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 .
Election/Restrictions
Applicant’s election without traverse of claims 19-23 and 30-35 in the reply filed on April 1, 2026 is acknowledged.
Claims 27, 29 and 36-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method of making, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 1, 2026.
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 19-23 and 30-35 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 19 contains the limitation “a relative standard deviation of fiber diameter values for the plurality of electrospun fibers is approximately 0.32, while claim 22 teaches that the relative standard deviation is approximately 0.35 micrometers. It is unclear if the claims both require units, or if the claims both require no units as would be expected in a relative standard deviation value. In efforts to further the prosecution the relative standard deviation will be interpreted in either format.
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.
Claim(s) 19-23 and 30-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO-2017/192227 to Buehler.
Regarding Claim 19-23, 30 and 32-34
Buehler teaches a fibrous network film comprising a plurality of electrospun fibers comprising fibroin and having a diameter between 2 and 200 nm which overlaps the claimed range of between 0.2 and 0.3 micrometers, equivalent to 200 to 300 nm (Buehler, abstract, paragraph [0096], [0098], [0107]). Buehler teaches a void fraction (volume of voids over total volume) of at least 60% which is equivalent to a filling fraction of up to 40% which overlaps the claimed range of 38% (Id., paragraph [0110]). Buehler teaches that the film may be in the form of a wearable item (clothing) or an optical film (Id., paragraph [0065], [0109] and [0157]).
It should be noted 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 existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding the relative standard deviation being approximately 0.32 or 0.35, it should be noted that the relative standard deviation of the mean diameter is a result effective variable. As the relative standard deviation increases, the material exhibits less uniform and consistent properties such as strength, stiffness, weight etc. while being easier and/or cheaper to produce. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the relative standard deviation of the fiber diameter since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the relative standard deviation of the fiber diameters in order to produce a fiber network film having uniform properties relative to the cost and complexity of production.
Regarding Claims 31 and 35
Regarding index of refraction of the fibrous network film, although the prior art does not disclose an index of refraction being between about 1.4 and about 1.6, the claimed properties are deemed to naturally flow from the structure in the prior art since the Buehler reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention (electrospun fiber film with the claimed fibroin material, fiber diameter etc.). Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Claim(s) 19-21 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO-2021/202820 to Soliman.
Regarding Claims 19 and 33
Soliman teaches a fibrous network film comprising a plurality of electrospun fibers having a diameter between 0.20 and 0.30 micrometers such as 210 nanometers (Soliman, abstract, paragraph [0077] and a porosity of between 75 and 85% resulting in a filling fraction of from 17 to 25%, overlapping the claimed range of between about 10 and 60% (Id., paragraph [0079]). Soliman teaches that the film may be used as a clothing item such as a mask (Id.).
Soliman teaches a relative standard deviation of 0.106 but does not appear to teach 0.32 or 0.35 (Id., paragraph [0077]). However, it should be noted that the relative standard deviation of the mean diameter is a result effective variable. As the relative standard deviation increases, the material exhibits less uniform and consistent properties such as strength, stiffness, weight etc. while being easier and/or cheaper to produce. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the relative standard deviation of the fiber diameter since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the relative standard deviation of the fiber diameters in order to produce a fiber network film having uniform properties relative to the cost and complexity of production.
Regarding Claims 20 and 21
As set forth above, Soliman teaches a filling fraction of between 17 and 25% (Id.) but does not appear to teach 38%. However, it should be noted that the filling fraction is a result effective variable. As the filling fraction increases, the material exhibits less breathability while being heavier, stronger and more expensive. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the filling fraction, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the filling fraction in order to produce a fiber network film having a balance between strength, cost and breathability.
Claim(s) 22-23, 30-32 and 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soliman as applied to claims 19-21 and 33 above, in view of Buehler.
Regarding Claims 22-23, 30-32 and 34-35
Soliman does not teach the fibers comprise fibroin. However, Buehler teaches a fibrous network film comprising a plurality of electrospun fibers comprising fibroin applicable to textiles, optics and biomedical devices (Buehler, abstract, [0002], [0175]). Buehler teaches the fibers result in high tensile strength, toughness and extensibility (Id., paragraph [0118], [0151]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the fibrous network film of Soliman, and to utilize as the fiber material, the fibroin containing fibers of Buehler, motivated by the desire to form a fibrous network film having improved strength, toughness and extensibility.
Regarding Claims 23 and 34
As set forth above, Soliman teaches a filling fraction of between 17 and 25% (Id.) but does not appear to teach 38%. However, it should be noted that the filling fraction is a result effective variable. As the filling fraction increases, the material exhibits less breathability while being heavier, stronger and more expensive. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the filling fraction, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the filling fraction in order to produce a fiber network film having a balance between strength, cost and breathability.
Regarding Claims 31-32 and 35
Regarding the network film being an “optical film”, index of refraction of the fibrous network film, although the prior art does not disclose an index of refraction being between about 1.4 and about 1.6 or the optical properties of the film, the claimed properties are deemed to naturally flow from the structure in the prior art since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention (electrospun fiber film with the claimed fibroin material, fiber diameter etc.). Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINCENT A TATESURE whose telephone number is (571)272-5198. The examiner can normally be reached Monday-Friday 7:30AM-4PM EST.
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786
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