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 of Group I in the reply filed on August 10, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 13 has been withdrawn from consideration as being directed toward the non-elected invention.
Specification
The amendment filed July 9, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: The units of the water pressure resistance and air permeability.
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "13" and "14" have both been used to designate adhesive as well as both for fibers of nanofiber nonwoven fabric layer. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “13” has been used to designate both adhesive and fibers of nanofiber nonwoven fabric layer and reference character “14” has been used to designate both fibers of nanofiber nonwoven fabric layer and adhesive. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 10-11 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. Specifically, the limitation “having a water pressure resistance of 7,000 to 30,000 kPa according to JIS L 1092 if it has not been washed, and having a water pressure resistance of 5,000 to 25,000 kPa according to JIS L 1092 after it has been washed 20 times” (claim 10) and “having an air permeability of 0.01 to 2 cc/cm2sec according to JIS L 1096 (Frazier method)” (claim 11). The originally filed disclosure
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 4-5 and 17-18 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 4 and 17 recite the limitation “wherein an area ratio of an area of the water-repellent layer to a fiber surface area of a face of a nanofiber nonwoven fabric subjected to a water-repellent treatment is 10-100%:100%.” It is unclear if the nanofiber nonwoven fabric is the same or different from the nanofiber nonwoven fabric layer of claim 1. Additionally, a water-repellent treatment has not been positively recited in the claim. It is unclear if the claimed product contains a water-repellent treatment. Claim 1, upon which claim 4 depends, recites at least one face of the nanofiber nonwoven fabric layer is a water-repellent layer. As at least one face of the nanofiber nonwoven fabric layer is the water-repellent layer, it is unclear the fiber surface area can be less than 100%. Is the claim intending for 10-100% of a fiber surface area of the nanofiber nonwoven fabric being subjected to a water-repellent treatment?
Claim 5 and 18 recite the limitation “the inner fabric layer” in line 4. There is insufficient antecedent basis for this limitation. Claims 3 and 16 recite an inner fabric layer but claim 5 and 18 do not depend on these claims. The outer fabric layer and the nanofiber nonwoven fabric layer are bonded together with a partially-bonding portion in the corresponding independent claims.
Claim Rejections - 35 USC § 102
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.
Claims 1-7, 9, 12, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2009/157400 to Haruta.
NOTE: The English machine translation is being used for prior art mapping.
Regarding claims 1-7, 9, 12, and 14-20, Haruta teaches a laminated cloth (laminated fabric), which comprises a fabric layer (outer fabric layer) attached via an adhesive to a non-woven consisting of fibers having a diameter below 1 µm (nanofiber nonwoven fabric layer), including thermoplastic polyurethane and preferably 5 nm to 700 nm (claim 7, 20), whereby the adhesive is only applied in a dotted or punctuated form, covering an area of 10-70% (claim 5, 18) (partially-bonding portion) (Haruta, abstract, p. 2-5), reading on the nanofiber nonwoven fabric layer being laminate on one face of the outer fabric layer. Haruta teaches a repellent agent, such as a fluorine or silicone system is used on the nanofibers (Id., p. 9), reading on at least one face of the nanofiber nonwoven fabric layer being water- repellent layer, including the water repellent being a non-fluorine based water-repellent agent (claim 6, 19). Haruta teaches the adhesive A being interposed between the fabric serving as the base fabric and the nonwoven (Id., p. 4). Haruta teaches outdoor wear such as fishing, windbreaker, athletic wear and gloves comprising the laminated fabric (Id., p. 1-2), reading on a garment comprising a moisture-permeable water proof laminated fabric (claim 14).
Regarding claims 2, 4, 15, and 17, Haruta teaches the water-repellent being added to an outer fabric side of the nanofiber nonwoven fabric layer (claim 2, 15) at an adhesion rate of 60% (Haruta, p. 11), reading on an rea ratio of an area of the water-repellent layer to a fiber surface area of a face of a nanofiber nonwoven fabric subjected to a water-repellent treatment being 10-100%:100%, specifically 60%, (claims 4 and 17) as best understood by Examiner.
Regarding claims 3 and 16, Haruta teaches the laminated cloth further comprising a backing or lining fabric (inner fabric layer) laminated to the nonwoven web on a surface opposite to the fabric bonding surface with an adhesive B having an area ratio of 10 to 70% (Haruta, p. 5-6), reading on the nanofiber nonwoven fabric layer and the inner fabric layer being bonded together with a partially-bonding portion.
Regarding claim 9, Haruta teaches the laminate having a water vapor transmission rate according to JIS 1099-1998A-1 of 6000 g/m224hrs or more, more preferably 10,000 g/m224hrs, and according to JIS 1099-1998B-1 of 15,000 g/m224hr or more (Haruta, p. 8, 10). Haruta teaches a specific embodiment having a moisture permeability of 10,500g/m2 24 hours per A-1 and 24,000 g/m2 per B-1 method (Id., p. 11).
Regarding claim 12, Haruta teaches the base fabric being subjected to water repellent processing (Haruta, p. 2), reading on the outer fabric being subjected to a water-repellent treatment.
Claim Rejections - 35 USC § 102 / 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 8 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2009/157400 to Haruta, remaining as applied claims 1-7, 9, 12, and 14-20 above.
NOTE: The English machine translation is being used for prior art mapping.
Regarding claim 8 and the claimed air permeability resistance when it is wet with water, in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art does not disclose this, the claimed properties are deemed to be inherent to the structure in the prior art since the prior art reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Haruta teaches a nanofiber nonwoven formed of thermoplastic polyurethane fiber having the claimed fiber size treated with a silicon water repellent treatment partially bonded to a backing fabric with the claimed partially bonding area ratio. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
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 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/157400 to Haruta, remaining as applied to claims 1-9, 12, and 14-20 above.
NOTE: The English machine translation is being used for prior art mapping.
Regarding claim 10, Haruta teaches the water pressure resistance according to JIS 1091-1998 of 20 kPa or more (Haruta, p. 8). Haruta teach even after washing, the nonwoven web was not partially peeled and maintained good appearance quality (Id., p. 11). While the reference does not specifically teach the claimed range of 7,000 to 30,000 kPa, the disclosed range of the prior art combination overlaps with the instant claimed range. 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). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust, vary, and optimize the water pressure resistance, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art. Regarding the claimed water pressure resistance after washing 20 times, although the prior art does not disclose this feature, the claimed properties are deemed to flow naturally from the teachings of the prior art since the prior art reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Haruta teaches a nanofiber nonwoven formed of thermoplastic polyurethane fiber having the claimed fiber size treated with a silicon water repellent treatment partially bonded to a backing fabric with the claimed partially bonding area ratio. Haruta teaches the laminated staying adhered and having good appearance after washing. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding claim 11, Haruta teaches the air permeability according to JIS 1096-1999 being 0.3 cm3/Cm2 s or more (Haruta, p. 8). While the reference does not specifically teach the claimed range of 0.01 to 2 cc/cm2sec, the disclosed range of the prior art combination overlaps with the instant claimed range. 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). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust, vary, and optimize the air permeability, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub. No. 2017/0036417 to Iwata teaches a high air permeability when wet for a laminated sheet.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789
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