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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto (US 10301461 B2) in view of Hattori (US 2014/0296414) and further in view of Nakamura (JPH 05214248 A, attached with English translation). Kaufman (1997, see attached) is cited as an evidentiary reference. Miyamoto, Hattori, and Kaufman were cited in a prior Office action.
Regarding amended claim 6, Miyamoto teaches a composition of thermoplastic resin and carbon fiber, where the average length of the carbon fiber is from 0.1-5.0 mm (claim 1). Miyamoto further teaches that the thermoplastic resin may comprise a combination of polyphenylene sulfide and a terpene resin (col. 7, lines 1-2; col. 6, lines 59-60; col. 7, line 43). The carbon fiber may be present in amounts ranging from 10 to 40 parts relative to 90 to 60 parts of thermoplastic resin (col. 23, Table 1). In an embodiment having 50 parts of thermoplastic resin and 40 parts of carbon fiber, the composition had a bending elastic modulus of 31 GPa (Table 10, Ex. 39). These ranges overlap or encompass the claimed ranges. A prima facie case of obviousness exists where the prior art ranges overlap or encompass the claimed ranges. See MPEP 2144.05.
Miyamoto is also silent as to the tensile modulus of the carbon fiber. In the same field of endeavor, Hattori teaches use of carbon fiber with a strand modulus of 250 GPa or more (p. 6, [0085]). Hattori uses “strand modulus” to refer to the elastic modulus of the fiber (p. 7, [0087]). Kaufman teaches that tensile modulus and elastic modulus may be used interchangeably (p. 3). Therefore, Hattori’s strand modulus reads on the claimed tensile modulus limitation. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Miyamoto and the carbon fiber of Hattori to arrive at the claimed invention, and to reduce production cost, as taught by Hattori (p. 6, [0085]).
Miyamoto does not limit the form of polyphenylene sulfide that may be used. In the same field of endeavor, Nakamura teaches a composition directed towards forming electronic parts, wherein polyphenylene sulfide (PPS) is blended with polyolefin (like Miyamoto) to result in a composition having lower heat resistance (p. 1). Dimensional stability, toughness, and heat resistance is improved by blending 50-95 parts PPS with a mixture of phenol resin and epoxy resin (p. 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the cyclic polyphenylene sulfide of Nakamura for use in the composition of Miyamoto in view of Hattori to arrive at the claimed invention, and to improve the dimensional stability, toughness, and heat resistance of the composition.
However, Miyamoto as modified is silent as to the interfacial shear strength and logarithmic decrement characteristics of the composition. Nevertheless, as discussed above, Miyamoto teaches a composition having the same ingredients in overlapping or identical amounts. Miyamoto’s composition will therefore necessarily possess the same interfacial shear strength and logarithmic decrement characteristics as the instant composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
Regarding claim 8, Miyamoto in view of Hattori and Okuda remains as applied to claim 6 above. Hattori further teaches that a sizing agent or coupling agent may be added in amounts ranging from 0.1-10% by weight to modify the carbon fiber (p. 7, [0089]).
Regarding claim 9, Miyamoto in view of Hattori and Okuda remains as applied to claim 6 above. Miyamoto further teaches that the thermoplastic resin may be polyphenylene sulfide (col. 6, lines 59-60).
Regarding claim 10, Miyamoto in view of Hattori and Okuda remains as applied to claim 6 above. Miyamoto further teaches that the thermoplastic resin component may be present in amounts ranging from 5% by weight to 95% by weight for all thermoplastic resins combined. This prior art range overlaps the claimed range of 0.1 to 12 parts by weight. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
Response to Arguments
Applicant’s arguments, see page 4, filed 14 October 2025, with respect to the rejection(s) of claims 6 and 8-10 under 35 U.S.C. 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 Miyamoto, Hattori, and Okuda.
Applicant’s arguments are believed to be addressed in full above.
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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762