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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 10, 2025 has been entered.
Claims 1, 3-12, and 16-20 are currently pending in the above identified application.
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 1, 3-12, and 16-20 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.
Claim 1 recites the limitations “2 to 30 parts by weight of a resin main agent (B) having at least one acrylate compound; 0.5 to 15 parts by weight of a surfactant (C), wherein an amount of the resin main agent (B) having at least one acrylate compound is the same as an amount of the surfactant (C).” It is unclear how the resin main agent (B) having at least one acrylate compound can have the same as an amount of the surfactant (C) while there is 2 to 30 parts by weight of a resin main agent (B) and there is 0.5 to 15 parts by weight of the surfactant (C). There is no way for the surfactant to be 30 parts when the resin main agent (b) is 30 parts and be within the claimed range.
The remaining claims are rejected based on their dependency on rejected claims.
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, 3-12, 16-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2021/0156079 to Sakaguchi in view of USPN 5,334,419 to Minami and USPN 4,483,948 to Tamosauskas.
Regarding claims 1, 3-12, 16-17, and 19-20, Sakaguchi teaches a fiber sizing agent for use on fiber bundles, including carbon fibers, comprising an epoxy resin (A) (resin main agent (A) having at least one epoxy compound) having an aromatic ring, including bisphenol F, bisphenol A, bisphenol S or novolac epoxy, and a (meth)acrylate (B) (resin main agent (B) having at least one acrylate compound) (Sakaguchi, abstract, para 0010, 0015-0019, 0035). Sakaguchi teaches the weight ratio of (A)/(B) being preferably 20/80 to 80/20 (Id., para 0080). Sakaguchi teaches the fiber sizing composition comprising a surfactant (E) (surfactant (C)) in a weight percentage of more preferably 0.5 to 35 wt% of the solids of the composition (Id., para 0115-0117, 0128). Sakaguchi teaches the fiber sizing composition comprising an antioxidant including phenol such as 2,6-di-t-butyl-p-cresol (hindered phenol agent (D)) in an amount of preferably 0.01 to 20 wt%, particularly 0.1 to 10 wt%, of the solids of the fiber composition (Id., para 0123, 0129). Sakaguchi teaches the epoxy resin being more preferably 5 to 80% by weight of the solids of the fiber sizing composition and the (meth)acrylate being more preferably 5 to 80% by weight of the solids of the fiber sizing agent composition (Id., para 0125-0127). Sakaguchi teaches the fiber sizing agent composition containing an aqueous medium (Id., para 0130). Sakaguchi teaches the weight solids of the fiber sizing agent being more preferably 30 to 70% by weight in view of storage stability (Id., para 0135). Sakaguchi teaches embodiments comprising 25 parts by weight of the epoxy resin and (meth)acrylate, each with 15 parts by weight of the surfactant, 100 parts by weight solids, and a total parts by weight of 250, results in the equivalent of 10 parts by weight epoxy resin (claim 1, 3), 10 parts by weight (meth)acrylate (claim 1, 6), and 6 parts by weight surfactant (claim 1, 12) based upon the 100 parts of the weight of the total weight of the fiber sizing agent. Adding the presence of the antioxidant results in about 0.004 to 8 parts by weight of the antioxidant, partially preferred 0.04 to 4 parts by weight (claim 1, 17). Based on the range of 5 to 80% by weight of the solids and the percent solids of the disclosed embodiments, the parts by weight based on 100 parts by weight of the total weight of the fiber sizing agent of the epoxy and the (meth)acrylate correspond to about 2 to 32 parts by weight and of the surfactant correspond to about 0.2 to 14 parts by weight. Therefore, the disclosed weight amounts at least overlap with the claimed range. 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). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust and vary the amounts of the sizing agent components, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art.
Sakaguchi is silent with regards to the particle diameter of the sizing agent being in a range from 0.01 microns to 0.5 microns.
However, Minami teaches a sizing agent for carbon fibers that is a water-based emulsion having an average particle diameter of 0.01-0.5 micron with 1-50% by weight of the emulsion or aqueous solution being sizing agents (Minami, abstract, col. 5 lines 27-36). It would have been obvious to one of ordinary skill in the art before the effective filing date to form the sizing agent of Sakaguchi, wherein the particle size is the particle size taught by Minami, motivated by the desire of using conventionally known particles sizes predictably suitable for use in water-based emulsion used for carbon fibers sizing agents.
The prior art combination does not teaches the phenolic antioxidant having the claimed structure.
However, Tamosauskas teaches the use of hindered phenolic antioxidants, such as those having the structure below:
PNG
media_image1.png
413
408
media_image1.png
Greyscale
in aqueous treating solution for fibrous reinforcement to improve thermal aging (Tamosauskas, abstract, col. 4 line 48 – col. 5 line 60), which reads on the claimed hinder phenol agent in claims 1 and 16. Tamosauskas teaches addition the antioxidant in an amount from about 0.005 percent to about 3 percent by weight of the stabilized composition (Id., col. 6 lines 21-46). Tamosauskas teaches the emulsion having fine droplet or particle size sufficient to allow near uniform coating of the fiber surface (Id., col. 9 lines 20-25). Tamosauskas teaches sizing composition can include film formers, coupling agents, and additional surfactants (Id., col. 9 lines 29-51).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the sizing agent of the prior art combination, wherein the antioxidant is the hindered phenolic antioxidant of Tamosauskas, motivated by the desire of using conventionally known antioxidants predictable suitable for use in fiber sizing and by the desire to improve thermal aging.
The prior art combination teaches embodiments comprising 15 parts by weight of the surfactant and 10 and 25 parts by weight of the (meth)acrylate (Sakaguchi, Table 2). While the prior art combination does not explicitly teach the amount of the resin main agent (B) have at least one acrylate compound being the same as an amount of the surfactant (C), the amounts disclose encompass the amounts being the same. 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). Furthermore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust and vary the individual amounts, and therefore the relative amounts, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art.
Regarding claim 4, the prior art combination teaches the epoxy resin having an epoxy equivalent of preferably 100 to 1000 g/eg (Sakaguchi, para 0036).
Regarding claim 5, the prior art combination teaches the (meth)acrylate including adducts of AO (Sakaguchi, para 0056-0059), reading on the resin main agent (B) having at least one acrylate compound comprising (meth)acrylate having an oxyalkylene group in a molecule.
Regarding claims 7-8, the prior art combination teaches the surfactant being nonionic surfactant, including adducts of alkylene oxide with alkyl phenols (Sakaguchi, para 0117-0119, 0184), reading on an alkyl polyoxyethylene ether.
Regarding claim 9, the prior art combination teaches the surfactant being nonionic surfactant, including adducts of alkylene oxide with alkyl phenols (Sakaguchi, para 0117-0119, 0184).
The prior art combination does not explicitly teaches the nonionic surfactant comprising polyoxyethylene octylphenyl ether, polyoxyethylene nonylphenyl ether or polyethylene glycol bisphenol A derivative.
However, Tamosauskas teaches an aqueous sizing composition can include film formers, such as epoxy resin, coupling agents, antioxidant, and additional surfactants (Tamosauskas , abstract, col. 4 line 48 – col. 5 line 60, col. 6 lines 21-46, col. 9 lines 29-51). Tamosauskas teaches an embodiment using of the emulsifier “Triton X-100” which is octyl phenoxy polyethoxyethanol (nonionic surfactant) (Tamosauskas, col. 12 line 20-28). It would have been obvious to one of ordinary skill in the art before the effective filing date to form the sizing agent of the prior art combination, wherein the emulsifier is the octyl phenoxy polyethoxyethanol of Tamosauskas, motivated by the desire of using conventionally known nonionic emulsifiers that are adducts of alkylene oxide with alkyl phenol predictably suitable for use in aqueous fiber sizing agents and commercially available.
Regarding claims 10-11, the prior art combination teaches the surfactant being nonionic surfactant, including adducts of alkylene oxide with alkyl phenols (Sakaguchi, para 0117-0119, 0184), the limitations of claims 10- 11 are the limitations only further limit the alternative limitation of the type of product. For example, the claims are each interpreted as when the product is one of those claimed, then the specific products are those as claimed. Since the reference renders obvious the limitation of nonionic surfactant, the limitations of claims 10-11 are optional and rendered obvious by the prior art combination.
Regarding claim 19, the prior art combination teaches the solids of the fiber sizing agent composition attached to the fiber being more preferably 0.2 to 2.5% by weight based on the weight of the fibers (Sakaguchi, para 0146) and the fibers being carbon fibers (Id., para 0141), reading on carbon fiber applied with the sizing agent with a sizing ratio of the carbon fiber being in a range from 0.2 to 2 weight percent.
Regarding claim 20 and the claimed age-hardening test property, although the prior art does not disclose this feature, the claimed properties are deemed to flow naturally from the teachings of the prior art since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The prior art combination teaches a carbon fiber sizing agent comprising an epoxy containing compound, an acrylic polymer, surfactant, hindered phenol, and solvents, specifically water, at least overlapping in the claimed amounts. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sakaguchi in view of Minami and Tamosauskas, as applied to claims 1, 3-13, 16-17, and 19-20 above, further in view of USPN 5,247,004 to Swisher.
Regarding claim 18, the prior art combination teaches the fiber sizing agent composition containing an aqueous medium (Sakaguchi, para 0130).
The prior art combination does not appear to explicitly teach the water being deionized water.
However, Swisher teaches the use of deionized water in the formulation of aqueous sizes for fibers, such as those comprising an acrylic copolymer (Swisher, abstract, col. 10 line 39- col. 11 line 23). It would have been obvious to one of ordinary skill in the art before the effective filing date to form the sizing agent of the prior art combination, wherein the water solvent is deionized water as taught by Swisher, motivated by the desire of using conventionally known water predictably suitable for use in aqueous size composition used for fibers.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sakaguchi in view of Minami and Tamosauskas, as applied to claims 1, 3-13, 16-17, and 19-20 above, further in view of US Pub. No. 2017/0029557 to Inoue.
Regarding claims 8 and 10-11, the prior art combination teaches the surfactant including anionic surfactant, cationic surfactant, and nonionic surfactant (Sakaguchi, para 0117).
The prior art combination is silent with regards to the specific anionic and cationic surfactant, as claimed in claims 10-11.
However, Inoue teaches a sizing agent for coating carbon fibers comprising an epoxy-amine adduct, a multifunctional urethane (meth)acrylate, a surfactant, and a solvent including water, prepared as a dispersion (Inoue, abstract, para 0314). Inoue teaches the surfactant being anionic, nonionic, or cationic ionic (Id., para 0352-0362). Inoue teaches examples of the nonionic surfactant include polyoxyalkylene alkyl ether surfactants such as polyoxyethylene 2-ethylhexyl ethers, polyoxyethylene oleyl ethers, polyoxyethylene tridecyl ethers, polyoxyethylene castor oil ethers, polyoxyethylene cetyl ethers, polyoxyethylene stearyl ethers, polyoxyalkylene 2-ethylhexyl ethers, polyoxyalkylene nonyl ethers, and polyoxyalkylene tridecyl ethers; polyoxyethylene sorbitan stearates (polyethylene glycol fatty acid ester) (claim 8). Inoue teaches examples of the anionic surfactants include sodium dialkyl sulfosuccinates (dialkyl sulfonic succinate) and polyoxyethylene alkyl ether sulfates (alkyl polyethylene glycol ether sulfate) (claim 10) (Id., para 0355). Inoue teaches examples of the cationic surfactants include quaternary ammonium salt surfactants such as alkyltrimethylammonium salts, dialkyldimethylammonium salts, and alkyldimethylbenzylammonium salts (claim 11) (Id., para 0358).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the sizing agent of the prior art combination, wherein the surfactant is one of the surfactants of Inoue, motivated by the desire of using conventionally known cationic and anionic surfactants predictably suitable for use in an aqueous carbon fiber sizing agents formed from epoxy and acrylic groups.
Response to Arguments
Applicant's arguments filed November 10, 2025 have been fully considered but they are not persuasive.
Applicant argues, with regards to the application of Sakaguchi, Minami, Tamosauskas, that Sakaguchi does not teach the surfactant and the resin main agent being the same and the examples have the (meth)acrylate greater than the surfactant as well as less than the surfactant. Examiner respectfully disagrees. As discussed by Applicant, the prior art teach both greater and less than, overlapping with the surfactant and resin main agent being in the same amount. As the teachings encompasses, both being in the same amount, Applicant would have to demonstrate that the ratio is critical, resulting in unexpected results. Applicant argues that the surfactant (C) is used for emulsifying the resin main agent (B) and is the surfactant (C) was less than the amount of resin main agent (B), the resin main agent (B) could not be sufficiently emulsified into the sizing agent and if greater, the processability of carbon fibers would decrease and the effect of the hardening over time would be poor. However, Examiner would like to highlight that the surfactant has not be specified and the argued correlation would need be necessarily true for all surfactant. The molecular weight, charge, and structure would all influence the effectiveness of the surfactant. Applicant has not presented data to support the assertion for the full breadth of the claim and demonstrating criticality. There is also no data or evidence to support that when the surfactant is greater than the main resin agent (B), the processability of the carbon fibers decreases and the effect of the hardening over time would be poor.
The originally filed disclosure teaches “[i]n some embodiments, an amount of the resin main agent (B) having at least one acrylate compound is the same as an amount of the surfactant (C) (see para 0042 of the published application). This teaching is not related to a specific performance or advantage. The originally filed disclosure also teaches “[w] hen the amount of the surfactant (C) is less than 0.5 parts by weight, it would not have an emulsification. When the amount of the surfactant (C) is more than 15 parts by weight, it would reduce the machinability of carbon fibers” (see para 0053 of the published application. These amounts are not taught in conjugation with the resin main agent (B) being in the same amount. This teaching is related to having adequate surfactant in the composition.
Applicant also argues the newly amended claims range of 0.05 to 0.5 parts by weight of the hindered phenol is critical and points to the amount of carbon fiber hairiness over 14 days is reduced by about 10 mg when in the range of 0.05-0.5% versus 0.01% and 0%. Applicant argues that while there are no test results greater than 0.5 parts, based on the data there is no significant change. Examiner would like to highlight that it is parts not percent claimed. Additionally, Sakaguchi already establishes a desirable range of particularly preferred 0.1 to 10 wt% of the solids of the fiber composition (Sakaguchi, para 0123, 0129), equating to 0.04 to 4 parts by weight of the antioxidant. Applicant has not shown a criticality of 0.05 parts versus 0.04 parts. The data point below the claimed range is 0.01 parts, which was originally within the claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). There are not enough data points outside the lower range to demonstrate the criticality of 0.05 versus the disclosed 0.04. Furthermore, 0.01 parts were within the originally claimed, and therefore suitable, amounts (see claim sets filed June 3, 2025). The originally filed disclosure explicitly teaches “[i]n some embodiments, based on an amount of the sizing agent as 100 parts by weight, an amount of the hindered phenol agent (D) is about 0.01 to about 0.5 parts by weight, such as 0.1, 0.15, 0.2, 0.25, 0.3, 0.35, 0.4, or 0.45 parts by weight. In other embodiments, the amount of the hindered phenol agent (D) is about 0.05 to about 0.1 parts by weight, such as 0.06, 0.07, 0.08, or 0.09 parts by weight. When the amount of the hindered phenol agent (D) is less than 0.01 parts by weight, it would not tend to terminate the chain reaction of free radicals and so may not have the effect of delaying the hardening of carbon fibers” (see para 0059 of published application). The lower limit is set to 0.01 parts. Additionally, the upper limit is merely a diminishing return and not a critical value. There appear to be no unexpected results limiting the upper limit. As Applicant has not shown the claimed range to be critical, Examiner maintains the rejection detailed above.
Applicant also argues that Tamosauskas refers to a lower alkyl but does not indicate any specific lower alkyl and the claimed formula specifically has a tert-butyl group, having steric and performance implications. Examiner respectfully disagrees. Tamosauskas teaches and claimed the antioxidant being octadecyl-3-(3',5'-di-tert-butyl-4-hydroxyphenol)propionate (Tamosauskas, claim 7), which would require the disclosed lower alkyl in the structure to be t-butyl. Therefore, not only is t-butyl encompassed by and taught as being within the scope of the lower alkyl, such structure is part of the claimed lower alkyl structure and encompassing a preferred embodiment. Therefore, Examiner maintains the rejections detailed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A GILLETT/ Examiner, Art Unit 1789
Prosecution Insights