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 .
Claim Rejections - 35 USC § 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Morishita et al. (US 2019/0292056) (Morishita) in view of Hashimoto et al. (US 2012/0088104) (Hashimoto), Jung et al. (US 2023/0235485) (Jung).
Regarding claims 1 and 7-8
Morishita teaches a carbon material precursor containing an acrylamide-based polymer in an amount of 50 mol% or more. The acrylamide-based polymer may be a homopolymer of acrylamide-based monomer and a copolymer of acrylamide-based monomer in an amount of 50 mol% or more and a different polymerizable monomer in an amount of 50 mol% or less as long as the acrylamide-based polymer is soluble in at least one of the aqueous solvent and the water-based mixture solvent. The carbon material precursor makes it possible to produce a carbon material safely at a low cost and has high carbonization yield. The carbon material precursor is used to for carbon fibers. See, e.g., abstract and paragraphs [0004-0010], [0016-0020], [0029-0030], [0032], and [0036] .
Morishita does not explicitly teach the carbon material precursor forms a fiber bundle containing single fibers having a circular cross section in a proportion of 30 to 100%, wherein the circular cross section has a ratio of a major axis to a minor axis of 1.0 to 1.3 in a cross section orthogonal to a longitudinal direction of the single fiber and a fineness of the single fiber is 0.1 to 7 dtex (A) or the diameter of the precursor fiber bundle (B) or single fibers taken out from carbon fiber bundles prepared form the carbon fiber precursor fiber bundle have a tensile modulus of at least 101 GPa (C)
With respect to the difference, Hashimoto (A) teaches a carbon fiber precursor fiber bundle comprising acrylamide-based polymer fibers, wherein the acrylamide-based polymer fibers haver a circular cross section in a proportion of 100%. A single fiber having a complete circular cross-section possesses a ratio of a major axis to a minor axis of 1.00 or more and 1.01 or less and is excellent in structural uniformity near the fiber surface. The degree of structural non-uniformity developed in the cross-section direction in a carbonization step can be reduced when the fineness of a single fiber is in the range of 0.5 to 1.0 dtex. The carbon fiber bundle is used to obtain fiber-reinforced plastic. See, e.g., abstract, paragraphs [0001], [0041], [0060], [0062-0063], and [0144], and claims 7-8.
Hashimoto and Morishita are analogous art as they are both drawn to carbon precursor fibrous materials.
In light of the motivation as provided by Hashimoto, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the carbon material precursor of Morishita to form a carbon fiber precursor fiber bundle containing single fibers having a circular cross section in a proportion of 100%, wherein the circular cross section has a ratio of a major axis to a minor axis of 1.00 to 1.01 in a cross section orthogonal to a longitudinal direction of the single fiber and a fineness of the single fiber is 0.5 to 1.0 dtex, as Hashimoto teaches a carbon fiber precursor fiber bundle possessing the above structural characteristics possesses excellent structural uniformity and is useful for forming fiber-reinforced plastic, especially as Morishita teaches the carbon material precursor is suitable for forming carbon fibers, and thereby arrive at the claimed invention.
With respect to the difference, Jung (B) teaches a carbon fiber possessing a single-fiber diameter of 6 microns or greater in view of process processability, production cost, reduced yarn breakage, and resin impregnation. The single-fiber diameter of the carbon fiber is adjusted by adjusting the single-fiber diameter of the precursor fiber bundle. See, e.g., abstract and paragraphs [0027-0028] and [0060].
Jung and Morishita in view of Hashimoto are analogous art as they are both drawn to carbon fiber precursors for carbon fiber bundles.
In light of the disclosure as provided by Jung, it therefore would have been obvious to one of ordinary skill in the art to modify single fiber diameter of the precursor fiber bundle of Morishita in view of Hashimoto, including over the presently claimed range, in order to attain a desired single fiber diameter of the carbon fiber bundle, in view of attaining desired characteristics in the carbon fiber bundle, and thereby arrive at the claimed invention.
It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding the limitation, “single fibers taken out from carbon fiber bundles prepared form the carbon fiber precursor fiber bundle having a tensile modulus tested in accordance with JIS R7606 of at least 101 GPa”, the present claims are drawn to a carbon fiber precursor fiber bundle. Since this limitation refers to properties of the carbon fiber bundle, which is not the claimed product, the limitation is not germane to the present claims (emphasis added).
Given that the structure and material of the carbon fiber precursor fiber bundle of Morishita in view of Hashimoto and Jung is substantially identical to the structure and material as used in the present invention, including the acrylamide-based polymer, the circular cross section, the fineness of the single fiber, the average fiber diameter, as set forth above, it is clear that the carbon fiber precursor fiber bundle would intrinsically be capable of forming single fibers taken out from carbon fiber bundles prepared form the carbon fiber precursor fiber bundle having a tensile modulus tested in accordance with JIS R7606 of at least 101 GPa, as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 9
Morishita in view of Hashimoto and Jo teaches all of the limitations of claim 1 above. Morishita further teaches the different polymerizable monomer include vinyl-cyanide-based monomers and unsaturated carboxylic acid. Paragraphs [0017-0021]. As discussed in the rejection of claim 1 above, Morishita teaches the different polymerizable monomer is present in the acrylamide-based polymer in an amount of 50 mol% or less and the acrylamide-based monomer is present in an amount of 50 mol% or more.
Response to Arguments
The previous rejection of claims 1 and 7-8 are substantially maintained. Any modification to the rejection is in response to the amendment of claim 1 and addition of new claim 9.
Applicant's arguments filed 10/23/2025 have been fully considered but they are not persuasive, as set forth below.
Applicant primarily argues the arguments in the previous responses, to the extent the above rejection relies on previously-relied references, and to the extent the above rejection applies to the claims as above-amended, which arguments are hereby incorporated by reference. Remarks, page 6.
The Examiner respectfully traverses, as follows:
The Examiner maintains traversal of arguments in the previous responses and maintains the arguments are unpersuasive for the reasons set forth in the previous responses.
Applicant further argues the Office Action cites Chen and Bradley in response to Applicant’s arguments regarding the importance of the temperature during the drawing process being in the range of 225 to 320°C. Applicant argues Chen was published in 2024 and is not available as prior art. Remarks, pages 6-7.
The Examiner respectfully traverses, as follows:
Chen is not cited as prior art. Instead, Chen is cited as an evidentiary reference to provide evidence that drawing temperature depends on heating the material to temperatures above softening temperatures. It is the Examiner’s opinion, as discussed in the response on pages 6-8 of the action filed 07/29/2025, one of ordinary skill in the art would understand that process conditions, such as drawing temperature, would be different for different carbon fiber precursor material, as drawing temperature depends on the materials softening temperature.
Applicant further argues regarding Bradley, it was not known to a person skilled in the art that the optimization of a drawing temperatures leads to obtaining a carbon fiber precursor fiber bundle containing single fibers having a predetermined circular cross section, a predetermined fineness, and a predetermined average fiber diameter in a predetermined portion, to obtain a thermally- stabilized fiber bundle having an excellent fiber strength by thermally-stabilizing the above-mentioned carbon fiber precursor fiber bundle, and to obtaining a carbon fiber bundle having a high tensile modulus by carbonizing the above thermally-stabilized fiber bundle. Remarks, page 7.
The Examiner respectfully traverses, as follows:
Firstly, Bradley provides evidence it is known in the art to optimize drawing temperatures to maximize tensile properties of the precursor carbon fiber and the mechanical properties desired for the final carbon fiber. Since it is known in the art that optimizing drawing temperatures controls, it is the Examiner’s opinion one of ordinary skill in the art would be capable of altering the process conditions, specifically the drawing conditions, in order to produce the desired structural characteristics for the desired benefit, including desired tensile and mechanical properties.
Secondly, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding it was not known to a person skilled in the art that the optimization of a drawing temperatures leads to obtaining a carbon fiber precursor fiber bundle containing single fibers having a predetermined circular cross section, a predetermined fineness, and a predetermined average fiber diameter in a predetermined portion, to obtain a thermally- stabilized fiber bundle having an excellent fiber strength by thermally-stabilizing the above-mentioned carbon fiber precursor fiber bundle, and to obtaining a carbon fiber bundle having a high tensile modulus by carbonizing the above thermally-stabilized fiber bundle must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”. Applicant has provided no evidence supporting this claim.
Applicant further argues in order to produce a carbon fiber precursor fiber bundle as claimed it is necessary to draw fiber bundle composed of the acrylamide-based polymer fibers at a temperature of 225 to 320°C. Based on common sense, a carbon fiber precursor bundle produced using the acrylamide-based polymer fibers would be subjected to a drawing treatment at 190° which is slightly above the glass transition temperature and therefore a person skilled in the art would not subject the carbon fiber precursor bundle to a drawing treatment at such a high temperature. Remarks, pages 7-9.
The Examiner respectfully traverses, as follows:
Firstly, it is noted the present claims are drawn to a product, not a process of making the product. The patentability of a product does not depend on its method of production. An argument to the method is not germane to the patentability of the product. The burden has been shifted to the Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289,292 (Fed. Cir. 1983). the fact remains it would be obvious to arrive at a carbon fiber precursor fiber bundle comprising acrylamide-based polymer fibers possessing the claims structural properties, for the reasons set forth in the rejection mailed 07/29/2025 and in the rejection above, including in order to provide excellent structural uniformity, ensuring the bundle is useful for forming fiber-reinforced plastic, and attaining desired characteristics in the carbon fiber bundle.
Secondly, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding drawing the acrylamide-based polymer fibers at a temperature of 190°C being common sense must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”. Applicant has provided no evidence supporting this claim.
Applicant further argues unexpected results are attained by using a drawing temperature of 260°C, within the range of 225 to 320°C, and a higher draw ratio. Applicant argues Hashimoto discloses a drawing temperature of 190°C in paragraph [0072]. Remarks, pages 8-10.
The Examiner respectfully disagrees, as follows:
Firstly, overcoming a rejection based on unexpected results requires the combination of three different elements: (i) the results must fairly compare with the closest prior art in an affidavit or declaration under 37 CFR 1.132, (ii) the claims must be commensurate in scope, and (iii) the results must truly be unexpected. MPEP 716.02. It is Applicants’ burden to explain why their proffered results are considered to be unexpected, are considered to be commensurate in scope with the claimed subject matter, and are considered to be the consequence of a comparison to the closest prior art. See, e.g., In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Applicant is arguing the claimed product produces unexpected results due to the drawing temperature of 260°C and a high draw ratio. The drawing temperature and draw ratio are not recited in the present claims. Since Applicant is arguing patentability hinges on recitations not present in the claims, the argument is unpersuasive.
Secondly, it is noted 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 or an obvious variant from a product of the prior art, the claim is unpatentable even though a different process made the prior product. In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985). The burden has been shifted to the Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289,292 (Fed. Cir. 1983). The Examiner maintains the product in the claim is an obvious variant from a product of the prior art, for the reasons set forth in the rejection mailed 07/29/2025 and the reasons set forth in the rejection above.
Conclusion
Applicant's amendment necessitated any new grounds 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE X NISULA whose telephone number is (571)272-2598. The examiner can normally be reached Mon - Fri 9:30 - 5:00.
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, Marla McConnell can be reached at (571) 270-7692. 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.
/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789