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 .
Specification
The amendment filed May 12, 2026, is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Although Applicants acknowledge that the term
PNG
media_image1.png
28
54
media_image1.png
Greyscale
may be translated as “raw silk”, Applicants amended the specification to recite “unprocessed yarn” as a substitute for “raw silk”, as the translation is technically inaccurate in the present application, since paragraph 0046 clearly discloses that the yarn is not subject to any processing. Examiner respectfully disagrees, in that Applicants acknowledge that the term
PNG
media_image1.png
28
54
media_image1.png
Greyscale
may be translated accurately. Additionally, paragraph 0046 does not recite that the yarn is unprocessed; the paragraph only recites that the straight yarn has not been subjected to “high-order processing.” “Unprocessed” is not equivalent to “not been subjected to high-order processing.”
Applicants’ amendments are not entered. Applicants are required to cancel the new matter in the reply to this Office Action.
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 21-26 are 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.
Regarding claims 21-25, claim 21 recites a knitting yarn of the single circular knitted fabric is an (sic) processing yarn. Applicants’ specification as originally filed does not recite the claimed limitation.
Regarding claims 25 and 26, the claims each recite that the knitting yarn of the single circular knitted fabric is an unprocessed yarn. Applicants’ specification as originally filed does not recite the claimed limitation.
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 21-25 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.
Regarding claims 21-25, claim 21 recites a knitting yarn of the single circular knitted fabric is an processing yarn. It is unclear what the scope of a “processing” yarn necessarily entails.
Regarding claim 25, the claim recites that the knitting yarn of the single circular knitted fabric is an unprocessed yarn. Claim 25 is dependent from claim 21, which recites that a knitting yarn of the single circular knitted fabric is an processing yarn. Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. MPEP 608.01(i). It is unclear how the knitting yarn of claim 25 is an unprocessed yarn when the claim, from which it depends, recites that the knitting yarn is a processing yarn.
Claim Rejections - 35 USC § 102/103
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 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.
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 11-14 and 16-26 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2019/102770 to Shibata, as evidenced by the English translation.
Regarding claims 11-14 and 16-26, Shibata teaches a fabric having a multilayer structure, wherein a resin film is laminated on a single-layer circular-knitted fabric that contains non-crimped synthetic fiber multifilaments having a total fineness of 44 dtex or less and has a network density of 45 to 130 course/2.54 cm and 55 to 120 wale/2.54 cm (Shibata, Abstract). Shibata teaches that it is preferable that the single-layer circular knit structure has a jersey knit structure (Id., paragraph 0009), and that the basis weight is preferably 79 g/m2 or less, more preferably 20 to 41 g/m2 (Id., paragraphs 0010, 0023). Shibata teaches that a knit fabric was bonded to the film surface of the two-layer laminated fabric (Id., paragraph 0037).
Regarding the claimed Vh value, number of wells, and number of courses, Shibata teaches 45 to 130 course/2.54 cm and 55 to 120 wale/2.54 cm. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the multilayer structure of Shibata, and adjusting and varying the number of wells and courses, and the Vh value, such as within the claimed ranges, motivated by the desire of forming a conventional multilayer structure based on the totality of the teachings of Shibata.
Regarding claim 18, Shibata teaches laminate a film to the sinker loop surface of the circular knitted fabric (Shibata, paragraphs 0035, 0037, 0039, 0041, 0043).
Regarding claim 19, since Shibata teaches or renders obvious the claimed structure, including the number of courses and wales, it is reasonable for one of ordinary skill to expect that the length of the knitting yarn appearing on a knit stitch is within the claimed range. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claims 21-26, as set forth above, it is unclear what is required by the claimed processing yarn or unprocessed yarn. Shibata teaches that the multifilament may be air-processed or non-crimped (Shibata, paragraph 0017).
Response to Arguments
Applicant’s arguments have been considered but are moot based on the new ground of rejection.
Conclusion
Applicant's amendment necessitated the 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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER Y CHOI/Primary Examiner, Art Unit 1786
Prosecution Insights