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 Arguments
From the Office Action dated 11 August 2025:
Claims 1 – 17 were originally rejected under 35 U.S.C. § 103 as being obvious over Soheilian et al. (US 11,479,656 B2). Alternatively, claim 9 was rejected under 35 U.S.C. § 103 as being obvious over Soheilian et al. (US 11,479,656 B2) in view of Chandrasekhar et al. (US 2011/0040007 A1); Okoshi et al. (US 2017/0037237 A1) was provided as an evidentiary reference only.
In response to the above Office Action, the Applicant has amended (dated 11 November 2025) the claims as follows:
Claims 2, 4, 5, 8 & 16 – 20 have been cancelled.
Claim 1 has been amended to replace instances of ‘a filler’ with ‘milled fibers’ (p. 2, Claim 1, lines 7 & 8). Claim 3 has been amended similarly.
Claims 6 & 7 have been amended to replace the limitation for the length of the milled carbon fibers with a limitation for the average length of the milled carbon fibers (p. 3, Claim 6, line 2; Claim 7 line 2).
The amended claim 1 now incorporates limitations previously presented in now cancelled claims 2, 5, 8 & 16.
No new matter has been identified.
The arguments & remarks presented by the Applicant have been considered & thoroughly reviewed but are ultimately found unpersuasive.
This rejection is FINAL.
Applicant points to Soheilian (col. 10, line 48 – col.11, line 7) which details various broad ranges of average lengths and average diameters of discontinuous fibers suitable for composites taught by Soheilian. Applicant states Soheilian does not teach or suggest the composite of the amended claim 1; comprising a PVDF homopolymer or copolymer and having milled fibers with the specific combination of features as recited therein (Remarks, p. 6, bottom paragraph – p. 7, lines 1 & 2).
Soheilian discloses ranges for average length and diameter that overlap or encompass the claimed ranges. A prima facie case of obviousness exists where the prior art ranges overlap the claimed ranges, or encompass a somewhat narrower claimed range. See MPEP 2144.05(I).
Applicant submits that the composite of the amended claim 1 yields unexpected results over the prior art & that the milled fibers having the claimed average length and average diameter impose a significant effect on compression & tensile strength of a tape formed from said composite (Remarks, p. 7, 1st full paragraph). Applicant supports this with empirical data supplied in the Specification (p. 14, [0079], Table 2), highlighting the 8.4% increase in compression strength accompanied with a 1.0% decrease in tensile strength. Applicant states the prior art at the time of filing suggests that the addition of carbon fibers to composites resulted in increasing the compressive strength of the composite but caused the tensile strength of the composite to decrease (Remarks, p. 7, 2nd & 3rd paragraphs).
Examiner notes the above, however, data provided by the Applicant is not commensurate in scope with the claims and therefore cannot be relied upon to establish nonobvoiusness. The Applicant provides only two embodiments of their invention, Tape B & Tape D, compositions detailed in Table 1 (p. 13, Specification) & 3 (p. 14, Specification), respectively. In both embodiments, the continuous (Carbon) fibers are present at 50 wt.% only, while PVDF content ranges from 42 wt.% (Tape D) up to 45 wt.% (Tape B). Milled carbon fiber content ranges from 5 wt.% to 8 wt.%, shown in Tape B & Tape D. The data supplied by the Applicant is narrow & precise, and does not span the scope of the claims. See MPEP § 716.02(d).
Applicant states a person of ordinary skill in the art at the time of filing could not reasonably predict the claimed significant & surprising technical effect based on the prior art teachings supplied by the examiner (Remarks, p. 7, bottom paragraph).
Applicant concludes with stating Soheilian was not concerned with the tensile strength of the composites taught and doesn’t suggest a desire to maintain tensile strength upon increasing fiber loading to increase compression strength (Remarks, p. 7, bottom paragraph – p. 8, lines 1 & 2). Applicant reiterates the same when claiming the Chandrasekhar & Okoshi references fail to remedy the deficiencies of Soheilian (Remarks, p. 8, 1st full paragraph).
Soheilian discloses ranges for average length and diameter that overlap or encompass the claimed ranges (col. 10, line 48 – col.11, line 7). A prima facie case of obviousness exists where the prior art ranges overlap the claimed ranges, or encompass a somewhat narrower claimed range. See MPEP 2144.05(I).
Applicant’s remaining arguments pertain to allegations of unexpected results, however, data provided by the Applicant is not commensurate in scope with the claims. The embodiments of the invention, Tape B & Tape D, compositions detailed in Table 1 (p. 13, Specification) & 3 (p. 14, Specification), respectively, are only two points of data. In both embodiments, the continuous (Carbon) fibers are present at 50 wt.% only, while PVDF content ranges from 42 wt.% (Tape D) up to 45 wt.% (Tape B). Milled carbon fiber content ranges from 5 wt.% to 8 wt.%, shown in Tape B & Tape D. Thus, the data pertains only to continuous (carbon) fibers present at 50 wt.% only (in contrast with the 10-90 wt.% as claimed), and milled carbon fibers present at 5-8 wt.% only (in contrast with the 5-25 wt.% as claimed). Therefore, the results of Tapes B & D are not sufficient to establish non-obviousness results. See MPEP § 716.02(d).
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.
Claim 11 is rejected under 35 U.S.C. § 112(b) for being indefinite.
Regarding claim 11, claim 11 further limits the filler which the composite material comprises (p. 3, Claim 11, line 1), however, said filler term has been removed from the independent base claim 1. There is insufficient antecedent basis for this term.
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.
Claims 1, 3, 6, 7 & 9 – 15 are rejected under 35 U.S.C. § 103 as being obvious over Soheilian et al. (US 11,479,656 B2).
Regarding claims 1, 3, 6, 7 & 9, Soheilian teaches composites containing carbon fibers embedded within a thermoplastic substrate (Abstract) wherein said substrate comprises PVDF (claim 4, cols. 26, 27). Soheilian discloses certain embodiments wherein said composites comprise continuous fibers (natural or synthetic) in amounts of at least 10 wt.% and no more than 90 wt.% (col. 9, lines 16-23). The composites also comprise discontinuous fibers (filler) which may be carbon fibers (col. 9, lines 46-50). Said carbon fibers are milled carbon fibers (col. 24, lines 13-20, 37-40, 53-60). The composites comprise filler (discontinuous fibers) in amounts of at least 5 wt.% and no more than 30 wt.% (col. 11, lines 47- 59).
The discontinuous fibers may have an average length of at least 50 µm (col. 10, lines 48-49, & 54) and no more than 100 µm (col. 10, line 65). The length of said fibers are at least 10 times and less than 30 times its diameter (col. 11, lines 31-32, 36, and 43). This relationship between the fiber's length & diameter indicates the fiber's diameter is about 1.67 µm to 10 µm.
It would have been obvious to one of ordinary skill in the art at the time of filing to select amounts of continuous and discontinuous fibers within the identified endpoints taught by Soheilian, as these endpoints are expressly identified by the prior art as being suitable. In the alternative, the ranges embodied from columns 9 & 11 overlap the claimed ranges for continuous fibers and fillers, respectively. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 10, the carbon fibers may have a carbon content of greater than 90 wt.% (col. 13, lines 21-23). In some embodiments the carbon fibers have a carbon content of greater than 94 wt.% (col. 26, claim 1). This reads on "about 94 wt.%". A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 11, the composite comprises the discontinuous fibers, or filler (col. 9, lines 46-50), in amounts of at least 3 wt.% and no more than 10 wt.% (col. 11, lines 49-60). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claims 12 – 14, Soheilian discloses embodiments of composites comprising continuous fibers in amounts of at least 25 wt.% and no more than 70 wt.% (col. 9, lines 21-27). Other embodiments comprise continuous fibers in amounts of at least 40 wt.% and no more than 60 wt.% (col. 9, lines 21- 28). The fibers themselves are unidirectional (col. 8, lines 31-33) and the fibers are substantially aligned (i.e., uniform orientation) within the substrate (col. 4, line 65 - col. 5, line 3). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 15, Soheilian discloses embodiments of the composite, including using an aqueous liquid comprising suitable fibers applied to a substrate as a coating. The substrate may be a thermoplastic film. After alignment of the fibers, the composite is formed after the evaporation of the liquid, leaving behind the fibers embedded within said thermoplastic film (col. 4, lines 44-57). The thermoplastic film as described above reads on the embodiment of a thermoplastic tape. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 9 is alternatively rejected under 35 U.S.C. § 103 as being obvious over Soheilian et al. (US 11,479,656 B2) in view of Chandrasekhar et al. (US 2011/0040007 A1). Okoshi et al. (US 2017/0037237 A1) is provided as an evidentiary reference.
Regarding claim 9, Soheilian remains as applied above. Soheilian teaches a composition comprising carbon fiber fillers which may be embodied in the form of films (Abstract) and has enhanced thermal conductivity (col. 23, lines 32-34). Soheilian does not explicitly teach the diameter limitation established by the instant claim 9.
In the same field of endeavor, Chandrasekhar teaches thermally conductive moldable materials including primary and secondary filler particles (Abstract). The secondary filler may be carbon fibers. Suitable commercial carbon fibers include Toray T300 (p. 6, [0043]). Okoshi details the carbon fiber in Toray's product T300 has a diameter of 7 µm (p. 5, [0128]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the carbon fibers with a diameter range of 1.67 µm to 10 µm taught by Soheilian by selecting T300 taught by Chandrasekhar for use as the carbon fibers in Soheilians composition, as T300 is recognized by the prior art as suitable for use in this capacity in similar applications. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Soheilian in view of Chandrasekhar as detailed above reads on the limitation established by claim 9.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762