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 .
DETAILED ACTION
Claims Status
Claims 1-3, 5-6 and 9-20 are pending.
Claims 9-16 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions.
Response to Arguments
Receipt is acknowledged of applicant's arguments and the Rule 1.132 Declaration by Mr. Kaiki Wakahara filed 7/7/2026.
Applicant's arguments and the Rule 1.132 Declaration by Mr. Kaiki Wakahara filed 7/7/2026 with respect to the rejection of present claims 1-3 and 5-6 under 35 U.S.C. 103 as being unpatentable over Fujino et al. (US 6,399,199) in view of EP 2842983 to Honda et al. (“Honda”) have been carefully studied and fully considered, but they are not found persuasive for at least the following reasons.
Applicant contends the instantly claimed ratio of the number of active amine hydrogens in the epoxy resin curing agent (B) to the number of epoxy groups in the epoxy resin (A) of about 0.9 to 1.4 as recited in claim 1 possess criticality as evidenced by the additional experimental data presented by the Rule 1.132 Declaration by Mr. Kaiki Wakahara (“Wakahara Declaration”) filed 7/7/2026, in that, “[A]t values of the Recited Ratio above 1.4, hydrogen gas permeability is high. At values of the Recited Ratio below 0.9 the adhesiveness when winding deteriorates” (remarks, page 11, first para).
In response, Applicant's arguments and all the data in the Wakahara Declaration (Table A and Table B) have been carefully studied and fully considered, but they are not found persuasive. Applicant’s efforts in establishing objective evidence regarding the claimed ratio range is fully acknowledged. However, the available data is insufficient to demonstrate the asserted criticality over the entire claimed range, for at least the following reasons.
It is noted that the comparison of additional comparative Example A-2 (where the ratio is 0.6) with additional Examples A-2 (where the ratio is 0.9) in Table B of the Wakahara Declaration (reproduced below) shows that the property of adhesiveness when winding deteriorates below 0.9. Such comparative data is considered persuasive in supporting the asserted criticality of the endpoint of 0.9 of the instantly claimed ratio of the number of active amine hydrogens in the epoxy resin curing agent (B) to the number of epoxy groups in the epoxy resin (A) of about 0.9 to 1.4 as recited in claim 1. However, the data relating to Example 2-1 of Table B is insufficient to demonstrate the asserted criticality of the endpoint of 1.4 of the claimed range. All the data of Table B are considered, and those data showing a general trend that, as the ratio of the number of active amine hydrogens in the epoxy resin curing agent (B) to the number of epoxy groups in the epoxy resin (A) goes above 0.9, the property of adhesiveness when winding remains good.
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Furthermore, all the data of Table A are carefully studied and fully considered. However, such comparison of the examples and comparative examples (see Table A, reproduced below) merely shows a general trend that, as the ratio of the number of active amine hydrogens in the epoxy resin curing agent (B) to the number of epoxy groups in the epoxy resin (A) increases (i.e., from 0.6 to 5.0), the hydrogen gas permeabilities properties improve (i.e., 2.5 x 10 -11 to 7.7 x 10 -11 ). Such trend does not by itself establish the claimed range (of 0.9 or more and 1.4 or less of instant claim 1) is critical.
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In summary, the available data is insufficient to demonstrate the asserted criticality of the claimed ratio range (i.e., of 0.9 or more and 1.4 or less of instant claim 1) of the number of active amine hydrogens in the epoxy resin curing agent (B) to the number of epoxy groups in the epoxy resin (A) over the broad range taught by Honda, namely 0.2 to 12.0 (page 5, lines 1-5 of Honda), with regard to the argued gas barrier properties, permeability, and/or adhesiveness.
In the present case, for the reasons discussed above, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. Applicant has not demonstrated sufficient objective evidence to show the criticality of the claimed range over the entire claimed range of 0.9 or more and 1.4 or less as recited in instant claim 1. 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). MPEP 716.02. It should be noted that MPEP 716.02(d) states that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”.
Any rejections and/or objections, made in the previous Office Action, and not repeated in the present Office Action, are hereby withdrawn.
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.
Claim(s) 1-3, 5-6, 17-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fujino et al. (US 6,399,199) in view of EP 2842983 to Honda et al. (“Honda”).
Regarding claim 1, Fujino teaches a prepreg in which reinforcing fibers are impregnated with an epoxy resin composition comprising an epoxy resin and an epoxy resin curing agent containing an amine compound that can be metaxylylenediamine (col. 3, lines 35-43, col. 14, lines 53-59, the prepreg, of which reinforcing fibers are impregnated with an epoxy resin composition).
Fujino does not specifically teach the curing agent as instantly claimed (i.e., that comprising a reaction product (X) of a component (x1) and a component (x2): (x1) at least one selected from the group consisting of meta-xylylenediamine and para- xylylenediamine, and (x2) at least one selected from the group consisting of unsaturated carboxylic acids represented by General Formula (1) as so defined).
Honda teaches an epoxy composition comprising epoxy resin and epoxy curing agent, of which Honda teaches the epoxy curing agent offers high barrier property and good adhesiveness (para [0001] [0014] [0019]), of which the curing agent comprising a reaction product (X) of a component (x1) and a component (x2): (x1) at least one selected from the group consisting of meta-xylylenediamine and para- xylylenediamine, and (x2) at least one selected from the group consisting of unsaturated carboxylic acids represented by General Formula (1) as below, such as methyl acrylate, in Formula (1), Ri and R2 each independently represent a hydrogen atom, an alkyl group having from 1 to 8 carbons (see para [0020], [0189]-[0193], examples 1-9 of Honda). The epoxy curing agent taught by Honda reads on the instantly claimed epoxy curing agent of claim 1.
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It would have been obvious to one of ordinary skill in the art to modify the prepreg of Fujino in view the teachings of Honda, to select and use suitable epoxy curing agent as taught by Honda, such as to replace the curing agent of Fujino with the suitable epoxy curing agent as taught by Honda in the epoxy composition, motivated by the desire to provide epoxy resin composition with improved high barrier property and good adhesiveness as taught by Honda (para [0001] [0014] [0019]), which would have predictably arrived at a satisfactory prepreg with improved high barrier property and good adhesiveness. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
As discussed above, Fujino teaches a prepreg in which reinforcing fibers are impregnated with an epoxy resin composition comprising an epoxy resin (col. 3, lines 35-43). However, Fujino does not specifically teach using the specific epoxy resin as instantly claimed (i.e., the epoxy resin (A) comprises, as a main component, an epoxy resin having a glycidylamino group derived from meta-xylylenediamine).
Honda teaches an epoxy composition comprising epoxy resin and epoxy curing agent as discussed above (para [0001] [0063]). In particular, Honda teaches using the epoxy resin comprises, as a main component preferably 50 to 100% by mass, an epoxy resin having a glycidylamino group derived from meta-xylylenediamine (para [0065] [0066]), of which the epoxy resin taught by Honda reads on the instantly claimed epoxy resin of claim 1. Honda teaches an epoxy composition comprising its epoxy resin provides various performance improvement, such as flexibility, impact resistant and moist resistance (para [0065]).
It would have been obvious to one of ordinary skill in the art to modify the prepreg of Fujino in view the teachings of Honda, to select and use suitable epoxy resin as taught by Honda, such as to replace the epoxy of Fujino with the suitable epoxy resin as taught by Honda in the epoxy composition, motivated by the desire to provide epoxy resin composition with good flexibility, impact resistant and moist resistance as taught by Honda (para [0065]), which would have predictably arrived at a satisfactory prepreg that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Modified Fujino teaches a prepreg in which reinforcing fibers are impregnated with an epoxy resin composition comprising an epoxy resin (A) and an epoxy resin curing agent (taught by Honda), as discussed above. Modified Fujino does not specifically teach the ratio of number of active amine hydrogens in the epoxy resin curing agent (B) to the number of epoxy groups in the epoxy resin (A) as instantly claimed.
It is further noted that Honda teaches a suitable ratio of the number of active amine hydrogens in the epoxy resin curing agent (B) to the number of epoxy groups in the epoxy resin (A) is about 0.2 to 12.0 (page 5, lines 1-5), which ratio range overlaps with the instantly claimed range of 0.9 or more and 1.4 or less. 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). MPEP 2144.05. 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). MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art to modify Fujino in view the teachings of Honda, to select and use suitable epoxy curing agent as taught by Honda, such as to replace the curing agent of Fujino with the suitable epoxy curing agent as taught by Honda for use in the epoxy resin composition (which having overlapping range of the ratio of the number of active amine hydrogens in the epoxy resin curing agent (B) to the number of epoxy groups in the epoxy resin (A) as discussed above), motivated by the desire to provide epoxy resin composition with improved high barrier property and good adhesiveness as taught by Honda (para [0001] [0014] [0019]), which would have predictably arrived at a satisfactory prepreg that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Because the epoxy resin composition of modified Fujino and the instantly claimed epoxy resin composition are identical or substantially identical in composition (as discussed above, contains the same epoxy resin and the same epoxy resin curing agent), it is expected that the cured product of the epoxy resin composition of modified Fujino would possess the same or similar hydrogen gas permeability coefficient property as the cured product of the instantly claimed epoxy resin composition once cured in the same manner, i.e., having a hydrogen gas permeability coefficient of 8.0 x 10 -11 [cc-cm/(cm2-s-cmHg)] or less as in instant claim 1. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112.
Regarding claim 2, Fujino teaches using various suitable fibers with no restriction to the length of the fiber (col. 5, lines 34-40), and the fiber taught by Fujino having any given length is considered long fiber meeting the claimed limitations.
Regarding claim 3, Fujino teaches the suitable reinforcing fibers include glass fibers and carbon fibers (col. 5, lines 29-40), meeting the claimed limitations.
Regarding claim 5, Honda teaches its epoxy curing agent comprising a reaction product (X) of a component (x1) and a component (x2) (para [0020]), and Honda teaches the component (x2) is at least one selected from the group consisting of acrylic acid, acrylic acid derivatives (para [0020], the component (B2) of Honda), meeting the claimed limitations.
It would have been obvious to one of ordinary skill in the art to modify Fujino in view the teachings of Honda, to select and use suitable epoxy curing agent as taught by Honda, such as to replace the curing agent of Fujino with the suitable epoxy curing agent as taught by Honda for use in the epoxy resin composition, motivated by the desire to provide epoxy resin composition with improved high barrier property and good adhesiveness as taught by Honda (para [0001] [0014] [0019]), which would have predictably arrived at a satisfactory prepreg that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 6, modified Fujino teaches a prepreg in which reinforcing fibers are impregnated with an epoxy resin composition comprising an epoxy resin (A) and an epoxy resin curing agent (taught by Honda), as discussed above.
Honda teaches its epoxy curing agent comprising a reaction product (X) of a component (x1) and a component (x2) (para [0020], page 3, lines 50-51), and Honda teaches wherein a reaction molar ratio [(component 1)/(component 2)] is about 50/50 to 92/8 (para [0020]), of which the calculated [(x2)/(x1)] of the component (x2) to the component (x1) ratio of Honda is about 0.08 to 1.0 (i.e., 8/92 to 50/50), which ratio range overlaps with the instantly claimed range of from 0.3 to 1.0. 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). MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art to modify Fujino in view the teachings of Honda, to select and use suitable epoxy curing agent as taught by Honda, such as to replace the curing agent of Fujino with the suitable epoxy curing agent as taught by Honda for use in the epoxy resin composition, motivated by the desire to provide epoxy resin composition with improved high barrier property and good adhesiveness as taught by Honda (para [0001] [0014] [0019]), which would have predictably arrived at a satisfactory prepreg that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 17, modified Fujino teaches a prepreg in which reinforcing fibers are impregnated with an epoxy resin composition comprising an epoxy resin (A) and an epoxy resin curing agent (taught by Honda), as discussed above.
Honda teaches the epoxy resin curing agent consists of the reaction product (X) of a component (xl) and a component (x2), and the component (x2) is at least one selected from the group consisting of acrylic acid and alkyl esters of acrylic acid (para [0020], [0032] acrylic acid and acrylic acid derivatives, acrylic acid esters).
It would have been obvious to one of ordinary skill in the art to modify Fujino in view the teachings of Honda, to select and use suitable epoxy curing agent as taught by Honda, such as to replace the curing agent of Fujino with the suitable epoxy curing agent as taught by Honda for use in the epoxy resin composition, motivated by the desire to provide epoxy resin composition with improved high barrier property and good adhesiveness as taught by Honda (para [0001] [0014] [0019]), which would have predictably arrived at a satisfactory prepreg that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 18, Fujino teaches in its prepreg, reinforcing fibers are impregnated with an epoxy resin composition (col. 3, lines 35-43, col. 14, lines 53-59, the prepreg, of which reinforcing fibers are impregnated with an epoxy resin composition). Fujino teaches the amount of epoxy resin is about 15 to 40% (col. 3, lines 37-54), that is, the amount of reinforcing fibers in the prepreg is about 60 to 85%, i.e., 0.6 to 0.85, which range overlaps with the instantly claimed range of 0.40 or more and 0.70 or less. 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). MPEP 2144.05.
Regarding claim 20, Fujino teaches its epoxy resin composition further comprises various suitable non-spherical inorganic particles (col. 22, lines 17-19, col. 23, lines 25-30, the inclusion of various suitable inorganic particles which encompass various shaped articles including those spherical articles and non-spherical articles), meeting the claimed limitations.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Fujino in view of Honda as applied to claim 1 above, further in view of WO 2018/181601 to Hori et al. (“Hori”).
The limitations of claim 1 are taught by Fujino and Honda as discussed above.
Regarding claim 19, modified Fujino does not specifically teach the inclusion of
an unsaturated fatty acid amide having from 14 to 24 carbons, as instantly claimed.
In the same field of epoxy resin composition, Hori teaches an epoxy resin with the inclusion of an unsaturated fatty acid amide including those having from 17 carbons (page 2, seventh para, and page 6, fourth and fifth para), of which the unsaturated fatty acid amide compound taught by Hori reads on the instantly claimed unsaturated fatty acid amide. Hori teaches the addition of the unsaturated fatty acid amide compound provides improved compatibility with the epoxy resin (page 6, sixth para).
It would have been obvious to one of ordinary skill in the art to modify the modified Fujino in view the teachings of Hori, to include an unsaturated fatty acid amide compound taught by Hori including those having from 17 carbons (page 2, seventh para, and page 6, fourth and fifth para, of which the unsaturated fatty acid amide compound taught by Hori reads on the instantly claimed unsaturated fatty acid amide), motivated by the desire to provide epoxy resin composition with improved compatibility as taught by Hori (page 6, sixth para), which would have predictably arrived at a satisfactory prepreg that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
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 YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached on 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAN LAN/Primary Examiner, Art Unit 1782
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