DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1, 3-8, 10, 12-13, 15-25 are pending.
Claim Rejections - 35 USC § 103
Claims 1, 3-8, 10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yoon et al. (US 2017/0175001).
Regarding claim 1: Yoon is directed to an isotropic pitch composition comprising: at least two monomers linked with at least one methylene bridge wherein each one of the at least two monomers comprising one or more aromatic classes comprising one or more 5 membered or 6 membered rings, and combinations thereof (Fig. 4 illustrating 6 membered rings). The molecular weight is 400-2000 amu ([0025] (equivalent to Mw of about 300-750 g/mol). The softening point is 30-120 ˚C ([0052]). The pitch comprises 3 and 4-ring alkylaromatic condensates, and linked to each other in a methylene form ([0021]). The composition comprises dimers, trimers, tetramers, pentamers and combinations thereof. Specifically, Fig. 4 demonstrates a mixture of trimer, and pentamer.
While a specific pitch composition simultaneously comprising a Mw of 300-750 and dimers, a softening point of about 90-300 g/mol, and also comprise trimers, tetramers, pentamers and combinations thereof, it would have been obvious to have selected such a specific pitch composition since the aforementioned limitations at least overlap.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected an isotropic pitch composition having a Mw, TSp, and also comprise trimers, tetramers, pentamers and combinations thereof.
A micro carbon residue (MCR) is not mentioned. However, the isotropic pitch composition produced in Yoon is substantially identical to the isotropic pitch composition produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Yoon suggests an isotropic pitch composition having a MCR within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 3: Arc3, ARC4, and ARC5 rings are disclosed in Figure 4.
Regarding claim 4: C1 to C20 hydrocarbyl monosubstituted aromatics are disclosed in Figure 4.
Regarding claims 5-6: Embodiment 1 comprise 0.1 wt% 1 ring (ARC1), 3.0 wt% 2 rings ARC2), 17.8 wt% 3 rings (ARC3), 36.5 wt% 4 rings (ARC4), 23.5 wt% 5 rings (ARC5), and 19.2 wt% of 6 rings or more (ARC6 to ARC10+).
Regarding claim 7: Fig 4 discloses one or more aromatic classes that comprise a partially hydrogenated aromatic ring, i.e.
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Regarding claim 8: Benzene, naphthalene, anthracene, pyrene, or coronene are disclosed ([0059] and Figure 4.
Regarding claim 10: A transition glass temperature is not mentioned. However, the isotropic pitch composition produced in Yoon is substantially identical to the isotropic pitch composition produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Yoon suggests an isotropic pitch composition having a transition glass temperature within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 12: The isotropic pitch compositions are used for producing carbon fibers.
Response to Arguments
Applicant's arguments filed 5/26/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 7-8 Remarks) Yoon discloses two pitch materials, neither of which meets the present claims. Yoon’s “basic pitch” includes dimers, trimers, tetramers and pentamers illustrated in Fig. 4 although a softening point of 30-120 ˚C ([0052] and provides no Mw data or MCR data for this intermediate. Yoon’s final high softening point pitch is obtained by subjecting the basic pitch to vacuum heat treatment that removes 95% of the low molecular weight of 400 or less ([0053]-[0054] claim 6 Examples 1-6). All molecular weight data in Yoon and all high softening point values are exclusive to this post removal product.
This argument is not found persuasive since the Mw range of 400-2000 g/mol and softening point of 272-305 ˚C of the final pitch at least overlaps the claimed range. Further, if 95% of molecular weight material of 400 of less leaves material having a molecular weight of at least 400 and 5% of material having a molecular weight less than 400.
Applicant argues (p. 8 Remarks) the MCR of 18-40 wt% is absent from Yoon and materially different including the low molecular weight materials stripped away made by radical polymerization of vinyl chloride polymer + ethylene bottom and therefore substantially different than the disclosed formaldehyde/sulfuric acid catalyzed methylene bridge route.
This argument is not found persuasive. While a micro carbon residue (MCR) is not mentioned, the isotropic pitch composition produced in Yoon is substantially identical to the isotropic pitch composition produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Yoon suggests an isotropic pitch composition having a MCR within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Conclusion
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).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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