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 .
Response to Amendment
The amendment filed on 5/19/2026 has been entered.
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.
Claims 1-5, 7-17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over USPAP 2022/0298678 to Ozden in view of USPAP 2022/0356619 to Garner, DUPONT HYTREL 5526 Product Information, and/or JP 2008163527 to Shirahama.
Claims 1 and 21, Ozden discloses an elastomeric polyurethane multifilament yarn (101) comprising a first filament that is at least partially adhered to an identical second filament (see entire document including [0001]-[0013], [0021]-[0041] and [0053]). Ozden does not appear to mention the use of a thermoplastic copolyetherester elastomer but Ozden does disclose that the yarn may be used to produce elastic garments [0001]. Garner discloses that it is known in the art to use a thermoplastic copolyetherester elastomer such as HYTREL 5526 to produce an elastic garment (see entire document including [0034], [0037]-[0048] and [0097]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the elastomeric multifilament yarn (101) first and second filaments of Ozden from any suitable elastic material, such as the thermoplastic copolyetherester elastomer disclosed Garner, 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. Garner discloses that the flexural modulus of the elastomer is about 300 MPa or less [0039] and Ozden discloses that the yarn has a linear density of from about 1 to about 500 denier per filament [0040] and exhibits an elongation at break of about 300% or more [0013].
Claim 2, the multifilament yarn exhibits a shrinkage of about 50% or less (Garner [0058]).
Claims 3 and 4, considering that the applied prior art teaches a substantially identical multifilament yarn in terms of structure and materials, and considering the teachings of DUPONT HYTREL 5526 Product Information, the claimed properties appear to be inherent. Plus, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the yarn with any suitable tenacity and/or recoverable stretch, such as claimed, because it is within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 5, HYTEL 5526 exhibits one or more of a Shore D hardness of about 60 or less, a melting temperature of from about 100°C to about 230°C, and a tensile stress at break of about 45 MPa or less (e.g. see page 1 of DUPONT HYTREL 5526 Product Information). Plus, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the yarn with any suitable hardness, such as claimed, because it is within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 7, the thermoplastic elastomer (HYTREL 5526) of Garner is inherently a thermoplastic copolyester elastomer containing hard segments and soft segments, wherein the hard segments constitute from about 20 wt. % or more to about 70 wt. % or less of the thermoplastic copolyester elastomer and the soft segments constitute from about 30 wt. % or more to about 80 wt. % or less of the thermoplastic copolyester elastomer (see also DUPONT HYTREL 5526 Product Information).
Claims 8-12, Garner does not appear to mention composition from which the hard and soft segments of the elastomer are derived but Shirahama discloses that it is known in the art to derive an elastomer with hard segments derived from at least one aromatic dicarboxylic acid and/or a diester thereof and at least one diol containing from 2 to 15 carbon atoms, the aromatic dicarboxylic acid includes terephthalic acid, isophthalic acid, or a combination thereof and wherein the diol includes ethylene glycol, 1,4 butanediol, 1,3-propane diol, or a combination thereof, and the soft segments are derived from at least one aromatic dicarboxylic acid and/or a diester thereof and at least one poly (alkylene oxide) glycol, the aromatic dicarboxylic acid includes terephthalic acid, isophthalic acid, or a combination thereof and wherein the poly (alkylene oxide) glycol includes poly (tetramethylene oxide) glycol, poly (trimethylene oxide) glycol, poly (propylene oxide) glycol, poly (ethylene oxide) glycol, poly (hexamethylene oxide) glycol, or a combination thereof, the thermoplastic elastomer comprises a thermoplastic copolyetherester elastomer prepared from monomers comprising (1) poly (tetramethylene oxide) glycol, (2) a dicarboxylic acid selected from isophthalic acid, terephthalic acid or a mixture thereof, and (3) a diol selected from 1,4-butanediol, 1,3-propanediol or a mixture thereof (see entire translation document). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the elastomer from any suitable method, such as claimed, in order to successfully practice the invention of Garner.
Further, absent a showing to the contrary, it is the examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. 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 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 an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. 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 the applied prior art.
Claims 13-15, Ozden discloses that the first filament and the second filament may be coated with an oil finish [0067]. The examiner takes official notice (now admitted prior art) that it is common, and thus obvious, in the art to use silicone oil and coat at least about 50% of a yarn surface area with oil.
Claim 16, the multifilament yarn further comprises a third filament at least partially adhered to the first filament, the second filament, or both ([0040] and Figures 5 and 6 of Ozden).
Claim 17, the first filament, the second filament, and the third filament are at least partially adhered to each other ([0040] and Figures 5 and 6 of Ozden).
Response to Arguments
Applicant's arguments filed 5/19/2026 have been fully considered but they are not persuasive.
Regarding claim 1, the applicant asserts that there is no motivation to construct the elastic multifilament yarn (101) of Ozden with thermoplastic copolyetherester elastomer of Garner. The examiner respectfully disagrees. Ozden discloses an elastomeric polyurethane multifilament yarn (101) comprising a first filament that is at least partially adhered to an identical second filament (see entire document including [0001]-[0013], [0021]-[0041] and [0053]). Ozden does not appear to mention the use of a thermoplastic copolyetherester elastomer but Ozden does disclose that the yarn may be used to produce elastic garments [0001]. Garner discloses that it is known in the art to use a thermoplastic copolyetherester elastomer such as HYTREL 5526 to produce an elastic garment (see entire document including [0034], [0037]-[0048] and [0097]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the elastomeric multifilament yarn (101) first and second filaments of Ozden from any suitable elastic material, such as the thermoplastic copolyetherester elastomer disclosed Garner, 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.
Regarding claim 21, the applicant asserts that Ozden requires an inelastic filament within composite yarn (100). Applicant’s argument is not persuasive because the claims are not rejected in view of the composite yarn (100) of Ozden. Rather, the multifilament yarn (101) of Ozden corresponds to the claimed multifilament yarn.
Conclusion
Applicant's amendment necessitated any new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
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