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 .
Summary
The Applicant’s arguments and amendments received on February 24, 2025 are entered into the file. Currently, claims 1, 3, 4, and 7 are amended; claims 2 and 8 are canceled; claims 9 and 10 are withdrawn; resulting in claims 1 and 3-7 pending for examination.
Claim Objections
Claims 1, 3, and 7 are objected to because of the following informalities:
Regarding claim 1, the limitation in line 5 reciting “wherein the segments polyurethane” should be amended to --wherein the segments of polyurethane--
Regarding claim 3, the limitation in line 3 reciting “and the sheets of sheets of polyurethane” should be amended to --and the sheets of
Regarding claim 7, MPEP 608.01(m) states that “Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.” See 37 CFR 1.75(i). It is suggested to format the claim with proper indentations in order to improve the clarity of the claim.
Regarding claim 7, the limitation in lines 8-9 reciting “generate the polyurethane segment” should be amended to --generate the polyurethane segments-- in order to properly refer back to the previously-recited polyurethane segments set forth in lines 3-4 of the claim.
Appropriate correction is required.
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.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 7, the limitation reciting “wherein the integrated discontinuous layer or patterned layer is formed by generating a patterned polyurethane layer on the synthetic woven fabric to form a composite layered structure and curing the composite layered structure in the heating process or heat stabilization process to thereby melt the patterned polyurethane layer and generate the polyurethane segment and wherein generating a patterned polyurethane layer comprises pressing a pattern into the sheets of polyurethane that are placed in contact with sheets of the synthetic woven fabric…” is indefinite because it is not clear what structure and/or process is defined by this limitation.
In particular, the claim sets forth a step of “curing the composite layered structure in [a] heating process or heat stabilization process to thereby melt the patterned polyurethane layer”. It is not clear how a step of curing can result in the polyurethane layer being melted. As explained in the previous office action, the common definition of the term “cure” is “to dry and become hard” (see https://www.britannica.com/dictionary/ cure), while the definition of “melt” is “to change from a solid to a liquid” (see https://www.britannica.com/dictionary/melt).
In looking to pages 6-7 of the as-filed specification, Fig. 5 is said to illustrate a process mechanism (500) for performing the steps for forming a composite fabric (553). The first step involves simultaneously feeding a sheet of synthetic woven fabric (511) and a sheet of polyurethane through a heated drum or cylinder press (507) with one of the two drums or cylinders (501, 503) having a pattern (552) that presses and transfers the pattern into the sheet of polyurethane to form a patterned layer of polyurethane (555) on top of the sheet of synthetic woven fabric. The temperature applied to the sheets of polyurethane and woven fabric while passing through the heated drum or cylinder press is approximately 200 degrees Celsius, which appears to indicate that the polyurethane layer is melted during this first pressing/patterning step of the process. The intermediate structure in which the melted patterned polyurethane layer is disposed on the synthetic woven fabric corresponds to the claimed composite layered structure.
The second step involves curing the composite layered structure (551) through a heating process or heat stabilization process, wherein the composite layered structure passes through an oven (505) to thereby generate the composite fabric (553) with the patterned layer of polyurethane attached to fiber strings of the synthetic woven fabric. Based on the disclosure of the heating process or heat stabilization process causing the composite layered structure to be “cured”, it appears as if the curing step results in a final structure of the composite fabric in which the polyurethane segments are solid rather than melted. Absent further clarification from the Applicant, the claim will be interpreted as such for the purpose of applying prior art.
Regarding claim 7, the limitation in lines 7-8 reciting “curing the composite in the heating process or heat stabilization process” is indefinite because the phrase “the heating process or heat stabilization process” lacks proper antecedent basis. In order to overcome this rejection, the limitation can be amended to recite --curing the composite in a heating process or a heat stabilization process--.
Regarding claim 7, the limitation in lines 10-11 reciting “pressing a pattern into the sheets of polyurethane that are placed in contact with sheets of the synthetic woven fabric” is indefinite because the phrase “the sheets of polyurethane” lacks proper antecedent basis. In order to overcome this rejection, the limitation can be amended to remove the definite article “the” before “sheets of polyurethane”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 5, in the claim set filed 02/24/2025, claim 2 is canceled, and claim 5 is written as being dependent on claim 2. Therefore, claim 5 is of improper dependent form for being dependent upon a canceled claim. For the purposes of examination, claim 5 will be treated as being dependent upon claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shiga (JP 2000-265373, machine translation previously provided).
Regarding claim 1, Shiga teaches a functional material (composite fabric) comprising a discontinuous resin film (segments of polyurethane) provided on a surface of a fibrous base material (synthetic woven fabric) ([0003]-[0004]). Fibrous base materials include woven fabrics made of synthetic fibers (fiber strings) [0005]. The discontinuous film is made of a reactive hot-melt resin, such as a moisture-curable hot-melt type urethane resin [0006].
The functional material may be formed by applying the discontinuous film onto a release film by screen printing, gravure printing, or the like, followed by heating and melting the discontinuous film to laminate the film onto a surface of the base material, and peeling off the release film ([0007], [0012]-[0016]). Therefore, the discontinuous hot-melt urethane resin film on the fibrous base material corresponds to the claimed composite fabric formed of segments of polyurethane that are integrated with the fiber strings of the woven fabric.
With respect to the limitation reciting “wherein the segments [of] polyurethane are formed by placing sheets of polyurethane on the woven fabric, pressing a pattern into the sheets of polyurethane to form a composite layered structure and curing the composite layered structure”, it is noted that this 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.
The only structural feature implied by the product-by-process limitation recited above is that the final structure of the composite fabric includes the segments of polyurethane in a cured (i.e., dried or solidified) form. Shiga teaches a hot-melt urethane resin layer formed into a discontinuous film which is laminated onto the surface of the fibrous base material. One of ordinary skill in the art would recognize that, after lamination, the hot-melt urethane resin layer of Shiga would cool and solidify on the surface of the fibrous base material, thus having an identical structure to that of the cured composite layered structure resulting from the claimed method.
Regarding claim 3, Shiga teaches all of the limitations of claim 1 above. It is noted that the limitation reciting “wherein pressing the pattern into the sheets of polyurethane to form a composite layered structure comprises putting sheets of the synthetic woven fabric and the sheets of polyurethane simultaneously through a heated drum or cylinder press” 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.
The method limitation of claim 3 does not set forth any additional structural features of the claimed composite fabric. Although Shiga does not specifically disclose an apparatus used for the step of laminating the discontinuous hot-melt urethane resin film onto the fibrous base material, Shiga anticipates the claimed invention because the prior art structure and the structure resulting from the claimed method are substantially identical, as explained above.
Regarding claim 4, Shiga teaches all of the limitations of claim 3 above. It is noted that the limitation reciting “wherein the heated drum or cylinder press includes a patterned drum or cylinder that transfers a pattern on to the sheets of polyurethane as the sheets of the synthetic woven fabric and the sheets of polyurethane simultaneously pass through a heated drum or cylinder press” 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.
The method limitation of claim 4 does not set forth any additional structural features of the claimed composite fabric. As explained above with respect to claims 1 and 3, Shiga teaches a functional material in which segments of polyurethane are laminated onto a fibrous base material, such as a woven fabric made of synthetic fibers. The structure resulting from the method taught by Shiga is substantially identical to the structure resulting from the claimed method. Therefore, the method limitations do not patentably distinguish the claimed invention over the prior art.
Regarding claim 6, Shiga teaches all of the limitations of claim 1 above. As noted above, Shiga teaches that the fibrous base materials may be a woven fabric made of synthetic fibers [0005]. Shiga further teaches an exemplary embodiment in which polyester is used as the synthetic fibers of the fibrous base material [0015].
Regarding claim 7, Shiga teaches a functional material (composite fabric) comprising a discontinuous resin film provided on a surface of a fibrous base material ([0003]-[0004]). Fibrous base materials include woven fabrics made of synthetic fibers (fiber strings) [0005]. The discontinuous film is made of a reactive hot-melt resin, such as a moisture-curable hot-melt type urethane resin [0006].
The functional material may be formed by applying the discontinuous film onto a release film by screen printing, gravure printing, or the like, followed by heating and melting the discontinuous film to laminate the film onto a surface of the base material, and peeling off the release film ([0007], [0012]-[0016]). Therefore, the discontinuous hot-melt urethane resin film on the fibrous base material corresponds to the claimed composite fabric formed of an integrated discontinuous layer or patterned layer of polyurethane segments that are integrated with the fiber strings of the woven fabric.
It is noted that the limitations reciting “formed by generating a patterned polyurethane layer on the synthetic woven fabric to form a composite layered structure and curing the composite layered structure in the heating process or heat stabilization process to thereby melt the patterned polyurethane layer and generate the patterned polyurethane segment” and “wherein generating a patterned polyurethane layer comprises pressing a pattern into the sheets of polyurethane that are placed in contact with sheets of the synthetic woven fabric using a heated drum or cylinder press with a patterned cylinder wherein the sheets of polyurethane and the sheets of woven fabric are simultaneous passed through a heated drum or cylinder press” are method limitations and do 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.
The only structural feature implied by the product-by-process limitations recited above is that the final structure of the composite fabric includes the segments of polyurethane in a cured (i.e., dried or solidified) form. Shiga teaches a hot-melt urethane resin layer formed into a discontinuous film which is laminated onto the surface of the fibrous base material. One of ordinary skill in the art would recognize that, after lamination, the hot-melt urethane resin layer of Shiga would cool and solidify on the surface of the fibrous base material, thus having an identical structure to that of the cured composite layered structure resulting from the claimed method.
Claims 1, 3, 4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Farmer et al. (US 2017/0226691, previously cited).
Regarding claims 1 and 6, Farmer et al. teaches articles, such as garments, including films comprising dried aqueous polyurethane dispersions, wherein the film may be bonded to the fabric of the article to provide a fabric laminate (composite fabric) (Abstract, [0040]).
Farmer et al. teaches that the fabric (synthetic woven fabric) may be a woven material including polyamide (nylon), polyester, or the like [0056]. The aqueous polyurethane dispersion may be formed as a film by coating the dispersion onto a release paper and drying to remove water, wherein the resulting film sheets can be slit into strips and wound-up into spools for later use in applications to form stretch articles [0152]. Farmer et al. further teaches that the aqueous polyurethane dispersion (segments of polyurethane) can be applied directly to the substrate and/or dried as a film in selected patterns, such as dots, shapes such as triangles, circles, etc., or discontinuous lines in order to manipulate the directionality of the changes in elastic modulus [0156].
Farmer et al. teaches that the layer of film may be laminated to the fabric substrate by any method in which heat or energy is applied to the film ([0158], [0164]). Farmer et al. further teaches that with the application of heat and pressure to the articles including films or aqueous polyurethane dispersions, it is recognized that the film or dispersion may partially or completely impregnate the fabric of the article ([0120]), such that the segments of polyurethane are integrated with the fiber strings of the fabric.
With respect to the limitation reciting “wherein the segments [of] polyurethane are formed by placing sheets of polyurethane on the woven fabric, pressing a pattern into the sheets of polyurethane to form a composite layered structure and curing the composite layered structure”, it is noted that this 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.
The only structural feature implied by the product-by-process limitation recited above is that the final structure of the composite fabric includes the segments of polyurethane in a cured (i.e., dried or solidified) form. Farmer et al. teaches a dried film of a patterned or discontinuous polyurethane dispersion which is laminated onto a fabric substrate by heating and/or pressing, thus having an identical structure to that of the cured composite layered structure resulting from the claimed method.
Regarding claims 3 and 4, Farmer et al. teaches all of the limitations of claim 1 above. As explained above, the limitations of claims 3 and 4 are method limitations and do 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. There does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Farmer et al. teaches a dried film of a patterned or discontinuous polyurethane dispersion which is laminated onto a fabric substrate by heating and/or pressing, thus having an identical structure to that of the cured composite layered structure resulting from the claimed method.
Regarding claim 7, Farmer et al. teaches articles, such as garments, including films comprising dried aqueous polyurethane dispersions, wherein the film may be bonded to the fabric of the article to provide a fabric laminate (composite fabric) (Abstract, [0040]).
Farmer et al. teaches that the fabric (synthetic woven fabric) may be a woven material including polyamide (nylon), polyester, or the like [0056]. The aqueous polyurethane dispersion may be formed as a film by coating the dispersion onto a release paper and drying to remove water, wherein the resulting film sheets can be slit into strips and wound-up into spools for later use in applications to form stretch articles [0152]. Farmer et al. further teaches that the aqueous polyurethane dispersion can be applied directly to the substrate and/or dried as a film in selected patterns, such as dots, shapes such as triangles, circles, etc., or discontinuous lines in order to manipulate the directionality of the changes in elastic modulus [0156].
Farmer et al. teaches that the layer of film may be laminated to the fabric substrate by any method in which heat or energy is applied to the film ([0158], [0164]). Farmer et al. further teaches that with the application of heat and pressure to the articles including films or aqueous polyurethane dispersions, it is recognized that the film or dispersion may partially or completely impregnate the fabric of the article ([0120]), such that the discontinuous or patterned layer of polyurethane segments is integrated with the fiber strings of the fabric.
As explained above, the limitations reciting “formed by generating a patterned polyurethane layer on the synthetic woven fabric to form a composite layered structure and curing the composite layered structure in the heating process or heat stabilization process to thereby melt the patterned polyurethane layer and generate the patterned polyurethane segment” and “wherein generating a patterned polyurethane layer comprises pressing a pattern into the sheets of polyurethane that are placed in contact with sheets of the synthetic woven fabric using a heated drum or cylinder press with a patterned cylinder wherein the sheets of polyurethane and the sheets of woven fabric are simultaneous passed through a heated drum or cylinder press” are method limitations and do 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.
The only structural feature implied by the product-by-process limitations recited above is that the final structure of the composite fabric includes the segments of polyurethane in a cured (i.e., dried or solidified) form. Farmer et al. teaches that the fabric laminate is an article including at least one fabric layer and at least one film layer that have been attached or bonded, wherein the methods of attachment include gluing, heating, application of pressure, laminating, etc., and then may be cured (or dried) ([0040]), such that the structure taught by Farmer et al. appears to be substantially identical to the structure resulting from the claimed method steps.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Shiga (JP 2000-265373, machine translation previously provided) as applied to claim 1 above, and further in view of Sutti et al. (US 2019/0093280, previously cited).
Regarding claim 5, Shiga teaches all of the limitations of claim 1 above. Although Shiga teaches that the functional material may be used in the field of clothing, bags, furniture, and the like, wherein the fibrous base material (synthetic woven fabric) may include synthetic fibers and may be in the form of a woven fabric ([0002], [0005]), the reference does not expressly teach that the synthetic woven fabric is treated to a DWR process prior to forming the composite layered structure.
However, in the analogous art of functional fabrics, Sutti et al. teaches a process for providing a water repellent substrate comprising applying a dispersion to a substrate to impart durable water repellent properties thereto (Abstract, [0002]). Sutti et al. teaches that substrates that possess water repellency are desirable in many fabric and textile applications, such as clothing, upholstery applications, carpet, and outdoor textiles, wherein the water repellent treatment enables the substrate to block water from penetrating into the fabric and into the fibers [0003]. Sutti et al. teaches that hydrophilic stains can be prevented by means of water repellency [0003]. Sutti et al. further teaches that the substrate may be a variety of materials, such as a woven fabric wherein suitable fabric substrates may comprise a thermoplastic polymer ([0046]-[0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the synthetic woven fabric of the functional material taught by Shiga by applying a DWR hydrophobic treatment thereon prior to forming the composite layered structure, as suggested by Sutti et al., in order to yield the predictable result of improving the water repellent properties of a fabric substrate used for clothing and furniture applications, in order to prevent water from penetrating into the fabric and causing stains.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Farmer et al. (US 2017/0226691, previously cited) as applied to claim 1 above, and further in view of Takaynagi (US 2018/0343943, previously cited).
Regarding claim 5, Farmer et al. teaches all of the limitations of claim 1 above. Although Farmer et al. teaches that the fabric (synthetic woven fabric) may be made of polyamide (nylon), polyester, or the like, and further teaches that the fabric article may be a body-shaping garment, such as a brasserie, bralette, or sports bra, which provides the desirable features of body shaping and support while still providing comfort, breathability, air permeability, moisture/vapor transport, and wicking ([0056], [0122]), the reference does not expressly teach that the synthetic woven fabric is treated with a DWR hydrophobic process prior to forming the composite layered structure.
However, in the analogous art of functional fabrics, Takaynagi teaches a garment made of a woven fabric having excellent moisture permeability and waterproof performance [0001]. Similar to Farmer et al., Takaynagi teaches that the garment is suitable for use as outdoor sports clothing for skiing, skating, snowboarding, cold weather clothing, working clothing, and daily clothing [0071]. Takaynagi teaches that waterproof breathable woven fabrics are typically treated with water repellent finish, such that preferred filaments of synthetic fibers that are easy to treat with durable water repellent (DWR) finish include polyester fibers and nylon fibers [0049].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyamide or polyester woven fabric of the garment taught by Farmer et al. by applying a DWR hydrophobic treatment thereon prior to forming the composite layered structure, as suggested by Takaynagi, in order to yield the predictable result of improving the water repellent properties of a garment made of polyamide of polyester woven fabric.
Response to Arguments
Response-Drawings
The previous objections to the drawings are overcome by the Applicant’s amendments to the specification adding the requisite reference numerals.
Response-Claim Objections
The previous objections to claims 1, 4, 7, and 8 are overcome by Applicant’s amendments to claims 1, 4, and 7 and by the cancellation of claim 8 in the response filed February 24, 2025.
However, in light of the amendments to the claims, new objections are raised in the office actions above.
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 2-5 and 8 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention are overcome by the Applicant’s amendments to claim 3 and by the cancellation of claims 2 and 8 in the response filed February 24, 2025.
However, the previous rejections of claim 7 under 35 U.S.C. 112(b) are maintained and/or modified in the office action above, and new issues with respect to claim 7 are presented above in light of the amendments to the claim.
Response-Claim Rejections - 35 USC § 102 and 103
Applicant's arguments, see pages 6-7 of the remarks filed February 24, 2025, with respect to the previous rejections based on Shiga and Farmer et al. have been fully considered but they are not persuasive.
With respect to Shiga, the Applicant argues on pages 6-7 that Shiga teaches that the discontinuous film of polyurethane is formed by screen printing or gravure printing, processes that require a liquid dispersion of polyurethane, and fails to teach using sheets of polyurethane which are pressed with a pattern and cured.
This argument is not persuasive. As explained in the prior art rejections above, the limitations directed to the segments of polyurethane being formed by placing sheets of polyurethane on the woven fabric, pressing a pattern into the sheets of polyurethane, and curing the composite are product-by-process claims. As explained in MPEP 2113(I), 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 the instant case, the functional material taught by Shiga is made by a different process than that recited in the claim. However, the structure produced by the prior art process and the structure resulting from the claimed process are identical, such that the claimed method limitations do not patentably distinguish the claimed product from the prior art. Once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the Applicant to show a nonobvious difference between the claimed product and the prior art product. See MPEP 2113(II). The Applicant’s remarks are directed to differences in the processes of making the prior art product vs. the claimed product; these arguments are not persuasive because they do not clearly identify any specific structural differences between the claimed product and the prior art product.
With respect to Farmer et al., the Applicant argues on page 7 that Farmer teaches articles including films comprising dried aqueous polyurethane dispersions wherein the film may be bonded to the fabric or article to provide a fabric or film laminate, but fails to teach segments of polyurethane that are integrated with the fiber strings of the woven fabric, wherein the segments of polyurethane are formed by the method steps recited in claims 1, 3, and 4 and claim 7.
These arguments are not persuasive. With respect to the segments of polyurethane that are integrated with the fiber strings, Farmer et al. teaches that the aqueous polyurethane dispersion can be dried as a film in various selected patterns, including discontinuous or broken patterns ([0156]), thus forming segments of polyurethane. Farmer et al. further teaches that the fabric to which the dried aqueous polyurethane dispersion film is applied is a porous material, such that the polyurethane film may partially or completely impregnate the fabric ([0112]), meaning that the segments of polyurethane are integrated with the fiber strings of the fabric. Farmer et al. therefore explicitly teaches the new structural features required by the amended claims.
As explained above, the limitations directed to the method of forming the segments of polyurethane are product-by-process limitations. As explained in MPEP 2113(I), 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. The fabric laminates taught by Farmer et al. are made by a different process than that recited in the claim. However, the structure produced by the prior art process and the structure resulting from the claimed process are identical, such that the claimed method limitations do not patentably distinguish the claimed product from the prior art. Once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the Applicant to show a nonobvious difference between the claimed product and the prior art product. See MPEP 2113(II).
With respect to Deguchi and Ashida et al., the Applicant argues on pages 7-8 that Deguchi and Ashida fail to teach a composite fabric with polyurethane segments that are integrated with the fiber strings of a woven fabric.
This argument is persuasive. In light of the amendments to claims 1 and 7 requiring that segments of polyurethane are integrated with the fiber strings of the synthetic woven fabric, the previous rejections based on Deguchi and Ashida et al. are withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Itagaki et al. (JP H11107015, machine translation via EPO provided) teaches a fabric (1) having polka dot print areas (3) formed of synthetic resin prints (2) applied in the form of dots (segments) to the surface fibers of the fabric, wherein the synthetic resin print is made of a stretchable resin such as polyurethane, the fabric may be made of woven fabric, and the fabric material having polka dot print areas may be used to form a swim suit having reduced fluid resistance ([0017]-[0018], [0022], Figs. 2, 4).
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 REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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/Rebecca L Grusby/Examiner, Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785