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
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 6/10/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 102
Claims 1, 2, 5, 6, 9-12, 14, 16, and 17 are rejected under 35 U.S.C. 102(a)(1 or 2) as being anticipated by Miyata (WO 2020/0217706, machine translation)
The rejection is adequately set forth in paragraph 3 of Office action mailed on 3/10/2026 and is incorporated here by reference.
Claim Rejections - 35 USC § 103
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata (WO 2020/0217706, machine translation) .
The rejection is adequately set forth in paragraph 4 of Office action mailed on 3/10/2026 and is incorporated here by reference.
Claims 3, 4, 7, 8, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata (WO 2020/0217706, machine translation) in view of Nakayama (US 10,184,034).
The rejection is adequately set forth in paragraph 5 of Office action mailed on 3/10/2026 and is incorporated here by reference.
Response to Arguments
Applicant's arguments filed 6/10/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Miyata does not anticipate the claimed prepreg because none of the inventive or comparative examples use a bisphenol A (di)glycidyl-type epoxy resin as sizing agent.
Anticipation under 35 USC 102 does not require examples. Case law holds that a reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015). Miyata discloses a resin composition for fiber-reinforced composite material and prepreg and fiber-reinforced composite material obtained therefrom comprising reinforcing fibers and maleimide resin, an alkenylphenol resin, and a thiol compound as thermosetting resin components (i.e., not epoxy as required by the claims) (abstract). Miyata teaches that carbon fibers are preferably and “commonly” treated with a sizing agent in order to improve mechanical strength and that the sizing agent is reactive with thiol groups of the resin (paragraphs 0107-0108). The named sizing agent is bisphenol A diglycidyl ether type epoxy resins (i.e., a compound with at least two epoxy groups and an aromatic functional group) but not limited thereto but clearly disclosed and includes epoxy, vinyl, (meth)acrylic groups, and isocyanate (paragraph 0108). Therefore, Miyata discloses a limited list of sizing agent which is useful for carbon fibers when added to either the claimed thermosetting resin or to additional epoxy resins.
Applicant also argues that Miyata is improperly combined with Nakayama because Nakayama only teaches epoxy resins as the thermosetting resin component.
However, note that while Nakayama does not disclose all the features of the present claimed invention, it is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention. Specifically, Miyata discloses that carbon fiber is usually treated with a bisphenol A diglycidyl ether type epoxy resin but that maleimide compounds have poor compatibility with such sizing agents. Fortunately, Miyata’s thermosetting resin includes the thiol compound which is compatible with the sizing agents suitable for epoxy resins (like taught by Nakamura) (paragraphs 0107-0108).
In addition, Applicant argues that the examiner has improperly relied upon “inherency” to render properties of interlaminar shear strength (from claims 18-20) obvious.
To the contrary, the examiner has relied upon reasoning from the prior art references to strongly suggest the claimed properties. Specifically, Miyata teaches that the sizing agent improves interfacial adhesion between carbon fiber and the resin comprising thiol compound which provides for improved mechanical properties (paragraphs 0107 and 0108). Also, because Miyata teaches that the fiber-reinforced bismaleimide composite has a Tg of preferably greater than 250°C, the fiber-reinforced composite would be expected to exhibit about the same properties at room temperature at elevated temperature such as at 232°C (RTA vs TOS). Therefore, Miyata clearly suggests that there are desirable mechanical properties, including interlaminar shear strength, at elevated temperatures.
Nakayama teaches that its sizing agent provides “excellent” interfacial adhesion between carbon fibers and matrix resin (col. 9, lines 45-49) when compared to prior art’s carbon fiber surface treatments. Nakayama teaches that annealing the carbon fibers improves the adhesion even further (col. 10, lines 54-67). Nakayama discloses improving interlaminar shear strength and even a method of measuring interlaminar shear strength (col. 78, line 61 to col. 79, line 8) but does not give specific values of interlaminar shear strength. Nakayama therefore provides clear direction to have high levels of shear strength.
While neither specifically teaches interlaminar shear strength RTA (tested at room temperature) or TOS (tested at 232°C) as measured by the instant claims, such properties are suggested and expected by the prior art.
Applicant argues that the data of the specification establishes unexpected results for the claimed interlaminar shear strength.
The data has been fully considered, however, it is insufficient to establish unexpected results because the data is not a proper comparison to the prior art. Case law holds that comparative showings must compare the claimed subject matter with the closest prior art to be effective. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979). Specifically, the comparative examples which do not meet the claimed interlaminar shear strength, are not related to the teachings by Miyata. Specifically, CE1 (comparative example) does not have a sizing agent. CE-2 and CE-3 contain X-1 sizing agent which is an adduct of bisphehol A with 10 mole ethylene oxide but is not taught by Miyata. CE-4 and CE-5 contain X-2 sizing agent which is a 1,6-hexanediol diglycidyl ether with no functional group like taught by Miyata and Nakayama. Because both Miyata and Nakayama teaches improving interfacial adhesion by using specific coupling agents and therefore improved interfacial strength is expected, it would have been obvious to one of ordinary skill in the art to obtain the claimed properties.
Conclusion
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 VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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