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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 21, 2026 has been entered.
Claims 1,2,4,8-13 and 15-30 are pending. Claims 3,5-7 and 14 have been cancelled. Claims 30 is new. Claims 1,13 and 19 have been amended. Claims 13 and 15-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
All prior rejections are maintained for the reasons set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1,2,4,8-12 and 30 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “immediately before use” which lacks literal basis in the specification or claims as originally filed. Applicant only described mixing the components but never indicates that this must occur immediately before use. Claims 2-4,8-12 and 30 are also rejected for being dependent upon claim 1 and inheriting the same deficiency,
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 1,2,4, 8-12 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Morita (JP 2017210693A) in view of JP 6490883B1.
Morita teaches synthetic fiber treatment agents comprising aqueous solutions of 2.8g 90% lactic acid, 15g alkyl phosphate ester salt, and 17.5g (poly)oxyalkylene derivative (last paragraph, page 6). Morita teaches polyolefin and polyester fibers (page 6, third paragraph). Morita teaches compositions comprising 0.1-20% organic acid, 10-50 mass% alkyl phosphate ester salt B with 12-22 carbon atoms, 10-50 mass% alkyl phosphate ester C, and 20-75% (poly)oxyalkylene derivative mixed in water (page 5, paragraph 2-3). Each component of the treatment mixture is present in a container from the time of packaging and sale, therefore the organic phosphoric acid ester, the fatty acid and the (poly)oxyalkylene derivative are each in individual separate containers at the time of acquisition from the store or laboratory. They only become combined when they are mixed in a bowl or vessel for use. Mixing the fatty acid and the organic phosphate ester first in a mixing bowl, meets the limitation of stored in a first container, wherein the (poly)oxyalkylene chemical is still in its purchase container, meets the limitation of stored in a second container. The limitation “configured to be mixed with the first fiber treatment agent immediately before use to prepare a fiber treatment agent for treating a fiber” is simply intended use and does not further limit the composition which is comprised of the same components. The same components separately stored are capable of being mixed and used at any time. It has been held that the recitation that an element is "adapted to" perform or is "capable of” performing a function is not a positive limitation but only requires the ability to so perform. The recitation of a new intended use for an old product does not make a claim to that old product patentable, see In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). The components of Morita are capable of and are taught to be mixed and used to treat synthetic fibers. The order of mixing the organic phosphoric acid ester and fatty acid in a first storage container and then adding the (poly)oxyalkylene derivative from its own second storage container into the components of the first container is obvious, Further storing the second fiber treatment agent for at least one week prior to mixture with the first fiber treatment agent is obvious as chemicals are usually purchased and stored in laboratories for months or years and used before expiration or deterioration dates. Storing for one week prior to using in a mixture would be achieved through routine use and experimentation.
Morita does not specify the acid value or a fatty acid alkali metal salt or the two component system.
JP 6490883B1 teaches in polyolefin synthetic fiber treatments fatty acids can be provided as alkali metal salts (paragraph 0019,0030-0031).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the fiber treatment agents of Morita by using alkali metal salts of fatty acids as JP 6490883B1 teaches that fatty acids can be provided in acid form or as alkali metal salts in polyolefin and synthetic fiber treatments. Using a functionally equivalent alkali metal salt form of a fatty acid in addition to or as a substitute for the fatty acid is obvious.
Regarding the two-component fiber treatment agent system comprising a first fiber treatment agent and a second fiber treatment agent formulated to be mixed with each other at the time of use to prepare a fiber treatment agent for treating a fiber, this would be obvious to one of ordinary skill in the art at the time the invention was made in view of the teachings of Morita. Morita clearly teaches mixing individual components of the composition into a mixture with all of the components to then be applied as unitary composition on a fiber. Selecting the order of mixing to first include a fatty acid and a phosphoric acid ester as a first component and then adding the (poly)oxyalkylene derivative and mixing further is obvious as Morita teaches mixing and adding the components in any sequence. For example, if the ingredients were added in the order they are recited in Example 1, first the fatty acid and then the phosphate ester salt would be included, meeting the limitation of first fiber agent, then the (poly)oxyalkylene would be added as the second fiber treatment agent. The final mixture would be a combination of all three components to form the fiber treatment agent.
The separation of the components into a first and second fiber treatment agent followed by mixing to arrive at a single composition is obvious. The order of combination of components and order of blending has not been demonstrated to be critical. Nothing unobvious is seen in providing the first and second fiber treatment agents and mixing them or combining the components in any other order and mixing them. The end result is always the same composition.
Regarding the acid value, the fiber treatment agents of Morita and JP 6490883B1 contain the same fatty acids, organic phosphoric acid ester compounds and (poly)oxyalkylene derivative which can be selected from the prior art ranges in the same proportions and therefore would be expected to have the same properties including the acid value as this is a property encompassed in the same composition. The examiner has interpreted the fiber treatment as a mixture of the first and second treatment agents in a single composition as per the preamble of claim 1. A prime facie case of obviousness exists because the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976; In re Woodruff 919 F.2d 1575,16USPQZd 1934 (Fed. Cir. 1990). See MPEP 213 1.03 and MPEP 2144.051.Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103, In re Wertheim 191 USPQ 90 (CCPA 1976); In re Mulagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960).
Regarding the limitation of synthetic fiber, polyester short fiber, polyethylene terephthalate fiber and short fiber of claims 9-12, these are intended use, the fiber treatment agent is a composition for the use of application to a fiber. The fiber itself is not part of or does not further contribute to the composition and is simply the end use of the treatment agent product. As the fiber to which the composition may be applied in the future does not contribute to the composition itself, these limitations of intended use do not further limit the composition. The same compositions can be used to apply to any fiber, including the claimed types of fibers. Even though Morita and JP64908883B1 do not teach a polyester short fiber, polyethylene terephthalate fiber and short fiber use of his composition, the two different intended uses are not distinguishable in terms of the composition, see In re Thuau, 57 USPQ 324; Ex parte Douros, 163 USPQ 667; and In re Craige, 89 USPQ 393.
Response to Arguments
Applicant's arguments filed regarding Morita in view of JP 6490883B1.have been fully considered but they are not persuasive. The examiner argues each component of the treatment mixture of Morita is present in a separate container from the time of packaging and sale until the time of use, therefore the organic phosphoric acid ester, the fatty acid and the (poly)oxyalkylene derivative are each in individual separate containers at the time of acquisition from the store or laboratory. They only become combined when they are mixed in a bowl or vessel for use. Mixing the fatty acid and the organic phosphate ester first in a mixing bowl, meets the limitation of stored in a first container, wherein the (poly)oxyalkylene chemical is still in its purchase container, meets the limitation of stored in a second container.
It is noted that the claims are a product claim with intended use method limitations for mixing. The limitation “configured to be mixed with the first fiber treatment agent immediately before use to prepare a fiber treatment agent for treating a fiber” is simply intended use and does not further limit the composition which is comprised of the same components which can be separately packaged and stored. The same components separately stored are capable of being mixed and used at any time. It has been held that the recitation that an element is "adapted to" perform or is "capable of” performing a function is not a positive limitation but only requires the ability to so perform. The recitation of a new intended use for an old product does not make a claim to that old product patentable, see In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). Being “mixed immediately and used immediately” is again a method step in a product claims, The same product is capable of being mixed and used immediately, as this would be most beneficial for a homogeneously mixed composition so the ingredients to not settle or decompose.
The components of Morita are capable of and are taught to be mixed and used to treat synthetic fibers. The order of mixing the organic phosphoric acid ester and fatty acid in a first storage container and then adding the (poly)oxyalkylene derivative from its own second storage container into the components of the first container is obvious, Further storing the second fiber treatment agent for at least one week prior to mixture with the first fiber treatment agent is obvious as chemicals are usually purchased and stored in laboratories for months or years and used before expiration or deterioration dates. Storing for one week prior to using in a mixture would be achieved through routine use and experimentation.
Morita clearly teaches mixing individual components of the composition into a mixture with all of the components to then be applied as unitary composition on a fiber. Selecting the order of mixing to first include a fatty acid and a phosphoric acid ester as a first component followed by adding the (poly)oxyalkylene derivative and mixing further is obvious as Morita teaches mixing and adding the components in any sequence. For example, if the ingredients were added in the order they are recited in Example 1, first the fatty acid and then the phosphate ester salt would be included, meeting the limitation of first fiber agent, then the (poly)oxyalkylene would be added as the second fiber treatment agent. The final mixture would be a combination of all three components to form the fiber treatment agent.
The separation of the components into a first and second fiber treatment agent followed by mixing to arrive at a single composition is obvious. The order of combination of components and order of blending has not been demonstrated to be critical. Nothing unobvious is seen in providing the first and second fiber treatment agents and mixing them or combining the components in any other order and mixing them. The end result is always the same composition.
Regarding applicant’s declaration under 1.132 filed November 20, 2025, The data provided for the mixtures of (B) and (C) do not contain the fatty acid and therefore are not representative of the claimed compositions. Morita clearly teaches that concentrations of 0.1-20% organic acid can be used, but applicant has only tested 3-20% solutions, which is not commensurate in scope with the effective range disclosed by the prior art. The reference is not limited to the concentrations of the working examples but all disclosures of possible concentration ranges must be considered. A reference is not limited to the working examples, see In re Fracalossi, 215 USPQ 569 (CCPA 1982). All disclosures of the prior art, including non-preferred embodiment, must be considered. See In re Lamberti and Konort, 192 USPQ 278 (CCPA 1967); In re Snow 176 USPQ, 328, 329 (CCPA 1973). Non-preferred embodiments can be indicative of obviousness, see Merck & Co. v. Biocraft Laboratories Inc. 10 USPQ 2d 1843 (Fed. Cir. 1989); In re Lamberti, 192 USPQ 278(CCPA 1976); In re Kohler, 177 USPQ 399. Accordingly, the rejections are maintained
Conclusion
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/AMINA S KHAN/Primary Examiner, Art Unit 1761