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
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 6/16/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 6/16/2026. In particular, claim 1 has been amended to incorporate the limitations from claim 17 without canceling claim 17. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 does not limit independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Topoulos (US 2008/0119603) in view of Kato (US 2020/0055770 as evidence) and Wadahara (JP 2001-040229, machine translation).
The rejection is adequately set forth in paragraph 3 of Office action mailed on 3 and is incorporated here by reference.
Response to Arguments
Applicant's arguments filed 6/16/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that the combination of Topoulos with Wadahara is flawed because the antistatic/anti-discharge properties taught by Wadahara are not the same as the claimed electrostatic dissipative properties.
Topoulos teaches that carbon fibers can be added as a reinforcing agent in its mobile telephone housing. Wadahara is relied upon to teach that reinforcing carbon fibers can be used in an amount of 3-40 wt % in order to impart reinforcing properties and to impart antistatic/anti-discharge properties as housings for portable electronic equipment (paragraph 0136). Anti-discharge properties relate directly to electrostatic dissipation because they prevent sudden discharge. Also, the instant claims do not require specific electrostatic dissipative properties limited with numerical values.
Applicant also argues that the data of the specification establish unexpected results related to resistivity for a polyamide composition comprising glass flake and carbon fibers.
The data has been fully considered, however, it is insufficient to establish unexpected results for two reasons. First, the data appears to be expected because one of ordinary skill in the art can adjust the resistivity by optimizing the amounts of conductive carbon fiber and insulative glass flake. Wadahara also teaches that the carbon fiber is used to impart antistatic/anti-discharge properties as housings for portable electronic equipment (paragraph 0136). Specifically, comparative examples CE1 and CE2 which do not comprise carbon fibers and comparative examples CE3 and CE4 comprising 5 wt % carbon fiber are expected to have higher resistivity (i.e., lower electrostatic dissipative properties) compared to inventive examples E1 and E2 having 10 wt % carbon fibers (Table 1).
Second, even had the data been unexpected, the data is not reasonably commensurate in scope with the scope of the claims. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983). Specifically, only one glass flake is exemplified (GFla) having an unspecified average size present in an amount of 45-50 wt % which is not representative of claimed at least 20 wt % glass flakes having average length of at most 500 microns. Also, the carbon fibers are only added in an amount of 10-20 wt % which is not representative of claimed at least 6 wt % and therefore not clear if desired resistivity is present at 6-9 wt %.
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 VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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