DETAILED ACTION
Applicant’s reply, filed 24 February 2026 in response to the non-final Office action mailed 27 October 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1, 4 and 6-15 are pending under examination, wherein: claims 1 and 12 have been amended, claims 4, 6-11 and 13-15 are as originally filed, claims 2-3 and 5 have been cancelled by this and/or prior amendment(s), and claim 16-20 are withdrawn by previous restriction requirement.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 4 and 6-15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Singh et al. (US 4,889,686).
Regarding claims 1 and 14, Singh teaches flexible composite tapes obtained by depositing a slurry onto a layer of fibrous material and drying (abstract; col 2 ln 33-44; Example 1). Singh teaches the fibrous material is selected from aluminum oxide, mullite, carbon materials, SiC materials, SiN materials, etc. (col 3 ln 3-7)(instant fiber reinforcement material).
Singh teaches the slurry comprises an infiltration-promoting material, organic binders, plasticizer and volatile solvent (abstract; col 6-78). Singh further teaches the infiltration-promoting material is selected from elemental carbon, metal carbide, a silicide forming metal, a metal nitride, a metal silicide and mixtures thereof (col 6 ln 1-4), preferably a mixture of elemental carbon and silicon carbide (col 6 ln 14-18), wherein the infiltration-promoting material is a powder, a fiber, or a mixture of powder and fiber (col 6 ln 52-65) (instant Si-SiC ceramic matrix forming material; instant precursor particles comprising SiC, carbon and/or one or more other carbon-containing materials; instant powder).
Singh further teaches that the solvent is present for the formation of the slurry and application thereof to the fibrous material to form the tape, wherein the solvent is then removed (col 7 ln 39-65; Example 1 col 17 ln 20-42)(solvent removed teaching anticipates instant less than 10 wt% solvent (claim 1) and less than about 7 wt% solvent (claim 14)). Singh teaches the tape contains plasticizer (col 7 ln 19-23) for the purpose of imparting flexibility (instant sufficient amount) and teaches after removal of the solvent the tape is flexible (col 8 ln 23; col 9 ln 48)(instant pliable).
Singh further teaches the infiltration-promoting material is present in an amount dependent upon the composite desired (col 8 ln 68 to col 9 ln 2) and exemplifies a slurry having an approximately 60% combination of crushed carbon and powdered silicon carbide (Example 1)(instant 60-70 wt% powder). While Singh meets the instant claim recitation is further additionally noted that Singh establishes the amount of the infiltration-promoting material as result-effective (MPEP 2144.05) and provides the motivation to do so in order to obtain a composite having a desired degree of penetration/filling of the fibrous material spaces (col 6 ln 44 to col 7 ln 2)
Singh further teaches the organic binder is present in an amount depending largely on the amount and distribution of the solids desired in the resulting tape which can be readily determined and is generally an amount of 25 to 80 vol% of the solids content (col 7 ln 66 to col 8 ln 4). While Singh does not specifically teach 10-18 wt% binder in the slurry it is noted that the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of binder and would have been motivated to do so to obtain a tape which retains its shape at room temperature and is of desired thickness and solids content (col 7 ln 3-35; col 7 ln 66 to col 8 ln 4). A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Singh further teaches the plasticizer amount can vary but is generally present in an amount of up to about 50 wt% of the total organic content (col 7 ln 22-25)(where 0 wt% to 50 wt% substantially overlaps with instant 10-14 wt%). Further, while Singh does not specifically teach a narrower range of 10-14 wt% plasticizer in the slurry, it is noted that the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of plasticizer and would have been motivated to do so in order to impart the desired flexibility to the organic binder selected (col 7 ln 21-24). A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Singh does not specifically state the tape is nonflammable. However, Singh teaches the claimed tape comprising the claimed fiber reinforcing material and claimed matrix material that is capable of/will form a Si-SiC ceramic matrix. The instant specification states that such a tape is nonflammable (instant specification [0009] and [0011]). It is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
Regarding claim 4, Singh renders obvious the tapes as set forth in claim 1 above and further teaches that representative organic binder materials include polyvinyl acetates, polyvinyl acrylates, polyvinyl alcohols, polyvinyl butyrals, etc. (col 7 ln 26-35).
Regarding claims 6, 10 and 13, Singh renders obvious the tapes as set forth in claim 1 above and further teaches that representative plasticizers include dibutyl phthalate, polyethylene glycol, etc. (col 7 ln 36-38).
Regarding claim 15, Singh renders obvious the tapes as set forth in claim 1 above and further teaches that the volatile solvents include alcohol (col 7 ln 49-50).
Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Singh et al. (US 4,889,686) as set forth in claim 1 above and further in view of Wang et al. (US PGPub 2003/0234072).
Singh renders obvious the tapes as set forth in claim 1 and further teaches polyvinyl butyral, polyvinyl acetates, polyvinyl alcohols, polvvinyl acrylates, etc. (col 7 ln 26-29). Singh further teaches the plasticizer depends on the binder used (col 7 ln 20-22) but does not specifically teach the plasticizer butyl benzyl phthalate (claim 7). However, Wang teaches ceramic-forming tapes (abstract) obtained from firing composites of ceramic filler and polymer binders ([0033]) wherein the binders include known materials such as poly(vinyl butyral, poly(vinyl acetate), poly(vinyl alcohol), etc. ([0034]). Wang teaches it is common to include plasticizer for the purpose of lowering the glass transition temperature of the binder polymer, where the plasticizer choice is determined by the polymer needing to be modified and includes dibutyl phthalate, butyl benzyl phthalate, glycols, etc. ([0036]). Wang further teaches butyl benzyl phthalate as a frequently used and effective plasticizer in acrylics ([0036]). Wang and Singh are analogous art and are combinable because they are concerned with the same field of endeavor, namely ceramic forming tapes comprising a polymer binder, ceramic fillers and plasticizers. At the time of filing a person having ordinary skill in the art would have found it obvious to select the butyl benzyl phthalate plasticizer of Wang as the plasticizer of Singh and would have been motivated to do so as Singh invites use of suitable plasticizers and further as Wang teaches butyl benzyl phthalate is a known, effective and frequently used plasticizer for such polymers including especially acrylic polymer binders.
Additionally, or in the alternative, Singh teaches the plasticizer depends on the binder used (col 7 ln 20-22) and includes dioctyl phthalate, etc. (col 7 ln 36-38). In view of the recognition by Wang that butyl benzyl phthalate, polyalkylene glycols, and dibutyl phthalate are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute the dioctyl phthalate and/or polyethylene glycol plasticizers of Singh with the butyl benzyl phthalate taught by Wang and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
Claims 8-9 and 11-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Singh et al. (US 4,889,686) as set forth in claim 1 above and further in view of Quarles (US 2,442,018).
Singh renders obvious the tapes as set forth in claim 1 and further teaches polyvinyl butyral as a preferred, and exemplified, organic binder (col 7 ln 26-29; Example 1 col 17 ln 9-11). Singh further teaches the plasticizer depends on the binder used (col 7 ln 20-22) but does not specifically teach plasticizers of triethyleneglycol bis (2-ethyl hexanoate)(claim 8), adipates (claim 9), linseed oil (claim 11), or castor oil (claim 12).
However, Quarles teaches known and suitable plasticizers for polyvinyl butyral resins include castor oil, triethylene glycol di(2-ethylhexanoate), linseed oil, di(ethoxy ethyl) adipate, dioctyl phthalate, etc. (col 3 ln 54 to col 4 ln 26). Quarles and Singh are analogous art and are combinable because they are concerned with the same technical feature, namely plasticizing polyvinyl butyral resins. At the time of filing a person having ordinary skill in the art would have found it obvious to select the plasticizers of Quarles as the plasticizer of Singh and would have been motivated to do so as Singh invites the use of suitable plasticizers for the organic binder selected and further as Quarles teaches the noted plasticizers are known and suitable plasticizers for polyvinyl butyral polymers to obtain flexibility at ordinary and low temperatures (col 3 ln 54 to col 4 ln 26).
Additionally, or in the alternative, Singh teaches polyvinyl butyral as a preferred, and exemplified, organic binder (col 7 ln 26-29; Example 1 col 17 ln 9-11) and teaches the plasticizer depends on the binder used (col 7 ln 20-22) including dioctyl phthalate, etc. (col 7 ln 36-38). In view of the recognition by Quarles that castor oil, triethylene glycol di(2-ethylhexanoate), linseed oil, di(ethoxy ethyl) adipate and dioctyl phthalate are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute the dioctyl phthalate of Singh with any of castor oil, triethylene glycol di(2-ethylhexanoate), linseed oil and/or di(ethoxy ethyl) adipate as taught by Quarles and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
Response to Arguments/Amendments
The pre-AIA 35 U.S.C. 102(b) rejection of claims 1-2, 4, 6, 10 and 13-15 as anticipated by Singh (US 4,889,686) is withdrawn as a result of Applicant’s filed claim amendments.
The pre-AIA 35 U.S.C. 103(a) rejections of claims 2-3 and 5 as unpatentable over Singh (US 4,889,686), of claim 7 as unpatentable over Singh in view of Wang (US PGPub 2003/0234072), and of claims 8-9 and 11-12 as unpatentable over Singh in view of Quarles 9US 2,442,018) are maintained. Applicant’s arguments (Remarks, pages 5-6) have been fully considered but were not found persuasive.
Applicant argues that in order to be result-effective the Office must show the variable in question to be recognized as such, cites non-precedential board opinions of different factual basis in support, and asserts that the Examiner did not provide a reason other than ‘unsupported’ assumption that the variable(s) is/are result-effective. The Examiner directs Applicant’s attention to the above maintained rejections wherein rational and reasoning were clearly applied. The Examiner did not make unsupported assumptions of result-effectiveness and Applicant declined to respond to otherwise rebut the rational that was set forth (outside of asserting it was not).
It is noted in the above maintained rejection that Singh meets the amount of solvent claimed (see rejection; no result-effective rational relied upon).
It is noted in the above maintained rejection that Singh i) meets the amount of powder claimed (see rejection; where result-effective rational is merely additionally noted) and ii) in addition establishes that the amount of infiltration-promoting material (instant powder) is result-effective by teaching the degree of penetration/filling of the fibrous material spaces is compositionally dependent and may be selected as desired (col 6 ln 44 to col 7 ln 12; col 8 ln 68 to col 9 ln 2).
It is noted in the above maintained rejection that Singh teaches the amount of binder depends on the amount and distribution of solids desired in the resulting tape, a variable taught by Singh as readily determinable (col 7 ln 66 to col 8 ln 4). Singh further teaches the amount of binder is result-effective via teaching the amount of binder is linked to not only the solids content but to both the shape retention and thickness of the resultant tape (col 7 ln 3-35l col 7 ln 66 to col 8 ln 4).
It is noted in the above maintained rejection that Singh teaches i) the broad range of up to 50 wt% plasticizer (a range of 0 wt% to 50 wt%) which is substantially similar to, and suggestive of, the claimed plasticizer amount and ii) establishes the plasticizer amount as result-effective by linking the plasticizer to the binder selected and the desired flexibility needed (col 7 ln 21-24).
Applicant’s general assertion that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning is not persuasive. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper (see In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971)).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767