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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/30/2026 has been entered.
Claims 1-9 are rejected.
The rejection over Taninaka in view of Masutani has been maintained.
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 1-9 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.
As to claim 1, it is unclear that a water content of 15% refers to a weight percent or a volume percent.
As to claim 3, the melting enthalpy of 30J/g or less does not conform to the range set forth in parent claim. Does the Applicant want to convey the melting enthalpy in a range of from 16 to 30J/g? Appropriate correction is required.
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.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015064557 to Taninaka et al. (hereinafter “Taninaka”) in view of JP 2017132076 to Masutani (hereinafter “Masutani”) as evidenced by KR 20150040673 (hereinafter “KR’673”), WO 2014077402 to Ozawa et al. (hereinafter “Ozawa”), and US 2017/0015806 to Yoshikawa et al. (hereinafter “Yoshikawa”).
As to claims 1, 3, and 5, Taninaka discloses a mesh structure having excellent durability against repeated compression, and comprising a three-dimensional, random-loop joining structure of a linear fiber wherein the mesh structure has a density of 0.01 to 0.2 g/cc within the claimed range. The mesh structure is made of polyester thermoplastic elastomer fiber wherein the fiber has a diameter of 0.48 mm in the inner layer portion and of 0.53 mm in the surface layer portion (example 1-1). The mesh structure has a thickness of 10 to 300 mm, particularly of 45 nm within the claimed range (example 1-1). The mesh structure has a 70oC compressive strength residual strain of 9.7% (example 1-1) within the claimed range, and a 25% compression hardness of 204 N/φ200 mm or 51 N/φ50mm (example 1-1) within the claimed range.
Taninaka does not explicitly disclose a biodegradable mesh structure comprising (i) a weight average molecular weight of 35,000 or more and 150,000 or less, and a crystalline melting enthalpy of 16 J/g or more, (ii) a water content of 15% or less before annealing, and (iii) being annealed at a temperature of 80-105oC.
Regarding element (i):
Masutani, however, discloses a molded article comprising a linear fiber formed of poly-L-lactic acid (PLLA) and polybutylene adipate terephthalate (PBAT) with a mixing weight ratio of 9:1 to 1:9 with a diameter of 1.75 to 3.0 mm (abstract). The PLLA/PBAT linear fiber with a mixing ratio of 1:1 has a melting point ranging from 119.9 to 174.4oC, and a crystalline melting enthalpy of 23.2 J/g (table 1). The linear fiber is thus a biodegradable material because both PLLA and PBAT are biodegradable polymers.
Masutani discloses that the PLLA is commercially available under the trade name of REVODE 190 from Zhejiang Haisheng Biological Materials Co., Ltd. (Description of Embodiments). Yoshikawa is relied upon as evidence showing that the PLLA has a weight average molecular weight (Mw) of 200,000.
Masutani states that the PBAT (1) is commercially available under the trade name of ENPOL 7070 from Samson Fine Chemicals (Description of Embodiments). KR’673 is relied upon as evidence showing that the PBAT (1) has a weight average molecular weight (Mw) of 170,000 (examples 1-5). Alternatively, the PBAT (2) is commercially available under the trade name of ECOFLEX from BASF (Description of Embodiments). Ozawa is relied upon as evidence showing that the PBAT (2) has a Mw of 74,000 (example 8).
Hence, the PLLA/PBAT linear fiber has a weight average molecular weight of 35,000 or more, and a crystalline melting enthalpy of 16 J/g or more.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a biodegradable linear fiber disclosed in Masutani for the mesh structure disclosed in Taninaka, motivated by the desire to provide a mesh structure that is biodegradable while exhibiting great quality and beautiful glossiness.
Regarding element (ii):
There is no teaching or suggestion in Taninaka that water was added to the resin before it was discharged from nozzle (example 1-1). Therefore, the water content before annealing would be zero, thereby meeting the claimed range of 15% or less. Furthermore, the water did not remain in the final product through annealing and drying processes. The water content observed prior to annealing is merely a property of an intermediate product, which is completely irrelevant to the final product and thus lacks no specific, substantial and credible utility.
Regarding element (iii):
Taninaka discloses the annealing temperature of 70oC or 110oC (examples 1-1, 2-1). However, that does not render the claim unobvious because the annealing temperature is a product-by-process limitation not as yet shown to produce a patentably distinct biodegradable three-dimensional network structure. It is the examiner's position that the network structure of Taninaka as modified by Masatani is identical to or only slightly different than the claimed network structure prepared by the method set out in the claim, because both network structures are formed from the same materials, having structural similarity.
The resulting mesh structure of PBAT linear fibers is in the form of a three-dimensional, random-loop joining structure wherein the mesh structure having a density of 0.01 to 0.2 g/cc within the claimed range. The fiber has a diameter of 0.48 mm in the inner layer portion and of 0.53 mm in the surface layer portion. The mesh structure has a thickness of 10 to 300 mm, particularly of 45 nm within the claimed range. The mesh structure has a 70oC compressive strength residual strain of 9.7% within the claimed range, and a 25% compression hardness of 204 N/φ200 mm or 51 N/φ50mm within the claimed range. The resulting PBAT linear fiber has a weight average molecular weight of 35,000 or more, and a crystalline melting enthalpy of 16 J/g or more.
Even 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 an 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 (Fed. Cir. 1985). The burden has been shifted to the applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289,291 (Fed. Cir. 1983). It is noted that if the applicant intends to rely on Examples in the specification or in a submitted Declaration to show non- obviousness, the applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with Taninaka in view of Masutani.
As to claim 2, Taninaka discloses that the elastic mesh structure comprises a three-dimensional, random-loop joining structure (description).
As to claim 4, Taninaka discloses that the mesh structure is suitable as a cushioning material (description).
As to claim 6, Taninaka discloses that the melting point of the linear fiber is from 50 to 130oC (description). The melting temperature of the linear fiber overlaps the claimed range. In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in a melting point will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a melting point is critical or provides unexpected results.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a linear fiber having a melting temperature in the range instantly claimed, motivated by the desire to obtain a mesh structure having increased contact strength, thereby improving its durability against repeated compression.
As to claims 7 and 8, Taninaka discloses that the mesh structure has a hollow cross-section shape with a hollow rate of 26% (examples 3-3).
As to claim 9, Taninaka discloses that the mesh structure has a 70oC compressive strength residual strain of 9.7% (example 1-1) within the claimed range.
Response to Arguments
Applicant alleges that the claim is not rendered obvious in view of the present amendment and declaration of Fumika Kawano filed 4/13/2026. In the declaration, Applicant states that the combination of the annealing temperature of 80-105oC and the water content of 15% or less prior to annealing is critical in demonstrating the unexpected results regarding the 70oC compressive residual strain, and the melting enthalpy set forth in amended claim 1.
The examiner respectfully disagrees.
As shown in comparative example 1 of the Applicant’s disclosure, the network structure that meets the claimed annealing temperature, but fails to satisfy the claimed water content of 15% or less still achieve the claimed melting enthalpy (19.6 J/g).
The sample that does not comply with the claimed annealing temperature and water content exhibits a melting enthalpy of 14.4 J/g, that is about 10% lower than the claimed range (comparative example 3). This 10% difference is not significant enough to suggest unexpected results.
The declaration has demonstrated that the water content from 3 to 15% prior to annealing results in a melting enthalpy of 16 J/g or more. Therefore, it remains uncertain whether the broader range of the water content, specifically 15% or less, would achieve the same melting enthalpy. As the claim is not commensurate in scope with the claim, the declaration is not found effective to rebut the obviousness rejection.
Further, regardless of the annealing temperature and the water content are specified in the claim, the presently claimed 70% compressive residual strain of 30% or less is anticipated by Taninaka. The combined disclosures of Taninaka in view of Masutani also result in the network structure having a molecular weight of 35,000 or more, and a melting enthalpy of 23.2 J/g. As there is a motivation to modify the references, a prima facie case of obviousness is said to exist. Accordingly, the rejection over Taninaka in view of Masutani has been maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights