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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 8, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 2 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Considering Claims 1 and 2: Claims 1 and 2 have been amended to add the limitation that the phenoxy fibers are arranged and fixed within a plane with all the fibers aligned in parallel, allowing the matrix resin to flow along a longitudinal direction of the fibers to form the sheet shape. The original specification does not explicitly recite the orientation of the fibers, or that the flow is along a longitudinal direction of the fibers. The drawing the applicant recites as showing the orientation of the fibers does not have the resolution to determine if the fibers are in one direction, or if they have cross fibers within the fiber layer. As such, the original specification as filed does not provide support for the newly presented limitations.
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.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Wong (Toughening of epoxy carbon fibre composites using dissolvable phenoxy fibres, Doctoral Thesis, School of Engineering and Material Science, Queen Mary University of London, 2013) in view of LoFaro et al. (US 2006/0252334).
Considering Claim 1: Wong teaches a FRP molded product (pg. 133) formed by impregnating a fiber base material with a matrix resin using a phenoxy fiber sheet/flow medium (pg. 133), where the phenoxy fiber sheet comprises fibers made of phenoxy resin interspersed between carbon fiber layers in a stack (Figure 4.1), the matrix resin is an epoxy resin (pg. 132), and the wherein the phenoxy fibers are integrated within the epoxy resin by dissolution during curing (pg. 133). Wong teaches the outer layers as being made of the phenoxy fibers, and thus they would become part of the design face (Figure 4.1).
Wong teaches that the fibers in the phenoxy fiber sheet are randomly oriented. However, LoFaro et al. teaches a fiber reinforced composite having a resin soluble fiber layer, where the fibers are in a parallel direction (¶0101). Wong and LoFaro et al. are analogous art as they are concerned with the same field of endeavor, namely fiber reinforced composites. It would have been obvious to a person of ordinary skill in the art to have oriented the phenoxy fibers in the parallel direction with the machine direction, and the motivation to do so would have been, as LoFaro et al. suggests, to provide tensile strength, low elongation, and low tear strength in the machine direction (¶0101).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Wong (Toughening of epoxy carbon fibre composites using dissolvable phenoxy fibres, Doctoral Thesis, School of Engineering and Material Science, Queen Mary University of London, 2013) in view of LoFaro et al. (US 2006/0252334).
Considering Claim 2: Wong teaches a FRP molded product (pg. 133) formed by impregnating a fiber base material with a matrix resin using a phenoxy fiber sheet/flow medium (pg. 133), where the phenoxy fiber sheet comprises fibers made of phenoxy resin interspersed between carbon fiber layers in a stack (Figure 4.1), the matrix resin is an epoxy resin (pg. 132), and the wherein the phenoxy fibers are integrated within the epoxy resin by dissolution during curing (pg. 133). Wong teaches stacking the fiber base material and the phenoxy fiber sheets; and injection the epoxy resin into the fiber stack (pg. 133). Wong teaches the outer layers as being made of the phenoxy fibers, and thus they would become part of the design face (Figure 4.1).
Wong teaches that the fibers in the phenoxy fiber sheet are randomly oriented. However, LoFaro et al. teaches a fiber reinforced composite having a resin soluble fiber layer, where the fibers are in a parallel direction (¶0101). Wong and LoFaro et al. are analogous art as they are concerned with the same field of endeavor, namely fiber reinforced composites. It would have been obvious to a person of ordinary skill in the art to have oriented the phenoxy fibers in the parallel direction with the machine direction, and the motivation to do so would have been, as LoFaro et al. suggests, to provide tensile strength, low elongation, and low tear strength in the machine direction (¶0101).
Response to Arguments
Applicant’s arguments with respect to claims 1 and 2 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767