DETAILED ACTION
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 .
Response to Amendment
Applicant’s amendment filed on June 11, 2026 has been entered. Claims 12 and 13 have been amended. Claim 24 has been cancelled. As such, Claims 1-23 are currently pending in the application, with Claims 1-11 withdrawn from consideration.
Terminal Disclaimer
The terminal disclaimer filed on June 11, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of co-pending Application Serial No. 18/727,154 has been reviewed and is accepted. The terminal disclaimer has been recorded. The double patenting rejection set forth in the previous Office Action has been overcome.
Claim Rejections - 35 USC § 103
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.
Claims 12-20, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,639,807 to Secrist et al. (“Secrist”) in view of U.S. Patent Application Publication No. 2013/0196154 to Ortlepp et al. (“Ortlepp”), and further in view of Japanese Patent Application Publication No. 2020-196882 to Kobayashi et al. (an English translation obtained from the PE2E database is referenced herein) (“Kobayashi”).
With regard to Claims 12 and 13, Secrist discloses an aggregate in pellet form comprising carbon fibers mixed with a solution of sizing agent and provided through processing with a streamlined shape. See, e.g., Abstract, entire document. Secrist discloses the pellets have a spindle-shape with a thicker central portion that gradually tapers off towards both of the opposite ends. Figure 2 and column 2, lines 30-37. Secrist discloses that the sizing agent acts as a binder to bundle the carbon fibers and that the sizing agent can comprise a thermoplastic or thermosetting resin. Column 3, lines 17-35. Secrist discloses that the carbon fibers have a length in the range of 1 mm to 10 mm. Column 3, lines 1-3. Secrist also discloses that the aggregate pellet possesses a length in the range of 4 mm to 20 mm, column 4, lines 48-51, including individual examples having a pellet lengths of 9 mm, 12 mm, and 18 mm. See, e.g., Examples 2-4. Secrist suggests that recycled, or regenerated, material is usable in their invention. Column 3, lines 54-58. However, Secrist does not specifically disclose that the carbon fibers of the spindle-shaped aggregate include recycled carbon fibers. Ortlepp is also related to the formation of carbon fiber reinforced pellet materials comprising carbon fiber and a thermoplastic resin. See, e.g., Abstract, entire document. Ortlepp teaches that carbon fiber-containing pellets can be formed using recycled carbon fibers rather than virgin fibers. Paragraph [0048]. Ortlepp teaches that the recycled carbon fibers can have a length in the range of 3 mm to 150 mm. Paragraph [0021]. It would have been obvious to a person having ordinary skill in the art at the time of the invention to utilize recycled carbon fibers in the carbon fiber pellets disclosed by Secrist in order to provide a material that is economically and environmentally friendly compared to non-recycled materials, as shown to be known by Ortlepp in the same filed of endeavor, paragraph [0004], and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). The combination of Secrist with Ortlepp is silent with respect to the recycled carbon fiber having a residual carbon component in the range of more than 0% to 5.0%. As such, the person having ordinary skill in the art would find it necessary, and therefore obvious, to seek out valid residual carbon amounts in the same field of endeavor. Kobayashi is also related to aggregate materials that comprise resin reinforced with carbon fibers, such as recycled carbon fibers. See, e.g., Abstract, entire document. Kobayashi teaches that a suitable residual carbon content for recycled carbon fibers is about 0.5% to form the fiber-reinforced aggregate. Example 7. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the recycled carbon fiber disclosed by the combination of Secrist with Ortlepp with a residual carbon component for the recycled carbon fiber in the range of more than 0% by weight to 5.0% by weight in order to provide a recycled carbon that is expected to be suitable for use in an aggregate, as shown to be known in the art by Kobayashi. “[W]here 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.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). With regard to Claim 14, Secrist discloses that carbon fibers having a length of 6 mm are used to manufacture pellet aggregates having a length of 9 mm to 18 mm. Examples 1-4. With regard to Claims 15 and 16, Secrist discloses that the fibers of the pellets illustrated in Figure 2 are commonly oriented in the longitudinal direction of the pellet. Column 3, lines 58-64. Further with regard to Claim 16, Secrist does not disclose including thermoplastic resin fibers in combination with the carbon fibers to form the pellets. However, Ortlepp teaches the person having ordinary skill in the art that “[f]ibrous admixers such as thermoplastic fibrous material for subsequent bonding may be mixed intimately and homogeneously with the remaining fibers in a stand-alone process step prior to ply formation.” Paragraph [0038]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to incorporate and admix thermoplastic fibers with the carbon fibers to form the aggregate pellet material disclosed by Secrist in order to provide improved bonding of the materials used to form the pellet, as shown to be known by Ortlepp. With regard to Claim 17, Secrist discloses that the aggregate pellet possesses a length in the range of 4 mm to 20 mm, column 4, lines 48-51, including individual examples having a pellet lengths of 9 mm, 12 mm, and 18 mm. See, e.g., Examples 2-4. With regard to Claim 18, Secrist discloses that the carbon fibers have a length in the range of 1 mm to 10 mm. Column 3, lines 1-3. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the thermoplastic fibers disclosed by Ortlepp with a similar length as the carbon fibers of Secrist upon their incorporation into the pellet of Secrist in order to provide similar fiber profiles for generating the overall pellet length desired by Secrist. With regard to Claim 19, Secrist discloses that carbon fibers having a length of 6 mm are used to manufacture pellet aggregates having a length of 9 mm to 18 mm. Examples 1-4. With regard to Claim 20, Secrist discloses that the sizing agent solution is concentrated such that the sizing agent binder is provided in an amount of 0.5% to 10%, by weight, of the carbon fiber pellets. Column 3, lines 46-53. With regard to Claims 22 and 23, as noted above with regard to Claim 13, Ortlepp renders obvious the use of recycled carbon fibers in a carbon fiber-containing pellet, as described in Secrist.
Claims 16-19 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Secrist in view of Ortlepp and Kobayashi as set forth with regard to Claim 12, and further in view of U.S. Patent Application Publication No. 2019/0118408 to Inokuchi et al. (“Inokuchi”).
With regard to Claims 16 and 21, Secrist discloses that the fibers of the pellets illustrated in Figure 2 are commonly oriented in the longitudinal direction of the pellet. Column 3, lines 58-64. However, Secrist does not disclose including thermoplastic resin fibers in combination with the carbon fibers to form the pellets. Inokuchi is also related to fiber-reinforced pellet aggregates. See, e.g., Abstract, entire document. Inokuchi teaches that carbon fibers can be combined with organic fibers, such as nylon polyamide fiber, to provide the fiber reinforcement of the pelletized aggregate. Paragraph [0070]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to incorporate and admix thermoplastic polyamide fibers with the carbon fibers to form the aggregate pellet material disclosed by the combination of Secrist with Ortlepp and Kobayashi in order to provide improved flexibility compared to using stiffer carbon fiber, alone, to form the aggregate pellet, as shown to be known in the art by Inokuchi, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claim 17, Secrist discloses that the aggregate pellet possesses a length in the range of 4 mm to 20 mm, column 4, lines 48-51, including individual examples having a pellet lengths of 9 mm, 12 mm, and 18 mm. See, e.g., Examples 2-4. With regard to Claim 18, Secrist discloses that the carbon fibers have a length in the range of 1 mm to 10 mm. Column 3, lines 1-3. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the thermoplastic fibers disclosed by Inokuchi with a similar length as the carbon fibers of Secrist upon their incorporation into the pellet of Secrist in order to provide similar fiber profiles for generating the overall pellet length desired by Secrist. With regard to Claim 19, Secrist discloses that carbon fibers having a length of 6 mm are used to manufacture pellet aggregates having a length of 9 mm to 18 mm. Examples 1-4. With regard to Claims 22 and 23, as noted above with regard to Claim 13, Inokuchi renders obvious the use of recycled carbon fibers in a carbon fiber-containing pellet, as described in Secrist.
Response to Arguments
Applicant's arguments filed June 11, 2026 have been fully considered but they are not persuasive.
Applicant argues that Secrist and Kobayashi are different from one another because Secrist performs pelletization using an inclined rotating surface whereas Kobayashi produces carbon fiber aggregate using an extrusion granulator. However, the rejection is not based upon the processes utilized in manufacturing materials, but rather, the types of materials that are actually made. A prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Secrist discloses pellet materials formed using carbon fiber aggregate. Abstract. Kobayashi also discloses pellet materials formed using carbon fiber aggregate. Example 1. As such, both Secrist and Kobayashi are in the same field of Applicant’s endeavor. Moreover, the teachings of Kobayashi are combinable with Secrist and Ortlepp because Kobayashi teaches that a suitable residual carbon content for recycled carbon fibers is about 0.5% to form the fiber-reinforced aggregate, Example 7, and because the combination of Secrist with Ortlepp is silent with respect to the residual carbon component of a recycled carbon fiber, the person having ordinary skill in the art would find it necessary, and therefore obvious, to seek out valid residual carbon amounts in the same field of endeavor.
Applicant argues that the carbon fibers of Secrist have an average length of 6 mm used to produce pellets having a length of 9 to 18 mm, whereas Kobayashi teaches carbon fibers having a length of 0.3 mm used to produce aggregate having a length of 2 mm. However, Kobayashi was not cited to modify the length of the carbon fibers disclosed by Secrist. Rather, Kobayashi was cited for the teaching of residual carbon content for recycled carbon fibers. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). An obvious analysis does not require incorporation of the entire disclosure of a secondary reference to override the teachings of a primary reference.
Applicant argues that the use of recycled carbon fibers having a residual carbon content of 1.4% made it possible to obtain a spindle-shaped aggregate with good feedability compared to a similar spindle-shaped aggregate having a residual carbon content of 7.1%. However, it is noted that if the Applicant intends to rely on examples in the specification to show non-obviousness, the Applicant should clearly state how the examples of the present invention are commensurate in scope with the claims and how the comparative examples are commensurate in scope with the applied prior art. A residual carbon content of 1.4% is not commensurate in scope with the claimed range of more than 0% by weight and 5% by weight or less, as this single point does not provide across the entire range, for example, at values of 0.2%, 0.8%, 2.0%, 3.4%, 4.8%, etc. Moreover, a residual carbon content of 7.1% for the comparative example is not commensurate in scope with the Kobayashi reference, which teaches that a suitable residual carbon content for recycled carbon fibers is about 0.5% to form the fiber-reinforced aggregate.
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.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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