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
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.
Claim(s) 16-24,31-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-2004-1,49991 to Izawa.
Regarding Claims 16, 18-24, 31, 33-37
Izawa teaches a bicomponent fiber comprising a reinforcing single fiber core with an essentially constant circular core of a first material such as glass fiber, and at least one sheath of a second thermoplastic or pre-polymerized thermoset having a melting temperature of at least 20 degrees Celsius less than the core material, such as epoxy (Izawa, abstract, paragraph [0007], [0011]-[0016]). Izawa teaches that the sheath has an irregular corrugated shape and appears to comprise 0.3 to 0.8 volume fraction of the multicomponent fiber and a valley to peak longitudinal length ratio of less than 0.9 over a given length (Id., fig. 1). Izawa teaches that the maximum sheath+core radius divided by the core radius is greater than 1.3, 1.5 or 3 which would result in a sheath variation amplitude divided by the core radius of at least 0.3 and given a core diameter of between 10 and 1,000 micrometers would result in a difference in total fiber width in the largest and narrowest sections of between 3 and 2,000 micrometers, overlapping the claimed range of greater than 5 micrometers (Id., paragraph [0018]). The core of the fiber would necessarily be hollow or solid.
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).
Regarding the fiber being for the manufacturing of composite parts, and the matrix of said composite park consisting of the material of the sheath, these are intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding Claims 17 and 32
Regarding the width distribution in a predetermined window having a normalized standard deviation, although the prior art does not disclose said property, the claimed properties are deemed to be inherent to the structure in the prior art since the Izawa reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Alternatively, it would have been obvious to one of ordinary skill to adjust, vary and optimize the range, such as within the claimed range, motivated by the desire to form a conventional corrugated coated fiber based on the totality of the teachings of Izawa.
Response to Arguments
Applicant's arguments filed December 29, 2025 and March 31, 2026, including the Affidavit of March 31, 2026 have been fully considered but they are not persuasive. Applicant argues that Izawa does not teach a volume fraction which overlaps the claimed range and that the range of 0.3 to 0.8 core volume fraction is critical to the claimed invention. Examiner respectfully disagrees. As set forth above, it appears that the volume fraction of the resin component is within the claimed range. However, Izawa specifically teaches that the sheath component is applied in an amount of 60 to 250% by weight relative to the weight of the core component (Izawa, paragraph [0022]). Although this is given relative to weight the volume fractions can be calculated utilizing the densities of the given materials. Izawa teaches for example that the amount of adhesion of vinyl ester resin may be 150% by weight relative to the weight of Technora fiber (Id., paragraphs [0027]-[0028]). Given a density for Technora fiber of 1.39 g/cc and a maximum density range of vinyl ester of between 1.0 and 1.3 g/cc, for a given weight of fiber we can calculate the volume fraction as being between 0.324 and 0.384, which is within the claimed range.
Applicant argues that Izawa does not address degassing or vacuum forming problems, or that the sheath material is molten or softened in the making process of the composite. Examiner respectfully disagrees. The claims are directed to a fiber component and not the finished composite itself, or the process of making said composite. The arguments address the intended use of the claimed fiber and not the structure of the fiber itself. The claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. The intended use limitations do not further limit the fiber structure, if the prior art structure is capable of performing the intended use, then it meets the claim.
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 VINCENT A TATESURE whose telephone number is (571)272-5198. The examiner can normally be reached Monday-Friday 7:30AM-4PM EST.
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786
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