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
This office action is in response to the Amendment filed on 11/26/2025.
Claims 1, 3-20 and 23 are presently pending; claims 2 and 21-22 are canceled; claims 8-17, 19-20 and 23 are withdrawn; claims 1, 3-4 and 7-20 are amended; claims 1, 3-7 and 18 are under examination.
The objections to claims 1, 3-4 and 7 are withdrawn in light of the amendments to the claims.
The rejections of claims 1, 3-7 and 18 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims; the rejection of claim 2 is moot as this claim has been canceled.
The 35 U.S.C. 103 rejection of claims 1, 3-7 and 18 over MORITA in view of ITO is maintained; the rejection of claim 2 is moot as this claim has been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/14/2025 was filed after the mailing date of the non-final action on 08/29/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 3-7 and 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.
Amended claim 1 recites the limitation “wherein a liquid prepared by diluting the polyester synthetic fiber treatment agent with water so that a solvent-free portion of the treatment agent constitutes 1% by mass of the liquid having a pH at 25 °C of 5.5 or more and 8.5 or less,” (see claim 1 at lines 5-7); this language renders the metes and bounds of the claim indefinite as it does not clearly include any limitation at all, but merely recites a liquid that does not appear to be related to the claimed invention. As the claim recites “wherein a liquid… having a pH at 25 °C of 5.5 or more and 8.5 or less” but does not include any limitations regarding the recited liquid, it is not clear whether or not this liquid is somehow meant to be part of the claimed invention.
For purposes of examination, Examiner treated this limitation in claim 1 as though it recites “wherein a liquid… has a pH at 25 °C of 5.5 or more and 8.5 or less”, i.e., as though the pH of the liquid is intended to be the recited limitation; however, this limitation is merely directed toward an intended use of the claimed treatment agent rather than being directed toward the treatment agent itself, and is therefore not considered to limit the claimed treatment agent. The claimed invention is not directed toward a liquid prepared by diluting a treatment agent, and any treatment agent as claimed would be expected to be able to perform the intended use of being mixed with water to form a liquid having the recited pH. Clarification is requested.
Claims 3-7 and 18 are included herein as each depends from a claim which is indefinite for the reasons set forth above.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-7 and 18 rejected under 35 U.S.C. 103 as being unpatentable over Morita, et al. (JP-2017210693-A) (hereinafter, “MORITA”; citations herein refer to the machine translation provided with a prior office action) in view of Ito, et al. (JP-2021127533-A) (hereinafter, “ITO”; citations herein refer to the machine translation provided with a prior office action).
Regarding claim 1, MORITA teaches a polyester synthetic fiber treatment agent (see MORITA at generally Abstract; although the recitation of “polyester synthetic fiber” treatment agent is considered intended use language which does not have patentable weight, as any treatment agent as claimed would be expected to be able to perform the intended use of being used to treat a polyester synthetic fiber, see MORITA at Abstract and paragraphs 22 and 33, teaching that the treatment agent is used for synthetic fibers, e.g., polyester fibers) comprising:
5% by mass or more of a (poly)oxyalkylene derivative (A) (see MORITA at Abstract, teaching 20 to 75% by mass of a polyoxyalkylene derivative);
an amount of an acid compound (B) overlapping with and thereby rendering obvious the claimed range of 1% by mass or more (see MORITA at Abstract and paragraph 12, teaching 0.1 to 20% by mass of an organic acid, e.g., citric acid);
and 5% by mass or more of an organic phosphoric acid ester compound (C) (see MORITA at Abstract, teaching 10 to 50% by mass of an alkyl phosphoric acid ester salt with 12 to 22 carbon atoms),
wherein a liquid prepared by diluting the polyester synthetic fiber treatment agent with water so that a solvent-free portion of the treatment agent constitutes 1% by mass of the liquid has a pH at 25 °C of 5.5 or more and 8.5 or less (although this limitation is directed to a water-diluted liquid rather than to the claimed treatment agent, and is therefore not considered to further limit the claimed treatment agent as any treatment agent as claimed would be expected to be able to perform the intended use of being used to form a 1% by mass water-diluted liquid having the claimed pH, see MORITA at paragraph 18, teaching that an aqueous liquid comprising 100 parts by mass of the treatment agent and 400 to 100,000 parts by mass of water (which includes a 1% by mass water-diluted liquid, i.e., 100 parts of treatment agent and 9,900 parts of water) has a pH of 3 to 7),
the organic phosphoric acid ester compound (C) is at least one selected from the group consisting of an organic phosphoric acid ester and a salt thereof having an alkyl group with 16 or more and 20 or less carbon atoms in a molecule (see MORITA at Abstract and paragraphs 14 and 31, teaching alkyl phosphoric acid ester salt with 12 to 22 carbon atoms, e.g., potassium salt of octadecyl phosphate ester, which has an alkyl group with 18 carbon atoms), and
wherein, based on a total of 100 parts by mass of A, B and C, the polyester synthetic fiber treatment agent contains the (poly)oxyalkylene derivative (A) and the inorganic acid compound (B) in total in an amount overlapping with and thereby rendering obvious the claimed range of 20 parts by mass or more and 80 parts by mass or less (see MORITA at Abstract, teaching, by mass, 20 to 75% of component A, 0.1 to 20% of component B, and 10% to 50% of component C, resulting in amounts of A + B overlapping with the claimed range based only on A, B and C; e.g., if the agent comprises 20% each of A, B and C, the total of A + B based on only A, B and C would be 40/60, or 67%, i.e., 67 parts by mass based on a total of 100 parts of A, B and C), and contains the organic phosphoric acid ester compound (C) in an amount overlapping with and thereby rendering obvious the claimed range of 20 parts by mass or more and 80 parts by mass or less (see MORITA at Abstract, teaching amounts of C overlapping with the claimed range; e.g., based on the example used above comprising 20% each of A, B and C, the amount of C based only on A, B and C would be 20/60, or 33% by mass, i.e., 33 parts by mass based on a total of 100 parts of A, B and C).
As set forth in MPEP § 2144.05, 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)).
However, MORITA fails to explicitly teach that the acid compound is an inorganic acid and is at least one selected from the group consisting of sulfuric acid, nitric acid, hydrochloric acid, and salts thereof.
ITO teaches a synthetic fiber treatment agent comprising a polyoxyalkylene derivative, an alkyl phosphoric acid ester, and an inorganic acid (see ITO at Abstract and paragraphs 16, 24-26, 40 and 46). ITO teaches that a known pH adjuster can be appropriately used to adjust the pH of such a treatment agent, e.g., organic acids such as citric acid, or inorganic acids such as hydrochloric acid (see ITO at paragraph 26).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the treatment agent of MORITA by simply substituting the organic acid (e.g., citric acid) with an inorganic acid such as hydrochloric acid, as ITO teaches that these organic and inorganic acids can be used interchangeably for the same purpose of adjusting the pH of the treatment agent (see ITO at paragraph 26). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing an acid which will adjust the pH of the treatment agent (see ITO at paragraphs 24-26). Further, ITO teaches that hydrochloric acid is a known acid for use as a pH adjusting agent in a treatment agent composition, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding claim 3, as applied to claim 1 above, MORITA in view of ITO teaches a treatment agent according to claim 1, wherein the polyester synthetic fiber treatment agent is prepared as a set including first and second components of a two-component polyester synthetic fiber treatment agent, the first component of the two-component polyester synthetic fiber treatment agent contains the (poly)oxyalkylene derivative (A), the second component of the two-component polyester synthetic fiber treatment agent contains the organic phosphoric acid ester compound (C); MORITA in view of ITO teaches individual components including a (poly)oxylalkylene derivative component, an organic phosphoric acid ester compound component, and an inorganic acid compound component, and the components are separate until they are combined to be used (see MORITA at paragraphs 6 and 27). MORITA does not explicitly mention that either one or both of the first and second components of the two-component polyester synthetic fiber treatment agent contain the inorganic acid compound (B), as MORITA does not mention the order in which the components are mixed, i.e., if the acid (B) is first mixed with A and/or C before A and C are mixed together. Providing a mixture of A and B or C and B prior to mixing the components of A and C together is obvious as MORITA teaches mixing the components in any sequence; e.g., in Example 1, if the components are added in the order that they are recited, the acid (B) would be combined with the alkyl phosphate ester salt (C) and the polyoxyalkylene derivative (A) would be separate from these two until subsequently added to form the combined treatment agent which can then be applied to a fiber (see MORITA at paragraph 27).
The separation of the components into a first and second component wherein one of the components comprises two of the components mixed and the third component is separate is obvious. All of the components are initially separate components and must be combined in order to form the usable treatment agent composition of claim 1, which is the same composition regardless of order of mixing and which components were combined prior to mixing all three, and the order of combination of components and order of mixing has not been demonstrated to be critical. MPEP § 2144.04(IV)(C) states that selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Further, the language of “wherein the polyester synthetic fiber treatment agent is prepared as a set” appears to be directed toward a method of preparing the treatment agent rather than a limitation directed toward the treatment agent itself, which is product-by-process claim language which is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113. Regardless of the way by which the treatment agent is prepared, the product of the treatment agent of claim 1 is the same.
Regarding claim 4, as applied to claim 1 above, MORITA in view of ITO teaches a treatment agent according to claim 1, wherein the polyester synthetic fiber treatment agent is prepared as a set including first, second, and third components of a three-component polyester synthetic fiber treatment agent, the first component of the three-component polyester synthetic fiber treatment agent contains the (poly)oxyalkylene derivative (A), the second component of the three-component polyester synthetic fiber treatment agent contains the organic phosphoric acid ester compound (C), and the third component of the three-component polyester synthetic fiber treatment agent contains the inorganic acid compound (B); MORITA in view of ITO teaches individual components including a (poly)oxylalkylene derivative component, an organic phosphoric acid ester compound component, and an inorganic acid compound component, and the components are separate (i.e., first, second and third components) until they are combined so that the treatment agent can be used (see MORITA at paragraphs 6 and 27). MORITA does not mention the order in which the components are mixed, i.e., whether the additional alkyl phosphoric acid ester salt having 4 to 11 carbon atoms (see MORITA at Abstract) is first mixed with one of the three components A, B or C before A, B and C are mixed together. Providing three components to be subsequently mixed wherein A, B and C are kept separate until mixing all three is obvious as MORITA does not mention mixing the components in any particular sequence.
The separation of the components into a first, second and third component, each comprising one of A, B or C, is obvious. All of the components are initially separated and must be combined in order to form the usable treatment agent composition, which is the same composition regardless of order of mixing and which components were combined prior to mixing all three, and the order of combination of components and order of mixing has not been demonstrated to be critical. MPEP § 2144.04(IV)(C) states that selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Further, the language of “wherein the polyester synthetic fiber treatment agent is prepared as a set” appears to be directed toward a method of preparing the treatment agent rather than a limitation directed toward the treatment agent itself, which is product-by-process claim language which is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113. Regardless of the way by which the treatment agent is prepared, the product of the treatment agent of claim 1 is the same.
Regarding claims 5-6, as applied to claim 1 above, MORITA in view of ITO teaches a treatment agent according to claim 1. The recitation of “wherein the polyester synthetic fiber is a polyester short fiber” in claim 5 and “wherein the polyester synthetic fiber is a fiber for spun yarn production” in claim 6 are merely recitations of intended use rather than being limitations directed toward the claimed treatment agent, and are therefore not given patentable weight. The present claims are not directed to a polyester synthetic fiber, and limitations regarding a polyester synthetic fiber do not limit the claimed treatment agent; any treatment agent as claimed by the present claims would be expected to be able to perform the intended use of being used to treat a polyester short fiber or a fiber for spun yarn production.
Regarding claim 7, as applied to claim 1 above, MORITA in view of ITO teaches a treatment agent according to claim 1, and further teaches a composition containing the treatment agent and a solvent (see MORITA at paragraphs 6 and 18, teaching an aqueous liquid comprising water), wherein the solvent (S) has a boiling point of 105 °C or lower at atmospheric pressure (water has a boiling point of 100 °C at atmospheric pressure).
Regarding claim 18, as applied to claim 1 above, MORITA in view of ITO teaches a treatment agent according to claim 1, and further teaches a diluted liquid comprising the treatment agent (see MORITA at paragraphs 6 and 18, teaching an aqueous liquid of the treatment agent) wherein the diluted liquid has a concentration of the treatment agent of 0.1% by mass or more and 10% by mass or less (see MORITA at paragraphs 18 and 27-28, teaching an aqueous liquid comprising 100 parts by mass of the treatment agent and 400 to 100,000 parts by mass of water, e.g., a 5% aqueous solution of the treatment agent).
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(b) for claims 1, 3-7 and 18 as set forth above.
Applicant argues:
“in Mortia, the organic acid is an essential component of the treatment agent, and thus a skilled person would not have been motivated to replace such an essential constituent with an inorganic acid based solely on Ito’s general teachings concerning pH adjusters” (see Remarks at pg. 13).
“Mortia does not disclose or suggest the specific compositional ranges defined in amended claim 1… Mortia’s Example 7 does not fall within these ranges” (see Remarks at pg. 13).
“as shown in Table 1 of the specification of the present application, compositions falling within the ranges of amended claim 1 exhibit improved “emulsion stability” and “adhesion” compared with compositions outside the claimed ranges. This data provides strong evidence of unexpected results” (see Remarks at pg. 13).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that there is no motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as set forth in the rejection of claim 1 above, it would have been obvious to one of ordinary skill in the art to simply substitute the organic acid (e.g., citric acid) with an inorganic acid such as hydrochloric acid, as ITO teaches that these organic and inorganic acids can be used interchangeably for the same purpose of adjusting the pH of the treatment agent (see ITO at paragraph 26). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing an acid which will adjust the pH of the treatment agent (see ITO at paragraphs 24-26). Further, ITO teaches that hydrochloric acid is a known acid for use as a pH adjusting agent in a treatment agent composition, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
In response to Applicant’s argument that MORTIA does not disclose or suggest the claimed ranges because MORTIA allegedly includes one specific example of many with components not falling within these ranges (although Applicant has provided no explanation regarding the contents of Example 7 or mentioned the contents of any of the other 13 examples), the Examiner respectfully disagrees. As set forth in the rejection of amended claim 1 above, MORITA teaches amounts of A, B and C overlapping with and thereby rendering obvious the claimed ranges (see MORTIA at Abstract). As set forth in MPEP § 2144.05, 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)).
In response to Applicant’s argument that the claimed ranges are not obvious because the claimed invention displays unexpected results of improved emulsion stability and adhesion, the Examiner respectfully disagrees. As set forth in the rejection of amended claim 1 above, MORTIA teaches the claimed ranges. Further, Applicant has provided no explanation regarding how or why these results would be considered unexpected, and Table 1 of the present specification shows comparative examples with components outside of the claimed ranges, e.g., comprising no compound B, and exhibiting the same level of emulsion stability and adhesion as the examples of the invention; the results of the examples of Table 1 are also not commiserate in scope with the claimed invention. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731