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
In response to the amendment received on 07/08/2026:
claims 1-19 are currently pending;
claims 9-16 and 19 are withdrawn; and
all prior art grounds of rejection are withdrawn in light of the amendment to independent claim 1; however, new grounds of rejection are presented below based on the same references as set forth herein.
Information Disclosure Statement
The listing of references in the specification, specifically the references listed in pages 14-17, is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 17-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amendment in claim 1, shown with Examiner’s annotation below, specifically the recited “wherein the method is performed below the thermal decomposition temperature of the tannic acid” contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention, as outlined below.
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Applicant points to specification at [0022], shown below, for the support of “the method performed below the thermal decomposition of the tannic acid” in independent claim 1, and support of “the method is performed at ambient temperature” in dependent claims 18 and 19.
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While specification at [0022] support that “the method is performed at ambient temperature” for dependent claims 18 and 19, it does not explicitly support the amendment in independent claim 1.
However, specification at [0026], shown below, appears to support the recited “dissolving a nylon polymer and tannic acid in a solvent to form a solution”.
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Furthermore, specification at [0021], shown below, appears to support the recited “removing the solvent from the solution to form a composition”.
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Specification at [0027] discloses that the electrospinning temperature is at 20-22oC, shown with Examiner annotation below:
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One of ordinary skill in the art would appreciate that there are two temperatures in the method, which are i) 60oC (solution preparation, see specification at [0026]), and ii) 20-22oC (electrospinning, see specification at [0027]). It appears that the disclosed “electrospinning as an ambient temperature processing technique” in specification at [0022] is at 20-22oC in specification at [0027].
Furthermore, Applicant discussed that the attached article Ahmad teaches that tannic acid begins to decompose at 50-95oC with the removal of small molecules, followed by major decomposition beginning at 190oC causing depolymerization and hydrolysis (see Applicant’s arguments at page 6 paragraph 1). The cited section in Ahmed is presented below with Examiner’s annotation:
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Additionally, Ahmed teaches the following:
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One of ordinary skill in the art would appreciate that the cited temperature at 50-95oC appear to be the first minor mass-loss stage in the thermal degradation of tannic acid accompanied by small molecules like H2O, CO, CO2 and phenol from high molecular weight macromolecules, while the temperature range at 190-460oC appear to be the second major mass-loss stage in the thermal degradation of tannic acid accompanied by depolymerization/hydrolysis.
As mentioned, there are two temperatures in the method disclosed in the specification (60oC for solution preparation, see specification at [0026]), and 20-22oC for electrospinning, see specification at [0027])). Since, 60oC is within the cited temperature at 50-95oC as the first minor mass-loss stage in the thermal degradation of tannic acid, the recited “wherein the method is performed below the thermal decomposition temperature of the tannic acid” contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
Examiner will give claimed “wherein the method is performed below the thermal decomposition temperature of the tannic acid” its broadest reasonable interpretation in view of the specification; however, the examiner will not read limitations into the claims from the specification (see MPEP 2111 and MPEP 2173).
Examiner suggests amending the claim or clarifying where the support in the specification is.
Claims 2-8 and 17-18 are rejected due to their dependency on claim 1.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagarajan et al. (US 2018/0016445 A1) (“Nagarajan” hereinafter).
Regarding claim 1, Nagarajan teaches a composition (see Nagarajan at [0017] teaching disclosed herein is a crosslinked polyphenol and polymer composition), which is taken to meet the claimed composition based on the structure as outlined below, comprising:
a nylon polymer (see Nagarajan at [0047]-[0048] teaching the polymer can be any type, including… a thermoplastic… examples of thermoplastic polymers that can be used include… polyaramides including synthetic linear polyamides… Nylon 6 and Nylon 6,6); and
tannic acid (see Nagarajan at [0017] and [0020] teaching the crosslinked polyphenol can be prepared through polycondensation of a bio-based phenolic compound… in a specific embodiment, the natural product phenolic compound can be a tannin… there are two major classes of tannins: condensed tannins and hydrolysable tannins… tannic acid is a major commercial form of hydrolysable tannin);
wherein the nylon polymer and the tannic acid are homogenously distributed in the composition (see Nagarajan at [0063] teaching the polymer compositions can be manufactured by various methods known in the art… for example, when the polymer is a thermoplastic, the crosslinked polyphenol, the polymer… can be blended… in a high speed mixer or by hand mixing). The mixed or blended thermoplastic and the crosslinked polyphenol is taken to meet the claimed “the nylon polymer and the tannic acid are homogenously distributed in the composition”;
wherein the composition is made by a method comprising: dissolving a nylon polymer and tannic acid in a solvent to form a solution; and removing the solvent from the solution to form a composition; wherein the method is performed below the thermal decomposition temperature of the tannic acid (this recitation is being treated as product-by-process limitations because it is not seen to differ structurally from the applied prior art Nagarajan (see MPEP 2113.I). In this instance, the structure imparted by the recitations is a composition comprising homogenously distributed nylon polymer and tannic acid, see Nagarajan at [0063] and outlined above).
Regarding claims 2-3, Nagarajan teaches the limitations as applied to claim 1 above, and Nagarajan further teaches wherein the nylon polymer is nylon 6 (claim 2), and wherein the nylon polymer is nylon 6,6 (claim 3) (see Nagarajan at [0048] teaching Nylon 6 and Nylon 6,6).
Regarding claims 17-18, Nagarajan teaches the limitations as applied to claim 1 above, and Nagarajan further teaches wherein removing the solvent is performed by electrospinning to form a nanofiber comprising the composition (claim 17), and wherein the method is performed at ambient temperature (claim 18) (this recitation is being treated as product-by-process limitations because it is not seen to differ structurally from the applied prior art Nagarajan (see MPEP 2113.I). In this instance, the structure imparted by the recitations is a composition comprising homogenously distributed nylon polymer and tannic acid, see Nagarajan at [0063] and see claim 1 rejection).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nagarajan.
Regarding claim 4, Nagarajan teaches the limitations as applied to claim 1 above, and Nagarajan further teaches wherein the tannic acid has a wt% of at least 10% relative to the nylon polymer (see Nagarajan at [0046] teaching also provided is a polymer composition comprising a polymer; and 2 to 30 wt% of a crosslinked polyphenol, based on the total weight of the polymer and the crosslinked polyphenol, see Nagarajan at [0017] and [0020] teaching the crosslinked polyphenol can be prepared through polycondensation of a bio-based phenolic compound… in a specific embodiment, the natural product phenolic compound can be a tannin… there are two major classes of tannins: condensed tannins and hydrolysable tannins… tannic acid is a major commercial form of hydrolysable tannin) (see MPEP 2144.05(I)).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Nagarajan as applied to claim 1 above, and further in view of Deans et al. (US 2019/0077940 A1) (“Deans” hereinafter).
Regarding claims 5-6, Nagarajan teaches the limitations as applied to claim 1 above, and as mentioned, Nagarajan teaches a composition comprising tannic acid and nylon (see Nagarajan at [0017], [0020], and [0047]-[0048]). Nagarajan also teaches a crosslinked polyphenol and polymer composition suitable as an FR additive for polymers and fabrics (see Nagarajan at [0017]). However, Nagarajan does not explicitly teach wherein the tannic acid has a wt% of at least 50% relative to the nylon polymer (claim 5), and wherein the tannic acid has a wt% of at least 100% relative to the nylon polymer (claim 6).
Like Nagarajan, Deans teaches a composition comprising tannic acid and nylon (see Deans at [0008]-[0009] and [0017] teaching a polymer composite material includes a blend of one or more thermoplastic polymers and one or more bio-based flame retardant additives… the one or more bio-based flame retardant additives includes tannic acid… in some embodiments, the one or more thermoplastic polymers includes one or more… nylon 6, nylon 6,6). Deans also teaches flame retardant polymer composite materials wherein the polymer is modified using one or more tannins… as flame retardant additives… the one or more tannins… provide a bio-based additive that has been found by the inventors to provide flame retardant properties to the polymer (see Deans at [0006]).
Deans further teaches in some embodiments, the one or more bio-based flame retardant additives includes tannic acid… the tannic acid may be present from about 40 to about 100 parts per 100 parts by weight of the one or more thermoplastic polymers (see Deans at [0009]), which is taken to meet the claimed “ wherein the tannic acid has a wt% of at least 50% relative to the nylon polymer” (claim 5), and “wherein the tannic acid has a wt% of at least 100% relative to the nylon polymer” (claim 6) (see MPEP 2144.05(I)).
Additionally, MPEP states that "[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", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
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 an amount of from about 40 to about 100 parts of tannic acid per 100 parts by weight of the one or more thermoplastic polymers as taught by Deans in the crosslinked polyphenol and polymer composition as taught by Nagarajan because there is a reasonable expectation of success that amounts disclosed amounts would be suitable so as to provide flame retardant properties to the polymer.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Nagarajan as applied to claim 1 above, and further in view of Yung et al. (US 2018/0371656 A1) (“Yung” hereinafter).
Regarding claim 7, Nagarajan teaches the limitations as applied to claim 1 above, and Nagarajan further teaches also provided is a flame-retardant fabric comprising a woven or non-woven fabric substrate and a coating on a surface of the fabric substrate… any suitable material can be used as the fabric substrate, including polymers as described above… the fibers can be in any suitable form, for example single, twisted, knitted, or the like… in an embodiment, the woven or non-woven fabric substrate comprises polyamide fibers (see Nagarajan at [0068]).
However, Nagarajan does not explicitly teach wherein the composition is in the form of a nanofiber.
Like Nagarajan, Yung teaches fabrics comprising polyamide fibers (see Yung at [0002] and [0009] teaching a polyamide nanofiber nonwoven that may be useful for… breathable fabrics for apparel… as well as other applications… in some embodiments, the present disclosure is directed to a nanofiber nonwoven product comprising polyamide nanofibers… the polyamide may comprise… N6, N66… wherein “N” means Nylon). Nylon nanofibers is taken to meet the claimed “wherein the composition is in the form of a nanofiber”.
Yung further teaches polymer membranes, including nanofiber… nonwovens are known in the art and are used for a variety of purposes, including in connection with… apparel (see Yung at [0003]).
As such, one of ordinary skill in the art would appreciate that Yung teaches nylon nanofiber nonwovens are known in the art and are used for a variety of purposes, and seek those advantages by using nanofibers in the non-woven fabric substrate as taught by Nagarajan.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use nanofibers as taught by Yung in the non-woven fabric substrate as taught by Nagarajan because nylon nanofibers nonwovens are known in the art and are used for a variety of purposes.
Regarding claim 8, Nagarajan in view of Yung teach a nanofibrous mat (see Nagarajan at [0068] teaching a flame-retardant fabric comprising a woven or non-woven fabric substrate and a coating on a surface of the fabric substrate… any suitable material can be used as the fabric substrate, including polymers as described above… the fibers can be in any suitable form, for example single, twisted, knitted, or the like… in an embodiment, the woven or non-woven fabric substrate comprises polyamide fibers, see Yung at [0002] and [0009] teaching a polyamide nanofiber nonwovens that may be useful for… breathable fabrics for apparel… as well as other applications… in some embodiments, the present disclosure is directed to a nanofiber nonwoven product comprising polyamide nanofibers… the polyamide may comprise… N6, N66… wherein “N” means Nylon). Nylon nanofibers is taken to meet the claimed “nanofibrous mat”, comprising
the nanofiber of claim 7 (see claim 7 rejection).
Response to Arguments
Applicant’s amendments incorporating a method in independent claim 1 have obviated the previous rejection. However, upon further consideration, a new ground of rejection is set forth using the same reference Nagarajan. Thus, relevant arguments are addressed below.
Applicant discusses that i) Nagarajan subjects the tannic acid to 235oC, well above its thermal decomposition as evidenced by Ahmed… Nagarajan’s composition will contain these decomposition products of tannic acid… in the presently claimed composition, the tannic acid is maintained below its decomposition temperature, so the claimed composition would be free of any decomposition products; ii) Nagarajan’s composition is made by melting the components and extruding “immediately without circulation”… this would be expected to produce a less than fully homogenous mixture having domains of pure nylon and pure tannic acid… the presently claimed composition is made by mixing the components in solution, which would homogenize them at the molecular level; iii) it should be noted that the only comparative example in Nagarajan uses tannic acid… the rest of the disclosure is addressed to tannin acid crosslinked with a crosslinking agent… which produces a compound different from the presently claimed tannic acid… thus the other teachings of Nagarajan are not directly relevant to the presently claimed composition; and iv) Nagarajan does not disclose a method of combining nylon and tannic acid to produce the presently claimed composition that is fully homogenous and free of tannic acid decomposition products… as such the claim limitations are not disclosed in the reference, a prima facie case of anticipation has not been made (see Applicant’s arguments at page 6 paragraph 1 to page 7 paragraph 2).
Examiner acknowledges the arguments and respectfully notes, with respect to i), that Applicant’s arguments are not commensurate with what is claimed. The claim uses the transitional phrase “comprising”, which is inclusive or open-ended and does not exclude additional, unrecited elements (see MPEP 2111.03.I). even if Nagarajan’s composition contain decomposition products of tannic acid, the claim does not exclude the element.
With respect to ii), Examiner acknowledges the arguments and respectfully disagrees because the examined claims belong to the statutory class of product. As such, the structure of the examined claims is considered. The recited “method” is being treated as product-by-process limitations because it is not seen to differ structurally from the applied prior art Nagarajan (see MPEP 2113.I). In this instance, the structure imparted by the recitations is a composition comprising homogenously distributed nylon polymer and tannic acid (see Nagarajan at [0063], see claim 1 rejection), and the prior art reference Nagarajan has reasonably met the product structure/limitations as claimed. Additionally, Examiner respectfully notes that rebuttal evidence and arguments can be presented in the specification… or by way of an affidavit or declaration… however, arguments of counsel cannot take the place of factually supported objective evidence” (see MPEP § 2145.I). In this instance, the applicant should provide proof or evidence that Nagarajan at [0063] teaching polymer compositions can be manufactured by various methods known in the art… components can be blended… in a high speed mixer or by hand mixing would not result in a “composition comprising a nylon polymer and tannic acid… that are homogenously distributed in the composition”.
With respect to iii), Examiner respectfully notes that MPEP states that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (see MPEP § 2123.II) and “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (see MPEP 2123.I). Even if the preferred embodiment as taught by Nagarajan is a tannin acid crosslinked with a crosslinking agent, Nagarajan still teaches a composition comprising a homogeneously distributed nylon polymer and tannic acid.
With respect to iv), Applicant’s argument is not commensurate with what is claimed. As mentioned, the examined claims belong to the statutory class of product, and the claim uses the transitional phrase “comprising”, which is inclusive or open-ended and does not exclude additional, unrecited elements (see MPEP 2111.03.I). The prior art reference Nagarajan has reasonably met the product structure/limitations as claimed.
As such, the prior art of rejection based on Nagarajan is maintained.
Applicant discusses, with respect to claims 5 and 6 rejections, Deans does not disclose the limitations in claims 1 (5 and 6 dependent thereon)… using Deans method, the nylon would have to be mixed with tannic acid at least these temperatures, causing the decomposition of the tannic acid… the presently claimed composition is made by a method that does not cause decomposition of the tannic acid (see Applicant’s arguments at page 7 paragraphs 3-7).
Examiner acknowledges the arguments and respectfully notes that Applicant’s argument is not commensurate with what is claimed. As mentioned, the examined claims belong to the statutory class of product (see bullet 22). The prior art references Nagarajan in view of Deans has reasonably met the product structure/limitations as claimed. As such, the prior art of rejection based on Nagarajan in view of Deans is maintained.
Applicant discusses, with respect to claims 7 and 8, Yung does not disclose the limitations in claims 1 (7 and 8 dependent thereon)… if Yung’s method of making a fiber were used with Nagarajan’s composition… it would still require melting the nylon, causing decomposition of the tannic acid… the presently claimed composition is made by a method that does not cause decomposition of the tannic acid (see Applicant’s arguments at page 7 paragraph 8 to page 9 paragraph 4).
Examiner acknowledges the arguments and respectfully notes that Applicant’s argument is not commensurate with what is claimed. As mentioned, the examined claims belong to the statutory class of product (see bullet 22). The prior art references Nagarajan in view of Yung has reasonably met the product structure/limitations as claimed. As such, the prior art of rejection based on Nagarajan in view of Yung is maintained.
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 MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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