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 § 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 5-9, 11, 13 and 15 are 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.
Claims 5-8, 11, 13 and 15 contain the limitations of “being nonionic, anionic, or amphoteric.” It is unclear if the claims are intended to limit the surface active agent to being limited to these specific types in each applicable claim or if the limitations only apply to the surface active agent when said surface active agent is the claimed type. In efforts to further the prosecution the limitation will be considered in accordance with the second interpretation.
Claim 9 contains the limitation of “relative to 100 parts by mass of the sizing agent which does not contain an epoxy compound.” This limitation is unclear as it is not clear if the intention is to exclude epoxy from the entirety of the coated carbon fiber or if the limitation is meant to require the additional compound to be included in an amount relative to the sizing agent elements which do not contain an epoxy compound. In efforts to further the prosecution the limitation will be considered in accordance with the second interpretation.
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.
Claim(s) 1-8 and 10-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-2003-3376 to Endo.
Regarding Claims 1-3, 5-7, 12, 16-19
Endo teaches a sizing-agent coated carbon fiber bundle wherein the sizing agent contains polyethylene glycol and accounts for 0.5 to 3% of the mass of the sizing agent-coated carbon fiber bundle which overlaps the claimed range of between 0.15 and 0.8% (0.15 and 0.8 parts by mass per 100 parts by mass) (Endo, abstract, paragraphs [0014]-[0015], claims 1-3, examples). Endo teaches that the ethylene glycol is included in the sizing agent in an amount of 40% or more of the sizing agent which overlaps the claimed range of 50% or more (50 parts by mass per 100 parts by mass) (Id.). Endo teaches that the molecular weight is between 300 and 30,000 such as between 1,000 and 10,000 which overlaps the claimed range of between 300 and 5,000 (Id.). Endo teaches that the sizing agent may contain polyethylene glycol which would have an HLB of around 20.
Regarding the limitations of dry F-F friction coefficient, wet F-M friction coefficient, quantity of sizing persisting after rinsing for 50 seconds or 25 seconds under conditions specified in the present Description, absorbance after extraction, residue mass fraction and single strand strength, although the prior art does not disclose the specific friction coefficients, strength or persistence due to specific washing conditions, the claimed properties are deemed to naturally flow from the structure in the prior art since the Endo reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention such as a carbon fiber bundle coated with 0.15-0.8 parts by mass of sizing agent containing ethylene glycol. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
It should be noted that in the case where the claimed ranges 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding Claims 4, 8, 11, 13, 15
Regarding claims 4, 8, 11, 13 and 15 the claims are dependent from claim 1, which recites that the sizing agent contains polyethylene glycol or a surface active agent or both. Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. MPEP 608.01(i). The claims are interpreted as "when" the sizing agent contains a surface active agent, "then" the surface active agent comprises the limitations set forth in claims 4 and 8. Since a surface active agent is not required to meet the limitations of the claim, the prior art combination appears to render obvious the claimed invention.
Regarding Claims 10 and 14
The prior art does not appear to specifically teach 0.30 to 0.45 parts by mass relative to 100 parts by mass of the coated fibers. However, It should be noted that the amount of sizing is a result effective variables. As sizing applied increases, the material exhibits decreased fiber opening property. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of sizing, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the amount of sizing, such as within the claimed range, in order to achieve the desired amount of fiber opening property for the final application of the carbon fiber bundle.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo as applied to claims 1-8 and 10-19 above, in view of US Pub No. 2018/0346668 to Ichikawa.
Regarding Claim 9
Endo teaches 50% or more of the sizing agent is the polyoxyalkylene component where the remainder such as wherein 75 parts of PEG, 20 parts of additional component and 5 parts by weight of an emulsifier, resulting in the additional component relative to the mass of sizing agent not containing an epoxy compound is 25 parts by weight, which overlaps the claimed range of between 0.1 and 30 parts by mass (Id.). Endo does not specifically teach that this component includes one or two hydroxyl groups and is aliphatic. However, Ichikawa teaches a sizing agent composition for carbon fibers comprising a polyether type aliphatic epoxy compound which provides particularly strong interaction and adherence with carbon fiber and improved electrical insulation properties (Ichikawa, abstract, paragraphs [0101]-[0105]). Ichikawa teaches that the epoxy preferably includes a hydroxyl group or two hydroxyl groups (Id., [0301]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the sized carbon fiber bundle of Endo and to utilize as the ether type epoxy component, the hydroxyl containing ether type epoxy of Ichikawa, motivated by the desire to form a conventional sized carbon fiber bundle having improved sizing adherence and improved electrical insulation properties.
Response to Arguments
Applicant's arguments filed September 30, 2025 have been fully considered but they are not persuasive. Applicant argues that Endo teaches broad ranges and does not recognize or solve the problem of both (i) reduced residual sizing agent after rinsing and (ii) acceptable interfacial shear strength. Examiner respectfully disagrees. First, it should be noted that the claims do not require a specific interfacial shear strength and the independent claim does not include a required molecular weight value. Furthermore, Endo teaches a much smaller range of between 1,000 and 10,000 (Id., paragraph [0015]). Regarding the identification of a reduced residual sizing agent after rinsing, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Applicant argues that the molecular weight range is critical as supported by the examples in particular Example 11. Examiner respectfully disagrees. Example 11, comprising a molecular weight of 20,000 provides a dry F-F friction coefficient of 0.25 which is well within the claimed range of 0.39 or less, and a sizing persisting after washing of 0.12 which is within the claimed range of 0.12 or less (Applicant’s specification, table 2). Therefore, criticality of the range is not demonstrated as Example 11 falls within the required ranges of operability. In fact, Example 11 is described as having high handleability and sufficiently high solubility (Id., paragraph [0112]).
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.
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786
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