kimball these are desired benefits for a colored pile surface such as in Kawabata.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Larissa Rowe Emrich whose telephone number is (571)272-2506. The examiner can normally be reached Monday - Friday, 7:30am - 4:00pm EST.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Machine translation used as reference
2 Previously presented
3 Previously presented
4 Machine translation used as reference
5 Previously presented
6 Machine translation used as reference
7 Previously presented
8 Hereinafter referred to as MacMeccan
9 Hereinafter referred to as McCay