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
Applicant’s amendment filed on June 23, 2026 has been entered. Claims 1 and 2 have been cancelled. Claim 3 has been amended. As such, Claims 3-7 are currently pending in the application.
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 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0087820 to Suzuki et al. (“Suzuki”) in view of Japanese Patent Application Publication No. 2005-273116 to Lee et al. (an English translation obtained from the PE2E database is referenced herein) (“Lee”), International Patent Application Publication WO 2019/142718 to Kano et al. (the English equivalent, U.S. Patent Application Publication No. 2021/0054536 is referenced herein) (“Kano”), and U.S. Patent Application Publication No. 2004/0038028 to Tanaka et al. (“Tanaka”).
With regard to Claims 3 and 7, Suzuki discloses a conjugated fiber, useful in fiber products such as clothing, having both stretchability and wear resistance comprising an eccentric core-sheath structure, wherein an A-component core portion is completely covered by a B-component sheath portion. See, e.g., Abstract, paragraph [0003], entire document. Suzuki discloses that the conjugated fiber can be used in the production of multifilament yarns. Paragraph [0075]. Suzuki discloses that the A-component core portion comprises a high molecular weight polymer and the B-component sheath portion comprises a low molecular weight polymer, paragraph [0056], and that the core and sheath portions can be formed from polyester. Paragraphs [0058] and [0059]. Suzuki discloses the claimed parameter of the molecular weight difference being 5,000 or more because Suzuki teaches that the two polymers used in to form the A-component and the B-component differ in melt viscosity by 50 Pa*s or more, paragraph [0095], and Suzuki provides an example wherein a polyethylene terephthalate core having a melt viscosity of 160 Pa*s is combined with a polyethylene terephthalate sheath having a melt viscosity of 70 Pa*s, Table 1, Example 3, to form a conjugate fiber.
Suzuki does not specifically disclose that the high molecular weight component is 25,000 or more. Lee is also related to conjugate fibers formed using polyethylene terephthalate useful in producing crimped fibers that are stretchable. See, e.g., Abstract, entire document. Lee teaches that when the molecular weight difference between a first component and second component of a fiber is at least 5,000, then an appropriate molecular weight for the high molecular weight component is in the range of 15,000 to 90,000. Page 3. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the high molecular weight component of the conjugate fiber disclosed by Suzuki with a molecular weight of 25,000 or more in order to provide a suitable and known molecular weight value for use in conjugate fibers having components that differ in molecular weight, as shown to be known by Lee. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Suzuki does not disclose that the high molecular weight polyester has a crystallinity of 20% to 50% and an orientation parameter of 6.5 to 15.0. However, Suzuki does suggest the crystalline nature of the polyester to fall within this quantified parameter, noting that the material has an oriented amorphous component and a crystal precursor. Paragraph [0171]. Moreover, the person having ordinary skill in the art would be motivated to seek out suitable crystallinity values in the same field of endeavor. Kano is also related to multicomponent fiber material used to form stretchable yarn materials. See, e.g., Abstract, entire document. Kano teaches that the interior component of the fiber, which is formed using polyester, has a crystallinity that is easily adjustable and provided with a range of 1 to 40%. Paragraph [0034]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the crystallinity of the interior polyester component disclosed by Suzuki with a crystallinity within the range of 20 to 40% because Kano teaches that such a range of crystallinity is well known and easy to provide for polyester materials in the manufacture of multicomponent fibers, and that such a crystallinity range is useful in forming the multicomponent fibers in the field of providing yarns used in clothing materials. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). As to the orientation parameter being 6.5 to 15.0, even though the combination of Suzuki with Lee and Kano does not specifically address this property parameter, it is reasonable to presume that such a feature would be inherent to the material taught by the combination of references. Support for the presumption is found because the combination of Suzuki with Lee and Kano teaches using similar materials, i.e. a conjugated fiber comprising two kinds of polyesters having a molecular weight difference of 5,000 or more with the low molecular component completely covering the high molecular weight component, and wherein the high molecular weight component possess a crystallinity in the range of 20% to 50%. The burden is upon the Applicant to prove otherwise. Moreover, even if not inherent, Suzuki teaches “[t]he range of spinning speed in the high-speed fiber formation process is not particularly limited and the process may hence include steps in which the ejected filaments are wound up as semi-stretched filaments and thereafter stretched. Fiber processing such as false twisting may be conducted according to need.” Paragraph [0122]. As such, the person having ordinary skill in the art would recognize that spinning speed in Suzuki is an easily adjustable parameter. Furthermore, Kano teaches that spinning speed can vary from 500 m/min. to 6,000 m/min., and can be done in one or two steps, depending on the desired breakage and stress to be imparted upon the fiber. Paragraphs [0051] and [0052]. It would have been obvious to a person having ordinary skill in the art at the time of the filing invention to provide an orientation parameter in the range of 6.5 to 15.0 simply by adjusting the spinning speed to provide the oriented amorphous nature sought by Suzuki, and because Kano establishes that adjustment to spinning speed is a result effective variable, and because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272 (CCPA 1980).
The combination of Suzuki with Lee and Kano does not disclose the high molecular weight component contains a third component having a copolymerization rate less than 5 mol%. Tanaka is also related to multicomponent conjugate fiber used in the manufacture of fiber products. See, e.g., Abstract, entire document. Tanaka discloses that a polyethylene terephthalate core component can be copolymerized with a third component in an amount of 0.5 to 5 mol% to improve dyeability of the fiber. Paragraph [0041]; see also Table 3. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the polyethylene terephthalate core component of the fibers taught by the combination of Suzuki with Lee and Kano with a third component having a copolymerization rate less than 5 mol% in order to improve dyeability of the fiber, as shown to be known by Tanaka.
With regard to Claim 4, Suzuki discloses “a minimum thickness S of a thickness of the ingredient B, which covers the ingredient A, to a fiber diameter D is from 0.01 to 0.1; and a portion where the ingredient B has a thickness up to 1.05 times the minimum thickness S has a peripheral length of at least one-third entire circumferential length of the fiber.” Paragraph [0032]. With regard to Claim 5, Suzuki discloses that “[t]he composite fibers in the mixed-filament yarn preferably have a crimpiness ratio of 20 to 80%.” Paragraph [0115]. With regard to Claim 6, Suzuki discloses that high elasticity polymers are suitable for use in their invention. Paragraph [0125]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an elastic modulus of 30 cN/dtex or more in the multifilament yarn disclosed by the combination of Suzuki with Lee, Kano, and Tanaka in order to provide highly stretchable and recoverable fabric useful for clothing, as taught to be generally desired by Suzuki, and given the fact that Suzuki teaches a similar fiber material having similar crimpiness.
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 3-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,692,631 (“the ‘631 Patent”) in view of Lee. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘808 Application also claims a composite fiber formed of polyester resin A and polyester resin B, wherein the difference in molecular weight falls within the range that is presently claimed, along with a multifilament formed from the composite fiber and a fiber product containing the multifilament. Moreover, Lee renders obvious the use of a high molecular weight polyester component having a molecular weight value of at least 25,000.
Claims 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/993,640 (“the ‘640 Application”) in view of Lee. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘640 Application also claims a composite fiber formed of polyester resin A and polyester resin B, wherein the difference in molecular weight falls within the range that is presently claimed, along with a multifilament formed from the composite fiber and a fiber product containing the multifilament. Moreover, Lee renders obvious the use of a high molecular weight polyester component having a molecular weight value of at least 25,000.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/881,335 (“the ‘335 Application”) in view of Lee. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘335 Application also claims a composite fiber formed of polyester resin A and polyester resin B, wherein the difference in molecular weight falls within the range that is presently claimed, along with a multifilament formed from the composite fiber and a fiber product containing the multifilament. Moreover, Lee renders obvious the use of a high molecular weight polyester component having a molecular weight value of at least 25,000.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed June 23, 2026 have been fully considered but they are not persuasive.
Applicant argues that Suzuki does not disclose or suggest the presently claimed combination of features, including at least the molecular weight of the high molecular weight component. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this instance, Lee is relied upon for the disclosure of using a high molecular weight polyester component having a molecular weight of at least 25,000.
Applicant argues that the polyester in Kano is essentially a copolyester having a copolymerization ratio of 10 mol% or more. However, such a feature is not precluded from the present claims. Claim 3 recites “a third component having a copolymerization rate of less than 5 mol%.” As such, even if Kano uses a second component having a copolymerization rate of 10 mol% or more, Applicant’s limitation of less than 5 mol% applies to a third component, not a second component. Additionally, Kano is more specifically cited for the claim limitation related to crystallinity and orientation parameter properties of Claim 3. Kano is relevant in this regard because it teaches a core portion of a fiber formed using polyester, wherein the material provides stretchability. As such, the properties of the polyester are applicable to the teachings of Suzuki.
Applicant argues that Tanaka is directed to a copolymerization component of 0.5 to 5 mol% in order to achieve coloration and process stability for the fiber. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Providing improved coloration using the copolymerization techniques disclosed by Tanaka is still applicable to Suzuki, given the overlap in their field of endeavor.
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 JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 pm.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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