DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. In the applicant’s reply of 9 September 2026, the claims were amended. The § 102 rejections included in the previous office action have been reconsidered in view of these amendments. The amendments have also raised new issues under 35 U.S.C. 112(a). See below.
Response to Arguments
3. Applicant’s arguments filed 9 September 2026 have been fully considered but they are not persuasive.
4. The applicant argues that Hehl fails to teach a cutting machine in which the bond between the multiple single fibers of the thread-state fiber is loosened, and which is configured to continuously cut the thread-state fiber into fiber pieces of 2 mm to 20 mm in length, to cut the thread-state fiber so that the single fibers in each of the fiber pieces are kept in a bundle in a loosened state, and to feed the fiber pieces into the cylinder as loosened fiber bundles. However, apart from the length of the fiber pieces, these limitations describe the state of the thread-state fiber and of the fiber pieces, i.e., the material worked upon by the claimed injection molding machine. See MPEP 2115. Claim 1 recites no structure of the cutting machine that loosens the bond between the single fibers or that keeps the single fibers in a bundle. The specification itself attributes the loosening to the low bonding strength of the binder ([0033] of the publication of the present application, US 2024/0239027 A1), and describes the fiber pieces as slightly loosened but kept in a bundle state immediately after cutting ([0035]). A thread-state fiber having such a binder would behave in the same manner when drawn from the unwinding device 16 and cut by the cutting machine of Hehl, and the cutting machine of Hehl is therefore capable of satisfying these limitations. See MPEP 2114(II). As to the length of the fiber pieces, Hehl discloses that the fibrous inserts are introduced in a controlled and programmed manner, “particularly with respect to length” ([0021]), so the cutting machine of Hehl is capable of cutting fiber pieces of 2 mm to 20 mm in length. Further, the length of the fiber pieces, as well as the loosening of the thread-state fiber in the cutting machine, is also addressed by the new rejection over Hehl in view of Kitayama below, which is necessitated by the amendment.
5. In response to applicant’s argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a width of each of the cut fiber pieces of 2 mm to 20 mm, a filler of about 0.1 mm to 3.0 mm in the final resin molded substance, and a stable supply of the cut fibers into the cylinder without the fiber pieces needing to be forcibly pushed into the cylinder) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
6. The applicant further argues that one of ordinary skill in the art would not be motivated to modify Hehl’s cutting machine, because Hehl is not concerned with loosening the fiber pieces or with forming a filler having a particular filler length in the final resin molded substance. The rejection under 35 U.S.C. 102 does not rely on any modification of Hehl. As to the rejection under 35 U.S.C. 103, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Kitayama teaches feeding roved fibers to a cutter with feeding rolls that spread them, and teaches cutting the roved fibers into lengths of about 3-25 mm to obtain a molded article that is excellent in physical properties such as impact strength, as set forth in the rejection under 35 U.S.C. 103 below. That Hehl itself is not concerned with these matters does not prevent the combination, and the reason to combine need not be the same as the applicant’s. See MPEP 2144(IV).
7. The applicant’s argument regarding newly added claim 17 is addressed by the new rejection of that claim under 35 U.S.C. 103 below.
Claim Rejections - 35 USC § 112
8. The following is a quotation 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.
9. 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.
10. Claims 1-3, 6, and 17 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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.
11. Paragraph numbers in this section refer to the publication of the present application, US 2024/0239027 A1, which the applicant also relied on for support in the reply.
12. Claim 1 recites that the cutting machine is configured to continuously cut a thread-state fiber “into fiber pieces of 2 mm to 20 mm in length”, and claim 17 recites that the predetermined length of the fiber pieces is “between 2 mm to 20 mm”. The original disclosure does not describe fiber pieces having a length in this range. The only range of 2 mm to 20 mm in the original disclosure is a width of the thread-state fiber, not a length of the cut fiber pieces: “A width of the thread (string, tape-shaped member) is, for example, about 5 mm. As this width, a range of about 2 mm to 20 mm is applicable.” ([0033]). Original claims 5 and 11 likewise recite this range as a width of the cut fiber piece, while original claims 4 and 10 separately recite a length of the cut fiber piece, so the original disclosure treats the width and the length of the fiber pieces as distinct dimensions. The cut lengths actually disclosed are 5 mm ([0035]; Fig. 4); 50 mm, 100 mm, and 140 mm ([0045]; Fig. 9); 50 mm, 100 mm, and 150 mm ([0057]-[0058]; Fig. 11); and a length equal to or shorter than 140 mm where the screw diameter is 46 mm ([0042]). A single example of 5 mm does not reasonably convey possession of the claimed range of 2 mm to 20 mm. See MPEP 2163.05(III). Moreover, the specification teaches that the properties of the resin molded substance are increased by increasing the length of the fiber pieces ([0043], [0058]-[0059]). The reply identifies Figs. 1-3 and [0029], [0030], and [0033]-[0035] as support for the amendments, but none of these passages describes fiber pieces having a length of 2 mm to 20 mm, and [0033] describes the range as a width of the thread.
13. Claim 17 further recites that the cutting machine includes “a set section and a roller configured to loosen and feed the loosened thread-state fiber to a cutter”. The original disclosure does not describe the roller as loosening the thread-state fiber. The specification describes the roller 15b as feeding the thread-state fiber 16a drawn from the roving R by a certain length, so that the fiber protrudes from the position of the cutter blade 15c by the predetermined length L ([0030]; Fig. 2). It attributes the loosening of the thread-state fiber to the low bonding strength of the binder ([0033]; Fig. 3), and it describes the fiber pieces as slightly loosened immediately after cutting ([0035]; Fig. 4), which suggests that, if anything, the cutting loosens the fiber. Nothing in the original disclosure attributes any loosening to the roller.
14. Claims 2, 3, and 6 are rejected based on their dependency from claim 1.
Claim Interpretation
15. Claim 17 recites “a set section and a roller configured to loosen and feed the loosened thread-state fiber to a cutter”. The phrase “configured to loosen and feed the loosened thread-state fiber to a cutter” is being interpreted as modifying the roller only. Claim 17 does not recite any function or structure of the set section. Accordingly, for purposes of examination, the set section is being interpreted as any section of the cutting machine. The corresponding disclosure in the specification is the set section 15a, to which the thread-state fiber (roving R) wound around a member is attached ([0030] of the publication of the present application; Fig. 2).
Claim Rejections - 35 USC § 102
16. 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.
17. Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0272847 (“Hehl”) (cited in an IDS).
18. Regarding claim 1, Hehl discloses an injection molding machine ([0016], Fig. 1) comprising:
19. a cylinder (Fig. 2) having a first hole (at the material infeed region 13, Fig. 2, [0016]) 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]);
20. a cutting machine (the device 17 and/or the device 18, Figs. 3-4, [0017]-[0019]); and
21. a screw disposed inside the cylinder (the plasticizing screw 11, Fig. 2, [0016]),
22. wherein the cutting machine is configured to continuously cut a thread-state fiber into fiber pieces of 2 mm to 20 mm in length, and to feed the fiber pieces into the second hole, ([0017]-[0021]. Hehl discloses that the length of the fibre “can be determined in association with the length at the fed fibre strand by means of a cutting edge of the plunger 18a” ([0019]), and that the fibrous inserts 12 are introduced in a controlled and programmed manner, “particularly with respect to length and quantity” ([0021]). The cutting machine of Hehl is therefore capable of cutting the fibre strand 15 into fiber pieces of 2 mm to 20 mm in length. 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).)
23. the thread-state fiber being composed 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 is composed of multiple single fibers bonded together by a binder. See MPEP 2114(II), discussed above.)
24. the binder being 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.)
25. wherein the bond between the multiple single fibers of the thread-state fiber is loosened in the cutting machine, (This limitation is directed to the state 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. Claim 1 recites no structure of the cutting machine that performs the loosening, and the specification attributes the loosening to the low bonding strength of the binder ([0033] of the publication of the present application, US 2024/0239027 A1). The cutting machine of Hehl, which draws the fibre strand 15 from the unwinding device 16 and cuts it (Figs. 3-4, [0019]), is capable of cutting a thread-state fiber whose bond is loosened in the cutting machine. See MPEP 2114(II), discussed above.)
26. wherein the cutting machine is configured to cut the thread-state fiber so that the single fibers in each of the fiber pieces are kept in a bundle in a loosened state, (The cutting machine of Hehl cuts the fibre strand 15 into fibrous inserts 12 by means of the cutting edge of the plunger 18a (Figs. 3-4, [0019]). Whether the single fibers in each cut piece are kept in a bundle in a loosened state depends on the thread-state fiber that is cut, i.e., the material worked upon, consistent with [0035] of the publication of the present application. See MPEP 2115, discussed above. The cutting machine of Hehl is capable of cutting a thread-state fiber in this manner. See MPEP 2114(II), discussed above.)
27. the cutting machine being further configured to feed the fiber pieces into the second hole as loosened fiber bundles, the second hole being a dedicated hole for feeding the fiber pieces into the cylinder. (The device 18 introduces the fibrous inserts 12 into the plasticizing unit 10 through the introduction opening 14 (Figs. 3-4, [0018]-[0019], [0021]), and is capable of doing so where the fibrous inserts 12 are loosened fiber bundles. See MPEP 2114(II) and 2115, discussed above. The introduction opening 14 is provided for the fibrous inserts 12 and/or fillers, separately from and downstream of the material infeed region 13 for the plasticizable material (Fig. 2, [0017], [0021]).)
28. Regarding claim 2, Hehl discloses that the fiber is carbon fiber or glass fiber ([0019]. Additionally, note MPEP 2115, discussed above.).
29. Regarding claim 3, Hehl discloses that the cutting machine cuts the thread-state fiber 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.).
30. Regarding claim 6, see MPEP 2114(II), discussed above. Additionally, see Fig. 3 of Hehl.
Claim Rejections - 35 USC § 103
31. 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.
32. 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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed 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.
33. Claims 1-3, 6, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0272847 (“Hehl”) (cited in an IDS) in view of US 6,159,408 (“Kitayama”) (previously cited).
34. Regarding claim 1, Hehl discloses the injection molding machine as set forth in the rejection of claim 1 under 35 U.S.C. 102 above.
35. Hehl does not expressly disclose a numerical length of the fibrous inserts 12. Hehl also does not expressly disclose how the fibre strand 15 is advanced from the unwinding device 16 to the cutting edge of the plunger 18a, or that the bond between the single fibers of the fibre strand 15 is loosened in the cutting machine.
36. Kitayama, which is directed to producing molded articles of fiber-reinforced thermoplastic material by feeding reinforcing fibers cut by a roving cutter into a plasticizing apparatus (column 1, lines 8-11; column 6, lines 18-30; Fig. 1), teaches a roving cutter 1 having a first feeding roll 111 and a second feeding roll 112 “for sending out roved fibers (L) with spreading them,” and a cutting roll 12 “provided on the exit side of the feeding rolls,” such that the roved fibers are cut into a predetermined length that is set by the pitch of the cutting blades (column 6, line 61 to column 7, line 10; Fig. 2). Kitayama teaches that the pitch “is set so that the reinforcing fibers are cut into about 3-50 mm, preferably about 3-25 mm,” and gives an example in which roved glass fibers are cut into 14 mm length (column 7, lines 8-13). The roved strand contains monofilaments “bundled with a binder,” and is cut into chopped strands (column 4, line 66 to column 5, line 11). Kitayama further teaches that a molded article containing reinforcing fibers with a weight average length of about 2 mm or more is excellent in physical properties such as impact strength (column 3, line 63 to column 4, line 2).
37. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cutting machine of Hehl to include feeding rolls that advance the fibre strand 15 to the cutting edge while spreading it, and to set the length of the cut fibrous inserts 12 within the range of about 3 mm to about 25 mm, such as 14 mm, as taught by Kitayama. Hehl leaves the length of the fibrous inserts to be set in a controlled and programmed manner without specifying a value ([0021]), and does not describe how the fibre strand is advanced to the cutting edge ([0019]). Kitayama supplies both: feeding rolls that send out the roved fibers to the cutter by a predetermined length, and a cut length of about 3-25 mm that yields a molded article excellent in impact strength (column 3, line 63 to column 4, line 2; column 6, line 61 to column 7, line 13). One of ordinary skill in the art would have been motivated to make this modification in order to feed the fibre strand to the cutting edge of Hehl by a controlled length and to obtain molded parts with improved impact strength. The modification applies a known technique to a known device ready for improvement to yield predictable results, and selects a fiber length known in the art to be suitable for its intended purpose. See MPEP 2143(I)(D) and 2144.07. Further, the range of about 3-25 mm taught by Kitayama overlaps the claimed range of 2 mm to 20 mm, and Kitayama’s example of 14 mm lies within it. See MPEP 2144.05(I).
38. Hehl as modified in this manner is referred to below as “modified Hehl”.
39. In modified Hehl, the cutting machine is configured to continuously cut the thread-state fiber into fiber pieces of 2 mm to 20 mm in length, as set forth above. Although the remaining limitations directed to the state of the thread-state fiber and of the fiber pieces do not impart patentability to the apparatus claim, as set forth in the rejection under 35 U.S.C. 102 above, modified Hehl also meets them. In modified Hehl, the bond between the multiple single fibers of the thread-state fiber is loosened in the cutting machine (the feeding rolls 111, 112 send out the roved fibers L “with spreading them”; Kitayama, column 6, lines 61-67), the cutting machine cuts the thread-state fiber so that the single fibers in each of the fiber pieces are kept in a bundle in a loosened state (the spread roved fibers L are cut into chopped strands; Kitayama, column 5, lines 1-11, and column 7, lines 2-13; Fig. 2), and the cutting machine feeds the fiber pieces into the second hole as loosened fiber bundles (Hehl, Figs. 3-4, [0018]-[0019], [0021]). The remaining limitations of claim 1 are met as set forth in the rejection under 35 U.S.C. 102 above.
40. Regarding claims 2, 3, and 6, modified Hehl meets these limitations as set forth in the rejections of these claims under 35 U.S.C. 102 above.
41. Regarding claim 17, modified Hehl discloses that the cutting machine includes a set section (the unwinding device 16 of Hehl; Figs. 3-4, [0019]. Additionally, see the Claim Interpretation section above.) and a roller configured to loosen and feed the loosened thread-state fiber to a cutter (the feeding rolls 111, 112, which send out the roved fibers L to the cutter “with spreading them”; Kitayama, column 6, lines 61-67; Fig. 2. In modified Hehl, the feeding rolls advance the fibre strand 15 to the cutting edge of the plunger 18a, as set forth above.), the cutter being positioned in the cutting machine so that the loosened thread-state fiber protrudes out from the position of the cutter by a predetermined length (In Hehl, the fed fibre strand 15 extends past the cutting edge into the introduction opening 14, and the length of the fibre is determined “in association with the length at the fed fibre strand by means of a cutting edge of the plunger 18a”; Fig. 3, [0019]. In modified Hehl, the feeding rolls send out the fibre strand by the predetermined length before it is cut; Kitayama, column 7, lines 2-13.), the cutter being configured to continuously cut the thread-state fiber into fiber pieces having the predetermined length (Hehl, [0018]-[0021]; Kitayama, column 7, lines 2-13), the predetermined length being between 2 mm to 20 mm (as set forth in the rejection of claim 1 above; Kitayama, column 7, lines 8-13; MPEP 2144.05(I)).
Conclusion
42. Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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).
43. 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.
44. 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, 9:00 AM-5:00 PM ET.
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46. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao (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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