DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election without traverse of Group I (claims 1-9; “a composition of matter”) in the reply filed on 05/13/2026 is acknowledged.
3. Claims 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/13/2026.
Claim Objections
4. Claims 1, 3-4 and 6 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to delete the phrase “polymer precursor” after the claimed “80-99.99 wt%” because it is repetitive.
The applicants are advised to delete the phrase “of thermal initiator” after the claimed “0.001 to 20 wt %” because it is repetitive.
As to Claim 3: The applicants are advised to replace the claimed “the initiator” with “the thermal initiator”.
As to Claim 4: The applicants are advised to replace the claimed phrase “further comprising” with the new phrase “wherein the composition of matter further comprises”.
As to Claim 6: The applicants are advised to replace the claimed “µmeter” with “µm”.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
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.
5. Claims 1-9 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.
As to Claim 1: It recites, among other things, “the thermal initiator” (Emphasis added). However, there is no proper antecedent basis for “the thermal initiator” and thus, it is not clear what “the thermal initiator” is referring to.
As to Claim 2: Absent any further explanation, definition or guidance from the present specification, it is not clear what is included by “A” and “B” in the contexts of “solid silicone A and B”, “nylon A and B” and “thermoplastic polyurethane A and B”.
Clarification in the next response by applicants will be helpful to better ascertaining the scope of these claims.
It is further noted that since claims 3-8 are dependent on claim 1, they are rejected along with claim 1 because they incorporate all the limitations of claim 1, including those that are indefinite for the reasons provided above.
Accordingly, the scope of these claims is deemed indefinite.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
6. Claims 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuki et al. (WO 2016/152856; utilized US 2018/0079879 as its English equivalent) in view of Fukuda et al. (US 2003/0134926).
It is noted that Otsuki et al. (WO 2016/152856) is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely US 2018/0079879 because WO 2016/152856 is in Japanese.
The claims are directed a composition of matter comprising a solid resin powder containing one or more polymer precursors and thermal initiator in particular amounts.
As to Claims 1-2 and 6-9: Otsuki et al. disclose a fiber-reinforced plastic molding material (Paragraph [0001]), which according to paragraphs [0011] and [0012] of the present specification corresponds to the claimed composition of matter, comprising a matrix resin being a solid at ordinary temperature and turned into a fine powder (corresponding to the claimed solid resin powder), containing 50 wt.% or more of polymer precursors including epoxy (Paragraphs [0016] and [0026]), which overlaps with the claimed 80-99% by weight of polymer precursor. Otsuki et al. also disclose that the polymer precursors comprise two components in a combination including a solid epoxy with an anhydride, wherein the melting point of the first component is lower than the melting point of the second component (Paragraphs [0027], [0047] and [0077]-[0078]). Otsuki et al. further disclose that the solid resin powder is comprised of particles having an average particle diameter of 10-150 µm (see abstract), which is encompassed by the particle size in a range of 1-500 µmeter recited in claim 6.
However, Otsuki et al. do not specifically mention the addition of a thermal initiator and its particular amount as required by the claims of the present application.
Nevertheless, Fukuda et al. disclose employing thermal-polymerization initiators in an amount of 0.05-5 parts by mass (which overlaps with the claimed 0.001-20 wt% of the thermal initiator) to provide fiber-reinforced composite material (composition of matter) with excellent thermal decomposition properties (Paragraphs [0016] and [0082]-[0084]). See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the claimed amount of thermal initiator taught by Fukuda et al. to the fiber reinforced composite material (composition of matter) discussed in Otsuki et al., with a reasonable expectation of successfully obtaining excellent thermal decomposition properties.
As to Claims 4 and 5: Otsuki et al. do not specifically mention the addition of one or more particle fillers, including clay as required by the claims. However, Fukuda et al. teach the use of well-known additives and reinforcements including inorganic particle fillers such as clay in fiber reinforced composite material (composition of matter) (Paragraphs [0082] and [0110]). Thus, it would have been obvious tone of ordinary skill in the art to add the well-known additives and reinforcements including the claimed particle fillers such as clay taught by Fukuda et al. in the fiber reinforced composite material (composition of matter) of Otsuki et al.
7. On this record, it is noted that there is no prior art rejection of present claim 3 at this time.
Correspondence
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie 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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/HANNAH J PAK/Primary Examiner, Art Unit 1764
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