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 .
Response to Amendment
The Amendment filed April 24, 2026, has been entered. Claims 1, 3-10 remain pending in the application. Claim 2 was canceled. Claim 1 was amended and support for amendments are found in the Specification as originally filed. Claim 10 was newly added and support is found in the claims and Specification as originally filed.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kaori et al., (JP 2012/057277; listed in the IDS dated 04/29/2022; English translation incorporated herewith; hereafter as “Kaori”) in view of Okuda (WO 2019/172247; listed in the IDS dated 04/29/2022; English translation submitted with the Office Action mailed on 02/03/2025; hereafter as “Okuda”).
Regarding Claims 1, 7-8 and 10, Kaori teaches a molding material comprising composite reinforced fiber bundle [Claims 1, 16; ¶ 0086], corresponding to the molding material of Claims 1 and 10, and molded product produced by molding a molding material of Claim 8. Kaori teaches the composite reinforced fiber bundle comprises:
Thermoplastic resin, such as polycarbonate [Claim 16; Examples 1, 5-7], thereby reading on the thermoplastic resin is polycarbonate of Claims 1 and 10;
Carbon fiber reinforcing bundle with a length equivalent to that of the molding material [Claim 13; ¶ 0075], corresponding to carbon fibers, wherein the carbon fibers have substantially the same length as the length of the molding material of Claims 1 and 10;
wherein the composite reinforced fiber bundle is impregnated with epoxy resin [Claim 1], wherein the epoxy resin reads on the epoxy resin of the core portion of Claims 1 and 10;
wherein a composite reinforcing fiber bundle forms the core structure, and the surrounding area is covered with the thermoplastic resin, forming a core-sheath structure [Claim 17; Figures 7-9; ¶ 0078, 0081], corresponding to the core-sheath structure of Claims 1 and 10;
wherein the composite reinforced fiber bundle is formed by first impregnating the fiber bundle with the epoxy resin and then covering the impregnated reinforced fiber bundle with the thermoplastic resin [Claims 1, 16-17], corresponding to the core and sheath portions are formed by first attaching the core resin to a carbon fiber bundle and then adhering a thermoplastic sheath resin thereto of Claims 1 and 10;
porosity composite void ratio of 0 to less than 5% [Table 1; Examples 1-6; ¶ 0093, 0127], which corresponds to the areal void fraction in a cross section perpendicular to the carbon fiber axis direction in the molding material is 5% or less of Claims 1 and 10; and wherein the area of the largest void contained in a cross section perpendicular to the carbon fiber axis direction in the molding material is 3,000 µm2 or less of Claim 7.
Kaori is silent to the thermoplastic resin of the sheath structure comprising carbon fibers, so for the purposes of examination, will be interpreted to read on a sheath portion having no carbon fibers that is disposed outside the core portion of Claim 1.
However, Kaori does not explicitly teach the twist angle of the carbon fiber surface layer is 2.00 to 24.0° of Claims 1 and 10, the core ratio A/(A+B) is 0.1 to 0.5 of Claims 1 and 10, and wherein the volume fraction Vf of the carbon fibers in the molding material is 5% to 25% of Claims 9-10 and the volume fraction of the carbon fibers in the core portion is in the range of 33% to 67% of Claim 9, and the volume fraction Vf of the carbon fibers and the core ratio A/(A+B) satisfy: 1.5 x Vf/100 <A/(A+B) <3x Vf/100 of Claim 10.
Regarding the core ratio of Claims 1 and 10 and volume fraction of Claims 9-10, Kaori teaches the thermoplastic resin comprising the sheath restrains the core structure, resulting in a stronger molded product [¶ 0081]. Kaori further teaches the core-sheath structure is preferable in terms of ease of manufacture and handling of materials [¶ 0081]. Therefore, the core ratio can be optimized to reach the desired mechanical properties of the core-sheath molded product via a routine optimization. The case law has 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). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the size of the core relative to the sheath for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding the carbon fiber twist angle of Claims 1 and 10, Okuda teaches a molded composition comprising a long carbon fiber bundle and resin [Abstract; ¶ 0028]. Okuda further teaches a twist angle of the fiber bundle surface layer is 0.2° or more [¶ 0013-0016] which overlaps the twist angle of the carbon fiber surface layer is 2.00 to 24.0° of Claim 1.
Okuda offers the motivation that a twist angle in the aforementioned range results in a carbon fiber bundle that is excellent in convergence, handleability and mechanical properties [¶ 0050].
Kaori and Okuda are considered to be analogous art as the claimed molded material, as all are in the same field of molded resin compositions that are reinforced with carbon fiber bundles and that are heat resistant [¶ 0028, 0035, 00440].
Therefore, it would have been obvious to one of ordinary skill to modify the molding material of Kaori by adding twisted carbon fibers as taught by Okuda. This modification would result in a molded article with excellent convergence, handleability and mechanical properties, thereby improving the final product and arriving at the claimed invention.
Furthermore, it would have been obvious that the taught twist angle of Okuda (0.2° or more) overlaps the claimed twist angle range (2.00 to 24.0°). By choosing the overlapping portion of the range taught in the prior art and the range claimed by the applicants, it has been held to be a prima facie case of obviousness. See MPEP section 2144.05(I). It would have also been obvious to one having ordinary skill in the art to tune the twist angle through routine optimization within prior art conditions or through routine experimentation.
Regarding Claims 3-4, and 6, however, Kaori does not explicitly teach wherein the tensile modulus of the carbon fibers is 280 to 500 GPa of Claim 3, wherein the weight loss rate on heating at 450°C of the carbon fibers is 0.15% or less of Claim 4, and wherein the crystallinity parameter Iv/Ig of the carbon fibers determined by Raman spectroscopy is 0.25 to 0.80 of Claim 6.
Nevertheless, the properties of the molding material such as the tensile modulus, weight loss rate, and crystallinity are functions of the composition of the molding material and the method by which it is made. Since Kaori in view of Okuda teach the same molding material formed by the same method as required by the instant claims, as set forth in the rejection above, the molding material of Kaori and Okuda would be expected to result in the same tensile modulus, weight loss rate, and crystallinity as required by the instant claims if the molding material was subjected to the same mechanical testing. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated 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. 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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed molding material properties, as the reference teaches each of the claimed ingredients (thermoplastic resin, carbon fiber bundle, and resin additive) for the same utility (making a core-sheath structure) and for the same purpose (producing a molding material).
Regarding Claim 5, Kaori further teaches:
Single-fiber diameter of 7µm [Examples 1-2; ¶ 0096-0098], corresponding to wherein the single-fiber diameter of the carbon fibers is 6.0 µm or more of Claim 5.
Response to Arguments
Applicant’s arguments, see Pages 7-10 of 11, filed 04/24/2023, with respect to the rejection of Claims 1 and 3-10 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kaori and Okuda.
Applicant argues that the teachings of Hirokazu (1) disclose an areal void fraction above 5%, (2) do not form a core-sheath structure, (3) examples with core-sheath structures of Hirokazu failed to achieve sufficient impregnation, (4) fail to disclose a carbon fiber twist angle, (5) fail to disclose the combination of core/sheath structure and areal void fraction of 5% or less, (6) fail to mention the Vf and A/(A+B) relationship, and (7) fails to disclosed the newly amended features of core-sheath structure. However, Hirokazu is no longer relied upon to teach the claimed elements, Kaori is as set forth in the above disclosure. Thus, applicant’s argument is not persuasive.
Applicant argues (8) Hirokazu does not disclose a carbon fiber twist angle range. However, Hirokazu was never relied upon to teach the carbon fiber twist angle, Okuda was as disclosed above. Piecemeal analysis of references is not appropriate, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Thus, applicant’s argument is not persuasive.
Applicant argues Hirokazu (9) discloses a broad Vf range of 10-70% but all examples employ a Vf of 60%. However, Hirokazu is no longer relied upon to teach the claimed elements, Kaori is. Nevertheless, the prior art is not required to teach specific or preferred embodiments in order to render the claimed elements obvious. In this case, while the Hirokazu teaches a Vf range of 10-70% that is broader than the Vf values of the examples, Hirokazu nevertheless teaches a Vf range that overlaps the claimed Vf range which renders the claimed range obvious. Thus, applicant’s argument is not persuasive.
Applicant argues Okuda fails to disclose (10) a core-sheath structure, (11) a core ratio, (12) an areal void fraction, and (13) a carbon fiber volume. However, Okuda is not relied upon to teach the above elements, Kaori is as disclosed above. Piecemeal analysis is not appropriate. Thus, applicant’s argument is not persuasive.
Applicant argues (14) Okuda fails to disclose a basis for a POSA to employ the claimed features. However, as disclosed above, Kaori and Okuda are also considered to be analogous art as the claimed molded material, as all are in the same field of molded resin compositions that are reinforced with carbon fiber bundles and that are heat resistant which would motivate one of ordinary skill to combine the teachings of Kaori and Okuda. Furthermore, Okuda teaches a twist angle of 0.2° or more results in a carbon fiber bundle that is excellent in convergence, handleability and mechanical properties which would motivate one of ordinary skill to apply the twist angle of Okuda to the molding material of Kaori. For at least these reasons, one of ordinary skill would look to Okuda to modify the molding material of Kaori to arrive at the claimed invention. Thus, applicant’s argument is not persuasive.
Applicant argues (15) Hirokazu and Okuda fail to recognize or suggest the advantageous properties exhibited by embodiments of the present invention. However, Hirokazu in view of Okuda is no longer relied upon to teach the claimed elements, Kaori in view of Okuda is as set forth in the above disclosure. Nevertheless, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, applicant’s argument is not persuasive.
Applicant argues (16) that while the data presented in the instant Specification only discloses a twist angle 6.6°, the claimed range of 2.0° to 24.0° would work for its intended purpose and clearly satisfies the enablement requirement under 35 USC 112(a). In response, the Examiner was acknowledging that only a twist angle of 6.6° was demonstrated by way of Example in Table 1, rather than additional twist angles that represent the breadth of the claimed range of 2.0° to 24.0°. Please see MPEP 716.02(d), where the MPEP states that “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” This is not to be confused with a 112(a) Enablement rejection, which is not a basis for a rejection in this Office Action.
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 DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764 /ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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