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
The amendment of June 15, 2026 has been received and entered. With the entry of the amendment, claims 16-20 are canceled, and claims 1-15 and 21-25 are pending for examination.
Election/Restrictions
It is noted that non-elected claims 16-20 have been canceled by the amendment of August 29, 2024.
Priority
Receipt is acknowledged of a certified copy of foreign application Japan 2020-047206 filed June 15, 2026, however the present application does not disclose and adequately support and enable all the claimed subject matter and thus, for those claims, priority does not extend past the March 12, 2021 PCT filing date.
Note for present claim 1, the priority document indicates that the method requires, before the “chopping a continuous carbon fiber bundle” the step (i) of drawing out a continuous carbon fiber bundle from a package, the continuous carbon fiber bundle having a filament number of NK and partially split into n sub-bundles in advance. Note 0005, 0008, 0009, 0036, 0045, claim 1, of the certified translation of the priority document. The specification generally says that this is one embodiment, but other method embodiments without this step are not described. Therefore, it is understood to be required for the described method. Present claim 1 does not have this step (i) so is broader than what was originally described and it would not be supported to not provide the step (i). This feature applies to all claims except claims 10-12, where claim 10 depends from claim 9 and where claim 9 describes that the continuous carbon fiber bundle having a filament number of NK and partially split into n sub-bundles in advance (and since dependent from claim 1, means that claim 1 is not limited to this) and claim 10 has the further limitation of drawing out the continuous carbon fiber bundle from a package. Claims 11 and 12 depend from claim 10 so has the limitation of claim 10. Claims 1-9, 13-15 and 21-25 are also not supported as depending from claim 1 and not curing the missing features.
Additionally, present claims 4 and 25 as to the difference between the described sum and distance of 10 mm or less (claim 4) and 5 mm or less (claim 25) are not supported by the certified priority document. The certified translation of the priority document at 0034 describes the sum of the maximum radium of the first pin roller and a maximum radius of the second pin roller can be smaller than a distance between rotation axes of the first pin roller and second pin roller, but specific distance measurements are not given.
Additionally, present claim 15 as to the fiber length of the chopped carbon fiber bundles being 5 to 100 mm is not supported by the certified priority document. The certified translation of the priority document at 0037, describes that the length is not limited but can be 20 to 60 mm, for example, and approximately 25 mm or approximately 50 mm or the like. This does not support the specific range of 5-100 mm.
Therefore, after review only claims 10-12 are entitled to the March 18, 2020 priority date and claims 1-9, 13-15 and 21-25 are entitled to the March 12, 2021 priority date.
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.
Claim 5 is 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 5 now refers to “first and second cylinders” at line 2, and then at lines 6-7 has “in each of the first pin roller and the second pin roller, a radius of a cylinder is . . . of the respective pin roller”. This is confusing because “a cylinder” does not necessarily refer back to the “first cylinder” or “second cylinder”. Similarly, at line 9, “the cylinder” is confusing as to which cylinder is referred to. For the purpose of examination, it is understood that “a cylinder” and “the cylinder” is supposed to be referring to the first cylinder of the first pin roller and a second cylinder of the second pin roller, but applicant should clarify what is intended, without adding new matter.
Terminal Disclaimer
The terminal disclaimer filed on November 11, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of (1) any patent granted on Application number 18/231,701 and (2) US Patent No. 12,319,017 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-9, 13, 15 and 21-25 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nakao et al (US 2023/0021189).
Claim 1: Nakao provides a method of manufacturing a sheet molding compound (SMC), comprising chopping a continuous carbon fiber bundle with a rotary cutter to form chopped carbon fiber bundles, conducting a fragmentation of the chopped carbon fiber bundles using a fragmentation processing apparatus, depositing the chopped carbon fiber bundles after the fragmentation on a carrier film travelling below the rotary cutter to form a carbon fiber mat, and impregnating the carbon fiber mat with a thermosetting resin composition (note 0017-0022). The fragmentation processing apparatus comprises a first pin roller comprising first pins attached to a surface of the first pin roller and a second pin roller comprising second pins attached to a surface of the second pin roller (note figure 4, 0113, 0121), where the rotation axes of the first and second pin rollers are parallel to a rotation axis direction of the rotary cutter, and the first pin roller rotates such that its pins move downward from above on its side facing the second pin roller, and the second pin roller rotates such that its pins move downwards from above on its side facing the first pin roller (note 0129, figure 1, claim 2), and the first pins and/or the second pins are a columnar shape (note figure 4, 0113, 0121) and the fragmentation of the of the chopped carbon fiber bundles, which go through between the first pin roller and the second pin roller, is not for defibration or not to loosen the chopped carbon fiber bundles (note figure 1, 0178).
For the features of present claim 2, note claim 3 of Nakao. For the features of present claim 3, note claim 4 of Nakao. For the features of present claim 4, note claim 5 of Nakao. For the features of present claim 6, claims 17, 20 of Nakao are understood to meet this requirement. For the features of present claim 7, note claim 11 of Nakao. For the features of present claim 8, note claim 12 of Nakao. For the features of present claim 9, note claims 1, 8 of Nakao. For the features of present claim 13, this is understood from 0178-0180. For the features of present claim 15, this is provided by 0176. For the features of present claim 21, this is shown in figure 1. For the features of present claim 22, this is provided by 0116. For the features of present claim 23, this is provided by 0117. For the features of present claim 24, this is provided by figures 4-5, 0121. For the features of present claim 25, this is provided by 0125-0126.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claims 1-3, 5-9, 13-15 and 21-24 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Oda et al (US 2023/0390967).
Claim 1: Oda provides a method of manufacturing a sheet molding compound (SMC), comprising chopping a continuous carbon fiber bundle with a rotary cutter to form chopped carbon fiber bundles, conducting a fragmentation of the chopped carbon fiber bundles using a fragmentation processing apparatus, depositing the chopped carbon fiber bundles after the fragmentation on a carrier film travelling below the rotary cutter to form a carbon fiber mat, and impregnating the carbon fiber mat with a thermosetting resin composition (note figure 3, 0013). The fragmentation processing apparatus comprises a first pin roller comprising first pins attached to a surface of the first pin roller and a second pin roller comprising second pins attached to a surface of the second pin roller (note figures 3, 5, 6, 0013, 0186), where the rotation axes of the first and second pin rollers are parallel to a rotation axis direction of the rotary cutter, and the first pin roller rotates such that its pins move downward from above on its side facing the second pin roller, and the second pin roller rotates such that its pins move downwards from above on its side facing the first pin roller (note figure 5), and the first pins and/or the second pins are a columnar shape (note figure 6) and the fragmentation of the of the chopped carbon fiber bundles, which go through between the first pin roller and the second pin roller, is not for defibration or not to loosen the chopped carbon fiber bundles (note figures 3, 5, 0280).
For the features of present claim 2, note figure 5. For the features of present claim 3, note figure 5. For the features of present claim 5, note 0194. For the features of present claim 6, note 0091. For the features of present claim 7, note figure 3. For the features of present claim 8, note 0093. For the features of present claim 9, note 0092. For the features of present claim 13, note 0092. For the features of present claim 14, note 0323. For the features of present claim 15, this is provided by 0279. For the features of present claim 21, this is shown in figure 3. For the features of present claim 22, this is provided by 0190. For the features of present claim 23, this is provided by 0191. For the features of present claim 24, this is provided by figure 7.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
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 5 is rejected under 35 U.S.C. 103 as being obvious over Nakao et al (US 2023/0021189}.
Nakao provides the features of claims 1, etc. as discussed in the 35 USC 102 rejection using Nakao above.
Furthermore, as to claim 5, as to the specific radius of a cylinder, etc., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nakao to optimize the size of the cylinder, giving a value in the claimed range, since Nakao indicates the radius of cylinders in the pin rolls are controllable and adjustable to provide desired dimension (note 0125, and as to cylinder features, radius features, etc. note figure 6).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Nakao as applied to claims 1-4, 6-9, 13, 15 and 21-25 above, and further in view of Okamoto et al (US 2023/0103035).
As to claim 14 as to the number of filaments in the sub-bundle, Nakao describes providing the partially split carbon fiber bundle, winding on a take up bobbin to form a package, and then using the package in the SMC manufacturing method (note figures 7, 1, 0171).
Oda further describes a method of making SMC including providing fiber bundles, chopping the bundles, further fragmenting, depositing the fragmented and chopped bundles on a carrier and impregnating with thermosetting resin (note figure 6, 0131-0143), and indicates partially split fiber bundles for use in the process, where the bundles are provided in a package form (when for use bundles drawn out of the package) (note 0132, 0012-0013), wound such that there is no gap between the sub-bundles, and also where the bundle is wound so that adjacent sub-bundles overlap each other and the package width is less than a total sum width of the sub-bundles (note 0029-0030, 0032, 0044, 0048). As to the number of filaments in the subbundle, Okamoto indicastes that the number of filaments of the overall bundle/divided by number of sub-bundles (so giving the number of filaments in a sub-bundle) can be 0.5 or more (that is o.5 K or more) (note 0034-0037).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nakao to use the number of filaments described above for Okamoto, giving the features of claim 14, with an expectation of predictably acceptable results, since Nakao indicates providing an SMC manufacturing process using a package of wound carbon fiber, and Okamoto indicates a package for similar such SMC manufacturing can be provided as partially split fiber bundles for use in the process, and Okamoto suggests that the number of filaments of the overall bundle/divided by number of sub-bundles (so giving the number of filaments in a sub-bundle) can be 0.5 or more (that is o.5 K or more), and it would have been obvious to optimize from this range, giving a value in the claimed range.
The applied references (both Nakao and Okamoto) have a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claim 4 and 25 are rejected under 35 U.S.C. 103 as being obvious over Oda et al (US 2023/0390967}.
Oda provides the features of claims 1, etc. as discussed in the 35 USC 102 rejection using Oda above.
Furthermore, as to claims 4 and 25, as to the difference between sum of maximum radius and distance (claims 4, 25) it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Oda to optimize the difference between the sum of maximum radium and distance as claimed, giving values in the claimed ranges, since Oda indicates that the difference between the sum of maximum radius and distance are such that sum of the radius is smaller than the distance and would be controllable (note 0202-0203).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Double Patenting
The rejection of claims 1-3 and 5-13 on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 17/865,288 (reference application) has been withdrawn due to the amendments to the present claims and that of ‘288 removing overlapping features.
The rejection of claims 1-3, 5-9 and 21-24 on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,319,017 (hereinafter ‘017, which issued from Application No. 17/946,395) has been withdrawn due to the acceptable Terminal Disclaimer filed November 11, 2025.
The rejection of claims 1-3, 5, 7-8 and 21-24 on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/231,701 (hereinafter ‘701)(reference application) has been withdrawn due to the acceptable Terminal Disclaimer filed November 11, 2025.
The US PG Publication of 17/865,288 is US 2022/0347890. The US PG Publication of 17/946,395 is US 2023/0021189. The US PG Publication of 18/231,701 is US 2023/0390967.
Allowable Subject Matter
Claims 10-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed June 15, 2026 have been fully considered.
The Examiner notes the new 35 USC 112 rejection of claim 5 due to the amendments to the claims.
The Examiner notes that the certified translation of the priority document was filed June 15, 2026, and has been reviewed by the Examiner. As discussed in the Priority section above, the certified translation does not support claims 1-9, 13-15 and 21-25 as presently provided, and therefore, the above 35 USC 102 and 103 rejections remain using the references as cited, as no other arguments were provided. The Examiner notes that the rejections could also be overcome by the other showing/statement options discussed in the rejections above:
For the 35 USC 102 rejections:
This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
For the 35 USC 103 rejections:
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
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 KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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