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
Applicants’ election without traverse of Group I, in the reply filed on September 18, 2026, is acknowledged. Claims 18-26, 28, and 33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
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.
Claim 29 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. A number of factors must be considered in assessing the enablement of an invention, including the following: the breadth of the claims, the amount of experimentation necessary, the guidance provided in the specification, working examples provided, predictability, and the state of the art. See In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988).
Regarding claim 29, the claim recites that the thread is finished with antistatic, anti-microbial and flame retardant finishes. The claim appears to require each of the finishes being present in combination, but such a conclusion is unclear. The claim is dependent from claim 1, which recites that the thread core and sheath are both formed of a man-made cellulosic fiber. Applicants’ specification provides an Example but does not set forth the thread being finished.
Absent from Applicants’ specification, is a recitation describing the scope of the claim. For example, although the thread is finished as claimed, it is unclear if the finishes are merely being described by property only, or if the finishes are described as separate finishes. Applicants’ specification does not provide any description as to whether the finish can be a singular finish capable of providing antistatic, anti-microbial and flame retardant properties, or if the finish is applied as separate finishes. Therefore, Applicants’ specification does not provide any guidance as to the structure or composition of the finish or finishes as claimed. It is unclear how one of ordinary skill would finish the thread as claimed, without further guidance as to the identity of the finish or the manner of finishing, such that the finish can be applied to a man-made cellulosic fiber. Therefore, the claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
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, 6, 8, 9, 13, 16, and 29 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.
Regarding claim 4, the claim recites that the thread has a “filament strength” of a claimed range “based on the construction and thickness of the material.” The claim neither requires a “filament” or “a material”. Therefore, the recitation of each lack proper antecedent basis in the claims.
Additionally, it is unclear what the qualifiers “based on the constructions and thickness of the material” necessarily entail. For example, it is unclear if the claim actually requires a filament strength, or only a capable filament strength when based on a construction and thickness of an unknown material.
Regarding claim 6, the claim recites that the thread core and the thread sheath are both either twisted as claimed, the thread having between 500 and 1200 twists per meter. It is unclear if the core and sheath are twisted individually or collectively. Additionally, even though the claim recites that the thread core and thread sheath are twisted, the claim does not require the thread to be twisted. Based on the lack of clarity regarding the core and thread being twisted, it is unclear what structure is required by the thread.
Regarding claim 8, the claim recites a tenacity, wherein the tenacity is calculated using an ultimate breaking force of a yarn and a linear density of yarn. The claim does not require a yarn, nor recite an identity of a yarn. It is unclear how the tenacity is calculated and what yarn is referenced.
Regarding claims 9 and 13, the claims each recite “the man-made cellulosic fiber.” However, the claims are each dependent from claim 1, which recites that the core and sheath are both formed of a man-made cellulosic fiber. It is unclear if the recitation of “the man-made cellulosic fiber” is referencing the man-made cellulosic fiber in each of the core and the sheath, or only one of the core or the sheath.
Regarding claim 16, the claim recites that the cover is formed of a recycled cotton, a BCI cotton, or a combination thereof, wherein the recycled cotton is formed from dissolving a cotton cellulose in a solvent and then wet spinning new fibers from a resulting pulp. If the recycled cotton is dissolved, it is unclear if the claimed recycled cotton actually comprises cotton. Additionally, it is unclear if BCI cotton is merely denoting the source of the cotton or comprises a patentable distinction between cotton and BCI cotton.
Regarding claim 29, the claim recites that the thread is finished with antistatic, anti-microbial and flame retardant finishes. It is unclear if the claim recites each of the finishes singularly or collectively. For example, it is unclear if the claim is requiring separate finishes or a singular finish which provides the properties of the finishes.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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, 3, 4, 6, 8, 9, 13, and 14 are 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 03/012183 to Dos Santos Henriques.
Regarding claims 1, 3, 4, 6, 8, 9, 13, and 14, Dos Santos Henriques a corespun thread which consists of at least 50% in weight of lyocell continuous filaments as the core and of at least 15% in weight of cellulosic staple fibers (e.g. cotton or viscose) wrapped around the core filaments, and thus creating the outer sheath of yarns (Dos Santos Henriques, Abstract). Dos Santos Henriques that the thread can be dyed (Id., pages 5-6). Dos Santos Henriques teaches that the thread is mainly made of renewable natural resources (Id., page 6). Dos Santos Henriques teaches that the core filament has a fineness of 132 dtex, that the fibres of the wrap exhibit a fineness of 65 dtex, and that the twist of the individual yarns is 790 v/m and the twist of the total sewing thread is 810 v/m (Id., page 7). Dos Santos Henriques teaches that chemical treatment can be applied (Id.). Dos Santos Henriques teaches that the thread has increased twist, tenacity, and dimensional stability, and that the thread is suitable for cotton fabrics, jackets, protective clothing, etc. (Id., Abstract).
In the event it is shown that Dos Santos Henriques does not disclose the claimed invention with sufficient specificity, the invention is obvious because Dos Santos Henriques discloses the claimed constituents and discloses that they may be used alternatively or in combination.
Additionally, regarding the claimed ratio, note hat 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).
Alternately, regarding the claimed twist, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the corespun thread of Dos Santos Henriques, and adjusting and varying the weight ratio, such as within the claimed range, motivated by the desire of forming a conventional corespun thread based on the totality of the teachings of the prior art.
Regarding claims 4, 6, and 8, as set forth above, it is unclear exactly what is claimed. However, Dos Santos Henriques teaches a substantially similar thread core and sheath as claimed, having a twist within the claimed range and comprising a linear density as set forth in Applicants’ specification. Additionally, Dos Santos Henriques teaches that corespun threads are known in the art as comprising at least 2 individual yarns, twisted together is opposite directions (Dos Santos Henriques, pages 2-3). Therefore, it is reasonable for one of ordinary skill to expect that the claimed properties are inherent to, or naturally flow from, the teachings of Dos Santos Henriques. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Alternately, regarding the claimed twist, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the corespun thread of Dos Santos Henriques, and twisting the core and sheath as claimed, motivated by the desire of forming a conventional corespun thread having the desired twist, tenacity, and dimensional stability suitable for the intended application.
Regarding claims 9, 13, and 14, Dos Santos Henriques teaches that the thread is mainly made of renewable natural resources. Additionally, the claimed limitations directed to the lyocell including virgin cellulose or recycled cellulose, or the fiber at least partially formed of cellulosic pulp produced from textile waste, agricultural waste, microbial cellulose, or a combination thereof, or at least partially formed from food waste, are interpreted as the source of the starting materials and therefore are product by process limitations. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. 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, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicants to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicants intend to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicants should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as obvious over Dos Santos Henriques, as applied to claims 1, 3, 4, 6, 8, 9, 13, and 14 above, in view of CN 206521560 to Ma.
Regarding claims 15 and 16, Dos Santos Henriques does not appear to teach the claimed cover. However, Ma teaches a similar core-spun yarn structure comprising a filament core, a first staple layer wrapped around the core, and a second staple layer wrapped around the first staple layer (Ma, Abstract, paragraph 0009). Ma teaches that the first fiber layer and second fiber layer are made of fibers including cotton and viscose (Id., paragraphs 0011-0012). Ma teaches that the structure achieves the effect of improving the covering effect and strength of the yarn without affecting the yarn fineness, and makes a fabric subsequently smoother (Id., paragraph 0015).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the corespun thread of Dos Santos Henriques, and including a cotton cover layer, as taught by Ma, motivated by the desire of forming a conventional corespun thread having predictably improved covering effect and strength, thereby suitable for use in forming a fabric with a smoother surface.
Regarding claim 16, as set forth above, it is unclear exactly what structure is claimed. However, the claimed limitations are interpreted as directed to the source of the claimed cotton and is therefore interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. 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, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicants to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicants intend to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicants should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Claim 29 is rejected under 35 U.S.C. 103 as obvious over Dos Santos Henriques, as applied to claims 1, 3, 4, 6, 8, 9, 13, and 14 above, in view of CN 109457475 to Xu.
Regarding claim 29, Dos Santos Henriques teaches that chemical treatment can be applied. Dos Santos Henriques does not appear to teach the claimed finish. However, Xu teaches a multifunctional finishing agent for forming fabric having good antibacterial properties, excellent flame retardant properties, and improved antistatic properties (Xu, Abstract, paragraphs 0007, 0017). Xu teaches applying the finish to cotton fabrics (Id., paragraphs 0017, 0080, 0082).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the corespun thread of Dos Santos Henriques, and applying a finish having properties, such as claimed, as taught by Xu, motivated by the desire of forming a conventional corespun thread having predictably improved antibacterial properties, excellent flame retardant properties, and improved antistatic properties suitable for the intended application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER Y CHOI/Primary Examiner, Art Unit 1786
