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 § 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 15 and 19 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 15 depicts a monomer – not a polymerized monomer. The resin would not possess this structure.
It is not seen how a composition could simultaneously be a polymer matrix composite and a carbon-carbon composite in claim 19. The carbon-carbon composite is the result of carbonizing (and therefore destroying) the polymer.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim depends on claim 7 which requires the aryl be phenyl. This is inconsistent with claim 8’s requirements for the aryl. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1,4-7,9-11,14 and 15 rejected under 35 U.S.C. 102(a)(1) as being anticipated by the Tesfaye thesis.
Tesfaye (page 31) polymerizes a BODA of “X” being -O- and “R” being phenyl with a MODA.
In regard to applicant’s dependent claims:
Claims 4 and 5 merely limits what qualifies as applicant’s alkyl “R” in applicant’s larger Markush group of claim 1. An alkyl is not required as “R” and therefore the claims are properly rejected over the reference to “R” being phenyl.
Tesfaye’s ODA has “Y” and “Y’ “ being phenyl – meeting applicant’s claims 10 and 11.
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 12 and 13 rejected under 35 U.S.C. 103 as being unpatentable over the Tesfaye thesis.
The cited example employs a MODA with “Y” and “Y’ “ being phenyl.
However, Tesfaye (fig 2.2) explores other MODA with “Y” and “Y’ “ being “H” or phenyl and “H”.
It would have been obvious to utilize any of the MODA’s disclosed by Tesfaye in a MODA/BODA copolymer.
Claims 16-19 rejected under 35 U.S.C. 103 as being unpatentable over the Tesfaye thesis.
Tesfaye applies as explained above.
Tesfaye (page 33) investigates adding carbon fiber and carbonizing MODA and BODA monomers, but also contemplates (page 41) incorporating carbon fibers into the copolymer which renders obvious applicant’s claim 16,18 and 19.
Claim 20 rejected under 35 U.S.C. 103 as being unpatentable over the Tesfaye thesis in view of White 3809673.
Tesfaye applies as explained above.
Tesfaye (col 20 line 35-39) teaches reinforcing his resin with carbon fiber fabric, but does not mention bundles of carbon fibers.
White (abstract) teaches carbon fiber composites of carbon fibers treated with acetylenic resins that are ultimately carbonized. White (col 4 line 71) teaches the carbon fibers may be in bundled form.
It would have been obvious to use bundles of carbon fibers as Babb’s reinforcement as this is a common form of reinforcement.
Claims 1,4-7,9,10,13-16,18 and 19 rejected under 35 U.S.C. 103 as being unpatentable over Babb 6121495 optionally in view of The Wang article in Advances in Polymer Science.
Babb exemplifies (#2,3) producing applicant’s BODA monomer with “X” being a bond or -O- and “R” being phenyl. Babb (table VI) then polymerizes these monomers.
These examples polymerize BODA alone rather than the claimed BODA + MODA copolymer.
However, Babb (col 15 line 24-31) suggest copolymerizing two or more different ethynyl aromatic monomers. Specifically, a copolymer of a monomer having two pair of ethynyl groups (ie BODA) with a monomer having only one pair of ethynyl groups. The simplest conceivable monomer having only one pair of ethynyl groups would be Ar(CΞCH)2 (ie MODA). Such a copolymer meets applicant’s claim 1.
Wang (page 152) shows EDY (ie applicant’s MODA with “Y” and “Y’ being hydrogen) involved in a Bergman cyclization. Wang (page 160) also discusses Bergman cyclizations of BODA.
It would have been obvious to use ortho Ar(CΞCH)2 (ie MODA) as Babb’s suggested comonomer as it is a compound known for Bergman cyclization.
In regard to applicant’s dependent claims:
Claims 4 and 5 merely limits what qualifies as applicant’s alkyl “R” in applicant’s larger Markush group of claim 1. An alkyl is not required as “R” and therefore the claims are properly rejected over the reference to “R” being phenyl. In any case, Babb provides a more general depiction of example 2 and 3’s structures at column 6. There, the “R” may be alkyl.
The copolymer would be expected to have applicant’s formula of applicant’s claim 14 prior to final cure. See the Misfud article.
After cure, the copolymer would be expected to have applicant’s formula of applicant’s claim 16. See the Misfud article or Tsfaye thesis. Babb’s polymers can be used to form composites with graphite mats (col 20 line 35) – meeting applicant’s claim 16.
Babb (col 3 line 8) suggests his polymer is useful as “carbon glasses”. This is considered to be the carbonization of applicant’s claim 18.
Claims 16 and 18-20 rejected under 35 U.S.C. 103 as being unpatentable over Babb 6121495 in view of White 3809673.
Babb applies as explained above.
Babb (col 20 line 35-39) teaches reinforcing his resin with fibers and graphite mats, but does not mention bundles of carbon fibers.
White (abstract) teaches carbon fiber composites of carbon fibers treated with acetylenic resins that are ultimately carbonized. White (col 4 line 71) teaches the carbon fibers may be in bundled form.
It would have been obvious to use bundles of carbon fibers as Babb’s reinforcement as this is a common form of reinforcement.
Applicant's arguments filed 11/19/25 have been fully considered but they are not persuasive.
Applicant argues that Babb’s disclosure of copolymerizing with a monomer having only two (ie one pair) of polymerizable ethynyl groups does not directly teach an ortho-MODA. Applicant further argues that non ortho Ar(CΞCH)2 (ie meta or para) would not polymerize in a Bergman type manner.
This is not convincing. The fact that meta and para Ar(CΞCH)2 would not be expected to polymerize in a Bergman manner is precisely the reason an ortho Ar(CΞCH)2 would have been the obvious choice of comonomer for Babb. Babb (col 10 line 46-55) desires ortho orientation of his tetra functional -(CΞCH)2 monomer such that cyclization (ie a Bergman reaction) reaction occurs. It would be logical to have the loosely defined comonomer also have ortho orientation so the same Bergman reaction will occur during copolymerization.
Applicant argues that it would not have been obvious to use carbon fiber bundles as Babb’s carbon fiber reinforcement.
Applicant fails to provide any technical reasoning why carbon fiber bundles would not be expected to function well in Babb’s articles. Babb (col 16 line 62) teaches carbon fibers in general, graphite woven and non woven fiber mats (col 20 line 61). Babb teaches his articles may be aerospace/aircraft high performance composites (col 15 line 40). Babb teaches (col 16 line 5) his composition may be sintered. Similarly, White teaches his carbon fiber composites are to be carbonized (abstract). While White’s acetylenic compounds do not necessarily polymerize in the Bergman manner as do Babb, White is merely relied on to show the bundled form of carbon fiber is a well known type of reinforcement. Babb and White are in the same technical field and therefore combinable. Simply pointing out that the secondary reference is not anticipatory is not a convincing against an obviousness rejection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 12/17/25
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