DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
This office action is in response to applicant’s claims filed October 21, 2024.
Claims 1-10 are pending.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-4 and 7-10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Leather Facts in view of Scheen (US 4,999,024), Brehn (US 5,391,784) and Saravanabhavan (WO 2005/071118).
Leather Facts teaches treating cowhides by harvesting the hides and drying to kill or inactivate bacteria (no salt curing with sodium chloride), soaking (washing), fleshing, unhairing, liming, deliming, bating, pickling with acids such as sulfuric acid and salts and that after pickling the hides can be kept in this state for an extended period of time without fear of deterioration (page 14). Extended periods of time would lastly dry the hide as the water moisture would evaporate. This indicates that the process stops and an intermediate product is complete until the preserved hide is sent to a tannery for tanning, as is in applicant's claim which cites a product which will later be amenable to easy tanning.
Leather Facts does not teach fatliquoring prior to tanning and anionic or cationic fatliquors.
Scheen teaches treating untanned skins by splitting, fleshing, unhairing, drying, and washing followed by fatliquoring with oil and greasing agents (fatliquoring agents) prior to bating (column 3, lines 39-68 ). Scheen teaches the hides oiling solution is water based therefore aqueous (column 3, lines 65-68). Scheen teaches the hides can be cured by drying and do not require salting indicated by the use of the term “or” (column 3, line 44). Scheen teaches this is a deliming and curing process to promote a silky texture of the substrate.
Brehn et al. teaches that when hides are treated fatliquoring agents it is conventional to use both anionic and cationic fatliquors (column 2, lines 50-60).
Saravanabhavan teaches treating delimed and/or bated pelts with fatliquors at a concentration 0f 2-6% and a pH or 5-8.5 at 20-55°C (page 4, line 32- to page 5, line 1). The tanning agent and dye are optional. The weights of fatliquor are based on the weight of the fleshed pelt (page 5, lines 23-24).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to perform fatliquoring prior to tanning in the methods of Leather Facts as Scheen teach greasing hides with oils is conventional on untanned hides and the greases penetrate to add softness into the hide. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods to the instantly claimed order because the prior art teach all the claimed method steps as effective in treating untanned hides for the benefit of providing soft, plump hides which can be stored for long periods of time without fear of deterioration.
Changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442 (POBA 1959). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959).
It would be obvious that hides treated with similar preliminary to preserve them for long periods of time without fear of deterioration would possess the same lack of spoilage under varying humidity and also be easily rehydratable for tanning with chromium sulfate, vegetable tannin or synthetic tanning agent as the properties of the treatments in their interaction with the pelts would obviously produce similar results. Leather Facts recognizes that conventional techniques produce a long term stable pelt with no deterioration.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use an anionic or cationic fatliquor in the methods of Leather Facts, and Scheen because Leather Facts invites the inclusion of fatliquoring the untanned hide and Brehn teaches anionic or cationic fatliquoring compounds are conventional agents in effectively fatliquoring hides.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use 2-6% by weight of the pelt of anionic or cationic fatliquor in the methods of Leather Facts because Leather Facts invites the inclusion of fatliquoring the untanned hide and Saravanabhavan teaches it is more eco-friendly and less waste producing to fatliquor prior to tanning at the claimed weight ranges. Optimizing to the claimed fatliquor weight would be obvious as Brehn teaches the amount of fatliquor determines the softness, tear strength, tear resistance, elongation and fullness properties of the hide and Saravanabhavan teaches using 2-6% fatliquor based on the weight of the pelt.
It is noted that claim 9 is a product by process claim, and the examiner has found a similar product. Any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to the applicant to establish that their product is patentably distinct, not the examiner to show the same process of making, see In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324. Burden is on applicants to show product differences in product by process claims, see In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985); In re Best, 195 USPQ 430 (CCPA 1977); In re Fessman, 180 USPQ 324 (CCPA 1974); In re Brown, 173 USPQ 685 (CCPA 1972).
1-4 and 7-10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Leather Facts in view of Scheen (US 4,999,024), Brehn (US 5,391,784) and Saravanabhavan (WO 2005/071118) and further in view of Connor (US 2,004,930).
Leather Facts, Scheen, Brehn and Saravanbhavan are relied upon as set forth above.
Leather Facts, Scheen, Brehn and Saravanbhavan do not specify lastly drying and sammying.
Conner teaches that untanned hides are conventionally dehydrated (page 1, left column, lines 1-5) drying by using sammying techniques which comprise using rollers to press the liquid out of the hides (page 3, left column) until at least 80% of the water is removed, which leaves 20% or less moisture content or an appropriate amount for the hides to remain soft and plump without distortion or shrinkage (page 2, left column, lines 20-35; page 4, lines 40-70, claim 1). Conner teaches air drying after 80% of the moisture is removed (page 4, left column, lines 63-72).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to perform drying by sammying and air drying in the methods of Leather Facts, Scheen, Brehn and Saravanbhavan as Conner teaches untanned hides are conventionally dehydrated and effective methods for removing moisture are sammying and air drying to produce a hide which is soft and plump without distortion. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods to the instantly claimed order because the prior art teach all the claimed method steps as effective in treating untanned hides for the benefit of providing soft, plump hides which can be stored for long periods of time without fear of deterioration.
Claims 6,8 and 9 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Leather Facts in view of Scheen (US 4,999,024), Brehn (US 5,391,784), Saravanabhavan (WO 2005/071118) and Connor (US 2,004,930) and further in view of Ushakoff (US 2,868,614).
Leather Facts, Scheen, Brehn, Saravanbhavan and Conner are relied upon as set forth above
Leather Facts, Scheen, Brehn, Saravanbhavan and Conner do not teach solvent drying.
Ushakoff teaches treating untanned skins with fatliquoring agents at 3% on weight of the skin and solvent drying (column 6, lines 1-50; column 5, lines 15-30). Ushakoff further teaches that the skins may be cowhides and may be bated and pickled followed by fatliquoring (column 3, line 70 to column 5, line 15). Ushakoff teaches solvent drying after fatting affords an important degree of control over the distribution of the fatting agent (column 2, lines 34-47). Ushakoff teaches a solvated skin free of any tanning agent if treated with a fatty acid fatting agent will have enhanced tear resistance and tensile strength (column 6, lines 5-8).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Leather Facts, Scheen, Brehn, Saravanbhavan, and Conner by solvent drying because Ushakoff teach solvent drying is effective in treating untanned hides for the benefit of providing an economical and rapid way of producing hides with greater tear resistance and tensile strength and providing a degree of control over the distribution of the fatting agent.
Changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442 (POBA 1959). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959).
Claim 5 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Scheen (US 4,999,024), Brehn (US 5,391,784), Saravanabhavan (WO 2005/071118), Connor (US 2,004,930) and Ushakoff (US 2,868,614) and further in view of Bowker (US 7,578,970), Robinson (US 4,434,196) and Derwent abstract 1996-115110.
Leather Facts, Scheen, Brehn, Saravanbhavan, Conner and Ushakoff are relied upon as set forth above.
Leather Facts, Scheen, Brehn, Saravanbhavan, Conner and Ushakoff do no teach the orange terpene, hydrocarbons, fatty alcohol ethoxylate, glycol ether, n-methyl-2-pyrrolidone.
Bowker teaches disinfecting leather by treating with orange terpene oil (abstract).
Robinson evidence solvent drying as an effective means of drying wet substrates such as leathers can be accelerated using hydrocarbons, fatty alcohol ethoxylates and glycol ethers (column 1, lines 1-10; column 2, lines 28-65).
The Derwent abstract evidence degreasing animal hides by using N-methyl-2- pyrrolidone.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Leather Facts, Scheen, Brehn, Saravanbhavan, Conner and Ushakoff by incorporating the steps of treatment with n-methyl-2-pyrrolidone, orange terpene, hydrocarbons, fatty alcohol ethoxylates and glycol ethers because Bowker evidence the disinfecting benefits of orange terpene, the Derwent abstract evidences the disinfecting benefits of N-methyl-2- pyrrolidone and Robinson teaches the accelerated drying by fatty alcohol ethoxylates, hydrocarbons and glycol ethers provided to treated leathers. Combining disinfecting and drying solvents together to treat the hide for effective hide preservation and further leather tanning would be obvious.
Claim 5 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Scheen (US 4,999,024), Brehn (US 5,391,784), Saravanabhavan (WO 2005/071118) and Ushakoff (US 2,868,614) and further in view of Bowker (US 7,578,970), Robinson (US 4,434,196) and Derwent abstract 1996-115110.
Leather Facts, Scheen, Brehn, Saravanbhavan and Ushakoff are relied upon as set forth above.
Leather Facts, Scheen, Brehn, Saravanbhavan and Ushakoff do no teach the orange terpene, hydrocarbons, fatty alcohol ethoxylate, glycol ether, n-methyl-2-pyrrolidone.
Bowker teaches disinfecting leather by treating with orange terpene oil (abstract).
Robinson evidence solvent drying as an effective means of drying wet substrates such as leathers can be accelerated using hydrocarbons, fatty alcohol ethoxylates and glycol ethers (column 1, lines 1-10; column 2, lines 28-65).
The Derwent abstract evidence degreasing animal hides by using N-methyl-2- pyrrolidone.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Leather Facts, Scheen, Brehn, Saravanbhavan and Ushakoff by incorporating the steps of solvent drying treatment with n-methyl-2-pyrrolidone, orange terpene, hydrocarbons, fatty alcohol ethoxylates and glycol ethers because Bowker evidence the disinfecting benefits of orange terpene, the Derwent abstract evidences the disinfecting benefits of N-methyl-2- pyrrolidone and Robinson teaches the accelerated drying by fatty alcohol ethoxylates, hydrocarbons and glycol ethers provided to treated leathers. Combining disinfecting and drying solvents together to treat the hide for effective hide preservation and further leather tanning would be obvious.
Claims 8 and 10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Leather Facts in view of Scheen (US 4,999,024)..
Leather Facts teaches treating cowhides by harvesting the hides and drying to kill or inactivate bacteria (no salt curing with sodium chloride), soaking (washing), fleshing, unhairing, liming, deliming, bating, pickling with acids such as sulfuric acid and salts and that after pickling the hides can be kept in this state for an extended period of time without fear of deterioration (page 14). Extended periods of time would lastly dry the hide as the water moisture would evaporate. This indicates that the process stops and an intermediate product is complete until the preserved hide is sent to a tannery for tanning, as is in applicant's claim which cites a product which will later be amenable to easy tanning.
Leather Facts does not teach fatliquoring prior to tanning.
Scheen teaches treating untanned skins by splitting, fleshing, unhairing, drying, and washing followed by fatliquoring with oil and greasing agents (fatliquoring agents) prior to bating (column 3, lines 39-68 ). Scheen teaches the hides oiling solution is water based therefore aqueous (column 3, lines 65-68). Scheen teaches the hides can be cured by drying and do not require salting indicated by the use of the conjugation “or” (column 3, line 44). Scheen teaches this is a deliming and curing process to promote a silky texture of the substrate.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to perform fatliquoring prior to tanning in the methods of Leather Facts as Scheen teach greasing hides with oils is conventional on untanned hides and the greases penetrate to add softness into the hide. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods to the instantly claimed order because the prior art teach all the claimed method steps as effective in treating untanned hides for the benefit of providing soft, plump hides which can be stored for long periods of time without fear of deterioration.
Changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442 (POBA 1959). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959).
It would be obvious that hides treated with similar preliminary to preserve them for long periods of time without fear of deterioration would possess the same lack of spoilage under varying humidity and also be easily rehydratable for tanning with chromium sulfate, vegetable tannin or synthetic tanning agent as the properties of the treatments in their interaction with the pelts would obviously produce similar results. Leather Facts recognizes that conventional techniques produce a long term stable pelt with no deterioration.
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 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,047,410. Although the claims at issue are not identical, they are not patentably distinct from each other because the product of a preserved, washed, fleshed, limed, unhaired, delimed, bated, fatliquored, pickled, dried, untanned non salt cured hide are taught. This is the same product as applicant’s claimed hides.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761
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