DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/11/25 has been entered.
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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed 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 1-5 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.
Claim 1 recites “a coating solution” and additionally “a hydrophilic coating solution”. It is unclear to the examiner if “a hydrophilic coating solution” refers to “a coating solution” in line 8 or refers to a completely different coating solution from that of “a coating solution” in line 8. Clarification is needed. For the purpose of this examination, the examiner is taking the position that “a coating solution” would encompass “a hydrophilic coating solution”.
Claims 1-5 are under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are:
-the specific steps of the hydrophilic coating solution, specifically how it is introduced and the structural relations with the fiber composite. As set forth above, clarification is needed if hydrophilic coating solution refers to the coating solution, or is it a separate coating solution that is applied after the final heat-treatment.
-positively reciting a concrete in order to have a specific presence of hydrogen bond between a hydrophilic group of (the) hydrophilic coating solution and concrete.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (KR 101958356) in view of Ikehata et al. (JP 2018-002535).
Regarding claim 1, Jung discloses a method of manufacturing a fiber composite, the method comprising twisting two strands of filament yarns for fiber composite to have to have turns per meter (TPM) of 200-500 to form helix structure. Jung fails to explicitly disclose in which 2 strands of yarns form an angle of 50 to 100º in an axial direction of the fiber composite from a surface of the fiber composite to prevent reduction in spinning resistance performance.
However, the number of turns per meter in a yarn that creates a helix structure directly affects the angle of the individual fibers or strands within the yarn as it is known in the art that steeper angle of the strands arises a higher TPM (more twists) and a lower TPM (fewer twists) provides a shallower angle of the strands. In light of Jung’s explicit disclosure of TPM of 200-500 to ultimately form a helix structure, one of ordinary skill in the art would immediately envisage that Jung discloses an angle of 50 to 100º in an axial direction of the fiber composite from a surface of the fiber composite.
Alternatively, the examiner deems that it would have been obvious to one of ordinary skill in the art at the time of the invention to have determined the optimum value of a results effective variable such as the angles of the two strands, through routine experimentation, especially given the knowledge in the art that angles of the strands can impact the overall properties of the fiber composite. Jung discloses that a helix structure gives rise to the tensile properties of the fiber composite (claims). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the angles of the two strands of Jung to be of 50 to 100º in an axial direction of the fiber composite from a surface of the fiber composite, since the placement of the strands is a known results effective variable in the fiber arts in order to obtain suitable tensile strength, which thereby would satisfy a fiber composite to have a reduction in spinning resistance performance as presently claimed.
Jung discloses a compound bond between the fiber composite and a coating solution (claims), however, fails to explicitly disclose that the compound bond is formed by drying and heat-treating the fiber after coating the fiber composite, wherein immersing is performed with 0.3-4% of solid content in the coating solution based on a weight of the twisted fiber composite and the drying is performed at 100-150ºC, and the heat-treating is performed at 220-250ºC up to 1.5 mins as presently claimed.
Jung discloses the claimed invention except that coated instead of immersed in coating solution. Ikehata shows that immersion coating is an equivalent structure known in the art [0036]. Therefore, because these two processes were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute coating for immersion coating in the invention of Jung Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Ikehata discloses a compound bond between the fiber composite and coating solution by drying and heat-treating the fiber composite after immersing the fiber (impregnation tank) composite in a coating solution, wherein the coating solution is 3-30% by mass of resin based on the weight of the twisted fiber composite (claim, emphasis added).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Jung’s method to additionally comprise of heat-treating the fiber with the coating concentration as claimed and solid content in the coating solution to be within the claimed range, as suggested by Ikehata, in order to obtain a fiber with high fiber strength utilization rate and having a high reinforcement effect to concrete (Abstract).
Furthermore Jung in view of Ikehata discloses drying and heat-treating as set forth above. Although Ikehata discloses drying is performed at 180ºC and the heat-treating is performed at 230ºC for 2 minutes (Example 1), however, the noted example of Ikehata fails to disclose that the initial drying is performed at 100-150ºC as presently claimed as well as the heat-treating is conducted at a duration of 1.5 minutes as presently claimed.
However, Ikehata discloses that the drying and heat-treatment is conducted at 100- 240°C, wherein the total time is 0.1-1 hour [0037]. Therefore, all values within the temperature and time range appears to be functionally equivalent. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose drying temperature and duration from that ranged as claimed in view of the explicit teaching of Ikehata that the temperature and time is suitable, based on the desired fiber properties, and that choosing temperature and time would have rendered the claimed relationship between temperatures obvious in the absence of showing criticality.
Because both Jung and Ikehata discloses a twisted fiber bundle and Ikehata discloses an immersion coating with the drying and heat-treatment as claimed, one of ordinary skill in the art would immediately envisage that the coating solution would penetrate microstructure in the fiber composite and an anchor to ensure cohesion with the fiber composite. In other words, each and every surface of the filament yarn would have some amount of resin coating as it is necessary to obtain a resin-coated body. This is especially evident when Ikehata explicitly disclose that the twisted yarn is fixed based upon the adhesion of the resin coating [0020].
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
With regards to claim limitation, “to achieve hydrogen bond between a hydrophilic group of a hydrophilic coating solution and concrete, thereby increasing the cohesion with concrete and improving reinforcement performance”, as stated above, concrete is not positively recited, therefore hydrogen bond between coating and concrete is also not positively recited.
Nevertheless, both Jung and Ikehata discloses that the coating is hydrophilic and the presence of concrete. Therefore, Jung in view of Ikehata’s method, would disclose a hydrogen bond as presently claimed. Given that the claim lacks a specific material, Jung’s hydrophilic coating in view of Ikehata’s method discloses the claimed features.
The burden has shifted to the Applicants to other amend the claims to structurally (or compositionally) define over Jung and Ikehata, or provide evidence that the structure of Jung in view of Ikehata can’t meet the functional limitation of hydrogen bonding between the coated fibers and concrete set forth in claim.
As such, since Jung and Ikehata has been shown by the Examiner to meet all the structural limitations of the product as well as method of making the fiber composite, the burden has shifted to the Applicants to other amend the claims to structurally (or compositionally) define over Jung and Ikehata, or provide evidence that the structure and method of Jung and Ikehata can’t meet the functional limitation of the hydrogen bonding set forth in claim.
Furthermore, the recitation in the claims that the fiber composite is “for reinforcing concrete” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Jung discloses a fiber composite as presently claimed, it is clear that the fiber composite of Jung would be capable of performing the intended use, i.e. for reinforcing concrete, presently claimed as required in the above cited portion of the MPEP. Nevertheless, Jung discloses a reinforcing concrete.
Regarding claim 2, Jung discloses that the length is 30-60 mm (pg. 8).
Regarding claim 3, Jung discloses polyester and polyamide (Abstract).
Regarding claim 4, Jung fails to explicitly disclose the total fineness of the fiber as presently claimed.
Ikehata discloses the twisting includes performing twisting to have total fineness of the fiber cpomsite of 100-5000 dtex or 90-4500 denier.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Jung’s fineness to be within the fineness range as claimed, since Ikehata discloses that this will lead to suppression of the decrease in the strength utilization rate.
Regarding claim 5, Jung discloses that the coating is hydrophilic, however, fails to explicitly disclose that the coating solution comprises epoxy or phenol.
Ikehata discloses that the coating solution comprises epoxy resins and phenol resins, wherein it is known in the art that this chemical structure is hydrophilic.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Jung’s hydrophilic coating to be of epoxy resin or phenol, as suggested by Ikehata, in order to obtain appropriate fiber rigidity and higher reinforcing effect.
Response to Arguments
Applicant's arguments filed 11/11/25 have been fully considered but they are not persuasive.
Applicant argues that Jung discloses that the fiber is coated with a coating solution, not immersed. However, Jung discloses the claimed invention except that coated instead of immersed in coating solution. Ikehata shows that immersion coating is an equivalent structure known in the art [0036]. Therefore, because these two processes were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute coating for immersion coating in the invention of Jung Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Further, the examiner does not contend that Jung’s method of coating is spray coating as applicant has argued. No where does Jung discloses that the application of the Jung’s coating to the fiber is spray, but rather refers spraying to shotcrete (sprayed concrete containing the fibers).
Applicant argues that Ikehata discloses that the fibers are coated with the resin, not immersed in the solution of the resin. The examiner respectfully disagrees. Ikehata explicitly disclose that the fibers are immersed with resin in an impregnation tank ([0020], [0036], and Example 1).
Applicant argues that Ikehata would fail to disclose a function of compound or chemical bond is formed between the fiber composite and the coating solution up to the microstructure in the fiber. The examiner respectfully disagrees. Given that Jung in view of Ikehata discloses the method of making as claimed, Jung in view of Ikehata would disclose the chemical bond and microstructure as claimed microscopically. Furthermore, although the preamble discloses “for reinforcing concrete” there is actually no concrete being positively recited, rather the claim is directed to a coated fiber or composite fiber. Therefore, specific bonding between composite fiber and concrete is moot.
With regards to the criticality of the second heat treatment of “50-90 seconds”, applicant argues that when heat setting is performed for 90 seconds or more, it may not be appropriate due to low strength of the twisted fiber composite when concrete is mixed and poured and when the heat setting is performed at a time less than 50 seconds, delamination may occur between the twisted fiber composite and epoxy. This has been found unpersuasive. The term “may” does not conclusively state “low strength” of the twisted fiber would always be present nor that delamination would always occur. Further, the term “low strength” of the twisted fiber is a relative term. The specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Further, it appears that the structure and material of the claimed fiber composite would contribute “low strength” and delamination. Therefore, the evidence is not in commensurate in scope with the claims. Presently, the claims are directed to any (hydrophilic) coating solution and fiber material.
Applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D'Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
In addition, 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 applicant(s) regarding the alleged unexpected results should 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".
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785