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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/20/2025 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.
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.
Claims 13 and 14 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.
Claims 13 recites long axis. However, the written specification and drawings have no support for this. Correction is required. For purposes of compact prosecution, long axis is being interpreted as the major axis.
Claims 13 and 14 state A is an area of a cross section of the spinning product. However, the specification on pg. 9 lines 20+ state A is the projected area. Therefore, this new definition of A, cross section of the spinning product, is considered new matter since it is not found in the specification or drawings.
Claims 13 and 14 are 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.
Claims 13 and 14 state A is an area of a cross section of the spinning product. However, the specification on pg. 9 lines 20+ state A is the projected area. It is unclear if the formula is referring to the cross section of the spinning product or a projected area.
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.
Claim(s) 1 and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP5151809B2, herein referred to as ‘809.
Regarding claim 1, ‘809 teaches a method of manufacturing a carbon precursor fiber for a gas diffusion layer (pg.1 last paragraph), preparing a polyacrylonitrile-based copolymer (pg. 2 2nd paragraph); preparing a spinning product by spinning a spinning solution comprising the polyacrylonitrile- based copolymer into a coagulation bath (claim 1); and manufacturing the carbon precursor fiber by drawing the spinning products through heat treatment (claim 1),
wherein the coagulation bath comprises an amount of about 60% to 90% by volume of methanol and an amount of about 10% to 40% by volume of dimethylformamide based on the total volume of the coagulation bath (‘809 discloses using dimethylformamide as the solvent and coagulation accelerating component such as methanol (pg. 6 paragraph 4) and further discloses the solvent concentration of the coagulation bath is 70-90% (methanol) (pg. 6 paragraph). This, therefore makes the dimethylformamide 10-30% (100%- (70-90% of methanol)). MPEP 2144.04 states overlapping ranges is a prima facie evidence of obviousness. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a range of about 60% to 90% by volume of methanol and an amount of about 10% to 40% by volume of dimethylformamide based on the total volume of the coagulation bath since it has been' held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art);
wherein the spinning is performed in a condition in which the temperature of the coagulation bath is in a range of about -10 °C to 0 °C (claim 1 recites the coagulation bath temperature is 0 to 30° C which overlaps with applicant’s range of -10°C to 0°C. MPEP 2144.04 states overlapping range is a prima facie evidence of obviousness ).
Regarding claim 6, ‘809 discloses wherein the spinning solution is obtained by dissolving the polyacrylonitrile-based copolymer in a solvent at a temperature of about 65 C to 70° C (50-120 °C pg. 4 paragraph9). MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a range of 65-70 °C based on the required reaction time (pg. 4 paragraph 9).
Regarding claim 7, ‘809 discloses wherein the solvent comprises dimethylformamide (pg. 4 paragraph 13).
Regarding claim 8, ‘809 discloses wherein the spinning solution has a dynamic viscosity of about 90 to 110 Pa-s measured by a rotation rheometer at a shear rate of 0.06 rad/sec (pg. 5 paragraph 7-8).
Claim(s) 3, 5, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP5151809B2, herein referred to as ‘809 as applied to claim 1, and further in view of CN110305247A, herein referred to as ‘247.
Regarding claim 3, ‘809 discloses using methacrylic acid (pg. 4 paragraph 12) but does not explicitly disclose where polyacrylonitrile-based copolymer comprises less than about 4% by weight of methacrylic acid. However, analogous PAN art, ‘247 discloses wherein the polyacrylonitrile-based copolymer comprises less than about 4% by weight of methacrylic acid (example 2). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated less than about 4% by weight of methacrylic acid since it promotes the right amount of flame resistance (pg.4 last paragraph) without changing too much of the other chemical properties and it is conventionally known in the art.
Regarding claim 5, ‘809 doesn’t explicitly disclose the spinning solution is obtained by dissolving the polyacrylonitrile-based copolymer in a solvent at a concentration of about 5 to 30 g/dL. However, ‘247 discloses “fiber precursor polymer includes 22.0-94.59 parts of acidified water solvent, preferably 40-90 parts, more preferably 50-80 parts share. In the present invention, the acidified water solvent is preferably acidic deionized water, and the pH value of the acidified water solvent is preferably 2-4, more preferably 2.5-3.5. In the present invention, the pH value and dosage of water are preferably controlled within the above-mentioned range, which is beneficial to promote the efficient initiation of polymerization by the initiator system, and is also beneficial to reduce the occurrence of wall-hanging phenomenon in the polymerization process, improve the anti-scar effect, and further help to improve the polypropylene Tensile strength of nitrile carbon fibers” (pg. 3 paragraph 11). Although 247 discloses the solvent amount in parts, it is within one ordinary skill in the art to convert between parts and g/dl. MPEP 2144.05 states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 11, ‘809 does not explicitly disclose the temperature range of the drawing. One ordinary skill in the art would look to conventional art to determine the temperature range of the drawing. Analogous art, ‘247, discloses the drawing in performed at a temperature in a range of about 70 to 160 ° C (pg. 4 paragraph 3). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed to incorporate a range of about 70 to 160 ° C as taught by ‘247 into the method taught by ‘809 for the benefit of producing excellent acrylic fibers (page 2. Paragraph 3).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP5151809B2, herein referred to as ‘809 as applied to claim 1, and further in view of CN113430680 A, herein referred to as ‘680.
Regarding claim 2, ‘809 doesn’t explicitly disclose the polyacrylonitrile-based copolymer is prepared by free radical polymerization reaction of dimethyl sulfoxide and acrylonitrile using azobisisobutyronitrile as an initiator. However, analogous art, ‘680, discloses the polymerization initiator is a free radical initiator; the adopted free radical initiator is any one of azobisisobutyronitrile, azobisisoheptonitrile, dibenzoyl peroxide andazobiazobitert-butyl hydroperoxide. The solvent is any one of dimethyl sulfoxide, dimethylformamide, dimethylacetamide and cyclobuterol (pg. 3 paragraph 17-18). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated polyacrylonitrile-based copolymer is prepared by free radical polymerization reaction of dimethyl sulfoxide and acrylonitrile using azobisisobutyronitrile as an initiator, as taught by ‘680 into the method taught by ‘809, for the benefit of providing excellent mechanical properties (pg. 3 paragraph 6).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP5151809B2, herein referred to as ‘809 as applied to claim 1, and further in view of JP2008214816 A, herein referred to as ‘816.
Regarding claim 4, ‘809 doesn’t explicitly discloses wherein the polyacrylonitrile-based copolymer has a viscosity average molecular weight (Mv) in a range of about 400,000 to 460,000 g/mol. However, analogous acrylonitrile art, ‘816, discloses (step of mixing acrylonitrile copolymer A having a viscosity of not more than 500,000 or less with the copolymer solution of 0 ° C. or less to prepare slurry (a), and dissolving the slurry (a) at a temperature of 60 ° C. or higher;. pg. 2 paragraph 5). MPEP 2144.05 states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. Therefore, it would have obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a range of about 400,000 to 460,000 g/mol since it has been' held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP5151809B2, herein referred to as ‘809 as applied to claim 1, and further in view of JP2021075810 A, herein referred to as ‘810 and further in view of CN 11275561, herein referred to as ‘561.
Regarding claim 9, ‘809 does not explicitly disclose wherein the spinning is performed by discharging the spinning solution through a nozzle having a diameter of about 150 to 250 µm and a discharging speed of about 5 to 10 m/min. One ordinary skill in the art would look to conventional art to determine the standard diameter and discharging speed of the nozzle. Analogous acrylonitrile art, ‘810, discloses the inner diameter of the solution discharge hole is 210 μm (pg. 5 last paragraph). This overlaps with applicant’s range of 150-250 μm. As for, the discharging speed, although both ‘809 and ‘810 do not explicitly disclose the discharging speed based on the design needs of the final product. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP5151809B2, herein referred to as ‘809 as applied to claim 1, and further in view of A.P.M (US2014/0015161 A1).
Regarding claim 12, ‘809 does not explicitly disclose a draw ratio of about 10 to 30. However, analogous art, A.P.M, discloses, preferably, the draw ratio in the spinholes is at least 2, 5, 10, 15, 25, 40 or even at least 50, because extent and conditions of drawing can be well controlled in the spinholes. In addition, a higher draw ratio in the spinhole, with constant draw ratio in the air-gap, has been found to result in higher tensile strength of the yarn obtained. In a special embodiment, the DRsp is larger than DRag for the same reason. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a draw ratio of about 10 to 30 as taught by APM into the method taught by ‘809 for the benefit of creating a product with a higher tensile strength.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP5151809B2, herein referred to as ‘809, as applied to claim 1 and further in view of Kiriyama (JP2013181264 A)
‘809 does not explicitly disclose the spinning product/ carbon precursor fiber has a cross-sectional roundness of about 0.45- 0.75 and a cross-sectional circularity of about 0.50 to 0.71. Analogous carbon fiber art, Kiriyama, discloses a circularity of 0.70- 0.90. This overlaps with Applicant’s range of 0.45-.75 (pg.2 paragraph 3).
Applicant’s formula Circularity = 4*π* A/ ([Circumferences]2) simplifies to 4*π*πr2 /(π2r)2 = 4π2 r2/4π2 r2 = 1. The roundness formula is roundness = 4*π *A/ ([π* major axis]2) =4π*πr2 /[π(2r)2] =4π2 r2/4π2 r2 = 1. Therefore, the formulas are essential the same and also do results in cross-sectional roundness of about 0.45- 0.75 and a cross-sectional circularity of about 0.50 to 0.71
Therefore, Examiner is interpreting roundness and circularity to be the same. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a range of .45 -0.75, as taught by Kiriyama into the method taught by ‘809 since MPEP 2131.03 states prior Art which teaches a range within, overlapping or touching the claimed range is anticipated if the prior art range discloses the claimed range with “sufficient specificity” and for the benefit of providing a high quality carbon fiber bundle excellent in spreadability (pg. 2 paragraph 2).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-14 have been considered but are moot in light of the newly cited reference JP5151809B2, herein referred to as ‘809.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754