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 .
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 1-7 and 10-20 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 claim 1, it is unclear as to what the meets and bounds of the invention is. Claim 1 is directed to a papermaking mat. This mat includes the limitations of inorganic fibers where some our bound into bundles and others form no bundles and a minimum length.
The claim then requires a series of method steps of opening the mat to obtain a slurry with a specific bulk specific gravity in water and then provides the method steps of how to treat the mat to make a slurry.
These limitations as written describe a series of method steps to apply to the mat in order to make a slurry. This is at odds to the preamble of the claim which is directed to the act of making the mat.
For purposes of continued examination, the Examiner is considering everything after “wherein the papermaking mat is subjected to…” to be considered intended use of the papermaking mat and will not hold patentable weight in the determination of the claims directed to a product of a papermaking mat. This will affect all claims dependent on claim 1. For clarity that means only physical properties of the mat will be considered and not any physical properties of the slurry that is made from the mat, as the slurry is an intended use of the mat if a series of methos steps are performed on the mat.
Claims 2-7 and 10-20 are rejected based on their dependency to claim 1.
Regarding claims 7 and 17-20, it is unclear as to how the trace length of the crimped fiber bundle can be greater than the length of the crimped fiber bundle when the method of acquiring the traced measurement is simply to “trace therealong from one end to another end as viewed from above”.
The fiber bundle is not modified in any manner for the new measurement and it is the same fiber bundle, so it is unclear as to how measuring from above will make it at least 0.1mm longer when it is the same object being measured.
If the act of placing the crimped fiber bundle onto a flat surface includes the steps of stretching it out flat, then that needs to be claimed. If there is a specific way the tracing needs to occur, it needs to be explicitly claimed. As currently written tracing is simply drawing along the length of the fiber bundle, which would match the original measurement exactly as it is the same fiber.
Figure 2 of the instant specification provides an example of a crimped bundle when viewed from the side (so that the peaks and valleys are visible in the Y direction). This measuring is from a specific orientation that can only occur from a side view. The claims specifically require a view as shown “from above”. Looking down on the same figure of figure 2 from above (looking down the Y axis) would provide a traced fiber of the same length as described above.
It is recommended that the claims are amended from “when viewed form above” to a specific alignment to require a view of the peaks and valleys of the crimps of the fiber bundle.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 1-2, 4-7, 12-13, 15-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kariya et al, US Patent Publication 2011/0227251.
Regarding claim 1, Kariya teaches a papermaking mat (sheet, see claim 1) comprising:
inorganic fibers including inorganic fibers forming fiber bundles (referred to as “lump-shaped cohered fiber” [0037]) each formed from 10 or more of the inorganic fibers entangled and twisted together [0037, and inorganic fibers forming no fiber bundles ([0019] shows that only fiber bundles make up 2% of the fibers);
wherein the fiber bundles have an average length of more than 5 mm [0037].
Kariya teaches that the lump shaped fibers have a diameter up to about 1-5 mm [0037] and gives a singular example in figure 3 of a 3 and 2 mm fiber. This is a teaching of an overlapping range at the end point without a statement of criticality to the length of the fiber bundles.
MPEP2144.05 states 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 prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.” A1 this is the exact same situation as shown in the MPEP, it is held that a prima facie case of obviousness is met by the teachings of Kariya in regards to the obviousness of ranges of the fibers being at least 5 mm.
Regarding claim 2, Kariya further teaches wherein the papermaking mat contains an organic binder [0069] in an amount of 0.1 to 20 parts by weight (4-8wt% [0036]) and an inorganic binder [0069] in an amount of 0.1 to 10 parts by weight per 100 parts by weight of the inorganic fibers (0.5-1.0 wt % [0069]).
Regarding claim 4, Kariya further teaches wherein the organic binder is at least one selected from the group consisting of: acrylic resins, acrylate latices [0049], rubber latices, carboxymethyl cellulose and polyvinyl alcohol, all of which act as water-soluble organic polymers; styrene resins that act as a thermoplastic resin; and epoxy resins that act as a thermosetting resin [0049].
Regarding claims 5 and 12, Kariya further teaches wherein the inorganic binder contains at least one selected from the group consisting of alumina, silica, silicon carbide, zirconia, boron nitride, diamond, and pumice (alumina [0049]).
Regarding claims 6, 13, and 15-16, Kariya further teaches the same as above in regards to the fiber length and further teaches that the lump shaped cohered fiber can have a diameter of about 1 mm at one end range [0037]. The same overlapping ranges as stated in claim 1 apply to the overlapping ranges of the diameter as well.
Regarding claims 7, 17, and 19-20, Kariya remains as applied above and in view of the 112 rejection above further teaches that the fiber bundles include a crimped fiber bundle shows (with the intertwining will create a crimp), and a trace length of the crimped fiber bundle as measured by a trace length measurement method described below is greater than a length of the crimped fiber bundle by 0.1 mm or more:
trace length measurement method:
a crimped fiber bundle is placed still on a flat surface; and the crimped fiber bundle placed still is traced therealong from one end to another end thereof as viewed from above to determine a traced distance as "trace length of the crimped fiber bundle".
Figure 3 depicts a top down view of the fiber bundle and tracing it along the length of the fiber would give you the length in question.
Claim(s) 3, 10-11, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kariya et al, US Patent Publication 2011/0227251 in view of Sako et al, US Patent Publication 2021/0246819 as evidenced by Material sheet of Nipol LX874.
Regarding claim 3, Kariya teaches the same types of organic binders as claimed, but is simply silent to the Tg of the binder being utilized.
In the same field of endeavor of making mats from inorganic fibers, Sako teaches utilizing the same types of inorganic fibers with the same claimed length of up to about 500 nm (reads on 5 mm [0031]) with the same types of organic binders [0036] with a fiber opening stage [0036] to control the bulk specific gravity [0036].
Sako then givens a specific example of a preferred organic binder of Acrylic Latex LX874 (trade designation), available from Zeon Corporation [0052].
The attached material sheet of Nipol LX874 provides that the Glass Transition Temperature of this binder is -31 C which is less than the required 5 or lower.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the specifically stated organic binder of Sako in the Kariya reference which teaches the generic use of the same materials but simply does not provide an example with the claimed physical property. Utilizing a specifically taught binder in place of a generic teaching of a binder in the same field of endeavor and for the same reasons will be a simple substitution for one known element that will produce the same result with a high expectation of success.
Regarding claim 2, Kariya further teaches wherein the papermaking mat contains an organic binder [0069] in an amount of 0.1 to 20 parts by weight (4-8wt% [0036]) and an inorganic binder [0069] in an amount of 0.1 to 10 parts by weight per 100 parts by weight of the inorganic fibers (0.5-1.0 wt % [0069]).
Regarding claim 10, Kariya further teaches wherein the organic binder is at least one selected from the group consisting of: acrylic resins, acrylate latices [0049], rubber latices, carboxymethyl cellulose and polyvinyl alcohol, all of which act as water-soluble organic polymers; styrene resins that act as a thermoplastic resin; and epoxy resins that act as a thermosetting resin [0049].
Regarding claim 11, Kariya further teaches wherein the inorganic binder contains at least one selected from the group consisting of alumina, silica, silicon carbide, zirconia, boron nitride, diamond, and pumice (alumina [0049]).
Regarding claim 14, Kariya further teaches the same as above in regards to the fiber length and further teaches that the lump shaped cohered fiber can have a diameter of about 1 mm at one end range [0037]. The same overlapping ranges as stated in claim 1 apply to the overlapping ranges of the diameter as well.
Regarding claim 18, Kariya remains as applied above and in view of the 112 rejection above further teaches that the fiber bundles include a crimped fiber bundle, and a trace length of the crimped fiber bundle as measured by a trace length measurement method described below is greater than a length of the crimped fiber bundle by 0.1 mm or more:
trace length measurement method:
a crimped fiber bundle is placed still on a flat surface; and the crimped fiber bundle placed still is traced therealong from one end to another end thereof as viewed from above to determine a traced distance as "trace length of the crimped fiber bundle".
Figure 3 depicts a top down view of the fiber bundle and tracing it along the length of the fiber would give you the length in question.
Claim(s) 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kariya et al, US Patent Publication 2011/0227251 in view of Ohashi et al, Patent Publication 2005/0227058.
Regarding claim 8, Kariya teaches a method of making a papermaking mat (sheet, see claim 1) comprising:
inorganic fibers including inorganic fibers forming fiber bundles (referred to as “lump-shaped cohered fiber” [0037]) each formed from 10 or more of the inorganic fibers entangled and twisted together [0037, and inorganic fibers forming no fiber bundles ([0019] shows that only fiber bundles make up 2% of the fibers);
wherein the fiber bundles have an average length of more than 5 mm [0037].
Kariya teaches that the lump shaped fibers have a diameter up to about 1-5 mm [0037] and gives a singular example in figure 3 of a 3 and 2 mm fiber. This is a teaching of an overlapping range at the end point without a statement of criticality to the length of the fiber bundles.
MPEP2144.05 states 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 prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.” A1 this is the exact same situation as shown in the MPEP, it is held that a prima facie case of obviousness is met by the teachings of Kariya in regards to the obviousness of ranges of the fibers being at least 5 mm.
Kariya further teaches the method of making the papermaking sheet [0044] of performing an opening fiber step [0054] then a papermaking step to form the sheet (see claim 1).
Kariya is silent as to the bulk specific gravity of the opened fibers, but simply states to open the fibers in known methods including a wet open fiber process.
In the same field of endeavor making an aggregate of inorganic fibers through a wet open fiber process, Ohashi teaches a method for producing a papermaking mat (sheet shaped product form the aggregate [0014]), the method comprising:
a fiber opening step of subjecting an inorganic fiber molded body consisting of an aggregate of inorganic fibers to fiber opening in water and producing a slurry containing the inorganic fibers [0026-0027] and:
a papermaking step of papermaking from the slurry [0039] to obtain a papermaking mat [0038], wherein in the fiber opening step, fiber opening is performed such that the fiber bundles have an average length of more than 5 mm and that the inorganic fibers in the slurry have a bulk specific gravity in water of 0.012 to 0.035 g/cm³ [0026-0027]. Ohashi teaches the specific advantages of this particular bulk specific gravity [0027].
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the wet open method of Ohashi in the Kariya method that is simply silent on the fill set of parameters the fibers should be processed to for the benefit of achieving the preferred physical property and known benefits that the fibers would have as taught by Ohashi [0027].
Regarding claim 9, both references further teach that wherein the inorganic fiber molded body includes at least one of a first inorganic fiber molded body derived from a needle-punched mat ([0061 of Kariya) or a second inorganic fiber molded body derived from a papermaking mat (Ohashi claim 6).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 12, and 13 are of U.S. Patent Application No. 18/475207. Although the claims at issue are not identical, they are not patentably distinct from each other because they have a different combination of properties in the final product but include the same method steps of formation and key physical properties focused on by both applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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