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
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-19, drawn to a composite.
Group II, claim(s) 20, drawn to an article comprising a composite.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a composite, this technical feature is not a special technical feature as it does not make a contribution over the prior art rejections set forth below.
During a telephone conversation with Christopher M. Durkee on 12/17/25 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-19. Affirmation of this election must be made by applicant in replying to this Office action. Claim 20 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10-13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Please note that according to independent claim 1 individual fiber filaments have a length-to-diameter ratio of at least 300, which is the same as saying they have an aspect ratio of greater than 300:1.
Dependent claim 10, requires that the carbon fiber filler has an aspect ratio greater than 300:1, but said is not further limiting of independent claim 1’s requirement of length-to-diameter ratio of at least 300 for the individual carbon fibers.
Dependent claims 11 and 12 have limitations wherein the carbon fiber fillers have aspects ratios of less than 300:1 (namely 200:1 and 50:1) respectfully. Said ratios are clearly outside the length-to-diameter ratio limitation set forth in independent claim 1.
Dependent claim 13 limitation of: “wherein the carbon fiber filler is not carbon nanotubes, carbon platelets, or carbon powder,” is not further limiting over the carbon fibers set forth in independent claim 1 which have a length-to-diameter ratio of at least 300. Please note that carbon nanotubes, carbon platelets, and carbon powder, by their very nature, do not have a length-to-diameter ratio of at least 300.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Examination Note:
It is important to emphasized that Applicant’s claims 1-19 are NOT drawn to a 3.175 mm thick molded sample of the composite, but are rather drawn only to the composite material itself. The reference to a 3.175 mm thick molded sample of the composite material, is only made to describe how such a molded sample of that thickness, would interact with microwave radiation.
Also note that the aspect ratio limitations of dependent claims 11 and 12 will be ignored in the following prior-art rejections because they are outside the scope of independent claim 1 from which they direct depend.
Claim(s) 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Katayama et al. U.S. Patent Application Publication No.: 2016/0111792 A1 as evidenced by Applicant’s cited I.D.S. data sheet entitled: “T700S STANDARED MODULUS CARBON FIBER”, 13 April 2018, by Toray Composite Materials America, Inc..
Katayama et al. discloses a thermoplastic resin composition capable of providing a molded article that is excellent in capability of shielding millimeter waves. A thermoplastic resin composition for a molded article having a capability of shielding millimeter waves, containing (A) a thermoplastic resin and (B) carbon long fibers having a fiber length of from 3 to 30 mm in a preferred amount of from 0.5 to 5% by mass (a more broad range is up to 30% by mass). A molded article obtained from the composition is excellent in capability of shielding millimeter waves and can be used as a protective member for a transmitting and receiving antenna of a millimeter wave radar, see abstract, independent claim 1 paragraph [0028], examples and dependent claims.
Katayama et al.’s thermoplastic resin matrix material can be selected to be a polybutylene terephthalate polyester, see paragraph [0020] and claim 2, and thus reads directly on applicant’s preferred polyester resin matrix component of dependent claims 2-3.
Katayama et al.’s component (B) carbon long fibers have a more preferred carbon length of 5 to 20 mm and even more preferred carbon length from 6 to 15 mm, see paragraph [0024] and Production Example 1 and Examples 1-3. It is noted that applicant’s dependent claim 8 limitation of where the individual filaments of the carbon fiber filler are from 5 to 10 mm long, falls directly with Katayama et al.’s preferred carbon length range of 5 to 20 mm, and overlaps Katayama et al.’s even more preferred carbon length range of 6 to 15 mm.
Also note that Katayama et al.’s Production Example 1, discloses that the carbon fibers used in the examples are sold under the Tradename of T700SC. According to Applicant’s cited I.D.S. data sheet entitled: “T700S STANDARED MODULUS CARBON FIBER”, 13 April 2018, by Toray Composite Materials America, Inc.., carbon fibers sold under the Tradename of T700SC have a density of 1.80g/cm3 (i.e. 1800g/l) which clearly meets Applicant’s independent claim 1 requirement that the bulk density of the carbon fiber is at least 500g/l.
Furthermore, said data sheet also discloses that the individual filament diameter of T700SC carbon fibers are 7 um (microns) (i.e. 0.007 mm). Said information can then be used to calculate the individual filament carbon fiber “length-to-diameter” ratios of Katayama et al.’s invention. As of illustration only, if the individual filament carbon fiber length is set to be 8 mm (falls within Katayama et al.’s most preferred range and also within applicant’s preferred range of dependent claim 8), the calculated individual filament carbon fiber “length-to-diameter” ratio would be 8mm/0.007mm or about 1,142.86:1. As such, Applicant’s individual filament carbon fiber “length-to-diameter” ratios of independent claim 1 and dependent claims 9-10, are thus clearly met.
Please note that Katayama et al.’s Examples 1-3 use a concentration of thermoplastic resin of: 97% by mass, 93.75% by mass and 87.5% by mass respectfully, all of which fall directly within Applicant’s thermoplastic concentration range as set forth in independent claim 1.
Katayama et al.’s paragraphs [0038]-[0044] and ([0070]-0074] for the examples), disclose the various electromagnetic wave shielding properties of the molded articles made from the disclosed composite compositions, which are deemed to extensively overlap Applicant’s specifically claimed electromagnetic wave shielding properties as set forth in independent claim 1 and the dependent claims.
Katayama et al. differ from Applicant’s claimed invention only in that there is not a direct teaching (i.e. by way of a specific example) to where the thermoplastic resin matrix material used is a polybutylene terephthalate polyester.
It would have been obvious to one having ordinary skill in the art to use Katayama et al.’s disclosure to where the thermoplastic resin matrix material can be selected to be a polybutylene terephthalate polyester, see paragraph [0020] and claim 2, as strong motivation to actually use a polybutylene terephthalate polyester as the matrix material for the carbon fibers. It is well known in the art that it is not inventive to merely follow the direct suggestion of a prior-art reference.
Claim(s) 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Katayama et al. U.S. Patent Application Publication No.: 2016/0111792 A1 as evidenced by Applicant’s cited I.D.S. data sheet entitled: “T700S STANDARED MODULUS CARBON FIBER”, 13 April 2018, by Toray Composite Materials America, Inc. and further in view of either EP 3 845587 A or Geng et al. EP 3712209 A1.
Katayama et al. and the data sheet has both been described above. Katayama et al. further differ from applicant’s claimed invention in that there is no direct disclosure to where a poly(carbonate-siloxane) copolymer can be further incorporated with the thermoplastic resin (e.g. a polybutylene terephthalate polyester) matrix material.
EP 3 845587 A directly discloses that poly(carbonate-siloxane) copolymers can be used in a microwave absorptive process, see claims 1, 3, 6-10, 12-13, 15 and figures 23-27.
Geng et al. EP 3712209 A1 directly discloses thermoplastic compositions, wherein the thermoplastic resin used preferably comprises polybutylene terephthalate in combination with ceramic fibers. Geng et al. further discloses that is it preferably that a siloxane copolymer be incorporated into the polybutylene terephthalate matrix to improve its impact resistance, see tables 2A, 3A and examples 2 and 3.
It would have been obvious to one having ordinary skill in the art to use the individual disclosure of either secondary reference to EP 3 845587 A or Geng et al. EP 3712209 A1, as strong motivation to actually incorporate a poly(carbonate-siloxane) copolymer into Katayama et al.’s thermoplastic resin compositions for the benefits it would impart (e.g. improved impact resistance). Please note that Katayama et al. also discloses that polycarbonate resins may also be used for their matrix material, see paragraph [0020] and dependent claim 2, which provides additional motivation to actually incorporate a poly(carbonate-siloxane) copolymer into the thermoplastic matrix. It is well known in the art that it is not inventive to merely follow the direct suggestion of prior-art references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764