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 .
Status of the Claims
Claims 1-5, 14-24, and 33-36 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Claim Objections
Claim 24 is objected for reciting “a smoking article comprising the filter for a smoking article of claim 18” because claim 18 is directed to a method. It would appear that the claims should recite “claim 19”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-5, 14-24, and 33-36 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.
Claim 1 lines 5-7 are indefinite for reciting “the oil comprises (a) an esterification product of a fatty acid having at least 16 carbon atoms and an aliphatic monohydric alcohol; and (b) an esterification product of sorbitan and a fatty acid having at least 16 carbon atoms” because it is unclear if the esterification products of the oil needed are two different esters or if there is an ester and an additional product such as water which is an esterification product. It is unclear what is meant by “product”. For purposes of examination both esterification products (a) and (b) are being interpreted as esters and not just any esterification products.
Independent claims 14, 19 and 33 are similarly rejected and claims 2-4, 15-24 and 35-36 are rejected for being dependent on the rejected base claims.
Allowable Subject Matter
Claims 1, 14, 19, and 33 are objected to as being dependent upon a rejected under 35 U.S.C. 112(b), but would be allowable if amended to overcome the rejection.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claims 1, 14, 19, and 33, no prior art alone or in combination with references discloses a lyocell multifilament as claimed, wherein the oil applied to the lyocell multifilament comprises two esters (a) and (b), wherein (a) is an esterification product of a fatty acid having at least 16 carbon atoms and an aliphatic monohydric alcohol; and (b) is an esterification product of sorbitan and a fatty acid having at least 16 carbon atoms.
Jung et al. (US-20160235112-A1), directed to a lyocell material for cigarette filter and method for preparing same, teaches a lyocell material for a filter (abstract) comprising an oil applied onto the lyocell multifilament ([0012]-[001]) and in an amount of 0.2% ([0066]).
Jung further discloses the lyocell material is a crimped multifilament and the oil is applied to the crimped lyocell ([0012]-[0020]).
Jung teaches the oil in an amount of 0.2% per filament ([0066]), the amount of oil attached to the multifilament is maintained uniform by squeezing rollers of the device ([0046]), and the oil affects the strength of each filament ([0049]), but does not explicitly disclose the oil is in an amount of at least 2 to 100 wt.% of a total weight of the lyocell material
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the oil amount applied to the lyocell multifilament since it has been held that, where 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, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed oil amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the amount of oil motivated by the desire to adjust the strength of each filament ([0049]).
Jung differs from the instant invention in that Jung is silent to the type of oil used and therefore does not explicitly disclose an oil comprising two esters applied to lyocell material, wherein the esters are (a) is an esterification product of a fatty acid having at least 16 carbon atoms and an aliphatic monohydric alcohol; and (b) is an esterification product of sorbitan and a fatty acid having at least 16 carbon atoms.
Gupta et al. (US-20120175298-A1), directed to a high efficiency filter, discloses the filter comprising lyocell fibers and ester fibers ([0032];[0094]).
Gupta further discloses the nonwoven web of the filter can comprise additives that are added to a wet lap and applied to the filter either by wet-laying or a coating ([0034]).
Gupta further discloses the multicomponent fiber can comprise water and sulfopolyesters ([0099]).
Gupta further discloses the fatty acid and/or oil used for the fiber finishing can include mineral oil, stearate esters (i.e., esterification product of both (a) a fatty acid having at least 16 carbon atoms and an aliphatic monohydric alcohol and (b) a sorbitan and a fatty acid comprising at least 16 carbon atoms), sorbitan esters and/or neatsfoot oil ([0099]).
Gupta differs from the instant invention in that the filter is not directed to a smoking article and the filter is a non-woven web and not a crimped filter. While Gupta discloses esterification products, Gupta does not explicitly disclose the esterification products are applied to a crimped lyocell product for a smoking article and would not be obvious to one of ordinary skill in the art to apply to a smoking article since Gupta is directed to a HEPA filter for filtering microplastics and pollutants from the surrounding environment ([0005]).
Binassi et al. (US-20150189913-A1), directed to a degradable filter for smoking articles, teaches the filter comprising lyocell fibers ([0024]) and the lyocell being crimped ([0020]-[0023]).
Binassi differs in that Binassi does not explicitly disclose a lyocell multifilament to which an oil is applied onto the lyocell multifilament, wherein the oil comprises two esters and the esters are (a) is an esterification product of a fatty acid having at least 16 carbon atoms and an aliphatic monohydric alcohol; and (b) is an esterification product of sorbitan and a fatty acid having at least 16 carbon atoms.
As such, no prior art appears to disclose or reasonably suggest a lyocell multifilament as claimed, wherein the oil applied to the lyocell multifilament comprises two esters (a) and (b), wherein (a) is an esterification product of a fatty acid having at least 16 carbon atoms and an aliphatic monohydric alcohol; and (b) is an esterification product of sorbitan and a fatty acid having at least 16 carbon atoms, as recited in claims 1, 14, 19, and 33 and therefore claims 1-5, 14-24, and 33-36 are indicated as having allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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, Philip Louie can be reached at (571)270-1241. 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.
/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights