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
The preliminary amendment filed on September 29, 2023 has been entered. In the preliminary amendment, Claims 4-6, 9, 11, 15, and 18-24 were amended and Claims 25-33 were cancelled. Although an intervening set of claims was filed on May 1, 2024, those claims were filed by Applicant in response to a notice of missing requirements under Section 371, and were not meant to be part of the prosecution of the application or associated with any amendment. See Response to Restriction Requirement dated January 22, 2026, page 1. As such, the set of claims filed in the preliminary amendment dated September 29, 2023 is referenced in this Office Action. Claims 1-24 are currently pending in the application.
Election/Restrictions
Applicant’s election without traverse of Group II, corresponding to Claims 12-24, in the reply filed on January 22, 2026 is acknowledged. Claims 1-11 are hereby withdrawn from consideration.
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 12 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,639,807 to Secrist et al. (“Secrist”).
With regard to Claim 12, 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. 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.
Claims 12 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2010/0178495 to Taketa et al. (“Taketa”).
With regard to Claim 12, Taketa discloses an aggregate comprising a large number of chopped fiber bundles comprising unidirectionally arranged reinforced fibers, wherein the aggregate possesses a spindle-shape because the chopped fiber bundle has a transition segment in which the number of the reinforced fibers increases toward the central part of the chopped fiber bundle in the aligned direction of the reinforced fibers with both ends in the aligned of the reinforced fibers in the chopped fiber bundle being a starting point. See, e.g., Abstract, paragraph [0002], entire document; see also Figures 1-3 and 9. Taketa discloses that the reinforcing fiber is preferably a carbon fiber. Paragraph [0027]. Taketa discloses that a bundling agent may be used in the form of a sizing agent comprising thermoplastic or thermosetting resin. Paragraphs [0206] to [0208]. With regard to Claim 20, Taketa teaches that sizing agent is present in an amount of 0.1% to 10%, by weight. Paragraph [0206].
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 13-19, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Secrist in view of U.S. Patent Application Publication No. 2013/0196154 to Ortlepp et al. (“Ortlepp”).
With regard to Claim 13, 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. Moreover, Secrist suggests that recycled material is usable in their invention, column 3, lines 54-58; however, Secrist does not disclose that the carbon fibers of 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). 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 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.” 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 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 are rejected under 35 U.S.C. 103 as being unpatentable over Secrist 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 Secrist 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.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Secrist in view of Ortlepp, as applied to Claim 13 above, 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 Claim 24, 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 in the range of more than 0% to 5.0% 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).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 12-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/727,154 (“the ‘154 Application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘154 Application claims “[a] carbon fiber-containing concrete or mortar composition, comprising carbon fiber aggregates each composed of at least carbon fibers and a binder, wherein the carbon fiber aggregates have a spindle shape.” The presence of a concrete or a mortar composition is not precluded by the present claims. As such, the scope of claim 1 of the ‘154 Application is captured by the scope of Claim 1 of the present application. Moreover, the scope of the dependent claims of the ‘154 Application overlaps with the present dependent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. Patent Application Publication No. 2020/0002619 to Sui et al. and U.S. Patent Application Publication No. 2012/0009421 to Alvarez et al.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789