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 Applicant’s Traverse of Restriction Requirement
1. Applicant's election with traverse of group II, claims 10-32 in the reply filed on 5/12/26 is acknowledged. The traversal is on the ground(s) that:
The applicant elects, with traverse, Group II, claims 10 to 32, drawn to the prepreg,
for examination. In the event this requirement is maintained, rejoinder is hereby requested of
any claim depending from, or otherwise including all of the limitations of, a claim of the
elected group found allowable. MPEP § 821.04(a) and (b).
Restriction is only proper if the claims of the restricted groups are independent or
patentably distinct and there would be a serious search and/or examination burden placed on
the examiner if restriction is not required. MPEP § 803. The burden is on the examiner to
provide reasons and/or examples to support any conclusion in regard to patentable
distinction. MPEP § 803.
The office action characterizes the relationship of Groups I and II as directed to
related products. Citing MPEP § 806.05(j), the office action states:
[i]n the instant case, the inventions as claimed the inventions as
claimed are either not capable of use together or can have a materially
different design, mode of operation, function, or effect. Furthermore,
the inventions as claimed do not encompass overlapping subject matter
and there is nothing of record to show them to be obvious variants.
MPEP § 806.05(j) states (emphasis added) that related product inventions are distinct
if:
(A) the inventions as claimed do not overlap in scope, i.e., are
mutually exclusive;
(B) the inventions as claimed are not obvious variants; and
(C) the inventions as claimed are either not capable of use together or
can have a materially different design, mode of operation, function, or
effect.
It is respectfully submitted that the statements in the office action above have not
adequately demonstrated any of the indications of distinctness (A), (B), or (C) listed in MPEP
§ 806.05(j). Moreover, the office action provides no examples in support of the conclusion.
The office action simply states a conclusion.
The office action characterizes the relationship of Groups III and IV as directed to
related processes. Citing MPEP § 806.05(j), the office action states:
[i]n the instant case, the inventions as claimed the inventions as
claimed are either not capable of use together or can have a materially
different design, mode of operation, function, or effect. Furthermore,
the inventions as claimed do not encompass overlapping subject matter
and there is nothing of record to show them to be obvious variants.
MPEP § 806.05(j) states (emphasis added) that related product inventions are distinct
if:
(A) the inventions as claimed do not overlap in scope, i.e., are
mutually exclusive;
(B) the inventions as claimed are not obvious variants; and
(C) the inventions as claimed are either not capable of use together or
can have a materially different design, mode of operation, function, or
effect.
It is respectfully submitted that the statements in the office action above have not
adequately demonstrated any of the indications of distinctness (A), (B), or (C) listed in MPEP
§ 806.05(j). Moreover, the office action provides no examples in support of the conclusion.
The office action simply states a conclusion.
The office action characterizes the inventions of Groups III and IV and Groups I and
II [sic, III?] as related as process of making and product made. Citing MPEP § 806.05(f), the
office action states that, "[i]n the instant case the product as claimed can be made by another
and materially different process such as by soaking the fibers in the liquified resin."
The MPEP § 806.05(f) states (emphasis added):
A process of making and a product made by the process can be shown
to be distinct inventions if either or both of the following can be
shown:
(A) that the process as claimed is not an obvious process of making the
product and the process as claimed can be used to make another
materially different product; or
(B) that the product as claimed can be made by another materially
different process.
The office action has not supported the allegation that the product as claimed can be
made by a different method with any evidence of the feasibility of this result, i.e., only that
some product can be made by a different process. The office action merely states a
conclusion. Accordingly, the office action has not shown the requirements of § 806.05(f)(B)
and has failed to meet its burden for the restriction requirement.
Moreover, MPEP § 803 states that "[i]f the search and examination of all the claims in
an application can be made without serious burden, the examiner must examine them on the
merits, even though they include claims to independent or distinct inventions." It is
respectfully submitted that a search of all the claims would not impose a serious burden on
the Office.
Accordingly, for at least the reasons presented above, it is respectfully submitted that
the burden necessary to sustain the requirement for restriction and/or species election has not
been met. It is therefore respectfully requested that the restriction requirement be withdrawn.
This is not found persuasive because the outstanding requirement for restriction shows there is a burden on the examiner to search all of the claimed inventions and adequately shows distinctness of inventions. The applicant does not provide contrary probative evidence. The examiner therefore maintains the restriction requirement for all of the reasons stated in the restriction requirement.
The requirement is still deemed proper and is therefore made FINAL.
2. Claims 1-9 and 33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/12/26.
Rejections
Claim Rejections - 35 USC § 112
3. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claims 10-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A. The instant claim 10 and thereby the claims depending from claim 10 recite “a cured product obtained in a case where the matrix resin is cured under the following curing condition…” It is unclear if the instantly claimed prepreg is required to be cured under the claimed conditions or if the prepreg is required to only have the recited properties if it is cured under the claimed conditions or if something else is required by the above noted claim language. It is noted that the claim recites “comprising”. It is not clear that something specific is not required to obtain the claimed properties such as an additional component included by “comprising” or specific matrix resins and/or reinforcing fibers.
The scope of the instant claims is therefore not clear.
B. The instant claim 24 depends from claim 10. The instant claim 24 recites “the component (A)”. There is no recitation of “the component (A)” in either of claims 10 or 24. There is therefore no antecedent basis for the claimed recitation of “the component (A)”. It is not clear what is required by “the component (A)” therefore. The scope of the claim is so unclear it cannot be further examined therefore.
Claim Rejections - 35 USC § 102
5. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
6. Claims 10-12, 16-19, and 25-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. Application Publication No. 2011/0009528 Tomioka et al.
Tomioka discloses a prepreg containing reinforcing fibers and a matrix resin containing an epoxy resin. This anticipates the instant claim 10 even if the instantly claimed properties of the cured product, including the properties of the instant claims 10-12, 16-17 are not inherent in Tomioka’s prepregs because the instantly claimed “in a case where” is not seen as requiring the claimed properties because there are other cases and the claimed properties are only required for one case, i.e. “a case”, not all cases. See Tomioka, paragraphs [0001], [0013], [0014]-[0024], noting the islands of paragraph [0024], [9], which indicates that the prepregs of Tomioka necessarily and inherently give the properties of the instant claims 10 and 27 (See MPEP 2112), [0047], [0048], [0086], which falls within the scope of the instant claim 18, [0088], which falls within the scope of the instant claim 19, [0138]-[0160], [0208], noting the exemplified carbon fibers which fall within the scope of the instant claim 25, and the remainder of the document. Tomioka thereby anticipates the above rejected claims.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 10-23 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No 4666954 Forgo et al.
Forgo discloses a prepreg containing reinforcing fibers and matrix resin containing epoxy resin. This anticipates the instant claim 10 even if the instantly claimed properties of the cured product, including the properties of the instant claims 10-12, 16-17 are not inherent in Forgo’s prepregs because the instantly claimed “in a case where” is not seen as requiring the claimed properties because there are other cases and the claimed properties are only required for one case, i.e. “a case”, not all cases. See Forgo, the abstract, column 1, lines 5-10 and 66-68, column 2, lines 1-16 and 50, noting the carbon fibers, column 7, lines 3-68 and column 8, lines 1-68, which falls within the scope of the acrylate monomers of the instant claims 13, 14, and 15, column 10, lines 18-23, which falls within the scope of the instantly claimed radical polymerization initiators of the instant claims 20 and 22-23, and lines 59-68, which encompasses the amounts of the instant claims 19 and 21. The 1,4-xylxylenediamine of Forgo’s claim 1 falls within the scope of the instant claim 18.
Forgo does not disclose the instantly claimed inventions with sufficient specificity to anticipate the instant claims.
It would have been obvious to one of ordinary skill in the art to make the instantly claimed inventions of the instant claims 10-23 and 25-26 from the disclosure of Forgo because they are encompassed by Forgo, as discussed above, and would have been expected to give the products of Forgo having the properties of Forgo, including those properties explicitly disclosed and those properties inherent to the products of Forgo.
Allowable Claims
9. The instant claims 27-32 are allowable over the prior art considered. The closest prior art is represented by the above cited prior art. The above cited prior art does not disclose the instantly claimed inventions. There is not sufficient basis to show that the above cited prior art necessarily inherently discloses the instantly claimed inventions. See MPEP 2112. There is not sufficient motivation found in the prior art to modify the inventions of the closest prior art into those of the instant claims 27-32.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PATRICK D NILAND/ Primary Examiner, Art Unit 1762
prepreg and epoxy and (acrylic acrylate) and "sea-island phase"
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