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 .
Information Disclosure Statement
The information disclosure statement filed 10/19/23 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, the CN 102362021 has not been considered as no explanation of relevance nor translation has been provided.
Status of Claims
Applicant’s response dated 9/16/25 has been entered. No claims have been amended, added, or cancelled. This leaves claims 1-10 currently active and pending.
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, 2, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2017/0050408).
Regarding claims 1, 2, and 4, Park teaches a multilayer fabric with a core of a woven fibers (first fibers) (Park para 34, 37, item 110) overlaid on each side with fiber layers (‘fiber membranes’) (Park para 6, 34, 37; fig 1, items 120, 130), of which one side/set may be considered ‘second fibers’. Park further teaches that the material of the first and second fibers may be the same, and may be polyetherimide (Park para 6, 39, 43). Finally, Park teaches that the fibers may have a fiber diameter of 5-22 µm (Park para 42) and that the fiber diameter (first fiber diameter) of the core layer 110 may differ from the fiber diameter (second fiber diameter) of the other layers 120 and 130 (Park para 43). As the fiber diameter of Park overlaps with the claimed fiber diameters of both the claimed first and second fibers, there necessarily exist embodiments within Park where the first fiber diameter is larger than that of the second fiber diameter.
Further, one of ordinary skill in the art would have considered the invention to have been obvious because the first and second fiber diameter taught by Park overlaps with the instantly claimed first and second fiber diameter and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Further, as the fibers of all layers are polyetherimide, the composite of Park may be considered a “homogenous” composite.
Regarding claim 5, Park teaches a polyetherimide homogenous composite as above for claim 4. Park further teaches that the three layers may be formed separately and heated to bond the layers together (Park para 62). As the core layer of Park is woven as in claim 1, and as all three layers are laminated together, it would be expected that there would be at least some contact between the first and third ‘membrane’ layers as claimed, either directly or indirectly.
Regarding claim 6, Park teaches a polyetherimide homogenous composite as above for claim 1. Park further teaches that the processing temperature of the multilayer composite (homogenous composite) is larger or equal to the softening temperature of the polymer used (Park para 14, 16). However, it is noted that this is a process limitation that does not further limit the claimed homogenous composite structure as depending on what action is being performed, it may have many different processing temperatures, and this is a method step in a product claim with no further limitations or context.
“[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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Park as applied to claim 1 above, and further in view of Koizumi et al. (US 2019/0055684).
Regarding claim 3, Park teaches a polyetherimide homogenous composite as above for claim 1. Park further teaches that the outer layers, 120 and 130, may be formed by non-woven webs (Park para 37).
Park is silent with respect to the second fibers being melt-blown.
Park and Koizumi are related in the field of polyetherimide fibers. Koizumi teaches using melt-blown fibers to form a non-woven web with an improved property of high air permeability (para 58, 61). It would be obvious to one of ordinary skill in the art to modify either one or both of the outer layers, 120 or 130, of Park to be a melt-blown non-woven web as taught by Koizumi because this would provide the laminate with improved air permeability.
Regarding claim 8, Park teaches a polyetherimide homogenous composite as above for claim 1.
Park is silent with respect to the fiber strength of the first fibers being 1.5 cN/dtex to 3.5 cN/dtex.
Park and Koizumi are related in the field of polyetherimide fibers. Koizumi teaches that the polyetherimide fibers should have a fiber strength 2.3 cN/dtex to 4.0 cN/dtex to give woven fabrics made with the fibers proper smoothness (Koizumi para 22). It would be obvious to one of ordinary skill in the art to utilize polyetherimide fibers as in Park with a fiber strength of 2.3-4.0 cN/dtex as taught by Koizumi because this provides for a woven fabric with excellent smoothness.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Park as applied to claim 1 above, and further in view of Adams et al. (US 2015/0203995).
Regarding claim 7, Park teaches a polyetherimide homogenous composite as above for claim 1.
Park is silent with respect to the warp and weft densities of the woven core layer being from 10-110 threads/inch and 53-70 threads/inch, respectively.
Park and Adams are related in the field of woven fabrics made with polyetherimide fibers (Adams abs). Adams teaches forming a woven fabric utilizing a warp density of about 65-100 ends/inch (threads/inch) (Adams para 81) and a weft density of about 50-70 picks/inch (threads/inch) (Adams para 82) to form a woven fabric with water resistance and air-breathability (Adams para 89). It would be obvious to one of ordinary skill in the art to modify the woven core layer of Park to have a warp density of 65-100 ends/inch (threads/inch) and a weft density of 50-70 picks/inch (threads/inch) because this would provide the overall fabric with improved water resistance while still allowing for breathability through the fabric.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Park as applied to claim 1 above, in view of Koizumi et al. (US 2019/0055684) and further in view of Adams et al. (US 2015/0203995).
Regarding claim 9, Park teaches a polyetherimide homogenous composite as above for claim 1.
While Park teaches a multilayer polyetherimide composite as required, Park is silent with respect to the exact properties of the composite such as requiring that the dielectric constant is 1.5-2.1 and that the dielectric loss is 0.0030-0.0074.
Park and Koizumi are related in the field of polyetherimide fibers. Koizumi teaches using melt-blown fibers to form a non-woven web with an improved property of high air permeability (para 58, 61). Koizumi further teaches that the polyetherimide fibers should have a fiber strength 2.3 cN/dtex to 4.0 cN/dtex to give woven fabrics made with the fibers proper smoothness (Koizumi para 22). It would be obvious to one of ordinary skill in the art to modify either one or both of the outer layers, 120 or 130, of Park to be a melt-blown non-woven web as taught by Koizumi because this would provide the laminate with improved air permeability. It would further be obvious to one of ordinary skill in the art to utilize polyetherimide fibers as in Park with a fiber strength of 2.3-4.0 cN/dtex as taught by Koizumi because this provides for a woven fabric with excellent smoothness.
Park in view of Koizumi and Adams are related in the field of woven fabrics made with polyetherimide fibers (Adams abs). Adams teaches forming a woven fabric utilizing a warp density of about 65-100 ends/inch (threads/inch) (Adams para 81) and a weft density of about 50-70 picks/inch (threads/inch) (Adams para 82) to form a woven fabric with water resistance and air-breathability (Adams para 89). It would be obvious to one of ordinary skill in the art to modify the woven core layer of Park in view of Koizumi to have a warp density of 65-100 ends/inch (threads/inch) and a weft density of 50-70 picks/inch (threads/inch) because this would provide the overall fabric with improved water resistance while still allowing for breathability through the fabric.
That is, Park in view of Koizumi in further view of Adams teaches a polyetherimide homogenous laminate where the two outer layers are melt-blown webs with fiber diameters of 5-22 µm (Park para 42), the core layer is a woven fabric with a warp density of 65-100 ends/inch (threads/inch) and a weft density of 50-70 picks/inch (threads/inch) and fiber diameters of 5-22 µm (Park para 42), where the fiber diameters of the outer webs and the core fabric are different, and where the strength of the woven fibers is from 2.3-4.0 cN/dtex.
Therefore, because the materials and the structure of Park in view of Koizumi in further view of Adams are the same as taught in the instant Specification and as claimed, the homogenous composite would intrinsically possess the claimed properties of a dielectric constant being 1.5-2.1 and the dielectric loss being 0.0030-0.0074. 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.
Regarding claim 10, Park teaches a polyetherimide homogenous composite as above for claim 1.
While Park teaches a multilayer polyetherimide composite as required, Park is silent with respect to the exact properties of the composite such as the strength of the composite is 13-45 MPa.
Park and Koizumi are related in the field of polyetherimide fibers. Koizumi teaches using melt-blown fibers to form a non-woven web with an improved property of high air permeability (para 58, 61). Koizumi further teaches that the polyetherimide fibers should have a fiber strength 2.3 cN/dtex to 4.0 cN/dtex to give woven fabrics made with the fibers proper smoothness (Koizumi para 22). It would be obvious to one of ordinary skill in the art to modify either one or both of the outer layers, 120 or 130, of Park to be a melt-blown non-woven web as taught by Koizumi because this would provide the laminate with improved air permeability. It would further be obvious to one of ordinary skill in the art to utilize polyetherimide fibers as in Park with a fiber strength of 2.3-4.0 cN/dtex as taught by Koizumi because this provides for a woven fabric with excellent smoothness.
Park in view of Koizumi and Adams are related in the field of woven fabrics made with polyetherimide fibers (Adams abs). Adams teaches forming a woven fabric utilizing a warp density of about 65-100 ends/inch (threads/inch) (Adams para 81) and a weft density of about 50-70 picks/inch (threads/inch) (Adams para 82) to form a woven fabric with water resistance and air-breathability (Adams para 89). It would be obvious to one of ordinary skill in the art to modify the woven core layer of Park in view of Koizumi to have a warp density of 65-100 ends/inch (threads/inch) and a weft density of 50-70 picks/inch (threads/inch) because this would provide the overall fabric with improved water resistance while still allowing for breathability through the fabric.
That is, Park in view of Koizumi in further view of Adams teaches a polyetherimide homogenous laminate where the two outer layers are melt-blown webs with fiber diameters of 5-22 µm (Park para 42), the core layer is a woven fabric with a warp density of 65-100 ends/inch (threads/inch) and a weft density of 50-70 picks/inch (threads/inch) and fiber diameters of 5-22 µm (Park para 42), where the fiber diameters of the outer webs and the core fabric are different, and where the strength of the woven fibers is from 2.3-4.0 cN/dtex.
Therefore, because the materials and the structure of Park in view of Koizumi in further view of Adams are the same as taught in the instant Specification and as claimed, the homogenous composite would intrinsically possess the claimed property of the strength being 13-45 MPa. 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.
Response to Arguments
Applicant's arguments filed 9/16/25 have been fully considered but they are not persuasive.
Applicant argues on pages 5-7 that the prior art of record cannot meet the present invention in spite of a prima facie case of obviousness due to the intended sizes of the fibers being dramatically rather than slightly different.
The Examiner respectfully disagrees. It remains a prima facie case of obviousness that the range overlaps. That there is a ‘dramatic’ difference, such as the first and second fibers not both being in the about 20 µm range is a feature not claimed.
As above, one of ordinary skill in the art would have considered the invention to have been obvious because the diameters taught by Park overlaps with the instantly claimed diameters and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Further, In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the fibers cannot be similarly sized, in spite of the claims allowing for it) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant reiterates these arguments for the dependent claims. The argument remains unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 LAURA B FIGG whose telephone number is (571)272-9882. The examiner can normally be reached M-Th 9a-6p Mountain.
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/L.B.F/Examiner, Art Unit 1781 1/26/26
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781