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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. The applicant's submission filed on 22 May 2026 has been entered.
Response to Amendment
In the applicant’s reply of 22 May 2026, the claims were amended. The § 103 rejections included in the previous office action have been reconsidered in view of these amendments.
Response to Arguments
The applicant's arguments have been fully considered, but they are not persuasive.
Initially, please note that the applicant’s amendment canceling the limitation that a length of each cut fiber piece is equal to or smaller than a circumference of the screw located immediately below the second hole has necessitated changes to the previous rejections, which relied on Hehl in view of Kitayama. The claims are now rejected over Hehl alone. See below.
Regardless, the applicant’s arguments are focused on the newly recited limitations concerning the thread-state fiber, namely, that the thread-state fiber consists of multiple single fibers bonded together by a binder, that the binder is either an epoxy-based resin dissolved in an organic solvent or an epoxy-based resin emulsified and dispersed in water, and that a width of each of the cut fiber pieces is equal to or larger than 2 mm and equal to or smaller than 20 mm. These limitations are directed to the material worked upon by the claimed injection molding machine, do not further limit the structure of the apparatus, and therefore do not patentably define over Hehl. See MPEP 2115; In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963). To the extent any of these limitations is construed to impose a functional requirement on the apparatus, the apparatus of Hehl is capable of satisfying it, as set forth in the rejection of claim 1 below. See MPEP 2114(II). The asserted benefits of the recited features, including loosening of the fiber pieces, improved dispersibility in the molten resin, and the resulting filler length in the molded substance, are properties of the processed material and the resulting molded substance rather than structural features of the claimed machine, and likewise do not impart patentability.
Claim Interpretation
As previously noted, claim 1 requires a first hole “located upstream” and a second hole that is “located downstream of the first hole”. The language that the first hole is located upstream is being interpreted as meaning upstream from the second hole.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 6, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0272847 (“Hehl”) (cited in an IDS).
Regarding claim 1, Hehl discloses an injection molding machine ([0016], Fig. 1) comprising:
a cylinder (Fig. 2) having a first hole (at the material infeed region 13, Fig. 2, [0016]) which is located upstream (Fig. 2) and through which a resin material is supplied ([0016]) and a second hole (the introduction opening 14, Fig. 2, [0017]) which is located downstream of the first hole (Fig. 2, [0017]) and through which a filler is supplied ([0017]);
a cutting machine (the device 17 and/or the device 18, Figs. 3-4, [0017]-[0019]); and
a screw disposed inside the cylinder (the plasticizing screw 11, Fig. 2, [0016]),
wherein the cutting machine is configured to continuously cut a thread-state fiber to a constant length, and to input cut fiber pieces into the second hole ([0017]-[0021]. Additionally, please note that, as discussed in MPEP 2114(II), “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Also, as discussed in MPEP 2115, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963).);
wherein the thread-state fiber consists of multiple single fibers bonded together by a binder (This limitation is directed to the thread-state fiber, i.e., the material worked upon by the claimed injection molding machine, and does not impart patentability to the apparatus claim. See MPEP 2115, discussed above. Moreover, the cutting machine of Hehl (the device 17 and/or the device 18, Figs. 3-4, [0017]-[0019]) is capable of cutting and inputting a thread-state fiber that consists of multiple single fibers bonded together by a binder. See MPEP 2114(II), discussed above.);
wherein the binder is either an epoxy-based resin dissolved in an organic solvent, or an epoxy-based resin emulsified and dispersed in water (This limitation is directed to the composition of the binder of the thread-state fiber, i.e., the material worked upon by the claimed injection molding machine, and does not impart patentability to the apparatus claim. See MPEP 2115, discussed above.); and
wherein a width of each of the cut fiber pieces is equal to or larger than 2 mm and equal to or smaller than 20 mm (This limitation is directed to a dimension of the cut fiber pieces, i.e., the material worked upon by the claimed injection molding machine, and does not impart patentability to the apparatus claim. See MPEP 2115, discussed above. Moreover, the cutting machine of Hehl (the device 17 and/or the device 18, Figs. 3-4, [0017]-[0019]) is capable of cutting and inputting a thread-state fiber, and cut fiber pieces, having a width in the recited range. See MPEP 2114(II), discussed above.).
Regarding claim 2, Hehl discloses that the fiber is carbon fiber or glass fiber ([0019]. Additionally, note MPEP 2115, discussed above.).
Regarding claim 3, Hehl discloses that the cutting machine cuts the thread-state fiber to the constant length after arranging a plurality of the thread-state fibers or stacking the plurality of the thread-state fibers ([0017] discloses that there is “at least one cutting or separating device 17” to which “at least one fibre strand 15 can be applied” (emphasis added). In other words, there may be more than one cutting device 17 and/or more than one fibre strand 15 being cut, which would inherently involve “arranging a plurality of the thread-state fibers”, as claimed. Additionally, see MPEP 2114(II), discussed above.).
Regarding claim 6, see MPEP 2114(II), discussed above. Additionally, see Fig. 3 of Hehl.
Regarding claim 15, see the rejection of claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Specifically, regarding the newly added claim limitations, please see:
US 6,159,408 (“Kitayama”) (previously cited), which discloses a roved strand containing several hundreds or several thousands of monofilaments bundled with a binder and preferably treated with a surface sizing agent (column 5, lines 1-16), and a roving cutter having a cutting roll with a width wider than the spreading width of the roved fibers (column 6, lines 62-67; Figure 2).
US 2014/0065257 (“Izawa”) (cited in an IDS), which discloses long carbon fiber assemblies, in chopped strand form, each formed of a plurality of single carbon fibers bonded by a sizing agent and having a width of approximately 10 mm ([0027]).
JP 2019-55550 A (“Yasue”) (cited in an IDS), which discloses a roving formed of a plurality of single fibers to which a sizing agent made of an epoxy resin is added (attached machine translation).
JP 3227199 U (cited in an IDS), which discloses a carbon fiber tow formed of single fibers coated with an epoxy-based resin serving as a sizing agent (attached machine translation).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John DeRusso whose telephone number is (571)270-1287. The examiner can normally be reached Monday-Friday, 10:00 AM-6:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Zhao, can be reached at (571) 270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John J DeRusso/Primary Examiner, Art Unit 1744
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