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 .
This communication is responsive to the claim set filed 07/19/2024 and Response to Restriction filed 02/17/2026. Claims 1-9 are pending. The elected claims 1-4 are under consideration in this Office Action. Claims 5-9 are withdrawn.
Claims 1-4 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4 in the reply filed on 02/17/2025 is acknowledged.
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.
Claim 2 is 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 2 claims the quaternary ammonium salt having formula (1), wherein R1 and R2 are each an alkyl group with 8-18 carbon atoms and R3 and R4 are each a methyl group, while the exemplary didecyldimethylammonium chloride and dioctyldimethylammonium chloride have R1 and R3 are each an alkyl group with 8-18 carbon atoms and R2 and R4 are each a methyl group. And didecyldimethylammonium chloride should be stabler than the claimed structure because long alkyl chains are apart more than that of the claimed structure.
Claim 2 claims the quaternary ammonium salt having formula (1), wherein R1 is an alkyl group with 8-18 carbon atoms, R2 is a 3-(trihydroxysilyl)propyl group and R3 and R4 are each a methyl group, while the exemplary 3-(Trihydroxysilyl)propyldimethyloctadecyl ammonium chloride has wherein R1 is an alkyl group with 8-18 carbon atoms, R3 is a 3-(trihydroxysilyl)propyl group and R2 and R4 are each a methyl group. 3-(Trihydroxysilyl)propyldimethyloctadecyl ammonium chloride should be stabler than the claimed structure because longer chains are apart more than that of the claimed structure.
Claim 2 claims the quaternary ammonium salt having formula (1), wherein R1 is an alkyl group
with 8-18 carbon atoms, R2 is a 3-(trimethoxysilyl)propyl group and R3 and R4 are each a methyl group, while the exemplary 3-(Trimethoxysilyl)propyldimethyldodecylammonium chloride has R1 is an alkyl group with 8-18 carbon atoms, R3 is a 3-(trimethoxysilyl)propyl group and R2 and R4 are each a methyl group. 3-(Trimethoxysilyl)propyldimethyldodecylammonium chloride should be stabler than the claimed structure because longer chains are apart more than that of the claimed structure.
One ordinary skilled artisan would be confused with the above claimed structures because the structures should be uncommon if they exist. It is also confusing how R2 can be 3-(trihydroxysilyl)propyl group or 3-(trimethoxysilyl)propyl group.
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.
Claims 1-2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ohnishi et al. (US6,551,705B1) in view of Kuroda et al. (US 2008/0003434).
Regarding Claim 1, Ohnishi teaches an antibacterial acrylic fiber (2: 30-35) wherein the acrylic fiber is an acrylonitrile-acrylic copolymer fiber (2: 57-67). Ohnishi further teaches the acrylonitrile-acrylic copolymer fiber containing a quaternary ammonium salt (2: 52-56) wherein the quaternary ammonium salt has the formula of [R1R2R3R4N]+a Xa-, wherein R1 to R4 independently represent an optionally substituted alkyl group having 1 to 18 carbon atoms; X represents a halogen ion, an organic and anion or an oxoacid ion (claim 3), and the exemplary quaternary ammonium salts include didecyldimethylammonium chloride (6: 31-32). The scope of the quaternary ammonium salt formula of Ohnishi encompasses that of the instant claimed formula (1) and didecyldimethylammonium chloride reads on the instant claimed formula (1). Ohnishi furthermore teaches the quaternary ammonium salt can be used in combination with nonionic surfactant (9: 24-36).
The difference between Ohnishi and instant Claim 1 is that Ohnishi is silent that the nonionic surfactant contains a sorbitan fatty acid ester and a polyoxyethylene triglyceride.
However, Kuroda teaches an antimicrobial artificial hair fiber (ab.) comprising an acrylic finer coated with surfactant ([0075]), wherein the surfactant is a mixture of sorbitan monostearate and polyoxyethylene castor oil ether ([0061]). In view of such teaching, one ordinary skilled artisan would have been motivated before the effective filing date of instant application to use the surfactant taught by Kuroda for the antibacterial acrylonitrile-acrylic copolymer fiber of Ohnishi to obtain a modified antibacterial acrylonitrile-acrylic copolymer fiber because Kuroda teaches the mixture of sorbitan monostearate and polyoxyethylene castor oil ether is a suitable nonionic surfactant for acrylic fiber.
Ohnishi teaches the acrylonitrile-acrylic fibers having quaternary ammonium salt content of more than 0.05 wt.% and no more than 3 wt.% (claim 18). One ordinary skilled artisan would understand that the content of quaternary ammonium salt refers to the amount of quaternary ammonium salts attached to the acrylonitrile-acrylic fibers in reading Ohnishi as a whole because the amount was measured with yarns after drying (12:45-55) and Ohnishi does not disclose partial content of quaternary ammonium salts are weakly bound to fibers like chitosan (3: 25-35). After all, weakly binding to fibers is adhering to fibers as well. Thus, Ohnishi teaches the amount of quaternary ammonium salts adhered to the acrylonitrile-acrylic fibers being more than 0.05 wt.% and no more than 3 wt.%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Ohnishi.
Kuroda teaches an antimicrobial artificial hair fiber (ab.) comprising an acrylic fiber coated with 0.25% omf (on the mass of fiber) surfactant ([0075]). The amount falling within the claimed 0.15% to 0.9% by mass of the synthetic fiber.
Regarding Claim 2, Ohnishi discloses that the exemplary quaternary ammonium salt being didecyldimethylammonium chloride. The compound is stabler than the claimed the compound having R1 and R2 are each an alkyl group with 8-18 carbon atoms and R3 and R4 are each a methyl group. Therefore, it would have been obvious to one ordinary skilled artisan before the effective filing date of instant application to use didecyldimethylammonium chloride for the modified antibacterial acrylonitrile-acrylic copolymer fiber of Ohnishi in view of Kuroda.
Regarding Claim 4, The Office realizes that Ohnishi in view of Kuroda is silent on the claimed filament fineness. However, Ohnishi in view of Kuroda teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. filament fineness would naturally arise and be achieved by a composition with all the claimed ingredients.
"Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ohnishi in view of Kuroda, as applied to Claim 1 above, and in further view of Fujiwara et al. (US4,536,324).
The disclosure of Ohnishi in view of Kuroda is incorporated herein by reference.
Ohnishi in view of Kuroda teaches a modified acrylonitrile-acrylic fiber comprising a surfactant which is a mixture of sorbitan monostearate and polyoxyethylene castor oil ether but is silent on the mass% of sorbitan monostearate relative to the total mass of the surfactant.
However, Fujiwara teaches a nonionic surfactant composed of 100 parts polyoxyethylene castor oil and 3 to 30 sorbitan polyesters of long-chain fatty acids (ab.) wherein the exemplary sorbitan polyesters of long-chain fatty acids include sorbitan trioleate (2: 58-60). Thus, Fujiwara teaches the nonionic surfactant composed of polyoxyethylene castor oil and sorbitan fatty acid ester wherein the sorbitan fatty acid ester is 2.9% by mass to 23% by mass of the total mass of the nonionic surfactant, the mass% overlapping the claimed 20% to 90% by mass.
One ordinary skilled artisan would have been motivated, before the effective filling date of instant application to use the nonionic surfactant taught by Fujiwara (including the content of sorbitan fatty acid ester of the surfactant) for the modified acrylonitrile-acrylic fiber of Ohnishi in view of Kuroda due to the similarities between the surfactants of Ohnishi in view of Kuroda and Fujiwara. Additionally, Fujiwara teaches the surfactant acceptable by official authorities for use in cosmetics (2: 1-2).
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 5 of copending Application No. 18/621,470 (‘470) in view of Ohnishi et al. (US6,551,705B1).
Regarding Claim 1, Claim 1 of ‘470 claims an antibacterial acrylic artificial hair fiber comprising chitosan and a nonionic surfactant wherein the nonionic surfactant comprises a sorbitan fatty acid ester and a polyoxyethylene triglyceride, and wherein an amount of the nonionic surfactant in the antibacterial acrylic artificial hair fiber is 0.10% by weight to 0.90% by weight.
The difference between ‘470 and instant Claim 1 is that Claim 1 of ‘470 is silent on the acrylic artificial hair fiber being an acrylonitrile-acrylic copolymer fiber and the hair fibers contain quaternary ammonium salts.
However, Ohnishi teaches an antibacterial acrylic fiber (2: 30-35) wherein the acrylic fiber is an acrylonitrile-acrylic copolymer fiber (2: 57-67). Ohnishi further teaches the acrylonitrile-acrylic copolymer fiber containing chitosan, a quaternary ammonium salt (claim 3) and nonionic surfactant (9:35-36). Ohnishi teaches the amount of quaternary ammonium salts adhered to the acrylonitrile-acrylic fibers being more than 0.05 wt.% and no more than 3 wt.%. (claim 18).
One ordinary skilled artisan would have been motivated before the effective filing date of instant application to incorporate the quaternary ammonium salts and the amount into the acrylonitrile-acrylic hair fiber of ‘470 because Ohnishi teaches the quaternary ammonium salts making the softness of the artificial hair fiber obtained by chitosan permanent (5:37-45).
Regarding Claim 2, Ohnishi teaches an exemplary quaternary ammonium salt being didecyldimethylammonium chloride which is one the preferred quaternary ammonium salts of the instant application.
Regarding Claim 3, claim 1 of ‘470 claims the percentage of the sorbitan fatty acid ester in the nonionic surfactant is 20% by weight to 90% by weight.
Regarding Claim 4, claim 5 of ‘470 claims the antibacterial acrylic artificial hair fiber has a single fiber fineness of 10 to 150 dtex.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/ Supervisory Patent Examiner, Art Unit 1763
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