DETAILED ACTION
Claims 1-16 were rejected in the Office Action mailed 06/06/2025.
Applicant filed a response, amended claims 1 and 17 and cancelled claim 2 on 10/06/2025.
Claims 1 and 3-17 are pending, of which claim 17 is withdrawn.
Claim 1, 3-4, and 7-17 are rejected.
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 Objections
Claims 5-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening 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.
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.
Claims 1, 3-4, 7-9, 11-12, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2010/0055334) in view of Selwyn et al. (US 2020/0060366) (Selwyn).
Regarding claims 1 and 3
Kim teaches a composite material comprising a textile substrate having a surface and a cured elastomeric material coated over the whole or part of the textile substrate surface. The cured elastomeric material is a liquid silicone rubber composition (LSR) comprising a blend of two silicone elastomers. The LSR provides a breathable and waterproof coating on the textile substrate. The first elastomer has a viscosity of 0.1 to 300 pascal second (i.e., 100 to 300,000 cP) at 25°C. The second elastomer has a viscosity of 0.001 to 50 pascal second (i.e., 1 to 50,000 cP) at 25°C. The LSR possesses a viscosity of 20 to 150 pascal second (i.e., 20,000 to 150,000 cP) at 25°C. See, e.g., abstract and paragraphs [0001], [0014-0015], [0018-0019], [0025], [0028], and [0060-0061]. Although Kim measures the viscosity of the silicone elastomer at a temperature of 25°C, given there is no evidence of the criticality of the temperature the viscosity is measured and given the difference is only 5°, it is the Examiner’s position that the claimed viscosity has been met.
It should be noted that in the case where the claimed ranges 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Kim does not explicitly teach the cured elastomeric material penetrates into the yarn and is attached to the fibers or filaments in the peripheral region of the yarn of the textile substrate.
With respect to the difference, Selwyn teaches a water resistant and breathable fabric comprising a cured coating on the surface of the fabric. When the coating individually coats the yarns form which the fabri is formed, rather than forming a distinct surface layer on top of the fabric surface, the porous nature of the untreated fabric is largely preserved, and the air permeability of the fabric is largely retained by the coated fabric. See, e.g., abstract and paragraphs [0008], [0046], [0050], [0053], [0108], and [0110].
Selwyn and Kim are analogous art as they are both drawn to water resistant and breathable coated fabrics.
In light of the motivation as provided by Selwyn, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to form the textile substrate of Kim using a yarn comprising a plurality of fibers and ensure the cured elastomeric material individually coats the yarns from which the fabric is formed, in order to retain air permeability and ensure the textile composite is breathable, and thereby arrive at the claimed invention.
Given that the yarn possesses a plurality of fibers, it follows the yarn has a core region of fibers surrounded by a peripheral region of fibers.
Given that the structure and material of the composite material of Kim in view of Selwyn is substantially identical to the structure and material as used in the present invention, especially since the silicone rubber composition possesses a viscosity of 20,000 to 1500 cP at 25°C, as set forth above, it is clear that the cured elastomeric material of Kim in view of Selwyn would intrinsically penetrate into the yarn and attach to the fibers in the peripheral region of the yarn and not attach to the fibers in the core region of the yarn, as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Although Kim teaches the cured elastomeric material layer laid over the whole or part of the textile substrate surface as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Kim meets the requirements of the claimed product (i.e., the cured elastomeric material on part of the textile substrate surface), Kim clearly meets the requirements of the present claim.
Regarding claim 4
Given that the material and structure of the textile composite of Kim in view of Selwyn is substantially identical to the material and structure as used in the present invention, as set forth above, it is clear that the textile composite of Kim in view of Selwyn would intrinsically have one or more of a durometer shore A hardness of from 3 to 15; tensile strength of from 1 to 8 Mpa; and an elongation to break of from 500 to 1600%, as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claims 7-8
Given that the material and structure of the textile composite of Kim in view of Selwyn is substantially identical to the material and structure as used in the present invention, as set forth above, it is clear that the textile composite of Kim in view of Selwyn would intrinsically have a power that increases from 20 to 500% when not subjected to washing and after undergone washing to simulate at least 25 wash and dry cycles, as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 9
Kim in view of Selwyn teaches all of the limitations of claim 1 above.
Given Kim teaches the silicone coating provides moisture permeation and waterproofness, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to ensure the region abutting or adjacent to a peripheral edge portion of the textile substrate surface of Kim in view of Selwyn includes the cured silicone coating, in order to provide moisture permeation and waterproofness, and thereby arrive at the claimed invention.
Regarding claim 11
Kim in view of Selwyn teaches all of the limitations of claim 1 above. Kim further teaches textile substrate comprises cotton, polyester, or nylon. Paragraph [0061].
Regarding claim 12
Kim in view of Selwyn teaches all of the limitations of claim 1 above. Kim further teaches the textile substrate is a knitted or woven fabric. Paragraph [0061].
Regarding claim 15
Kim in view of Selwyn teaches all of the limitations of claim 1 above. Kim further teaches the composite material is used to form clothing. Paragraph [0001].
Regarding claim 16
Schwarz teaches all of the limitations of claim 15 above.
Given Kim teaches the silicone coating provides moisture permeation and waterproofness, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to ensure the region abutting or adjacent to a peripheral edge portion of the garment of Kim in view of Selwyn includes the cured silicone coating, in order to provide moisture permeation and waterproofness, and thereby arrive at the claimed invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2010/0055334) in view of Selwyn et al. (US 2020/0060366) (Selwyn), as applied in claim 1 above, and further in view of Schwarz et al. (US 2013/0004747) (Schwarz).
Regarding claim 10
Kim in view of Selwyn teaches all of the limitations of claim 1 above, however does not explicitly teach the coating is applied in a pattern.
With respect to the difference, Schwarz teaches a textile composite article comprising a textile substrate having a surface, the textile substrate is formed from a yarn, where the yarn is formed from a plurality of fibers or filaments. The textile composite article further includes an impregnating material, wherein the impregnating material penetrates into the yarn and is attached to the fibers or filaments in the peripheral region of the yarn. The impregnating material . See, e.g., abstract and paragraphs [0001], [0013], [0021-0027], and [0030-0036].
Schwarz and Kim in view of Selwyn are analogous art as they are both drawn to breathable and water-proof textile composites.
In light of the motivation as provided by Schwarz, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to apply the coating to the textile substrate of Kim in view of Selwyn in a pattern, in view of air and water vapor permeability, and thereby arrive at the claimed invention.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2010/0055334) in view of Selwyn et al. (US 2020/0060366) (Selwyn), as applied in claim 1 above, and further in view of Hussey et al. (US 2018/0044823) (Hussey).
Regarding claim 13
Kim in view of Selwyn teaches all of the limitations of claim 1 above, however does not explicitly teach the knit fabric is a tricot knit.
With respect to the difference, Hussey teaches a textile for forming a garment. The textile includes a knit fabric having a jersey, tricot, or interlock construction. The knit fabric provides increased breathability, thermal regulation, and/or flexibility. See, e.g., abstract and paragraph [0112-0113].
Hussey and Kim in view of Selwyn are analogous art as they are both drawn to textiles for garment.
In light of the disclosure as provided by Hussey, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use a jersey, tricot, or interlock constructed knit fabric as the knit fabric of Kim in view of Selwyn, as Hussey teaches these knit constructions are suitable for producing garments, and to provide breathability, thermal regulation, and/or flexibility, and thereby arrive at the claimed invention.
Regarding claim 14
Kim in view of Selwyn teaches all of the limitations of claim 1 above, however does not explicitly teach the knit fabric is a tricot knit.
With respect to the difference, Hussey teaches a textile for forming a garment. The textile includes a woven fabric possessing a stretchability of at least 30% in a warp and/or a weft direction. See, e.g., abstract and paragraph [0013], [0079], and [0084].
Hussey and Kim in view of Selwyn are analogous art as they are both drawn to textiles for garment.
In light of the disclosure as provided by Hussey, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use a woven fabric having a stretchability of at least 30% in a warp and/or a weft direction as the woven fabric of Kim in view of Selwyn, as Hussey teaches these woven fabrics are suitable for producing garments, and thereby arrive at the claimed invention.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
None of the prior art references, alone or in combination, teaches a cured elastomeric material comprising a blend of a first and a second silicone elastomer, where:
the first silicone elastomer has: a pre-cured viscosity of from 100,000 to 300,000 centipoise at a temperature of 20°C; a Durometer shore A hardness of from 5 to 20; an elongation to break of from 500 to 2000%; and a tensile strength of form 1 to 8 MPa;
and
the second silicone elastomer has: a pre-cured viscosity of from 1,000 to 50,000 centipoise at a temperature of 20°C; an Asker C hardness of from 10 to 25; an elongation to break of from 200 to 1500%; and a tensile strength of form 1 to 6 MPa.
Response to Arguments
In view of the amendments to the claims, the previous 35 U.S.C. 112(b) rejections are withdrawn.
In view of the amendments to the claims the previous 35 U.S.C. 102 and 35 U.S.C. 103 rejections over Thatcher (US 2010/0071119) and 35 U.S.C. 103 rejections over Schwarz et al. (US 2013/0004747) are withdrawn.
The previous 35 U.S.C. 103 rejection over Kim (US 2010/0055334) in view of Selwyn et al. (US 2020/0060366) are substantially maintained. Any modification to the rejection is in response to the amendment to claim 1.
Applicant's arguments regarding Kim in view of Selwyn filed 10/06/2025 have been fully considered but they are not persuasive, as set forth below.
Applicant primarily argues there is no evidence of the criticality of the pre-cured viscosity. Applicant further argues Kim expressly teaches the viscosity of the LSR composition is not critical and merely depends on the coating methods per paragraph [0060] of Kim. There is no teaching or suggestion in Selwyn that the viscosity of the coating composition can affect the ability the ability of the coating to penetrate between the fibers and or/into the yarn of the textile. Applicant further argues Selwyn refers to WO 2015/127479 for details for the coating composition, including viscosities. The relationship between viscosity and selective penetration was not recognized in the prior art. Remarks, pages 9-10.
The Examiner respectfully disagrees, as follows:
Firstly, the fact remains Kim teaches in paragraph [0060] the LSR composition possesses a viscosity of 20,000 to 150,000 cP at 25°C as discussed on page 13 of the Office Action mailed 06/06/2025. Since the prior art possesses the same material and structure as the present invention, including an overlapping viscosity of the silicone elastomer blend, it follows the cured elastomer of the prior art would intrinsically necessarily be able to penetrate into the peripheral region of the yarn’s fibers, but not into the core region of the yarn’s fibers.
Secondly, it is noted Selwyn is not relied upon to modify the viscosity of the cured elastomer. Instead, Selwyn provides motivation for coating the yarns of the fabric of Kim individually, as discussed in the Office Action above.
Thirdly, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). While Kim and Selwyn does not expressly discuss the relationship between viscosity and selective penetration, it is not required the prior art recognize the same advantage as the present invention. For the reasons set forth above, it is the Examiner’s opinion Kim in view of Selwyn meets the requirements of the claim.
Conclusion
Applicant's amendment necessitated any new grounds 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.
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/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789