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 .
Specification
The disclosure is objected to because of the following informalities: the CROSS-REFERENCE TO RELATED APPLICATIONS section of the Specification does not specify the status of parent application serial no. 16/919,240 as an issued patent, i.e., U.S. Patent No. 12,084,700.
Appropriate correction is required.
Priority
Applicant states that this application is a continuation application of the prior-filed application, i.e. application serial no. 16/919,240 (“the ‘240 Application”). However, a continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: the ‘240 Application does not contain support for the following claim limitations of (1) the plasticizer includes at least one of: polyethylene glycol (PEG), sorbitol, pectin, or phthalates; (2) the resin includes at least one of: natural rubber latex, synthetic rubber, vulcanized rubber, or rosin; (3) the resin is cross-linked, or (4) the openings form a two-dimensional pattern. While there is potential for an argument that item (4) is supported implicit from the drawings in the ‘240 Application, there remains no literal support written in the specification, itself. However, items (1), (2), and (3) contain neither explicit nor implicit support in the ‘240 Application. As such, the effective filing date for Claims 3, 7, 8, 13, 14, and 17 is the filing date of the present application, i.e., September 6, 2024.
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 1-9 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 recites that “a two-dimensional mesh fully incorporated into the BC sheet” in line 4. However, Claim 1 also recites that “the mesh is distanced from at least one of: the first or second outer surfaces of the BC sheet” in lines 6-7. If the mesh is fully incorporated into the bacterial cellulose sheet, then how it is only distanced from one of the two outer surfaces? The scope of Claim 1, and its dependent claims is unclear. As such, Claims 1-9 are indefinite.
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.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2019/0127907 to Eryilmaz et al. (“Eryilmaz”) in view of U.S. Patent Application Publication No. 2012/0183754 to Kitagawa et al. (“Kitagawa”).
With regard to Claim 1, Eryilmaz discloses a composite textile article that includes a fabric layer and a biopolymer layer. See, e.g., Abstract, entire document. Eryilmaz discloses that a fabric can be contacted on its front side and/or its back side with a layer of biopolymer, wherein the biopolymer material is bacterial cellulose. Paragraph [0048]. Eryilmaz teaches that the wording “layer” is broader in scope than just a biopolymer being located on the surface of the textile, and that “the biopolymer may extend below the surface of the textile e.g. may also be impregnating at least part of the textile fibers.” Paragraph [0005] (emphasis added). It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to fully embed the fabric layer disclosed by Eryilmaz with bacterial cellulose applied to both sides of the fabric, such that the fabric layer is fully incorporated into a sheet of bacterial cellulose and distanced from at least one surface of the bacterial cellulose, because Eryilmaz teaches that the bacterial cellulose can be applied to both sides of the fabric without any undue burden, and because Eryilmaz teaches that a coating layer includes embodiments whereupon the coating, i.e., the bacterial cellulose, extends into the depths of the fibers of the fabric to impregnate the fabric material. Encapsulation of the fabric layer by the bacterial cellulose would provide the leather-like appearance desired by Eryilmaz. Paragraph [0071]. Given the porous nature of spacing between the fibers of a woven fabric, it is reasonable to presume there are openings throughout the lateral area of the fabric of Eryilmaz. However, Eryilmaz does not specifically address this feature. Kitagawa is also related to coated fabrics useful in garments. See, e.g., Abstract, entire document. Kitagawa teaches woven fabrics provided with an open mesh structure provide for improved flexibility when constructing a garment. Paragraph [0031]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a two-dimensional open mesh structure as the woven fabric disclosed by Eryilmaz in order to provide the end-use product with improved flexibility, as shown to be known by Kitagawa. The open mesh structure applied to Kitagawa would allow the bacterial cellulose to extend uninhibited by the mesh in Eryilmaz, thus allowing for the impregnation desired by Eryilmaz. Paragraph [0005]. With regard to the presence of a plasticizer, Eryilmaz discloses the composite textile article can include a softening agent to reduce stiffness of the bacterial cellulose, paragraphs [0167] to [0168], which satisfies the structural requirements of a plasticizer. With regard to Claim 9, Kitagawa teaches that open mesh structure can be provided using a plain weave, paragraph [0011], which would two-dimensional pattern of openings.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Eryilmaz in view of Kitagawa as applied to Claim 1 above, and further in view of U.S. Patent Application Publication No. 2014/0315037 to Daniel (“Daniel”).
With regard to Claim 2, Eryilmaz does not disclose using a plasticizer comprising glycerol. Daniel is related to polymer formulations for artificial leather. See, e.g., Abstract, entire document. Daniel teaches that glycerol can be added to polymer formulations to provide an antistatic effect. Paragraph [0045]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include glycerol in the composition disclosed by Eryilmaz in order to provide an antistatic effect, as shown to be known by Daniel. With regard to Claim 3, Daniel discloses that phthalate can be used as an additive to provide a plasticizer effect. Paragraph [0045].
Claims 4-8, 10-15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Eryilmaz in view of Kitagawa as applied to Claim 1 above, and further in view of U.S. Patent Application Publication No. 2011/0262521 to Bayon (“Bayon”).
With regard to Claims 4 and 10, Eryilmaz does not disclose using a resin. Bayon is related to bacterial cellulose compositions used in combination with textile support materials. See, e.g., Abstract, entire document. Bayon teaches that resin materials are compatible for use with bacterial cellulose composites. Paragraphs [0019] and [0020]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to use a resin in the composition disclosed by Eryilmaz in order to provide increased usage for the material as shown to be known by Bayon, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claims 5-8 and 11-14, Bayon teaches that suitable resin materials include natural resins, synthetic rubber, polyvinyl alcohol, and that the resin can be crosslinked. Paragraphs [0019] and [0020]. With regard to Claim 15, Eryilmaz discloses the composite textile article can include a softening agent to reduce stiffness of the bacterial cellulose, paragraphs [0167] to [0168], which satisfies the structural requirements of a plasticizer. With regard to Claim 18, Kitagawa teaches that open mesh structure can be provided using a plain weave, paragraph [0011], which would two-dimensional pattern of openings. With regard to Claims 19 and 20, Eryilmaz teaches that the textile composite is wearable. Abstract.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Eryilmaz in view of Kitagawa and Bayon as applied to Claim 10 above, and further in view of Daniel.
With regard to Claim 16, Eryilmaz does not disclose using a plasticizer comprising glycerol. Daniel is related to polymer formulations for artificial leather. See, e.g., Abstract, entire document. Daniel teaches that glycerol can be added to polymer formulations to provide an antistatic effect. Paragraph [0045]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include glycerol in the composition disclosed by Eryilmaz in order to provide an antistatic effect, as shown to be known by Daniel. With regard to Claim 17, Daniel discloses that phthalate can be used as an additive to provide a plasticizer effect. Paragraph [0045].
Claims 3 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0332327 to Keane (“Keane”) in view of Daniel.
With regard to Claims 3 and 17, Keane discloses a composition comprising bacterial cellulose and a fiber, such as yarn, fixed in a mesh pattern, wherein the fiber is embedded within the bacterial cellulose. Paragraph [0006]. Keane discloses the bacterial cellulose is distributed throughout a lateral area of the mesh and extends uninhibited by the mesh. Paragraph [0119]. Keane shows that the mesh is distanced from one or both outer surfaces of the bacterial cellulose. Figures 16 and 17. Keane discloses that the composition includes both a resin and a plasticizer. Paragraph [0125]. Keane does not disclose that the plasticizer includes phthalate. Daniel is related to polymer formulations for artificial leather. See, e.g., Abstract, entire document. Daniel discloses that phthalate can be used as an additive to provide a plasticizer effect. Paragraph [0045]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include phthalate in the composition disclosed by Keene in order to provide an alternative method of providing a plasticizer feature, as shown to be known by Daniel because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960).
Claims 7, 8, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Keane in view of Bayon.
With regard to Claims 7, 8, 13, and 14, Keane discloses a composition comprising bacterial cellulose and a fiber, such as yarn, fixed in a mesh pattern, wherein the fiber is embedded within the bacterial cellulose. Paragraph [0006]. Keane discloses the bacterial cellulose is distributed throughout a lateral area of the mesh and extends uninhibited by the mesh. Paragraph [0119]. Keane shows that the mesh is distanced from one or both outer surfaces of the bacterial cellulose. Figures 16 and 17. Keane discloses that the composition includes both a resin and a plasticizer. Paragraph [0125]. Keane does not disclose that the resin includes synthetic rubber or is crosslinked. Bayon is related to bacterial cellulose compositions used in combination with textile support materials. See, e.g., Abstract, entire document. Bayon teaches that resin materials, such as synthetic rubber and crosslinked resins, are compatible for use with bacterial cellulose composites. Paragraphs [0019] and [0020]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to use a synthetic rubber or crosslinked resin in the composition disclosed by Keane in order to provide increased usage for the material as shown to be known by Bayon, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960).
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 10-12, 15 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,084,700 (“the ‘700 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘700 Patent claims a composition comprising a sheet of bacterial cellulose with first and second outer surfaces, along with a two-dimensional mesh, the mesh including openings through which the bacterial cellulose extends uninhibited by the mesh, and wherein the openings are distributed throughout a lateral area of the yarn mesh. The ‘700 Patent also claims the presence of a resin in dependent claims 9 and 16.
Claims 1, 2, 4-6, 8, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of the ‘700 Patent in view of U.S. Patent Application Publication No. 2017/0354765 to Ulmer et al. (“Ulmer”). The ‘700 Patent claims a composition comprising a sheet of bacterial cellulose with first and second outer surfaces, along with a two-dimensional mesh, the mesh including openings through which the bacterial cellulose extends uninhibited by the mesh, and wherein the openings are distributed throughout a lateral area of the yarn mesh. The ‘700 Patent also claims the presence of a resin in dependent claims 9 and 16. However, the ‘700 Patent does not claim a plasticizer. Ulmer is also related to bacterial cellulose compositions used in implants. See, e.g., Abstract, entire document. Ulmer teaches that plasticizer, such as glycerol, can be used with bacterial cellulose to improve mechanical properties for implantation. Paragraphs [0023] to [0030]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide plasticizer to the composition claimed by the ‘700 Patent in order to provide improved mechanical properties for implantation, as shown to be known by Ulmer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. Patent Application Publication No. 2012/0308649 to Chen et al.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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