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 .
Status of Claims
There are two (2) sets of claim submitted on 31 AUGUST 2023. The claim set considered is the claim set consisting of three (3) pages and the claim have status identifier.
In the claim set, Claims 1-4, 10 and 12-15 are ‘Original’ and Claims 5-9 and 11 are ‘Currently Amended’.
Current pending claims are Claims 1-15 and are considered on the merits below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 31 AUGUST 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted on 29 JANUARY 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
There is a period missing at the end of the paragraph, page 8, line 27; page 9, line 15.
Appropriate correction is required.
The use of the term RETSCH™ (three instances), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 2-15 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.
In each of the dependent claims, the claims starts with ‘A method as claimed’. Each claim depends from a previous claim and should be ‘The method as claimed’ for proper reference back to the claim it depends from.
Claim 7 recites the limitation "the sample of material" . There is insufficient antecedent basis for this limitation in the claim. This instance should be "the sample of the material".
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) a method for determining the origin of a material comprising a blend of synthetic fibres and natural or semi-synthetic fibres comprising the steps:
a. contacting a sample of the material with an extractant solution to form a solution or suspension comprising i) synthetic fibres and fragments of the synthetic fibres, and ii) a solid residue containing natural or semi-synthetic fibres;
b. separating the solution or suspension formed in step a. from the solid residue;
c. drying the solid residue;
d. determining isotope ratios of one or more of the elements carbon, oxygen, hydrogen, nitrogen, sulfur and strontium in the solid residue, and/or determining the concentrations of one or more trace elements in the solid residue; and e. comparing the isotope ratios and/or concentrations determined in step d. against data for natural or semi-synthetic fibres of known origin to determine the origin of the material.
The limitation of step d. “determining isotope ratios…” and/or “determining the concentrations…” , as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. Nothing in the claim element precludes the step from practically being performed in the mind. For example, even if method states language directed to “by a processor” language, “determining” in the context of this claim encompasses the user manually calculating the ratios and concentration.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – step e. ‘comparing’ using a processor to perform both the determining steps. The processor in both steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of ranking information based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform both determining steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Method steps a. – d. are well understood routine and conventional and are known in the art by at least GAYNOR, US Publication No. 2015/0377854 A1.
In this case, there is no processor noted in claim 1 and therefore the abstract remains mental process as noted above. The determining and comparing are abstract ideas not practical applications as noted in MPEP 2106.04(d) showing no improvement in the nature of what is claimed. And the other steps claimed do not provide more than what is considered well-understood routine and conventional which you are correctly applying art to support.
Dependent Claims 2-8 does not further define any method steps but rather define characteristics of the fibres and does not provide any additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent Claim 9-11 define further method steps such as repeating they cycles of agitating…centrifuging…separating; heating’ and define the type of separation to be performed, but these elements do not provide any additional elements that are sufficient to amount to significantly more than the judicial exception. These elements are WURC in the field separation and determining a characteristic of analytes/components.
Dependent Claim 12-15 define only specific combination of synthetic fibers and extractant solution which are WURC to a person skilled in the art and would be obvious by routine experimentation.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over GAYNOR, US Publication No. 2015/0377854 A1, submitted on the Information Disclosure Statement on 31 AUGUST 2023, US Patents.
Applicant’s invention is directed towards a method.
Regarding Claim 1, the GAYNOR reference discloses a method for determining the origin of a material, abstract, method … characterizing the fibers, [0002, 0012, 0076, 0187], Figure 7, comprising a blend of synthetic fibres and natural or semi-synthetic fibres, [0056, 0057, 0186], comprising the steps:
a. contacting a sample of the material with an extractant solution to form a solution or suspension, [0104-0105, 0132, 0133, 0135, 0197], comprising i) synthetic fibres and fragments of the synthetic fibres, [0104, 0105, 0186], and ii) a solid residue containing natural or semi-synthetic fibres, [0186, 0197];
b. separating the solution or suspension formed in step a. from the solid residue, [0197, 0200, 0205];
c. drying the solid residue, [0197, 0200];
d. determining isotope ratios of one or more of the elements carbon, oxygen, hydrogen, nitrogen, sulfur and strontium, [0031, 0084, 0090, 0104, 0179], and/or determining the concentrations of one or more trace elements in the solid residue, [0204]; and
e. comparing the isotope ratios and/or concentrations determined in step d. against data for natural or semi-synthetic fibres of known origin to determine the origin of the material, [0187-0188, 0201], Figure 7.
The GAYNOR reference discloses the claimed invention, but is silent in regards to explicitly analyzing the solid residue for one or more of the elements carbon, oxygen, hydrogen, nitrogen, sulfur and strontium in the solid residue.
GAYNOR does teach though that the identification of fibers may comprise the fibers, [0085, 0103] and it would be obvious to one having ordinary skill in the art before the effective filing date to modify the method of GAYNOR to analyze the analyzing the solid residue for one or more of the elements carbon, oxygen, hydrogen, nitrogen, sulfur and strontium in the solid residue to utilize the fibers as the identification fiber when providing identification for a blended material of fibers, and a person skill in the art would be further led to subsequently separate these fibers using the techniques in [0104, 0133-0135, 0197].
Additional Disclosures Included are: Claim 2: wherein the method as claimed in claim 1, wherein the natural fibres are fibres of cotton, wool, fur, silk, hemp, linen or jute, [0056]. ; Claim 5: wherein the method as claimed in claim 1,wherein the semi-synthetic fibres are fibres of viscose, modal, rayon, acetate, lyocell or cupro, [0026, 0056]. ; Claim 6: wherein the method as claimed in claim 1,wherein the synthetic fibres are fibres of polyester, nylon, elastane or acrylic, [0056, 0186]. ; Claim 8: wherein the method as claimed in claim 1, wherein the extractant solution is acetone, ethanol, dimethylformamide (DMF), phenol, dichloromethane (DCM), formic acid, aqueous hydrochloric acid, aqueous sodium hydroxide, or any combination thereof, [0106, 0135, 0199].; and Claim 11: wherein the method as claimed in claim 1, wherein the solution formed in step a. is separated from the solid residue by decanting, filtering or aspirating, [0136, 0200], analysis techniques disclosed in GAYNOR inherently have a filtering step.
Regarding Claims 3 and 4, the GAYNOR reference suggests the claimed invention, but is silent in regards to wherein the wool originates from sheep, goat, or alpaca or the fur from rabbits or possums.
However, it well known in the art that wool and fur are well-known in the art of textiles and it would be obvious to one having ordinary skill in the art before the effective filing date to have the wool originates from sheep, goat, or alpaca or the fur from rabbits or possums as these are well known sources of wool and fur and are known to be plentiful.
Regarding Claim 7, the reference GAYNOR suggests the claimed invention, but is silent in regards to wherein the sample of material has been milled to an average particle size of about 50 to 250 microns before contacting with the extractant solution in step a.
GAYNOR does teach though that the size of the individual fibers is not particular limiting and the size can be given in terms of effective diameter from 0.1 μm to 1000 μm, [0058].
Therefore, it would be obvious to one having ordinary skill in the art before the effective filing date to modify the method so that sample of material has been milled to an average particle size of about 50 to 250 microns before contacting with the extractant solution in step a so that when it is characterized by a particular technique it will be compliant with the characterization technique, [0200], such as in size exclusion chromatography.
Regarding Claim 9, the GAYNOR reference suggests he claimed invention, but is silent in regards to wherein step a. comprises one or more cycles of i) agitating the sample in the extractant solution, ii) centrifuging the sample in the extractant solution, and iii) separating the solution from the solid residue.
GAYNOR does teach that the method of characterizing the fiber sample includes (a) dissolving the fiber sample in a solvent to produce a sample solution and/or insolubles; (b) analyzing the sample solution, which is then characterized by spectrometry, [0197, 0200]. It is known in the art that in the characterization steps of GAYNOR, elements (i-iii) of the instant claim are implicit in the characterization techniques described in [0200], which include a plethora of spectrometry techniques, so therefore it would be obvious to one having ordinary skill in the art before the effective filing date to modify GAYNOR to have step a comprise one or more cycles of (i-iii) to either further separate and purify the sample or parts of the sample or to verify specific analytes or constituents of the sample.
Additional Disclosure Included by GAYNOR is: Claim 10: wherein the method as claimed in claim 9, further comprising one or more steps of heating the sample at a temperature in the range 50-90 0C, [0204, 0205].
Regarding Claims 12-15, the reference GAYNOR suggests the claimed invention, but is silent in regards to the specific combination of synthetic fiber and extractant solutions as claimed.
GAYNOR does teach the method for characterizing the fiber sample, of those listed in [0186], to be dissolved in a solvent, of those listed in [0069, 0106, 0135].
Therefore, it would be obvious to one having ordinary skill in the art before the effective fling date to use the specific combination of synthetic fiber and extractant solutions as claimed as these are these are suitable and well-known fibers and solvents known in the art and the specific combination could arrive at this combination using common general knowledge and out of routine experimentation for specific separation and isolation of specific analytes/components and it would be obvious to try since the particular parameter, the fiber and extractant solution is already recognized as a result effective variable by GAYNOR, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797