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 .
Examiner’s Note
The Examiner acknowledges the amendments of claims 1 & 18 filed April 1, 2026 and the amendments of claims 1 & 18 filed April 2, 2026. Claims 13 – 16 were previously withdrawn from consideration. Claims 2 – 3, 7, & 10 are cancelled. Claims 1, 4 – 6, 8 – 9, 11 – 12, & 17 – 18 are examined herein.
Claim 13 is drawn to a non-elected claim. See restriction requirement mailed March 15, 2024 and Applicant’s election of Group I (which did not include claim 13) filed April 23, 2024. Therefore, claim 13 should be labeled as “Withdrawn,” not “Previously Presented.”
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.
Claim(s) 1, 4, 6, 8, & 11 – 12 are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al. (US 2016/0016378 A1), in view of JP5107191 B2 and Imae et al. (US 2014/0057083 A1).
With regard to claim 1, Oikawa teaches a composite sheet (106) in the form of a sandwich structure (Fig. 8) comprising an upper most heat insulation layer (103) (Applicant’s “core member (I)”) and a fiber layer (“fiber-reinforced members (II)”) disposed on a surface of the layer (103) in contact with the graphite layers (102) (paragraph [0022]), wherein the laminated repeatedly as many times as possible (paragraph [0105]), such that a first heat insulation layer (103) corresponds to Applicant’s “core layer” (paragraphs [0034], [0057], [0061] – [0074], [0081] & Figs. 4B & 8). As shown in Fig. 8 below, there are multiple graphite layers (102) and alternating multiple heat insulation layers (103), and fiber layers therebetween, there are fiber layers on both surfaces of the upper most heat insulation layer (103) (Applicant’s “core layer”). The graphite sheets have an in-plane thermal conductivity of 1000 W/m-K (paragraph [0035]), which is greater than 300 W/m-K.
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Oikawa et al. teach the heat insulation layer 103 (“core layer”) may be a silica aerogel sheet (i.e. “a porous body”) (paragraph [0058]).
Oikawa et al. fail to teach the at least one of the fiber-reinforced members (II) covers both surfaces and all end faces of the thermally conductive member (III).
JP5107191 B2 teaches a composite film for dissipating heat in an electronic device (P0005), such as a housing (paragraphs [0001], [0006] & [0040]), wherein the composite film comprises a fiber reinforcing layer formed on at least one side of a graphite film, wherein the fiber reinforcing layers are oriented in different directions (paragraphs [0008], [0020], & [0036]), which includes forming the fiber reinforcing layers on all layers of the graphite film. By laminating a plurality of reinforcing fiber layers, a composite film can withstand impact from any direction (paragraph [0036]).
Therefore, based on the teachings of ‘191, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to apply a fiber reinforcing member to all the sides of the graphite sheet taught by Oikawa et al. in order to withstand impact from any direction.
Oikawa et al. fail to teach the fiber-reinforced members (II) consist of a unidirectional fiber-reinforced resin, and a plurality of fiber-reinforced members are stacked into a laminate between the surface of the at least one of the fiber-reinforced members (II) containing the thermally conductive member (III) and the thermally conductive member (III) so that the fiber-reinforced members have a plurality of fiber directions.
JP5107191 B2 teaches a composite film for dissipating heat in an electronic device (P0005), such as a housing (paragraphs [0001], [0006] & [0040]), wherein the composite film comprises a fiber reinforcing layer comprising fibers aligned in one direction, and a plurality of fiber reinforcing layers are oriented in different directions for withstanding impact from different directions (paragraphs [0023], [0036], [0038]).
Therefore, based on the teachings of JP5107191 B2, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the fiber reinforcing layers taught by Oikawa et al. such that fibers are aligned in one direction in a single layer, and a stack of multiple fiber reinforcing layers are oriented in different directions for withstanding impact from different directions.
Oikawa et al. teach the core member is a nonwoven fabric reinforced with a resin composed of silica aerogel (i.e., “porous”), but do not teach the core member (I) has a volume content of voids of 10% or more and 85% or less based on the apparent volume of the core member (I).
Imae et al. teach a heat insulator comprising silica aerogel having a porosity (i.e., “volume content of voids”) of 60% or more and reinforcing fibers for desired heat insulation and improved mechanical strength of a shaped heat insulator (abstract, paragraph [0015], [0024], [0026], & [0067]).
Therefore, based on the teachings of Imae et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date form a heat insulating core member comprising nonwoven fibers impregnated with silica aerogel that has a porosity of 60% or more, which overlaps with Applicant’s claimed volume content of voids range of 10% or more and 85% or less based on the apparent volume of the core, for achieving the desired balance of heat insulation and mechanical strength. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 4, as discussed above for claim 1, Oikawa et al. teach the thermally conductive member (III) includes a thermally conductive sheet composed of a graphite sheet.
With regard to claim 6, Oikawa et al. teach a molten layer (120) is generated on the surface of the graphite layer (102). The fibers (121) are joined to the molten layer (120) (paragraph [0089]). The molten layer is formed by melting the fibers into a resin and applying pressure (paragraphs [0087] - [0092] & Figs 4A – 4B).
Oikawa et al. do not teach the thickness of the molten layer (120), which is the distance between the thermally conductive member (102) and the surface of the at least one of the fiber-reinforcement members (II) (103).
However, Oikawa et al. teach the amount of molten material in molten layer (i.e. the thickness of the molten layer) is dependent on the fiber content melted, which is dependent on the temperature at which the fibers are melted (paragraph [0087]).
Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the temperature of the fiber melting step to form the molten layer of a particular through routine experimentation in order to achieve the desired distance between the thermally conductive member and the fiber reinforcement layer. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 8, as discussed above, Oikawa et al. teach the core member is a nonwoven fabric reinforced with a resin composed of silica aerogel. Silica aerogel sheet is a silica aerogel resin (125) (resin) present in and around the voids created by the fibers (121) of a nonwoven fabric (paragraphs [0059] & [0089], Fig. 4B above). As such, the porous body consists of a fiber-reinforced resins.
With regard to claim 11, Oikawa et al. do not explicitly teach the composite (106) has a flexural rigidity (bending stiffness) per unit width of 0.5 N-m or more.
‘191 teach the graphite film produced using expanded graphite method results in a high flexible film with high thermal conductivity, which is preferably for the intended use (paragraphs [0028] & [0093]). The flexibility is also due to the thickness of the reinforcing fiber layer(s). Composites that were difficult to bend easily broke due to the hardness of the reinforcing fiber layer(s) (paragraph [0093]).
Therefore, absent a showing of criticality with respect to thickness (a result effective variable), it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the method of manufacturing the graphite film and/or the thickness of the fiber reinforced layer taught by Oikawa et al. through routine experimentation in order to achieve the desired flexibility. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 12, Oikawa et al. teach the thickness of graphite layer is preferably 0.1 mm or less (paragraph [0042]). Thickness of heat insulation layer is preferably 0.05 mm to 1 mm (P0051), but may be adjusted to obtain required heat-insulating effect ([0050]). The thickness of the graphite layer is preferably less than 0.2 mm when used for mobile apparatuses such as smartphones and tablets (paragraph [0054]).
Therefore, composite (106) (“sandwich”) containing three graphite layers and two heat insulation layers comprising fibers has a thickness of greater than 0.15 mm and less than or equal to 2.2 mm, which overlaps with Applicant’s claimed range of 0.3 mm or more and 3.0 or less. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al., JP5107191 B2, & Imae et al., as applied to claim 1 above, and further in view of Murakami et al. (JP 2006-095935 A).
With regard to claim 5, Oikawa et al. teach a single graphite sheet (a thermally conductive sheet) is formed of a plurality of hot-pressed carbonaceous films (i.e. graphene films) (paragraph [0044]). However, Oikawa et al. fail to teach the thermally conductive member (III) comprises a plurality of thermally conductive sheets, wherein the thermally conductive sheets are selected from the group consisting of graphite sheets, metal sheets, and ceramic sheets.
Murakami et al. teach a high thermal conductive frame for housing of an electronic device, wherein the frame comprises a laminate of graphite films (11) (i.e. “laminated structure of a plurality of thermally conductive [graphite] sheets”) (paragraph [0022] & Fig. 2). Each graphite film (thermally conductive sheet of the member) has a thermal conductivity of 1500 W/m-K or more (paragraph [0027]) and a bulk density of 1.0 g/cm3 or more, which is less dense than metal, and thus a reduced housing weight compared to housing comprising metal thermal conductors (paragraph [0028]). The resulting housing has a heat conductivity of 700 W/m-K or more, allowing for heat to quickly escape to the entire housing before the heat is transferred to the outside of the housing (paragraph [0024]).
Therefore, based on the teachings of Murakami et al., it would have been obvious to one of ordinary skill in the art to form thermally conductive member comprising a plurality of graphite films (sheets) for achieving a house for an electronic device with high thermal conductivity at a reduced weight.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al., JP5107191 B2, & Imae et al., as applied to claim 1 above, and further in view of Honma et al. (US 2018/0284845 A1).
With regard to claim 9, Oikawa et al. do not teach the fiber-reinforced members (II) consist of a carbon fiber-reinforced resin.
Honma et al. teach housing for an electronic device comprising a fiber reinforced composite material formed with carbon reinforcing fibers. Carbon reinforcing fibers are preferable over other types of reinforcing fibers because it has dynamic properties, lightness, and electromagnetic wave shielding properties (paragraph [0042]).
Therefore, based on the teachings of Honma et al., it would have been obvious to one of ordinary skill in the art to use carbon reinforcing fibers as the fibers of the fiber layer for the housing of the electronic device taught by Oikawa et al. for dynamic and electromagnetic wave shielding properties as well as providing a lightweight housing for an electronic device.
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al., JP5107191 B2, & Imae et al., as applied to claim 8 above, and further in view of Meure et al. (AU 2015/213272) (2006).
With regard to claim 17, Oikawa et al. the fiber-reinforced resin of the porous core is a resin reinforced with discontinuous reinforcing fibers, and wherein the discontinuous reinforcing fibers form a three-dimensional network, and the discontinuous fibers are bonded to each other with a resin at their intersections.
Meure et al. teach a composite structure comprising toughening filaments form a network (124) formed from a number of discontinuous filaments (120) including plurality of chopped and entangled discontinuous filaments dispersed into a non-woven format (e.g., a mat) for increasing the mechanical strength (e.g., tensile strength and shear strength) (paragraph [0046]). The filament network (124) may also include a binding material (122) for binding the intersecting discontinuous filaments at the crossover points (130) of the filament network together (Fig. 2 & paragraph [0046]). The binding material may include, but is not limited to at least one of a thermoset material, a thermoplastic material or some other type of binding material (paragraph [0037]).
Therefore, based on the teachings of Meuse et al., it would have been obvious to one of ordinary skill in the art to use discontinuous fibers as the fibers embedded in the silicone gel taught by Oikawa et al. because the entangled discontinuous filaments form a filament network, bound by the binding material, such as the silicone gel, which improve the mechanical strength (e.g., tensile strength and shear strength) of the core layer.
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al., JP5107191 B2, & Imae et al., as applied to claim 8 above, and further in view of Meure et al. (AU 2015/213272) (2006) and Wadahara et al. (JP 2005-213469 A).
With regard to claim 18, Oikawa et al. teach the core member is a nonwoven fabric reinforced with a resin composed of silica aerogel (i.e., “porous”) (paragraph [0058]). Imae et al. teach a heat insulator comprising silica aerogel having a porosity (i.e., “volume content of voids”) of 60% or more and reinforcing fibers for desired heat insulation and improved mechanical strength of a shaped heat insulator (abstract, paragraph [0015], [0024], [0026], & [0067]).
Oikawa et al. fail to teach the fiber-reinforced resin of the porous core layer is a resin reinforced with discontinuous reinforcing fibers and the mass proportion of said discontinuous fibers in the core member (I) is 5 to 60% by mass.
Meure et al. teach a high-strength, low-weight composite structure for replacing metal in aerospace applications (paragraph [0002]) comprising toughening filaments form a network (124) formed from a number of discontinuous filaments (120) including plurality of chopped and entangled discontinuous filaments dispersed into a non-woven format (e.g., a mat) for increasing the mechanical strength (e.g., tensile strength and shear strength) (paragraph [0046). The filament network (124) may also include a binding material (122), for binding the intersecting discontinuous filaments at the crossover points (130) of the filament network together (Fig. 2 & paragraph [0046]). The binding material may include, but is not limited to at least one of a thermoset material, a thermoplastic material (resins) or some other type of binding material (paragraphs [0037] & [0047]).
Meure et al. further teach the filament network comprises 0.5 – 99.5% by weight of first length filaments and 0.5 – 99.5% by weight of second filaments (paragraph [0055]) and 0.5 – 99.5% by weight of third filaments (paragraphs [0060], [0079], & [0089] – [0090]). The percent of each different length filament (discontinuous filaments) (126) may vary and different percentages are contemplated to achieve stability of the filament network (124) (paragraph [0104]).
Therefore, based on the teachings of Meure et al., it would have been obvious to one of ordinary skill in the art to use discontinuous fibers as the fibers embedded in the silicone gel taught by Oikawa et al. because the entangled discontinuous filaments form a filament network, bound by the binding material, such as the silicone gel taught by Oikawa et al. (citation), which improve the mechanical strength (e.g., tensile strength and shear strength) of the core layer. Furthermore, it would have been obvious to one of ordinary skill in the art to form the filament network comprising 0.5 – 99 wt.% discontinuous fibers to achieve the desired stability of the fiber network.
Oikawa et al. and Meure et al. fail to teach the discontinuous fibers are coated with a resin at a coverage ratio of 30% or more.
Wadahara et al. teach a resin impregnated reinforced fiber base material, wherein the area coverage (i.e., coverage ratio) is more than 5% and less than 70% for sufficient flow path of resin into the nonwoven fabric composed of discontinuous fibers and desired strengthening (paragraph [0018]). The area coverage refers to the percentage of a portion (of the fibers) in which the polymer material is present (covered) in the base material (fibers) in a unit area of 100 mm portion when the base material is viewed from the plane direction (paragraph [0056]).
Therefore, based on the teachings of Wadahara et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date for the coverage area (i.e., coverage ratio) of the silica aerogel resin in the core taught by Oikawa et al. is more than 5% and less than 70%, which overlaps with Applicant’s claimed range of 30% or more, for sufficient flow of resin into the nonwoven fabric and desired strength. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant argues, “Requirement [1] of Wadahara specifies that the resin material is adhered to at least the surface of the fabric, providing effects such as toughening, a spacer effect, and interlaminar reinforcement.
“The upper and lower limits of this range are dictated by the need to allow subsequent matrix resin impregnation: excessive coverage (≤70%) hinders resin flow in the thickness direction, while insufficient coverage (≥5%) reduces reinforcing effects.
“In contrast, the present application defines a fundamentally different structure. The discontinuous reinforcing fibers form a three-dimensional network, and the fibers are bonded to each other at their intersections. Accordingly, the claimed ‘coverage ratio’ relates to resin distributed three-dimensionally within the interior of the core member, rather than a planar surface condition.
“Thus, the ‘coverage ratio’ of the present application defines a three-dimensional bonding state within the bulk of the core, which is fundamentally different from the planar ‘area coverage ratio’ of Wadahara. There is no teaching or suggestion in Wadahara of such a three-dimensional internal bonding structure” (Remarks, Pgs. 8 – 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant’s “coverage ratio is measured by observing a section of the core member (I) with a scanning electron microscope (SEM) and distinguishing the reinforcing fibers from the resin” (See specification, paragraph [0044]). As evidenced by “Scanning Electron Microscopy” by Susan Swapp, University of Wyoming, standard SEM produces two-dimensional images (i.e., a planar image) that display spatial variations. Applicant’s specification does not teach any special technique applied to the 2D SEM images for a 3D reconstruction. Therefore, contrary to Applicant’s argument, Applicant’s calculated coverage ratio of the core is a calculation based on a two-dimensional image (i.e., planar) of an unknown section of the core member assumed to be representative of the three-dimensional network that is similar to Wadahara’s teaching calculated coverage ratio is a calculation based on a two-dimensional image assumed to be representative of a three-dimensional network.
Second, Wadahara et al. teach a reinforced fiber base material, such as a fabric, is impregnated with matrix resin. Similar to Applicant’s structure, Wadahara et al. also teach a three-dimensional network of fibers in the form of a fabric and (matrix) resin dispersed therein.
Third, Wadahara et al. explicitly teach that when they write “present” they mean coverage (not total content as suggested by Applicant). See clarification in parenthesis of paragraphs [0055] – [0056] of Wadhara et al. The resin material is bonded to the base material (fibers) with an area coverage of more than 5% and less than 70% (paragraph 0055]). The area coverage refers to the percentage of a portion (of the fibers) in which the polymer material is present (covered) in the (fiber) base material in a unit area of 100 mm portion when the base material is viewed from the plane direction (paragraph [0056]). Contrary to Applicant’s assertion, Wadahara et al. do not teach this calculation to the total amount of resin present (e.g., vol.%) of the resin impregnated into the reinforcing fibrous base material, but a percentage of coverage of the base material (i.e., fibers) with said (matrix) resin.
Fourth, Wadahara et al. teach the volume fraction of the reinforcing base material (fibers) is 30 – 60% (paragraphs [0030] & [0032]) and the resin material on the surface of the fabric (base material) is 70% by volume or more (paragraph [0042]). The resin material on the surface of the fabric of 70% by volume (Applicant’s asserted planar measurement) is not the same as the coverage area (%) taught by Wadahara et al. (paragraph [0055] – [0056]).
Fifth, if Wadahara et al. taught the total content of resin present (i.e., total content) in the entirety of the base material was greater than 5% and less than 70%, as Applicant asserts, Wadahara et al. would have described the presence of resin inside the base material in terms of vol.%, such that the unit would be consistent with the content of the reinforcing base material and surface resin material. The fact that Wadahara et al. taught the “coverage area” of resin material bonded to the base material (fibers) in the range of 5 – 70% based on a percentage (%) as a separate and distinct teaching than the vol.% resin of the composite clearly suggests Applicant has misinterpreted the “coverage area” taught by the reference. Wadahara et al. teaches the “coverage area” as the percentage of fibrous base material (i.e. fibers that form that base) covered (i.e., coated) by (matrix) resin.
Sixth, for the sake of argument, if Wadahara et al. had taught the total presence (content) of resin is 30 – 70% as Applicant asserts, Applicant’s claim recitation of “a coverage ratio of 30% or more” (i.e., 30 – 100%) of discontinuous fibers coated with a resin would inherently be met because it would be impossible to impregnate a fibrous base material with as much as 70% (by vol.) resin without coating at least 30% coverage ratio of said fibers, as recited in Applicant’s claim 18.
Seventh, the rejection suggests applying the coverage area as taught by Wadahara et al. to the matrix/binder resin and discontinuous fibers as taught Meure et al., as discussed in the rejection of Oikawa et al. in view of Meure et al. As previously discussed, Meure et al. teach discontinuous filaments distributed in a three-dimensional fiber network such that fibers are joined their intersections, which are configured for improving stability of a filament network (paragraph [0054]). In response to applicant's arguments against the references individually, 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, “Further, the Examiner appears to interpret Wadahara’s ‘coverage area’ as corresponding to resin coverage on individual fibers. However, Wadahar’s ‘area coverage ratio’ pertains only to the resin material adhered to the base material and is unrelated to any matrix resin or coating on individual fibers. Accordingly, Wadahara does not teach or suggest the claimed feature” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Applicant’s claim recites coverage ratio of fibers (plural), not an individual fiber.
Second, as discussed above, Wadahara’s “base material” is a plurality of fibers, such as in the form of a fabric. Wadahara’s coverage ratio pertains to the coverage (coating) percentage (ratio) of a resin (i.e., “matrix resin”) adhered to the fibers that form said base material. Therefore, contrary to Applicant’s assertion, the teachings of Wadahara et al. is pertinent to Applicant’s recited resin coverage ratio of fibers.
Applicant argues, “Moreover, Requirement [2] of Wadahara requires that the resin material be adhered in a form having periodic continuous voids (translational symmetry). This is structurally distinct from the core member of the present application, in which is distributed three-dimensionally and non-periodically at fiber intersections” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The rejection suggests applying the coverage area as taught by Wadahara et al. to the matrix/binder resin and discontinuous fibers taught Meure et al., as discussed in the rejection of Oikawa et al. in view of Meure et al. As previously discussed, Meure et al. teach discontinuous filaments distributed in a three-dimensional fiber network at fiber intersections, which are configured for improving stability of a filament network (paragraph [0054]). In response to applicant's arguments against the references individually, 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, “The requirement of claim 18 that the mass proportion of the discontinuous fibers is 5 to 60% by mass further distinguishes the present invention from Wadahara. In particular, this range corresponds to a structure in which a substantial amount of resin is present within the core member to form bonding at fiber intersections and to achieve rigidity.
“In contrast, Wadahara specifies that the resin material is present in an amount of 2 to 20% by weight. This relatively low resin content is necessary in Wadahara to maintain flow paths for subsequent matrix resin impregnation and is fundamentally inconsistent with the higher resin content required by the present invention.
“Accordingly, the claimed structure is not only different in terms of resin distribution (three-dimensional bonding vs. planar surface adhesion), but also in terms of composition and function. Wadahara’s structure is designed to facilitate later impregnation, whereas the present invention employs a higher resin content to form an integrated, rigid three-dimensional network” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant argues Wadahara’s resin content teaches against the recited mass proportion of the discontinuous fibers. Wadahara et al. was not relied upon for Applicant’s recitation of the discontinuous fibers and therefore not pertinent to the amended limitation of claim 18.
Second, Applicant asserts their own invention employs a higher resin content (compared to 2 – 20% by weight resin taught by Wadahara et al.). However, Applicant’s claims do not recite the resin content. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., total resin content) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Third, Wadahara et al. was the fifth reference listed in the rejection of claim 18 and was cited for the recited coverage ratio. Wadahara et al. was not cited for Applicant’s recitation of discontinuous fibers.
As discussed above, Meure et al. teach the filament network comprises 0.5 – 99.5% by weight of first length filaments (i.e., “discontinuous fibers”) and 0.5 – 99.5% by weight of second filaments (i.e., “discontinuous fibers”) (paragraph [0055]) and 0.5 – 99.5% by weight of third filaments (i.e., “discontinuous fibers”) (paragraphs [0060], [0079], & [0089] – [0090]). The percent of each different length filament (discontinuous filaments) (126) may vary and different percentages are contemplated to achieve stability of the filament network (124) (paragraph [0104]).
In response to applicant's arguments against the references individually, 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).
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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