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 .
Response to Amendment
The amendment filed on 1/20/2026 has been entered.
Claim Rejections - 35 USC § 102/103
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 5 and 7-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2021/072559 to Chen.
Claims 1 and 7-9, Chen discloses a fiber comprising at least 30 wt % asphaltenes (see entire document including [0012]-[0014], [0036] and [0037]). Chen discloses that in preferred embodiments the asphaltene precursors contain relatively less sulfur, oxygen, and any metallic species to produce carbon fibers with improved mechanical properties [0036]. Chen discloses that the fiber may be carbonized in a single stage or in multiple stages, such as a low-temperature stage followed by an intermediate-temperature stage and then a final high-temperature stage [0045]. Chen discusses the effect from various carbonization heat treatment stages, temperatures and times (pages 10-11 and Figures 5-10) including a disclosure that an intermediate-temperature stage of about 900ºC results in low tensile strength because it caused the formation of metal-containing compounds within the fiber ([0046], [0048] and Figure 8). Chen explicitly discloses multiple fibers carbonized at 1500ºC (without an intermediate-temperature stage) with a sulfur content within the claimed range ([0047] and Table 3). Considering that Chen discloses that the most desirable asphaltene precursor contains less/no metallic species, and that the preferred carbonization heat-treatment avoids an intermediate-temperature stage to avoid the formation of metal-containing compounds, the two fibers disclosed in Table 3 having the lowest sulfur content would also contain the claimed low metals content. Even in the event that it was somehow shown that Chen fails to sufficiently disclose the claimed low metals content, Chen provides clear motivation to reduce the metals content to increase fiber strength. Therefore, either Chen sufficiently teaches a fiber with the claimed low/zero amounts of sulfur and metals or it would have been obvious to one having ordinary skill in the art to construct the fiber of Chen with the claimed low/zero amounts of sulfur and total metals to produce a fiber with improved mechanical properties. It is further noted that Chen discloses that the fiber may be graphitized to even further increase carbon content [0051] which would inherently further reduce the sulfur and metals content of the fiber.
Claim 2, the fiber comprises 30 to 100 wt % asphaltenes ([0013] and [0014]).
Claim 3, the fiber comprises at least 60 wt % asphaltenes ([0013] and [0014]).
Claim 5, the fiber comprises less than 0.75 wt% sulfur (Table 3).
Claim 10, the fiber may have a diameter from 1 um to 20 um [0037].
Claim 11, the fiber may have a diameter from 2 um to 16 um [0037].
Claim 12, the fiber may have a diameter from 5 um to 15 um [0037].
Response to Arguments
Applicant's arguments filed 1/20/2026 have been fully considered but they are not persuasive.
The applicant asserts that Chen teaches away from the claimed below 1 wt% sulfur content fiber because Chen discloses another fiber (with a sulfur content of 1.54 wt%) with an even higher tensile strength. More specifically, the applicant cites [0047], Figure 10 and Table 3 of Chen wherein the two lowest sulfur content fibers have a lower tensile strength than the third lowest sulfur content fiber. Applicant’s argument is not persuasive because Chen discloses all three fibers and Chen is the primary reference of the rejection. There is no teaching away because there is no obviousness statement regarding fiber selection. All the fibers of Chen are taught (anticipated) by Chen. Plus, Chen does not state that only the highest tensile strength fiber is encompassed by the invention. On the contrary, Chen simply discloses that some fibers have higher tensile strengths based on different carbonization heat treatment stages, temperatures and times. The claims of Chen cover a vast range of different tensile strength fibers.
All the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art even though the art teachings relied upon are phased in terms of a non-preferred embodiment or even as being unsatisfactory for the intended purpose, In re Boe, 148 USPQ 507 (CCPA 1966); In re Smith, 65 USPQ 167 (CCPA 1945); In re Nehrenberg, 126 USPQ 383 (CCPA 1960); In re Watanabe, 137 USPQ 350 (CCPA 1963).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have “relatively acceptable dimensional stability” and “some degree of flexibility,” but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since “Gurley asserted no discovery beyond what was known in the art.” Id. at 554, 31 USPQ2d at 1132.). MPEP 2123.
Conclusion
Applicant's amendment necessitated any 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 ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789