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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 August 2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 9 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Makabe et al (JP 2004019021 A; translation).
Regarding claim 1, Makabe et al teaches a liquid crystal polyester fiber (see paragraph [0001] (liquid crystalline polyester for fibers) of Makabe et al). Note that the ranges recited in claim 1 include zero.
Regarding claim 2, see paragraph [0058] (melting point of 285°C) of Makabe et al.
Regarding claim 3, see paragraph [0074] (tensile strength (i.e., tenacity) of 16 cN/dtex) of Makabe et al.
Regarding claim 4, see paragraphs [0008], [0009] (structural unit I is greater than 50 mol%) and [0012] (structural unit I is p-hydroxybenzoic acid (i.e., 4-hydroxybenzoic acid)) of Makabe et al.
Regarding claim 9, see paragraph [0001] (liquid crystalline polyester for fibers) of Makabe et al.
Regarding claim 12, see paragraphs [0001] and [0089] (liquid crystalline polyester for fibers has low gas emissions) of Makabe et al. Note that the ranges recited in claim 12 include zero.
Claim(s) 6 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Makabe et al (JP 2004019021 A1).
Regarding claim 6, Makabe et al (see the entire document, in particular, paragraphs [0001], [0046] and [0048] of the translation) teaches a process (see paragraph [0001] (liquid crystalline polyester for fibers can be melt-molded) of Makabe et al), including (a) melt-kneading a liquid crystal polyester in an extruder to obtain a melt-kneaded material (see paragraph [0046] (melt-kneading) of Makabe et al); and (b) spinning by discharging the melt-kneaded material from a spinneret (see paragraph [0048] (melt-spinning) of Makabe et al).
Regarding claim 8, see paragraph [0046] (twin-screw extruder) of Makabe et al.
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.
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.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Makabe et al (JP 2004019021 A) as applied to claims 1-4, 9 and 12 above, and further in view of Isayev et al (U.S. Patent No. 4,728,698 A).
Regarding claim 10, Makabe et al does not teach (1) a reinforcing fiber. Isayev et al (see the entire document, in particular, col. 3, lines 49-58; col. 4, lines 67-68; col. 5, lines 38-51; col. 6, lines 54-60) teaches a fiber structure (see col. 3, lines 49-58 (polymer composition including a liquid crystal polymer); col. 4, lines 67-68 (polyester liquid crystal polymer) and col. 6, lines 54-60 (polymer composition may be formed into fibers) of Isayev et al), including a reinforcing fiber (see col. 5, lines 38-51 ( inclusion of an additional reinforcing fiber) of Isayev et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a reinforcing fiber in the fiber structure of Makabe et al in view of Isayev et al in order to provide high stiffness or high strength (see col. 5, lines 38-51 of Isayev et al).
Regarding claim 11, see col. 6, lines 54-60 (polymer composition may be formed into shaped articles, tapes, films or fibers by means of extrusion, injection molding) of Isayev et al.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 2 and 4-21 of co-pending Application No. 18/200,888 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because elimination of an element (i.e., elimination of at least one metallic element) and its function is obvious if the function of the element is not desired (see MPEP §2144.04(II)(A)).
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEO B. TENTONI whose telephone number is (571)272-1209. The examiner can normally be reached 7:30-4:00 ET M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A. Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LEO B. TENTONI
Primary Examiner
Art Unit 1742
/LEO B TENTONI/Primary Examiner, Art Unit 1742
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