www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
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`14/997,150
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`01/15/2016
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`Yuki YOSHIOKA
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`PIPMM-55429
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`3619
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`759°
`52°“
`PEARNE & GORDON LLP
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`06’1””
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`MCKINNON LASHAWNDA T
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`1789
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/1 1/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patdoeket@pearne.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0,7709 A0170” Summary
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`Application No.
`14/997,150
`Examiner
`LASHAWN DA T MCKINNON
`
`Applicant(s)
`YOSHIOKA etal.
`Art Unit
`AIA (FITF) Status
`1789
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 04/08/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—10 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)D All
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`b)I:l Some**
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail DateW.
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190604
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`

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`Application/Control Number: 14/997,150
`Art Unit: 1789
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`Page 2
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`Notice ofPre-AIA 0r AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Claim Rejections - 35 US C § 103
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`2.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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.
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`3.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 U.S. l, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`4.
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`Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson et
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`al. (PG Pub. 2008/0003430).
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`5.
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`Regarding claim 1, Wilson et al. teach a fiber comprising a polymer and inorganic
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`particles wherein the inorganic particles contain first particles 6 and second particles 7 and the
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`particles are embedded within the outer surface of the fiber body. The first plurality of particles
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`has an encapsulated particle density completely contained within the fiber body and wherein the
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`encapsulated particle density of the first plurality of particles is highest adjacent to the outer
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`

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`Application/Control Number: 14/997,150
`Art Unit: 1789
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`Page 3
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`surface of the fiber. The fiber contains particles 7 that are only embedded or (partially
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`encapsulated) within the polymer forming the fiber body such that a portion of the particles are
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`exposed on the outer surface of the fiber body. In certain instances the particles may have a
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`maximum dimension of 1 millimeter or less, 500 microns or less, 25 microns or less, 100
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`microns or less, 50 microns or less or 10 microns or less. Wilson et al. are silent regarding the
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`claimed nonwoven, nanofibers formed via electrospinning, and the volume portions and average
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`number of particles and ratio of Df to Dp. However, it would have been obvious to one of person
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`of ordinary skill in the art at the time of the invention to use the fiber as taught by Wilson et al. in
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`a nonwoven as such is merely a conventional option well known in the art. Electrospinning to
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`form nanofibers is also well known in the art and would have been obvious to one of ordinary
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`skill in the art at the time of the invention. One of ordinary skill in the art at the time of the
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`invention would have easily arrived at the claimed a volume Vlo of a portion of the first particle
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`exposed from a surface of the polymer and a volume Vli of a portion buried in the polymer
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`satisfying Vlo<V1i, a volume V20 of a portion of the second particle exposed from a surface of
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`the polymer and a volume V2i of a portion buried in the polymer satisfy V20>V2i, an average
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`number N1 of the first particle and an average number N2 of the second particle per unit length
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`of the nanofiber satisfy N1>N2 through routine experimentation in order to tailor the properties
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`of the fiber and does not require inventive effort nor does it bring about unexpected technical
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`effects. The claimed subject matter is merely derived on the basis of Wilson et al. in combination
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`with general common knowledge in the art and thus is not inventive nor patentable. The claimed
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`ratio of Df/Dp would have been more than obvious to one of ordinary skill in the art at the time
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`of the invention simply to ensure the particles were smaller than the fiber to help in distribution
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`and effectiveness of the particles. It would have been obvious for one of ordinary skill in the art
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`Application/Control Number: 14/997,150
`Art Unit: 1789
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`Page 4
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`at the time of the invention to employ the fiber of Wilson et al. in a nonwoven as is well known
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`in the art and to carbonize the fiber to improve the properties and to tailor for end use.
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`6.
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`Regarding claim 3, Wilson et al. teach in certain instances the particles may have a
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`maximum dimension of 1 millimeter or less, 500 microns or less, 25 microns or less, 100
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`microns or less, 50 microns or less or 10 microns or less. It would have been obvious to one of
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`ordinary skill in the art through routine experimentation to arrive at the claimed Df to suit end
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`use needs and to tailor properties.
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`7.
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`Regarding claim 4, As shown in Figure l, a first plurality of particles are encapsulated
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`within a fiber body. Therefore, a portion of the first plurality of first particles is construed as the
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`third particles completely embedded within the polymer. IT would have been obvious for one of
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`ordinary skill in the art at the time of the invention with routine experimentation to include the
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`average number N1 of the first particles and the average number N3 of the third particles per unit
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`length of the fibers to satisfy N1 <N3 in order to affect strength of the fiber in the outer region
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`and tailor fiber properties.
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`8.
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`Regarding claim 5, the claimed amount of inorganic particles would have been obvious
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`for one of ordinary skill in the art to arrive at through routine experimentation given the claimed
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`range encompasses 5 to 50 parts by mass per 100 parts by mass of the polymer and in order to
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`tailor the properties of the fiber.
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`9.
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`Regarding claim 6, Although Wilson et al. does not disclose the claimed firing, it is
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`noted that “[E]ven though product—by—process claims are limited by and defined by the process,
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`determination of patentability is based on the product itself. The patentability of a product does
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`not depend on its method of production. If the product in the product—by—process claim is the
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`same as or obvious from a product of the prior art, the claim is unpatentable even though the
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`Application/Control Number: 14/997,150
`Art Unit: 1789
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`Page 5
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`prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
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`966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to
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`applicant to come forward with evidence establishing an unobvious difference between the
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`claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292
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`(Fed. Cir.1983). See MPEP 2113.
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`10.
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`Therefore, absent evidence of criticality regarding the presently claimed firing and given
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`that Wilson et al. meets the requirements of the claimed composition, Wilson et al. clearly meet
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`the requirements of present claims fiber nonwoven.
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`11.
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`Further, it could have been obvious to one of ordinary skill in the art to fire the fiber in a
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`nonwoven as such is well—known in the art to improve properties.
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`12.
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`Regarding claim 7, Wilson et al. teach the polymer is polyimide and acrylic blend
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`polymers. As set forth in the rejection of claim 6 above, Although Wilson et al. does not disclose
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`the claimed carbonizing, it is noted that “[E]ven though product—by—process claims are limited by
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`and defined by the process, determination of patentability is based on the product itself. The
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`patentability of a product does not depend on its method of production. If the product in the
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`product—by—process claim is the same as or obvious from a product of the prior art, the claim is
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`unpatentable even though the prior product was made by a different process”, In re Thorpe, 777
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`F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different
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`process, the burden shifts to applicant to come forward with evidence establishing an unobvious
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`difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798,
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`802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
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`

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`Application/Control Number: 14/997,150
`Art Unit: 1789
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`Page 6
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`13.
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`Therefore, absent evidence of criticality regarding the presently claimed carbonizing and
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`given that Wilson et al. meets the requirements of the claimed composition, Wilson et al. clearly
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`meet the requirements of present claims fiber nonwoven.
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`14.
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`Further, it could have been obvious to one of ordinary skill in the art to carbonize the
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`fiber in a nonwoven as such is well—known in the art to improve properties.
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`15.
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`Regarding claims 8-10, It would have been obvious for one of ordinary skill in the art to
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`select the first and second particles to be of the same material in order to impart the properties of
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`that material to the fiber.
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`Response to Arguments
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`Applicant’s arguments with respect to the claims have been considered but are moot
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`because the arguments do not apply to any of the references being used in the current rejection.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to LASHAWNDA T MCKlNNON whose telephone number is
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`(571)272—6116. The examiner can normally be reached on Monday thru Friday generally
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`8:00am—5:00pm EST.
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
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`encouraged to call Examiner at 571—272—61 16.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Marla McConnell can be reached on 571—270—7692. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`

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`Application/Control Number: 14/997,150
`Art Unit: 1789
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`Page 7
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`
`/Shawn Mckinnon/
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`Examiner, Art Unit 1789
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`