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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on application filed in Japan on 3/30/2022. It is noted, however, that applicant has not filed a certified copy of the 2022-057661 application as required by 37 CFR 1.55.
Acknowledgment is made of applicant's claim for foreign priority based on application filed in Japan on 1/31/2023. It is noted, however, that applicant has not filed a certified copy of the 2023-013145 application as required by 37 CFR 1.55.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9 and 12-13, drawn to a water repellent polyacrylonitrile-based artificial hair fiber, classified in D01F 6/18.
II. Claims 10-11, drawn to methods of producing the water repellent polyacrylonitrile-based artificial hair fiber, classified in D06M 13/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product as claimed can be made by another and materially different process, such as by simultaneously spinning two solutions to form a core-sheath fiber, with the sheath comprising the alkyl (meth)acrylate based water repellent (B).
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
This application contains claims directed to the following patentably distinct species: Species A, referred to as Method 1 (see [0035]), and Species B, referred to as Method 2 (see [0055]). The species are independent or distinct because Species A involves a step of bringing the yarn to be treated before drying into contact with an oil agent, while Species B involves bringing a dried polyacrylonitrile-based synthetic fiber (A) into contact with an oil agent. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claim is generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: the prior art applicable to one invention would not likely be applicable to another invention..
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Jeffrey Bergman on 8/7/2024 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9 and 12-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 102 or 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
Claim(s) 1-2, 4-9 and 12-13 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Karasawa (WO 2015083627 A1).
Regarding claim 1, Karasawa teaches a water-repellent fiber structure in which a resin film includes a hydrocarbon compound, silicone compound, and melamine compound and adheres to a fiber surface, and the total amount of the silicone compound is 1 to 50 mass% in terms of the hydrocarbon-containing compound (Abstract). The hydrocarbon compound is preferably polyolefin and an aliphatic hydrocarbon having 12 or more carbons, an aliphatic carboxylic acid having 12 or more carbons and an ester thereof, or a (meth)acrylic acid ester present via ester bonds and having 12 or more carbons in hydrocarbon groups (Abstract). It may be a polyacrylic ester and polymethacrylic ester: The number of carbon atoms in the hydrocarbon group present via an ester bond is preferably 12 or more (page 4, lines 124-132). On the other hand, the number of carbon atoms is preferably 24 or less (same section). This hydrocarbon group may be linear or branched, saturated or unsaturated hydrocarbon, and may further have an alicyclic or aromatic ring (same section). Among these, those that are linear are preferable, and those that are linear alkyl groups are more preferable (same section). The hydrocarbon group-containing compound is fixed at a rate of 0.2 to 1.2% by mass based on the fiber mass (page 5, lines 193-195). Preferably, the fibers are synthetic fibers (page 8, line 327). Acrylic fibers typified by polyacrylonitrile are among those that are preferably used (page 9, lines 333-334). The examiner notes that the disclosed polyacrylonitrile fibers meet the claimed “water repellent polyacrylonitrile-based artificial hair fiber” limitation.
Karasawa also teaches that the invention aims to provide a fiber structure that does not require a fluorine element compound (page 2, lines 63-65). Therefore, Karasawa meets the claimed limitation “wherein the alkyl (meth)acrylate-based water repellent (B) does not have a fluorine group.” In the alternative, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to not include a fluorine group in the (meth)acrylic acid ester hydrocarbon-containing compound in order to avoid having a negative impact on the environment, as suggested by Karasawa (pages 1-2, lines 15-24 and 36-38).
Regarding claim 2, Karasawa teaches that the silicone compound is preferably selected from an amino-modified silicone, an epoxy-modified silicone, a carboxy-modified silicone, a methyl hydrodiene silicone, and a dimethyl silicone (Abstract). The silicone compound is a polysiloxane and usually has a dimethylsiloxane structural unit (page 4, line 137). It is preferable that the amount of the silicone compound is 0.5 to 50% by mass based on the hydrocarbon compound, more preferably 0.8 to 16% by mass (page 5, lines 198-199). As calculated by the examiner, the amount of the silicone compound (C as claimed) would therefore be 0.001 to 0.6 mass%, more preferably 0.0016 to 0.192%, with respect to the weight of the fiber (e.g., 0.2 x 0.005 = 0.001).
Regarding claims 4-5, Karasawa teaches that the resin film of the fiber structure may temporarily contain an antistatic agent (page 6, lines 232-233). Temporary antistatic agents include anionic surfactants and cationic surfactants, and nonionic surfactants can be used (lines 234-241). The antistatic agent exhibits its effect when contained in the fiber structure in an amount of 0.02 to 0.1 % by mass (lines 245-246).
Regarding claims 6-8, as applied and as calculated by the examiner above, by mass of the fiber, Karasawa teaches that the amount of hydrocarbon group-containing compound (B as claimed) is 0.2 to 1.2%, the amount of the silicone compound (C as claimed) is 0.001 to 0.6%, and the amount of antistatic agent (D as claimed) is 0.02 to 0.1%. Therefore, the ranges disclosed by Karasawa overlap with the claimed mass ratio (B):(C) of between 1:0.03 and 1:0.4 inclusive and the claimed mass ratio (B):(D) of between 1:0.15 and 1:0.7 inclusive.
Regarding claim 9, Karasawa teaches that, when producing a high-density fabric using ultrafine fibers, the single fiber fineness of the fibers is preferably 0.4 to 2.2 decitex (page 9, 359-360). Karasawa also teaches that the fibrous structure includes string-like articles made using the fibers (page 9, lines 340-343). The examiner notes that the disclosed fibers would therefore be capable of functioning as a headdress product such as a doll hair.
Claim Rejections - 35 USC § 103
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karasawa (WO 2015083627 A1), as applied to claim 1 above, in view of Hagita (JP 2019173185 A).
Regarding claim 3, Karasawa remains as applied above.
Karasawa does not explicitly disclose wherein the alkyl (meth)acrylate-based water repellent (B) further comprises a structural unit derived from vinyl chloride.
However, Hagita teaches a water repellent composition for fiber containing at least one kind of (A) selected from an urethane compound (A1), an acrylic resin (A2) and reactive silicone (A3), a silicone resin (B) and water (Abstract). The acrylic polymer (A2) may contain, in addition to a (meth)acrylate ester having an ester moiety having 12 or more carbon atoms, a monofunctional or polyfunctional monomer copolymerizable with the polyether as a monomer unit ([0076]). Examples of the copolymerizable monofunctional or polyfunctional monomer include a fumarate, a maleate, and a (meth)acrylate ester having a hydrocarbon group having 1 to 11 carbon atoms ([0077]). Examples thereof include fluorine-free vinyl monomers such as (meth) acrylic acids, fumaric acids, maleic acids, (meth) acrylamides, N-methylol acrylamide, vinyl ethers, vinyl esters, vinyl chlorides, vinylidene chlorides, ethylene, and styrene ([0077]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have copolymerized the (meth)acrylic acid ester hydrocarbon-containing compound of Karasawa with vinyl chlorides because Hagita teaches that vinyl chlorides are examples of fluorine-free vinyl monomers that may suitably be copolymerized with acrylic polymers for use in water repellent compositions for fibers, and it would further have been obvious to do so in order to adjust the functionality of the water repellent composition.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Minami (WO2020158191A1, with US 2021/0355631 A1 relied upon as a machine translation) teaches a water repellent softening agent composition including a silicone polymer and a water-repellent polymer, the water-repellent polymer being selected from fluorine-containing polymers and non-fluorine-containing polymers (Abstract, [0050], [0083], [0167]-[0170], [0192], [0199], [0261]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Worrell whose telephone number is (571)270-7728. The examiner can normally be reached Monday-Friday.
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, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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