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 .
Election/Restrictions
Newly submitted claims 22-26 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claim 22 requires that the carbon fiber is baked in a non-oxidizing environment, which is not required by claim 1.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 22-26 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
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 1-8, 10-18, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimaki (JP 2016041800 A, hereinafter referring to the attached ESPACENET translation) in view of Toyoshima (WO 2018212016 A1, hereinafter referring to US 11,359,060 as the English language equivalent). Harwick Standard (Sodium Stearate Technical Data Sheet) is included as an evidentiary reference.
Regarding claims 1 and 27, Fujimaki teaches a carbon fiber reinforced polyester resin comprising a thermoplastic polyester (A), carbon fiber (B), and a polyfunctional epoxy resin binder (C) ([0001]). The polyfunctional epoxy resin binder reads on the claimed “functional group-containing compound” because epoxy groups are functional groups, the instant application contemplates epoxy groups as suitable functional groups (c.f. claims 9 and 10), and epoxy group-containing compounds are included within the claimed listing of the “functional group-containing compound.” Fujimaki teaches that the inventive composition contains 100 parts of the polyester component, 5 to 150 parts of the carbon fiber, and 0.1 to 2 parts of the polyfunctional epoxy component ([0009]). The amounts taught by Fujimaki are identical to, encompass, and fall within the claimed amounts, respectively, establishing prima facie cases of obviousness. Furthermore, the formulation of Fujimaki includes a catalyst in amounts ranging from o.01 to 1 parts by weight ([0009]). These four components comprise all of the required components of Fujimaki, and therefore polyester and carbon fiber together may comprise between about 97.2 and 99.95 wt% of carbon fiber and polyester resin, combined, which falls within the claimed range of “at least 95% by mass,” establishing a prima facie case of obviousness.
Regarding the newly added limitation requiring that the remainder of the composition (other than the functional group compound, the carbon fibers, and the thermoplastic resin, as claimed) is selected from the claimed listing of additives, the catalyst of Fujimaki is specifically stated as including carboxylates of alkali metals, particularly preferring stearates ([0023]). Fujimaki likewise exemplifies the use of sodium stearate ([0031]).
Sodium stearate is known in the art to perform the function of a lubricant and antistatic agent (c.f. Harwick Standard p. 1). Therefore, the sodium stearate within Fujimaki reads on “antistatic agent” and “flowability improving agent” from the claimed list. The composition of Fujimaki therefore meets the newly added compositional limitation despite including a component referred to as a catalyst which does not appear on the claimed listing of additives.
Fujimaki specifically teaches that recycled carbon fibers are suitable for the carbon fiber component (B) ([0011], [0016]) and specifically indicates the suitability of recycled carbon fibers recovered from a carbon fiber-reinforced thermosetting epoxy resin composite ([0020]). Fujimaki further contemplates the production of recycled fibers via a baking process (p. 21, [0028]), but differs from claim 1 because it is silent with regard to the claimed residue amount.
In the same field of endeavor, Toyoshima teaches a method of producing reclaimed carbon fibers (Abstract), involving baking a carbon fiber/resin composite (col. 2, lines 50-61), and teaches the advantageous control of variation in remaining resin residue (Abstract). Furthermore, Toyoshima specifies that the amount of resin residue may be controlled to between 0.1 and 30 mass % (col. 4, lines 12-14), which overlaps the claimed range of “5% by mass or more,” establishing a prima facie case of obviousness. Finally, Toyoshima specifies that the inventive recycled carbon fibers are useful for forming carbon fiber reinforced resin (col. 3, lines 49-59) and specifies that the resin may be a thermoplastic polyester (col. 7, lines 43-44). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the recycled carbon fibers of Toyoshima within the formulation of Fujimaki, as Toyoshima recognizes them as suitable recycled carbon fibers for use in carbon fiber reinforced resin compositions.
Fujimaki further differs from claim 1 (and claim 27) because it is silent with regard to the claimed maximum flexural strength characteristics. Nevertheless, Fujimaki as modified by Toyoshima as applied above results in a composition that is structurally identical to the claimed resin composition, which contains all of the same components in all of the same compositional amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed maximum flexural strength characteristics will therefore necessarily be present in Fujimaki as modified by Toyoshima as applied above.
Regarding claim 2, as described above, Fujimaki teaches the incorporation of 100 parts of the polyester component and 0.1 to 2 parts of the polyfunctional epoxy component ([0009]), which falls within the claimed range of “0.1 to 5,” establishing a prima facie case of obviousness.
Regarding claim 3, as described above, Toyoshima teaches that the amount of resin residue may be controlled to between 0.1 and 30 mass % (col. 4, lines 12-14), which overlaps the claimed range of “10% by mass or more,” establishing a prima facie case of obviousness.
Regarding claim 4, as described above, Fujimaki teaches the incorporation of 100 parts of the polyester component and 0.1 to 2 parts of the polyfunctional epoxy component ([0009]), which falls within the claimed range of “0.1 to 5,” establishing a prima facie case of obviousness. Furthemore, as described above, Toyoshima teaches that the amount of resin residue may be controlled to between 0.1 and 30 mass % (col. 4, lines 12-14), which overlaps the claimed range of “10% by mass or more,” establishing a prima facie case of obviousness.
Finally, while Fujimaki as modified by Toyoshima is silent with regard to the claimed maximum flexural strength characteristic, Fujimaki as modified by Toyoshima as applied above results in a composition that is structurally identical to the claimed resin composition, which contains all of the same components in all of the same compositional amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed maximum flexural strength will therefore necessarily be present in Fujimaki as modified by Toyoshima as applied above.
Regarding claim 5, as described above, Toyoshima teaches that the amount of resin residue may be controlled to between 0.1 and 30 mass % (col. 4, lines 12-14), which encompasses the claimed range of “no less than 5% by mass and no more than 30% by mass,” establishing a prima facie case of obviousness.
Regarding claims 6-8, Fujimaki teaches the specific use of polyesters ([0001]) including polybutylene terephthalate ([0002]). Furthermore, Fujimaki does not require a blend of thermoplastic polyesters, and thus Fujimaki teaches compositions wherein 100% of the thermoplastic resin is a polybutylene terephthalate resin, which falls within the claimed range of “30 to 100%,” required by claim 8, establishing a prima facie case of obviousness.
Regarding claims 10, Fujimaki teaches the specific use of a polyfunctional epoxy compound ([0002]), which reads on “epoxy group-containing compound” from the claimed list, and teaches the additional incorporation of powdered carbon fibers ([0011]), which reads on the claimed “carbon black.”
Regarding claims 11 and 12, Fujimaki teaches that the polyfunctional epoxy compound has a weight-average molecular weight ranging from 1,000 to 300,000 g/mol, and contains between 2 and 100 epoxy groups therein ([0021]). The claimed mathematical formula for calculating the claimed ratio comprises weight average molecular weight (Mw) in the numerator, and functional group equivalent in the denominator. The unit of functional group equivalent, g/eq, is equivalent to molar mass per equivalent when the equivalents are provided per molecule (because molecules’ masses are commonly provided in grams per mole). Therefore, the denominator of the equation as claimed is a ratio of molecular weight to functional group equivalence. The numerator and denominator therefore both contain Mw, which is algebraically cancelled as follows:
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Therefore, the claimed ratio is equivalent to the molar functionality of functional groups within the epoxy compound of Fujimaki. Fujimaki teaches between 2 and 100 epoxy groups per molecule ([0020]), which overlaps the claimed ranges of “1 to 30” and “1 to 10,” establishing prima facie cases of obviousness.
Regarding claim 13, as described above, Toyoshima teaches that the amount of resin residue may be controlled to between 0.1 and 30 mass % (col. 4, lines 12-14), which encompasses the claimed range of “from 5 to 25% by mass,” establishing a prima facie case of obviousness.
Regarding claim 14, Fujimaki teaches the formation of pellets using the inventive composition ([0032]).
Regarding claims 15 and 18, Fujimaki teaches that fibers with lengths less than 3mm may be utilized ([0020]), which encompasses the claimed range of “100 to 500 µm,” establishing a prima facie case of obviousness.
Regarding claim 16, Fujimaki teaches molded articles of the inventive composition ([0021]).
Regarding claim 17, Fujimaki teaches the injection molding of articles of the inventive composition ([0027], [0033]).
Response to Arguments
Applicant's arguments filed May 4, 2026 have been fully considered but they are not persuasive.
Applicant argues that Fujimaki’s binding reaction catalyst distinguishes its composition from the claimed composition because the claimed composition, as amended, indicates a listing of ingredients which make up “a remainder of the resin composition,” which does not include said catalyst. However, as described above, the reaction catalyst within Fujimaki includes carboxylates of alkali metals, particularly preferring stearates such as sodium stearate ([0023] and [0031]), and Sodium stearate is known in the art to perform the function of a lubricant and antistatic agent (c.f. Harwick Standard p. 1), both of which are included in the claimed list. The composition of Fujimaki therefore reads on the claimed composition despite a “catalyst” not being included within the claimed composition.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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