DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/11/2025 has been entered.
Claims 1-2, 7-10, 12-29 are pending.
Claim Rejections - 35 USC § 103
Claims 1-2, 7-10, 29 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (JPH 05170952, cited in IDS filed 11/16/2021).
A machine translation of JPH 05170952 was provided with this office action.
Regarding claim 1: Hayashi is directed to a prepreg comprising the following structural components [A] [B] and [C] wherein
[B] suitable bismaleimide resins including 4,4'-bismaleimidediphenylmethane. The molecular weight of 4,4'-bismaleimidediphenylmethane is about 358 with a functionality of 2, and therefore the average maleimide equivalent is calculated to be 179.
[C] is present on the surface of the prepreg [0006] including polyether ketones ([0016] Hayashi). The weight per unit area is 145 g/m2 in the working Example 1.
The reinforcing fibers [A] are present which are included in a resin area including [B] and a resin area [C] across an interface between the two resin areas. Specifically, the carbon fibers are present in both the matrix resin prepreg and the thermoplastic resin on the prepreg surface (abstract). Further, the prepreg is sandwiched between from above and below by a thermoplastic resin and carbon fibers are present on the surface of the prepreg in the impregnation process. A prepreg of the working examples utilizes a reinforcing fiber of Marimid 5218 and wound on the prepreg such that it was lightly embedded in the prepreg ([0025] Hayashi) (equivalent to reinforcing fibers [A] are present which are included in a resin area including [B] and a resin area [C] across an interface between the two resin areas).
The resin area including the reinforcing fibers [B] and the resin area including the thermoplastic resin [C] are adjacent to each other in a layered state to form the interface.
Specifically, Hayashi discloses carbon fiber as a reinforcing material, a polyfunctional maleimide resin as a matrix resin, and a thermoplastic resin molding on the surface of the prepreg (claim 1 Hayashi). Further, Hayashi discloses a method in which an impregnation treatment is carried out by sandwiching from above and below so that the particulate thermoplastic resin is filtered by the carbon fibers so as to be substantially present on the surface of the prepreg in the impregnation process.
Hence, it is clear that areas [B] and [C] include the reinforcing fibers [B], and a layered state is present to form an interface.
While Hayashi doesn’t mention a single resin composition simultaneously comprising the aforementioned components [A] [B] [C] in a single composition, it would have been obvious to have selected such a composition since Hayashi discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Regarding claim 2: Hayashi doesn't specifically recite in planar view of the prepreg, when a cross-section perpendicular to a plane of the prepreg including the [A] is obtained from a direction of an angle different by 45 degrees to a direction of any fiber [A] included in the two resin areas, a cross-sectional curve, formed by the interface between the two resin areas closely adhering to each other, in the cross-section, has an average roughness length RSm, defined in accordance with JIS B0601 (2001), of 100 um or Less, and an average roughness height Re of 3.5 pm or more.
However, the prepreg produced in Hayashi is substantially identical to the prepreg produced in the instant invention. Specifically, Hayashi discloses a prepreg comprising carbon fibers, a thermosetting resin of a maleimide resin, and a thermoplastic on the surface as discussed previously.
Case law holds that 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). MPEP 2112.01(I).
Hence, the combination of Hayashi and Mori suggests a prepreg having properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claims 7-10: The combination of Hayashi and Mori doesn't specifically recite an average roughness height Re of 10 nm or more, a thermal conductivity of 15 W/(m.K) or less, the component [B} includes a thermoplastic resin component soluble in a thermosetting resin in a dissolved state.
However, the prepreg produced in Hayashi is substantially identical to the prepreg produced in the instant invention, as discussed previously regarding claim 1.
Case law holds that 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). MPEP 2112.01(I).
Hence, the combination of Hayashi and Mori suggests a prepreg having properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 29: Thermoplastic resins include polyether ketone (PEEK) ([0016]).
Response to Arguments
Applicant argues (p. 6-7 Remarks) claim 1 has been amended to include claims 4, 5, and 6. Honma provides no teaching of the average cyanate/maleimide/oxazine equivalent values of claim 1, no motivation to select the claimed ranges, and even less then unexpected association of the specific ranges with desirable mechanical properties. Honma teaches the thermoplastic resin [C] should have a melting/softening temperature ≤300 C. In contrast, present claim 1 recites the thermoplastic component[C] is a polyarylene ether ketone. Honma teaches away from selecting a high temperature thermoplastic such as those employed in the claimed invention.
This argument is not found persuasive since Honma specifically discloses the thermoplastic including PEEK and PEKK at [0123] Honma). Regardless, the rejection over Honma has been withdrawn in light of the amendments to the claims.
Applicant argues (p. 7 Remarks) the experimental data filed 8/6/25 demonstrate when the average equivalents are too high, the result was undesirably low crosslinking density, undesirably low resin elastic modulus and poor compression strength and flame resistance. Similarly, when it is too low, the result was undesirably high crosslinking density, brittle resin and reduced fatigue joining strength. The claimed average cyanate, maleimide, and oxazine equivalents were observed to provide optimal balance and not contemplated by the cited references.
The rejection over Honma has been withdrawn. With regards to Hayahi, the molecular weight of 4,4'-bismaleimidediphenylmethane is about 358 with a functionality of 2, and therefore the average maleimide equivalent is calculated to be 179, which is squarely between the claimed range.
Applicant argues (p. 9 Remarks) claim 1 has been amended to include claims 4, 5, and 6. Honma provides no teaching of the average cyanate/maleimide/oxazine equivalent values of claim 1, no motivation to select the claimed ranges, and even less the unexpected association of the specific ranges with desirable mechanical properties.
With regards to Hayahi, this argument is not found persuasive since Hayashi teaches suitable bismaleimide resins including 4,4'-bismaleimidediphenylmethane. The molecular weight of 4,4'-bismaleimidediphenylmethane is about 358 with a functionality of 2, and therefore the average maleimide equivalent is calculated to be 179, which is squarely between the claimed range.
Applicant argues (p. 9 Remarks) Comparative Example 7 of the present application is structurally similar to Hayashi and exhibits an interlaminar fractural toughness of 2.4 k/m2 as compared to Example 20 which has a fractural toughness of 3.8 kJ/m2. Applicant submits the Examiner has not established inherency regarding claim 2.
This argument is not found persuasive since it is not clear how Comparative Example 7 is structurally similar. The rejection of record has been recast above over Hayashi alone.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764