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 .
Election/Restrictions
Applicant's election with traverse of claims 1-11 in the reply filed on 6/02/2026 is acknowledged. The traversal is on the ground(s) that there is no technical evidence demonstrating the prepreg and epoxy resin are not capable of use together.
This is not found persuasive because MPEP 806.06 states that two different combinations, not disclosed as capable of use together, having different modes of operation, different functions and different effects are independent. The Applicant argues that the Examiner has not provided specific prior art or technical evidence demonstrating that the two can't be used together.
However, per 806.06, the standard requires that the two are not disclosed as capable of use together. The instant specification does not provide any disclosure that the two claimed products - a prepreg containing carbon fiber along with (A), (C), (D), and a specific epoxy (B), and an additional epoxy composition comprising (A)-(D) - can be used together. Three is no disclosure of adding more epoxy resin to an already-formed prepreg. Therefore these two inventions are not disclosed as capable of use together.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Harada US 20190225764 in view of Kaneko US 20180105690 in further view of Hughes US 20170362376 Al.
Regarding claims 1-2 and 4-5, Harada teaches a prepreg composition comprising component (B) where component B comprises an epoxy resin (Paragraph [0065-0066]). Harada teaches the component B comprises an epoxy resin YD-952 manufactured by NIPPON STEEL & SUMIKIN CHEMICAL CO (Paragraph [0074]). The instant specification teaches YD-952 reads on the limitations of the claimed component B (Instant specification, Page 22, Lines 5-11).
Harada also teaches the composition comprises a dicyandiamide and urea curing agent in component (B) (Paragraph [0094]). This reads on the claimed “urea compound” and “dicyandiamide”
Harada also teaches that a fiber base material (A) is impregnated with the composition B to form a prepreg (Paragraph [0137]). Harada teaches the fiber base material is carbon fibers (Paragraph [0058]). This reads on the limitations of the claimed “A.”
Harada is silent on the composition comprising an organic phosphonate metal salt. However Harada does teach the composition can comprise various additives including a flame retardant (Paragraph [0099]). Harada teaches the flame retardant can be a phosphorous compound (Paragraph [0099]). However Harada is silent on the specific type.
Kaneko teaches a prepreg comprising a carbon fiber based epoxy resin composition (Abstract, Title). Kaneko also teaches that the composition also comprises a urea compound, and a dicyandiamide compound (Paragraph [0026]). Kaneko also teaches the composition also comprises a phosphorous flame retardant (Paragraph [0116]). Kaneko also teaches the flame retardant is aluminum tris diethylphosphinate (Paragraph [0121]). This reads on the structure of claim 4 where R1 and R2 are alkyl groups, M is aluminum, and m = 3. It would have been obvious for one of ordinary skill in the art at the time of filing to select aluminum tris diethylphosphinate as the flame retardant of Harada as this is a flame retardant comprising phosphorous that is known in the art as being suitable in similar applications as a flame retardant. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Harada is also silent on the composition comprising a imidazole compound.
Hughes teaches a composition comprising an epoxy resin composition used to form a prepreg (Title, Abstract). Hughes teaches the composition comprises a urea compound a dicyandiamide compound, and an epoxy compound (Abstract). Hughes also teaches the fiber reinforced prepreg comprises carbon fiber (Paragraph [0114]). Hughes teaches an imidazole compound is additionally used as a curing accelerator (Abstract). It would have been obvious to one of ordinary skill in the art for the composition of Harada to additionally comprise an imidazole curing accelerator because Hughes teaches the addition of a curing accelerator is suitable in composition similar to Harada. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. Additionally, curing accelerators contribute to faster curing which is advantageous in curable epoxy resin compositions. This reads on the claimed imidazole compound.
Regarding claim 3, Harada also teaches the composition comprising a second epoxy resin, a bisphenol A epoxy resin (Paragraph [0076]). This reads on the claimed component (F).
Regarding claim 6, Harada in view of Kaneko teaches the limitations of claim 4 and 5. In Table 2 example 11, Kaneko teaches the flame retardant is 8 parts by mass based on 100 parts by mass of the epoxy resin component. This corresponds to a ratio of 0.08. This falls within the claimed range of 0.05 to 5. It would have been obvious to one of ordinary skill in the art to use the ratio of flame retardant to epoxy component in example 11 of Kaneko as the ratio of flame retardant to epoxy component of Harada because Kaneko teaches a suitable amount of flame retardant for compositions similar to Harada. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding claim 7, Harada in view of Kaneko teaches the limitations of claim 4 and 5.
In Table 2 example 11, Kaneko teaches the flame retardant is 8 parts by mass based on 155 parts by mass of the total composition. This falls within the claimed range of 1-20 parts by weight (A). It would have been obvious to one of ordinary skill in the art to use the amount of flame retardant taught in Kaneko example 11 as the amount of flame retardant in Harada because Kaneko teaches a suitable amount of flame retardant for compositions similar to Harada. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding claim 8, in table 1, example 1 of Harada, Harada teaches the composition comprises 26.8 parts by weight of TSR-400 which is the oxazoline containing epoxy resin component of the composition. This falls within the claimed range of 20-50 parts by weight (B). It would have been obvious to one of ordinary skill in the art to use the amount of oxazoline containing epoxy as shown in example 1 as the amount of YD-952 in the composition of Harada because example 1 of Harada shows that the 26.8 parts by weight of the oxazoline containing epoxy as suitable. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Regarding claim 9, Hughes teaches the composition comprises 1-5% of the imidazole curing accelerator (Paragraph [0020]). This overlaps with the claimed range of 1-30 parts by weight of component (C). It would have been obvious to use the amount of curing accelerator in the composition of Harada as this amount is shown to be suitable in similar compositions for similar applications. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding claim 10, Harada teaches the urea compound can be 3-phenyl-1 ,1-dimethylurea (Paragraph [0096]). This reads on the claimed phenyldimethylurea. IT would have been obvious to one of ordinary skill in the art at the time of filing to select 3-phenyl-1 ,1-dimethylurea as the urea compound because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Regarding claim 11, Harada teaches the resulting cured composition can be used to form a molded plate (Paragraph [0201]). This reads on the limitations of claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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