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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on July 28, 2025 has been entered.
Response to Amendment
Applicant’s amendment filed on July 28, 2025 has been entered. Claim 1 has been amended. Claims 4, 6, 11, and 22 have been cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5, 7-10, and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the sound absorption material exhibits a thickness change of less than 3%” in line 17. The scope of this limitation is unclear. What is a thickness change? Is it a uniformity of the thickness across multiple section of the sound absorption material at a fixed point in time? Is it variance of thickness? Is it a change in thickness that occurs over time? Is it a change in thickness that occurs during processing? Is it a change in thickness that occurs after processing? Is it a change in thickness after the material is installed? How is the thickness change measured? Where is the thickness change measured? When is the thickness change measured? How does the person having ordinary skill in the art account for a “final” thickness and compare it to an “initial” thickness? The Specification does not provide adequate guidance to establish any meaning to the scope of this limitation. As such, Claim 1 and its dependent claims are indefinite.
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.
Claims 1-3, 5, 7, 8, 10, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over International Patent Application Publication No. 2005/003422 to Ogawa et al. (an English translation obtained from the PE2E database is referred to in this Action) (“Ogawa”).
With regard to Claims 1, 3, 8, and 10, Ogawa discloses a nonwoven fiber sheet press molded to form a felt for use in sound insulation. See, e.g., Abstract, entire document. Ogawa teaches the sound insulation is useful in various molded products, such as automobile ceiling materials, dash silencers, engine cover silencers, cylinder head cover silencer, floor mats, dash pods, door trims, and building materials. Page 9. Ogawa discloses a mixture of polyester base fiber, polyester hollow fiber, and a low melting polyester adhesive fiber, which is heated in an oven to melt the polyester adhesive fiber. Pages 9-10, Example 2. Ogawa teaches that the hollow fiber can be formed of polyethylene terephthalate and have a circular or elliptical cross-section. Page 3. Ogawa teaches that the fiber sheet is formed into a molded product using hot press molding. Page 9. Ogawa teaches that the polyester base fiber can be present in an amount of 35% by weight and have a fineness of 7 dtex, the polyester hollow fiber can be present in an amount of 50% by weight and have a fineness of 7 dtex, and the polyester adhesive fibers is present in an amount of 15% by weight. Example 2. Additionally, Ogawa generally teaches broader range amounts for the types of fibers, such that the low melting adhesive fiber can be present in an amount of up to 50% by weight, page 3, and the hollow fiber can be present in an amount of 10% to 50%. Page 2. It would have been obvious to a person having ordinary skill in the art at the time of the invention to provide 40% to 50% by weight of polyester adhesive fiber and 15% to 25% by weight of polyester hollow fiber in the molded product disclosed by Ogawa since Ogawa discloses that such relative amounts are suitable for use in their invention, and because 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). Ogawa does not specifically disclose the property of the sound absorption material exhibiting a thickness change of less than 3%. Nonetheless, it is reasonable to presume that such a property is inherent to the material disclosed by Ogawa. After all, Ogawa teaches that the thickness of the fiber sheet is regulated during thermal expansion of the particles, thus providing a fixed density of the sound absorption material. Page 2. After manufacture of the material and installation, Ogawa does not require any type of processing step that would function to alter the thickness of the material. As such, it is reasonable for the person having ordinary skill in the art to presume that, after the thermal expansion of the particles, the fiber sheet of Ogawa would not exhibit any additional change in thickness beyond a 3% barrier. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
With regard to Claim 2, Ogawa teaches that the base fiber comprises polyester, page 3 and Example 2, and teaches that well known polyester options include polyethylene terephthalate and polybutylene terephthalate. Page 3. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize polyethylene terephthalate or polybutylene terephthalate as the polyester for the base fiber in order to provide the fibrous mat with a uniform fiber type as the hollow fiber, given that Ogawa does not specifically mention which polyester to use, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claim 5, Ogawa discloses that the adhesive fiber can comprise polyethylene, polypropylene, polyester, or polyamide. Page 3. With regard to Claim 7, Ogawa teaches that the hollow fibers can have a hollow core ratio of 10% to 50%. Page 3. 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). With regard to Claim 21, Ogawa teaches that the fibrous insulation has a thickness of 15 mm. Examples 1-4.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ogawa in view of U.S. Patent Application Publication No. 2019/0156810 to Inagaki (“Inagaki”).
With regard to Claim 9, Ogawa does not describe the hollow fiber property of crimp rate. Inagaki is also related to fiber materials useful for sound absorption and insulation. See, e.g., Abstract, entire document. Inagaki teaches that suitable crimp rate for hollow fiber falls within the range of 8 to 14 crimps per inch. Paragraph [0055]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the hollow fiber disclosed by Ogawa with a crimp ratio in the range of 10 to 25 crimps per inch, since such Inagaki establishes that such a property value is proper for achieving sound absorption in the art of hollow polyester fibers, and because 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 (CCPA 1976).
Claims 1-3, 5, 8, 10, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,677,027 to Masuda et al. (“Masuda”) in view of U.S. Patent Application Publication No. 2018/0147793 to Arvidson et al. (“Arvidson”).
With regard to Claim 1, Masuda discloses a sound insulating structure used on an automobile floor panel that includes a nonwoven fabric layer comprising a first fiber and a second fiber. See, e.g., Abstract, entire document. The nonwoven fabric of Masuda is pressed to form a felt. See, e.g., Example 1. The first fiber of Masuda satisfies the two claim limitations of “a base fiber” and “a hollow fiber” because Masuda discloses the first fiber is composed of eccentric conjugated fibers in the form of “a fiber mixture comprising a first conjugated fiber portion having an inside which is free of a hollow space(s) and a second conjugated fiber portion which has an inside having a hollow space(s).” Column 4, lines 14-18. Thus, the first fiber of Masuda is a mixture of base fibers and hollow fibers, which are either circular or non-circular. The second fiber of Masuda satisfies the claim limitation of “a low-melting-point composite fiber” because Masuda discloses the second fiber is a core/sheath conjugate fiber wherein the sheath has a lower melting point to provide bonding under heat treatment. Column 4, lines 45-59. Matsuda discloses that its base fiber, hollow fiber, and adhesive fiber each comprise polyester or copolyester. Column 2, lines 44-62. Masuda provides examples wherein the base fiber is present in an amount of 40%, the hollow fiber is present in an amount of 20%, and the composite binder fiber is present in an amount of 40%. See, e.g., Examples 4, 9, and 14. Matsuda does not disclose that the sound insulating floor panel is a molded product. Arvidson is also related to a nonwoven composite material that provides insulation in automotive parts. See, e.g., Abstract, entire document. Arvidson teaches incorporation of binder fiber into a nonwoven automotive floor panel allows the material to be molded into a desired shape. Paragraph [0017]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the sound insulating structure disclosed by Matsuda as a molded product with the sound absorption material at one surface in order to provide the product as a shape that matches the automotive flooring panel, as shown to be known by Arvidson. Masuda does not specifically disclose the property of the sound absorption material exhibiting a thickness change of less than 3%. Nonetheless, it is reasonable to presume that such a property is inherent to the material disclosed by Masuda. After all, after manufacture of the material and installation, Masuda does not require any type of processing step that would function to alter the thickness of the material. As such, it is reasonable for the person having ordinary skill in the art to presume that, after molding the product to the desired shape and dimensions as taught by Masuda in view of Arvidson, the fiber sheet of Masuda would not exhibit any additional change in thickness beyond a 3% barrier. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
With regard to Claims 2 and 10, Masuda discloses the base fiber or the hollow fiber comprises polyester, such as polyethylene terephthalate. Column 3, lines 46-61; see also column 6, lines 29-30. With regard to Claim 3, Masuda discloses the base fiber has a fineness in the range of 1.5 to 40 denier. Column 4, lines 22-25. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a base fiber fineness in the range of 3 to 15 denier since Masuda teaches that such a fineness falls well within their disclosed embodiment, and because 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 (CCPA 1976). With regard to Claim 5, Masuda discloses the composite binder fiber has a lower melting point co-PET as the sheath and regular PET as the core. Column 4, lines 45-49. With regard to Claim 8, Masuda discloses that the hollow fiber can have a fineness of 6 denier. Column 6, lines 37-39. With regard to Claim 21, Masuda discloses the thickness of the nonwoven fabric is 20 mm. Column 6, lines 48-52.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Masuda in view of Arvidson as set forth above with regard to Claim 1, and further in view of Korean Patent No. 10-0906888 (an English translation obtained from the PE2E database is referred to in this Action) (“the ‘888 Publication”).
With regard to Claim 7, Masuda does not describe the hollow fiber property of hollow core ratio. The ‘888 Publication is also related to sound absorbing materials that comprise hollow polyester fibers. See, e.g., Abstract, entire document. The ‘888 Publication teaches that a suitable hollow ratio for polyester fiber falls within the range of 15% to 34%. Page 4. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the hollow fiber disclosed by Masuda with a hollow core ratio of 15% to 25%, since the ‘888 Publication teaches that such a parameter is appropriate in the art of sound absorption articles having hollow polyester fibers as proper for achieving sound absorption, and because 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 (CCPA 1976).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Masuda in view of Arvidson as set forth above with regard to Claim 1, and further in view of Inagaki.
With regard to Claim 9, Masuda does not describe the hollow fiber property of crimp rate. Inagaki is also related to fiber materials useful for sound absorption and insulation. See, e.g., Abstract, entire document. Inagaki teaches that suitable crimp rate for hollow fiber falls within the range of 8 to 14 crimps per inch. Paragraph [0055]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the hollow fiber disclosed by Masuda with a crimp ratio in the range of 10 to 25 crimps per inch, since such Inagaki establishes that such a property value is proper for achieving sound absorption in the art of hollow polyester fibers, and because 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 (CCPA 1976).
Response to Arguments
Applicant's arguments filed July 28, 2025 have been fully considered but they are not persuasive.
Applicant argues that Claim 1 has been amended to recite the same quantitative composition and performance features that defined the method claim allowed in the parent application, U.S. Application Serial No. 17/114,253, which has been patented. Applicant asserts that the structure and properties of the molded felt, not the manner of making it, dictated allowability in the parent application. The Examiner disagrees. The claims of the '253 Application were directed to a method of making a molded product, in which several processing steps were recited as limitations. As such, the manner of making the molded product, which are features not present in this application, played a strong role in the art that was cited ruing prosecution of that application and determining allowability of the claims. In fact, there are current references used in the rejections of the present application which were not used in the '253 Application. As such, the issues relating to patentability in the present application are not the same as in the ‘253 Application.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789