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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 29 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1, 3, 6, 22-26, 29-30 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Nakai et al. (USPGPub 2016/0237597) in view of Miyoshi et al. (US6066395).
Regarding claims 1, 3 and 29, Nakai teaches that it is known to deposit a silicon coating on the surface of carbon fiber (3-aminopropyl) trimethoxysilane [0103] through the use of a silane coupling agent [0014] and to also deposit a sizing composition on the surface of the fabric. Nakai fails to teach the order of steps as claimed. However, because the silicon coating of Nakai is referenced as a sizing material by Nakai [0008], the applicants claim reads upon merely separating the single deposition step of Nakai into two steps, each step applying half the composition of Nakai. In general, the transposition of process steps or the splitting of one step into two, wherein the processes are substantially identical or equivalent in terms of function, manner and result is held to not patentably distinguish the processes. See Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See also In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). Further, Nakai dries the sizing agent on the surface which would result in the condensing of silanol groups on the surface of Nakai. Further, Nakai teach the use of 0.1 wt% of the silane coupling agent which is “about 0.05 wt%” (claim 12). Further Nakai teaches that at least one sizing agent is employed in his invention, reasonably implying that more than one may be used [0008]. Nakai further teaches wherein epoxy resin may also be employed as a sizing agent. Nakai fails to teach wherein the sizing material may comprise bismaleimide. However, Miyoshi teaches that bismaleimide resins are known to be used as sizing agent for carbon fiber processing (col. 3, line 52 through col. 4, lines 20). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the bismaleimide sizing agent of Miyoshi as one of the multiples that can be used in Nakai as a combination of prior art elements according to known methods to yield predictable results based on the disclosure of Nakai stating that multiple sizing agent may be employed. Further Miyoshi teaches using the sizing agents in conjunction with an organic solvent (col. 4, lines 18-20). Further the compositions of steps (i) and (ii) of the current claims can be the same wherein both comprise a mixture of epoxy resin with organic solvent and bismaleimide such performing the steps sequentially is equivalent to the separation of one deposition step into two identical steps. In general, the transposition of process steps or the splitting of one step into two, wherein the processes are substantially identical or equivalent in terms of function, manner and result is held to not patentably distinguish the processes. See Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See also In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). Further, claim 29 appears to be a substantial duplicate of claim 1.
Regarding claims 6 and 30, Miyoshi further teaches a sizing agent solution concentration that reads upon the current claims (col. 7, lines 31-34). Further Nakai teaches the use of bisphenol A glycidyl ether and varieties thereof with varying levels of functionality (difunctional bisphenol A-co-epichlorohydrin) [0099].
Regarding claims 22-23, Nakai teaches wherein the drying takes place at greater than 80C but less than 150C for 10-30 minutes [0133].
Regarding claims 24-25, Nakai teaches wherein the carbon fiber is pre-cleaned in chloroform before other processing [0159].
Regrading claim 26, the teachings of Nakai are as shown above. Nakai fails to teach the exact cleaning time of the current claims. However, those of ordinary skill in the art would readily recognize that greater cleaning times would likely lead to greater cleanliness. There is likely some tradeoff between overall processing time and the level of cleanliness obtained. Therefore, in the absence of criticality of the specific cleaning times range of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the cleaning time of Nakai in order to obtain greater cleanliness of the product of Nakai. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 32, Nakai teaches methyl ethyl ketone is a known solvent for DGEBA [0159].
Regarding claim 33, Nakai further using methyl ethyl ketone is a known solvent for DGEBA compositions (difunctional bisphenol A-co-epichlorohydrin) [0159] wherein the surface treatment agent may be applied in a liquid concentration reading upon the claim limitations [0136].
Claims 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Nakai et al. (USPGPub 2016/0237597) in view of Miyoshi et al. (US6066395) as applied to claims 1, 3, 6, 22-26, 29-30 and 32-33 above and further in view of Kroener et al. (USPGPub 2014/0057127)
Regarding claims 27-28, the teachings of Nakai in view of Miyoshi are as shown above. Nakai in view of Miyoshi fails to teach wherein the carbon fiber is heat treated as claimed. However, Kroener teaches that is known to anneal carbon fibers as part of the production of specific carbon fiber containing products wherein the annealing takes place at the times and temperatures claimed [0046-0047]. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to anneal the fibers of Nakai in view of Miyoshi as guided by Kroener in order to use the fibers of Nakai in view of Miyoshi to manufacture the products of Kroener.
Claims 31 are rejected under 35 U.S.C. 103 as being unpatentable over Nakai et al. (USPGPub 2016/0237597) in view of Miyoshi et al. (US6066395) as applied to claims 1, 3, 6, 22-26, 29-30 and 32-33 above and further in view of Mizori et al. (USPGPub 2021/0301133)
Regarding claims 31, the teachings of Nakai in view of Miyoshi are as shown above. Nakai in view of Miyoshi is silent regarding the specific molecular weight bismaleimide employed. However, Mizori teaches that BMI-2500 among others are known to be employed as reinforcing compositions for carbon fibers [0250](Table 1). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the particular BMI of Mizori as the particular BMI of Nakai in view of Miyoshi as a substitute of one known BMI for carbon fiber for another wherein the results of the substitution would be predictable based on the disclosure of Mizori.
Response to Arguments
The applicant argues that the prior art fails to teach sequential application of the bismaleimide and epoxy sizing agents. However, the prior art does not require that the sizing agents be separately applied, reasonably implying that they can be used in combination. As such, merely using two sizing agents at the same time in a two-step deposition process reads upon the current claim limitations. The compositions applied in steps (i) nor (ii) are specifically limited to BMI or epoxy exclusively.
Further the applicant argues that Miyoshi does not teach the benefits of using an organic solvent based epoxy resin solution. However, it is first noted that this is not claimed. The claim merely requires the presence of an organic solvent. However, as noted in the rejection of claim 1, Miyoshi explicitly teaches the use of organic solvents in conjunction with the sizing agent and therefore Miyoshi meets the limitations of the current claims.
Finally it is noted that applicant seemingly argues that their method provides unexpected results specifically relating to the order of depositing the reagents. To support these assertions the applicant primarily points to the data provided in the Figs 2A-3B. It is first noted that the applicant argues unexpected results relating to BMI comprising compositions but this is not a requirement of any claim. BMI may be present in the compositions of claim 1 as one of a variety of sizing materials but a showing of unexpected results relating to the use of BMI does not necessarily correspond to the use of the other sizing material listed. Further it does not appear that any of the compositions tested relate to the composition claimed. The examples shows the use of BMI/epoxy on non-siliconized carbon fiber but only a BMI sized carbon fiber that was first siliconized as claimed. As such, the applicant does not reasonably support their assertions with any data points. Finally, although the applicant argues unexpected results arising from the order of steps performed, it does not appear as though that there is any data indicating that the order of steps was tested. It was not shown that changing the order of depositing the sizing agents had affect or that the effect would be otherwise if BMI and epoxy were used simultaneously. Therefore the rejection of the claim as previously provided is largely maintained.
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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/ROBERT S WALTERS JR/Primary Examiner, Art Unit 1717
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