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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-7, 12-14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (US 9,296,175 B2) in view of Hayashida (JP 2014141762 A).
Regarding claim 1, Yamaguchi teaches an injection molded thermoplastic composition (abstract), comprising:
A thermoplastic resin (col. 2, lines 19-21)
A fibrous filler, which may be carbon fiber (col. 2, lines 53-55), which has a single-fiber diameter ranging from 1 to 20 microns (col. 8, lines 50-51) which overlaps the claimed range of “not less than 6.0 µm,” establishing a prima facie case of obviousness.
Yamaguchi teaches that the most preferable carbon fibers are those made from polyacrylonitrile (PAN), which are excellent in strength and elastic modulus (col. 9, lines 30-33). However, Yamaguchi differs from claim 1 because it is silent as to the specified tensile elastic modulus.
In the same field of endeavor, Hayashida teaches a carbon fiber bundle ([0001]) comprising carbon fibers formed from polyacrylonitrile ([0019]) which are excellent in tensile modulus ([0012]). Hayashida further teaches example carbon fiber bundles with a tensile elastic modulus of 420 GPa (Table 2 of Hayashida Original Document), which falls within the claimed range of “350 to 500 GPa,” establishing a prima facie case of obviousness. It therefore would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the carbon fiber bundle characteristics of Hayashida into the formulation of Yamaguchi, as they are recognized as being suitable for the same purpose. It is prima facie obvious to substitute equivalents known for the same purpose (see MPEP 2144.06.II.).
Yamaguchi also differs from claim 1 because it is silent with regard to the carbon fibers having the required “loop fracture load” characteristic. Nevertheless, Yamaguchi as modified utilizes a carbon fiber which has the following characteristics which are identical to the claimed carbon fibers, in light of the instant Specification:
The fibers are formed from polyacrylonitrile ([0023]) with a copolymerization component ([0023]) which may be itaconic acid ([0024]). The fibers are therefore formed from the same materials as the claimed carbon fibers (c.f. instant Specification at [Example 1].
Example fiber bundles are taught to have 3,000 single fibers ([0080]) which overlaps the single fiber number range described in the instant Specification (c.f. instant Specification at [0022].
The fibers have a crystallite size Lc (nm) of between 1.7 and 5.6 ([0050]), which encompasses the range required by claim 5 and recited in the instant Specification (see instant Specification at [0019]).
Example fibers are taught to have a crystal orientation parameter of crystallites π-002 ranging between 87.3% and 91.0% (Table 2 of Hayashida original document) which overlaps the preferred range described by the specification (c.f. instant Specification at [0019]). Hayashida further teaches that the fibers’ crystal orientation correlates well with the elastic modulus of the carbon fiber bundles ([0053]).
Thus, Yamaguchi as modified utilizes a carbon fiber which is substantially identical to the claimed carbon fiber bundles, produced with the same materials and expressing the single fiber number, crystallite size, and crystal orientation characteristics. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “loop fracture load” (and thus, the relationship of the claimed “formula (1)”) will therefore necessarily be present in Yamaguchi as modified, as applied to claim 1.
Regarding the newly added limitations requiring the specified thermoplastic resin and relationships of “Formula (5)” and “Formula (6),” Yamaguchi specifically teaches the incorporation of polyphenylene sulfide (col. 2, lines 48-52). Furthermore, composition of Yamaguchi as modified by Hayashida contains the claimed tensile elastic modulus (c.f. Hayashida, as discussed above), and also contains carbon fiber contents of 20 and/or 30 wt% (c.f. Yamaguchi at cols. 11-12, Examples 1 and 6 which indicate said amounts in inventive compositions). These values fall within the preferred range of the instant disclosure (c.f. instant Specification at [0025], which indicates that the preferred range of “Wf” is between 15 and 55%). Finally, while the composition of Yamaguchi as modified by Hayashida does not name the claimed flexural modulus of the overall composition, the modified formulation meets all of the claimed compositional limitations and meets all of the remaining materials properties as referenced above. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The flexural modulus within the claimed formulae will therefore necessarily be present in the modified composition. The modified composition therefore meets all of the variables of claimed formulae “(5)” and “(6),” and it is therefore the Office’s position that the modified composition meets all of the limitations thereof.
Regarding claim 4, the carbon fiber bundles of Hayashida have a crystallite size Lc (nm) of between 1.7 and 5.6 ([0050]), which encompasses the range required by claim 5 and recited in the instant Specification (see instant Specification at [0019]). Hayashida is silent with regard to the single-fiber compressive strength, and thus is also silent with regard to the relationship of the claimed “Formula (3).” Nevertheless, as described above, the carbon fiber bundles of Hayashida are substantially identical to the claimed carbon fiber bundles, being produced with the same materials and expressing the same single fiber number, crystallite size, and crystal orientation characteristics. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “single-fiber compressive strength Fc (GPa)” (and thus, the relationship of the claimed “formula (3)”) will therefore necessarily be present in Yamaguchi as modified, as applied to claim 1.
Regarding claim 5, Hayashida teaches that the fibers have a crystallite size Lc (nm) of between 1.7 and 5.6 ([0050]), which encompasses the range of “2.2 to 3.5 nm,” establishing a prima facie case of obviousness. Furthermore, Hayashida teaches fibers having a crystal orientation parameter of crystallites π-002 ranging between 87.3% and 91.0% (Table 2 of Hayashida original document) which falls within claimed range of “80.0 to 95.0%,” establishing a prima facie case of obviousness. The ranges therefore satisfy the relationship of the claimed “Formula (4).”
Regarding claim 6, the claim is recognized as a product-by-process claim. Even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself and the structure implied by the process. See MPEP 2113.I.
With respect to claim 6, the process limitation which imparts structure to the claimed resin composition comprises the melt-kneading of the composition. Melt-kneading the composition is understood to decrease the fiber length of the carbon fibers, whose initial lengths are 100 mm or more according to the product-by-process limitation of “wherein… the carbon fibers have a length of 100 mm or greater before the melt-kneading.” The instant Specification does not specify the length of the carbon fibers in the kneaded composition, but does specify that the kneaded material is cut into pellets ranging from 1 to 50 mm in length, thus establishing a practical upper-limit of the carbon fiber size in the pellets. The instant Specification further states that the carbon fiber bundle length is controlled to be 0.3 to 2 mm in length in injection molded products (see instant Specification at [0066]), and states that the carbon fiber bundles are further chopped to smaller lengths during injection molding ([0032]). Thus, the length of 0.3 to 2mm is established as the practical lower-limit of the carbon fiber size in the kneaded resin pellets.
Yamaguchi similarly teaches that the fiber length of the carbon fibers within the injection molded product is 300 microns (0.3 mm) or more (col 1, lines 10-12), and teaches injection molded products containing fibers of 600 microns (0.6 mm) or more (col. 2, lines 44-47). Yamaguchi also teaches the melt-kneading of the thermoplastic composition with the carbon fiber, followed by pelletization (col. 1, lines 40-44). Yamaguchi therefore teaches a substantially identical melt-kneading process, which results in injection-moldable products whose carbon fiber lengths fall within the range of the instant application’s injection molded product, and thus the teachings of Yamaguchi read on the claimed limitations of the claimed “resin composition.”
Regarding claim 7, Hayashida is silent with regard to the claimed heat loss rate. Nevertheless, as described, Hayashida teaches carbon fiber bundles that are substantially identical to the claimed fibers. Furthermore, the instant Specification states that carbon fibers with the claimed heat loss property have that characteristic because they lack significant amounts of pyrolyzable components (e.g., sizing agents), which leave the carbon fiber matrix upon being exposed to high temperatures, resulting in the mass loss referred to as “heat loss” (see instant Specification at [0047]). Hayashida teaches that a sizing agent may be used ([0048]), but does not require its incorporation, and also teaches exemplary formulations which do not include a sizing agent (Examples 1 to 5, and Table 1 in the original document).
As described above, the carbon fiber bundles of Hayashida are substantially identical to the claimed carbon fiber bundles, being produced with the same materials and expressing the same single fiber number, crystallite size, and crystal orientation characteristics, and optionally absent from a disqualifying sizing agent. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed heat loss rate will therefore necessarily be present in Yamaguchi as modified by Hayashida, as applied to claim 1, above.
Regarding claim 12, as described above, Yamaguchi exemplifies the inventive formulation as containing 20% and 30% of carbon fibers by weight (cols. 11-12, Examples 1 and 6), both of which fall within the claimed range, establishing a prima facie case of obviousness.
Regarding claim 13, while the composition of Yamaguchi as modified by Hayashida does not name the claimed flexural modulus of the overall composition, the modified formulation meets all of the claimed compositional limitations and meets all of the remaining materials properties as referenced above. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The flexural modulus within the claimed formulae will therefore necessarily be present in the modified composition.
Regarding claim 14, Yamaguchi teaches molded articles of the resin composition (Abstract).
Regarding claim 16, Yamaguchi specifically teaches the incorporation of polyphenylene sulfide (col. 2, lines 48-52).
Regarding claim 17, as described above, Yamaguchi as modified utilizes a carbon fiber which is substantially identical to the claimed carbon fiber bundles, produced with the same materials and expressing the single fiber number, crystallite size, and crystal orientation characteristics. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “loop fracture load” (and thus, the relationship of the claimed “formula (1)”) will therefore necessarily be present in Yamaguchi as modified, as applied to claim 1.
Regarding claims 18-19, as described above, Yamaguchi teaches the incorporation of a fibrous filler, which may be carbon fiber (col. 2, lines 53-55), which has a single-fiber diameter ranging from 1 to 20 microns (col. 8, lines 50-51) which overlaps the claimed range of “not less than 6.5 µm and 15 µm or less,” establishing a prima facie case of obviousness.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (US 9,296,175 B2) in view of Hayashida (JP 2014141762 A) and further in view of Kawakami (JP 2009197358 A).
Regarding claim 8, Yamaguchi as modified by Hayashida teaches all of the limitations of claim 1 as described above. Hayashida teaches Example fiber bundles comprising 3,000 single fibers ([0080]) which overlaps the claimed range of “3,000 to 60,000,” establishing a prima facie case of obviousness.
Yamaguchi as modified by Hayashida differs from claim 8 because it is silent with regard to the claimed carbon fiber bundle twist angle. However, Kawakami teaches a carbon fiber bundle ([0001]) wherein the bundle has a surface twist number ranging from 0.3 to 30 turns per meter ([0070]), and teaches that the range of twists can reduce the fuzzing of single fibers which can cause carbon fiber breakage during the carbonization process.
The instant Specification enables the calculation of turns per meter from twist angle via two equations which define the relationships between (Equation I, below) single fiber diameter, number of filaments in a bundle, and bundle diameter, and (Equation II, below) twist angle, fiber bundle diameter, and number of twists per meter (see instant Specification at [0074]). The instant Specification further provides the preferred single filament diameter range of between 6.5 and 8.5 microns (see instant Specification at [0024]), and teaches the allowable range of fiber number within the carbon fiber bundles as being between 3,000 and 60,000 (see instant Specification at [0022]).
The following mathematical calculations are employed to determine the number of turns per meter corresponding to the required limitation of “a twist angle of 2.0° to 30.5°:”
Equation I: Diameter of whole carbon fiber bundle (microns) = ((single fiber diameter)2 x number of filaments)0.5
Equation II: Twist angle of carbon fiber bundle surface layer (°) = Tan-1(diameter of whole fiber bundle x 10-6 x π x Number of twists)
Substituting the minimum and maximum above-described preferred single filament diameters along with the minimum and maximum above-described allowable number of fibers per bundle into Equation I, the minimum and maximum allowable diameters of the whole carbon fiber bundles are calculated as 356.02 and 2,082.07 microns, respectively.
Substituting the minimum and maximum above-described allowable twist angles of the carbon fiber bundle surface layer and the minimum and maximum above-calculated whole carbon fiber bundle diameters into Equation II, the minimum and maximum allowable number of twists per meter of the carbon fiber bundles are calculated as 5 (minimum twist angle, maximum bundle diameter) and 527 (maximum twist angle, minimum bundle diameter), respectively. Thus, the limitation of claim 1 reciting “ a twist angle of 2.0° to 30.5°” corresponds to between 5 and 527 twists per meter. The range of twists per meter taught by Kawakami (0.3 to 30 turns per meter) overlaps this claimed range, establishing a prima facie case of obviousness.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to adopt the number of twists per meter of the carbon fiber bundles of Yamaguchi as modified by Hayashida, as taught by Kawakami, for the purpose of reducing the fuzzing of single fibers, thereby reducing carbon fiber breakage during the carbonization process.
Response to Arguments
Applicant's arguments filed January 9, 2026 have been fully considered but they are not persuasive.
Applicant’s first arguments relate to a discussion of whether experimental data representing a single polyphenylene sulfide may be reasonably extrapolated to suit the entire class of “polyarylene sulfides” as claimed, pursuant to an argument of unexpected results wherein the scope of the claims and experimental data need to be commensurate (see MPEP 716.02(d)). Applicant argues that there is no evidence of record suggesting that polyphenylene sulfide would not be reasonably extrapolated to the remainder of the term “polyarylene sulfide,” however the absence of evidence to the contrary is not, in itself, evidence for the matter asserted. Applicant further provides Exhibits A1-A4, however the passages therein do not provide evidence as to why a polyphenylene sulfide would be representative of the entire category of “polyarylene sulfides.”
In contrast, Exhibit A1 merely states that poly(phenylene sulfide) is a polyarylene sulfide and states that polyarylene sulfides, alongside a series of other, chemically distinct, polymers happen to all be excellent in mechanical and thermal properties. This comparison of polyarylene sulfides to other distinct polymer types does not provide a rationale for members within the group of polyarylene sulfides, and the uniformity or generalizability thereof.
Exhibit A2 merely states that polyphenylene sulfide is the only commercially available polyarylene sulfide. It is unclear how this is purported to show any uniformity between members of the polyarylene sulfide group – to the contrary, this would suggest a difference between polyphenylene sulfide and the remaining polymers, as only polyphenylene sulfide has been successfully marketed.
Exhibit A3 only concerns polyphenylene sulfide. It provides no broader context of polyphenylene sulfide and other polyarylene sulfides.
Exhibit A4 utilizes the term “polyarylene sulfide” but refers to it in the singular (e.g. “an engineering plastic”), implying only one polymer to be contemplated in the passage. Furthermore, all that is emphasized by the Applicant in this passage is the mechanical strength thereof – it is not clear how even the indication that all polyarylene sulfides have excellent mechanical strength would be sufficient to provide a basis for generalizing all of polyarylene sulfides via polyphenylene sulfide.
Applicant’s next arguments are further related to allegations of unexpected results. Applicant argues that unexpected results are described by the differences between Experimental Examples 1-5 and Comparative Examples 1-6.
As an initial matter, the scope of the claims and the scope of the experimental data are not commensurate, at least for the foregoing reasons related to polyphenylene sulfide; the Applicant has not provided a rational and reasonable basis for why data for polyphenylene sulfide would be properly generalized to suit the entire category of “polyarylene sulfide” as claimed.
Furthermore, the experimental data provided does not appear to show a difference between the properties of the claimed compositions and those of the comparative compositions; the properties of the experimental and comparative compositions overlap significantly in each case, as follows:
The flexural strengths of the claimed examples range from 210 to 370 MPa, while those of the comparative examples range from 290-420 MPa. There are comparative examples whose flexural strengths exceed those as claimed (e.g., the flexural strength of Comparative Example 1 is 420 MPa, while that of Experimental Example 2 is 210 MPa).
The flexural moduli of the claimed examples range from 31 to 50 GPa, while those of the comparative examples range from 27-40 GPa. There are comparative examples whose flexural moduli exceed those as claimed (e.g., the flexural modulus of Comparative Example 3 is 40 GPa, while that of Experimental Example 4 is 31 GPa).
The impact strengths of the claimed examples range from 5-11 KJ/m2, while those of the comparative examples range from 4-14 KJ/m2. In this case, not only do some comparative results exceed experimental results, but there are two comparative results which exceed all of the experimental results (i.e., comparative examples 1 and 6 have impact strengths of 14 KJ/m2 – higher than all of the experimental results).
It is therefore unclear how the results of the experimental samples are unexpected. It is the Applicant’s burden to show that the established results are both unexpected and significant (See MPEP 716.02(b)). It is the Office’s position that the experimental results provided are neither unexpected nor significant because they significantly overlap with, and are sometimes inferior to, the comparative results.
Applicant next argues distinctions over prior art documents Yamaguchi and Hayashida individually. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that the prior art documents do not contemplate or teach a reason to combine which is the same as the reasons appreciated by the Applicant. However, this is not required -- the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Applicant argues that the prior art documents cannot be combined because the ranges Hayashida only fall within the broadest range taught by Yamaguchi and not within the preferred ranges of Yamaguchi. However, as described previously, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Applicant’s final arguments are related to a lack of motivation to combine the prior art references for the purpose of achieving the claimed combination of properties. However, as described above, the reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Applicant argues that the fact that the references are in the same field of endeavor is insufficient for establishing a basis for combining the claimed elements. However, this was not the basis applied above nor in previous Office actions. Instead, the Office’s rationale to combine is based on an obviousness rationale which has been adjudicated as an appropriate motivation for one having ordinary skill in the art (i.e., It is prima facie obvious to substitute equivalents known for the same purpose (see MPEP 2144.06.II.).
Conclusion
Applicant's amendment necessitated the new ground(s) 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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762