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 .
In their response dated 9/10/2025 applicants amended claims to limit the type of thermoplastic polymer to specific list of polyamides. The amendment included content of each component and a ratio between carbon fibers and hollow glass spheres. Applicants further cancelled claims 3-5 and 8-10.
Applicant’ amendment fails to overcome rejections of record for following reasons:
Applicants argued that Horio does not disclosed combination of technical features of claim 1, in particular ratio of the concentration of the carbon fibers to the total concentration of the carbon fibers and hollow glass beads in combination with specific aliphatic polyamides, referring to [0154] of the published specification.
Examiner disagrees. First, while examiner utilized example in a rejection, the applicants are not absolved from reviewing the entirety of the prior art of Horio. While the unexpected observation was made in [0154] the applicants have not distinguished this observation and results over the closest prior art of record.
Horio teaches composition that comprises 100 parts of polyamide, 5-20 parts of hollow glass fibers 1-50 parts of fibers.
Fiber filler is defined in [0009] includes glass fibers and carbon fibers. Carbon fibers are viewed as preferred in the light of examples.
Polyamide is defined in [0007] and it includes nylon 4,6 and nylon 6,10 listed in amended claim 1. While examples disclose nylon-6, the entirety of the prior art has to be taken into the consideration especially when aliphatic nylons are also utilized in the examples.
With respect to the ratios between carbon fiber and to the concentration of carbon fibers and the hollow beads, the applicants mischaracterized amended claim 1. The claim recites:
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While fillers are dispersed within the polymeric matrix, the ratio only calls for carbon fibers and hollow glass beads. Having said that utilizing example 11 utilizing glass beads in amount of 20 parts and carbon fiber in 10 parts the content of the filler meets instant example E1 as such the ratio is bound to be the same. In this particular case it is 0.3 (see Table 2 of Horio). Additionally, the applicants has to consider the entirety of the prior art not just specific example. The entirety provides ranges which would meet the claimed ratio especially when content of glass beads is higher than that of a fiber in all but one example. The fibers are utilized in 20 parts while fiber is utilized in 10 parts. In fact the content of instant example E1 with exception of calcium stearate (also encompassed by Horio as mold release agent) has the same content of polymer, fiber and glass beads.
With respect to the rejection over Sun: Sun also teaches aliphatic polyamides such as nylon-4,6 and specifically indicates that polyamides are aliphatic polyamides. The only reason why Sun was utilized in obviousness rejection was because hollow glass beads were selected from short list of other fillers and their content is reported as 1-40 parts. Content of carbon fiber can be as low as 5 parts and range of 10-60 parts is listed.
While the ratio of the carbon fiber to combination of carbon fiber and glass beads can be met with content of glass beads 20 and fibers at 10 because this specific content is enabled by the broad ranges of Sun. Applicants when arguing teachings of Sun addressed most preferred embodiment with respect to the content of carbon fiber which is 30-60 parts. While this embodiment is preferred, it does not exclude broader ranges otherwise disclosed on page 10 of Sun.
With respect to the rejection over Horio and Bayer the applicants argued that while Bayer was utilized to teach chopped fiber if does not provide what Horio lacks with respect to the claim 1 and does not teach aliphatic polyamide.
The reference of Bayer was not utilized to teach aliphatic polyamides and such polymers were not bodily incorporated into the teachings of Horio. Bayer was utilized to teach that fibers can be chopped because while Horio teaches fibers having length in a range encompassing those of Horio, the length of at least 2 mm, Horio does not use term “chopped”. Bayer was not utilized to meet the limitation of aliphatic polyamide, even though PA 4,6 is taught.
Lastly the applicants provide in depth discussion of instant examples and the unexpected result due to combination of both carbon fiber and hollow glass beads. While the examiner completely understands applicants discussion, the arguments only disclosed the results of the instant invention and failed to distinguish the results over the prior art of record. Especially Horio, which as was shown above discloses content of glass beads and carbon fiber in exactly the same amounts with balance being polyamide. The examiner would like to stress that the examples disclosed in applicant’s Table 1 utilizes polymer under tradename Radipol DC40 is polyamide 66 which is no longer listed not encompassed by the list of polyamides of amended claim 1. As such none of the examples teach currently claimed polyamides. As such the properties of instant claims 11-14 are not supported by instant specification because polymers utilized is not listed in amended claim 1.
As such, all rejections of record are maintained and restated below to reflect the amendments to instant claim 1.
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.
Claim Rejections - 35 USC § 102
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 1-5, 7-10, 13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Horio (JP 06-271763).
With respect to claim 1, 8-10, Example 11 of Horio discloses composition comprising polyamide, hollow glass spheres and carbon fiber. Amounts are summarized in Table 2, where polyamide was utilized in 70 parts by weight, glass beads were utilized in amount of 20 parts by weight and carbon fiber in amount of 10 parts by weight. Horio further teaches in claim 1 that per 100 parts of polyamide resin, hollow glass spheres can be used in amount of 5-20 parts by weight and carbon fiber can be used in amount of 1-50 parts by weight.
Polyamide resin of nylon is nylon-4,6, and nylon-6,10 [0007].
The ratio of carbon fiber to hollow beads and carbon fiber meets 0.2 for minimum of 1 part of carbon fiber and 5 parts of hollow glass beads. Examples disclosed glass beads in amount of 20 parts and carbon fiber in amount of 10 parts which results in a ratio of 0.3, wherein content of glass beads and carbon fiber is the same as the content in instant example E1.
With respect to claim 6, carbon fibers of Hori as used in an example have length of 6mm.
With respect to claim 7, hollow glass beads of Horio have crush strength of 120, 200 and 250 kg/cm2, wherein 120 kg/cm2 is equivalent to 1706 psi (hollow glass beads of B1-B3 in the experimental section). The examiner would like to further point out that the crush strength of the hollow glass beads is related to the density of the hollow glass beads. The higher the density the glass beads are the higher the crush strength. Horio discloses hollow glass beads having density of 0.6 (examples) which would have approximate crush strength of 28000 psi.
With respect to claim 13, the composition of Horio has density between 0.85-1.21 g/cm3.
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, 6, 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (WO 2020/025350 submitted by the applicants).
With respect to claim 1, 8-10, Sun in claim 12 discloses composition comprising 30-60 wt.% of thermoplastic, 10-60 wt.% of fibrous reinforcing agent (page 18) and 0.01-40 % of at least one further component (p. 13, l. 20-24).
Fiber reinforcing agent is selected from glass fibers or carbon fiber (page 9, lines 19-21).
The at least one further component includes hollow glass beads (p. 13, l. 13-14).
Polyamides include aliphatic polyamides such as PA 4,6 (p. 7, l28-29) or semicrystalline polyamide 6T/10T (which meets generic description PA 6/10 .
With respect to the ratio of carbon fiber to content of carbon fiber and hollow glass fiber, the ranges of Sun encompass content of 20 parts hollow glass beads and 10 parts which is the same content in Horio and instant invention example E1. As such the ratio will be 0.3 (see response to the arguments)
With respect to claim 6¸ The fibers can be long fibers of chopped fiber (p. 10, l. 9-12) having fiber length of 1-25 mm.
With respect to claim 12, composition of Sun has tensile modulus of 12 GPa (Ex. 1, table 1).
With respect to claims 11, 13 and 14, the tensile modulus is the ratio of tensile stress to tensile strain. It is material property that represents its resistance to deformation under tensile stress. Since the components of Sun and its content meet the instant claims along and since tensile modulus is above claimed “at least 8GPa” the property of strain and density will also be within the same range, because compounds and their properties are mutually exclusive. The same components used in overlapping amounts are therefore bound to have overlapping properties ,
With respect to claim 15, the composition of Sun is utilized to make housing for electronic devices (p. 13, l. 5-6).
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art that at the time of practicing invention of Sun, one would necessarily arrive at claimed invention.
Claims 6, 11, 12, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over in view of Bayer (US 2012/0083558).
Discussion of Horio regarding claims 1-5, 7-10 and 13 from paragraph 1 of this office action is incorporated here by reference.
Horio as presented above discloses composition that meets rejected claims with respect to components, their content. Horio’s composition also has the same density as that of instant invention and it’s glass beads have crush strength that that meets the crash strength of the beads used in instant invention.
With respect to claim 6, Horio further teaches carbon fiber that have length of 6 mm, however, Horio does not teach explicitly if that the fiber is a chopped fiber.
Bayer also discloses a composition comprising polyamide, filler and reinforcing agent. Polyamides of Bayer overlap with the polyamides of Horio and include for example, PA 4,6 and PA 5,6, with PA 4,6 being preferred. Polyamide content is 30-92 wt. %, which amount overlap amount disclosed by Horio as well.
Fiber includes carbon fibers [0026, 0115]. The fibers can be continuous filament of chopped fibers [0116]. As such it would have been obvious to one having ordinary skill in the art to chop the carbon fiber of Horio to its length of 6 mm or less and still obtain the claimed invention. Fibers are utilized in amount of 10-40 wt.% [0113] which is within the amount disclosed by Horio. Lastly, Bayer also discloses hollow glass beads [0128]
The composition of Bayer, which comprises polyamide, carbon fiber and hollow glass beads, wherein the properties of tensile strain and tensile modulus are as claimed.
With respect to claim 11, tensile strain is in a range of 1.9-2.7% (see Tables)
With respect to claims 12 and 14, tensile modulus is in a range of 10.3 GPa to 11.4 GPa (see Tables)
Bayer and Horio both disclose compositions comprising polyamides within the same range, carbon fiber within the same range and hollow glass beads. As shown in paragraph 1 of this office action such composition with the same amounts as that of Bayer will have density between 0.85-1.21 g/cm3. As such, since the compounds and their properties are mutually exclusive based on the type of polymer and two fillers, the tensile strain and tensile modulus of Horio will also be within the same range. Consequently the ratio of tensile modulus to the density (at 11.4 GPa and 0.85 g/cm2) will be 13.4 and at 11.4 GPa and 1.21 g/cm2 ratio will be 9.4.
With respect to claim 15, Bayer further discloses that the disclosed therein composition can be used to make housings for electronic device [0163].
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the composition of Horio in making housings for the electronic devices as taught in Bayer. Horio discloses composition that is light weight [0004] with excellent heat resistance [0038] that can be used in household appliances. In a way, household appliance is an electronic devices in itself. Bayer supplements the limitation of the housing.
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 September 19, 2025