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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372. This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-9, 12-15, 17, 22, & 25-27, drawn to a method of making a carbon fiber.
Group II, claims 28-29, drawn to a carbon fiber.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: the Groups lack unity of invention because even though the inventions of the Groups require the common technical feature of claim 28’s carbon fiber1, these common technical features do not make for a special technical feature as they do not make a contribution over the prior art in view of Jackson et al., US 2017/0191194 (published 7-6-17) (“Jackson”). See Jackson at, e.g., par. 123. The requisite unity of invention is thus lacking a posteriori.
During a 6-29-26 telephone conversation with Jason Keith, Esq., a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9, 12-15, 17, 22, & 25-27. Affirmation of this election must be made by applicant in replying to this Office action. Claims 28-29 are withdrawn from further consideration by examiner per 37 CFR 1.142(b) as drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
This Restriction Requirement (“R/R”) is between product claims and process claims. Where applicant elects claims directed to the product, and all product claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product claim for that process invention to be rejoined. In the event of rejoinder, the R/R between the product claims and the rejoined process claims will be withdrawn; rejoined process claims will be fully examined for patentability per 37 CFR 1.104. To be allowable, rejoined claims must meet all criteria for patentability including those of 35 U.S.C. 101-103 & 112. Until all claims to the elected product are found allowable, an otherwise proper R/R between product claims and process claims may be maintained. Withdrawn process claims not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04. Also, for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the R/R is withdrawn by the examiner before the/any patent issues. See MPEP § 804.01.
Drawings
The 12-14-23 drawings are provisionally accepted. Due to their complexity and/or numerosity, applicant’s assistance is requested to ensure that all component labels therein are correctly identified in the specification and vice versa. 37 CFR 1.3 (courtesy 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.
Claims 1-9, 12-15, 17, 22, and 25-27 are rejected under 35 U.S.C. 112(b)/2nd par. as 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. Given the multitude of indefiniteness rejections appearing below, applicant is directed to employ a careful and thorough review of all drafting (and amendment) language to ensure definite and consistent claim wording.
Regarding claim 1, the claim recites “a carbon fiber”, “advancing a carbon fiber precursor through an oxidation oven to produce an oxidized fiber”, wherein the advancing comprises “(i) subjecting the fiber to…” and “(ii) subjecting the fiber to…” (emphases supplied) While the second quoted recitation appears to state that it is the carbon fiber precursor that is advanced/treated within the oxidation oven, the “said advancing” steps (i)-(ii) state that “the fiber” is so treated. Whether “the fiber” is intended to refer to 1) the carbon fiber precursor, 2) the oxidized fiber, or 3) the carbon fiber, is unclear and presents an internal inconsistency, creating confusion as to the claimed scope and how to avoid infringement thereof (MPEP 2173.02), rendering claim 1 rejected as indefinite under 35 U.S.C. 112(b)/2nd par. See Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366-67 (Fed. Cir. 2016) (stating that an internally contradictive/inconsistent claim is indefinite and thus properly rejected as such under 35 U.S.C. 112(b)/2nd par.), and Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (citing Columbia v. Symantec). While claim 1 has been interpreted for examination/prior art purposes as reciting “the carbon fiber precursor” instead of “the fiber”, this rejection nevertheless needs addressing, while avoiding introducing new matter.
Applicant is hereby advised that, as independent claim 1 is rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d 1701, 1702-04 (BPAI 1989) (same); 35 USC 112(d)/4th par.
Claims 7 and 25 are rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. because, akin to claim 1, it is unclear whether “the fiber” is intended to refer to 1) the carbon fiber precursor, 2) the oxidized fiber, or 3) the carbon fiber. While claims 7 and 25 have been interpreted for examination/prior art purposes as reciting “the oxidized fiber” instead of “the fiber”, these rejections nevertheless need addressing, while avoiding introducing new matter.
Claims 8 and 12 are rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. because, akin to claim 1, it is unclear whether “the fiber” is intended to refer to 1) the carbon fiber precursor, 2) the oxidized fiber, or 3) the carbon fiber. While claims 8 and 12 have been interpreted for examination/prior art purposes as reciting “the carbon fiber precursor” instead of “the fiber”, these rejections nevertheless need addressing, while avoiding introducing new matter.
Claims 26-27 are rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. because, akin to claim 1, it is unclear whether “the fiber” is intended to refer to 1) the carbon fiber precursor, 2) the oxidized fiber, or 3) the carbon fiber. While claims 26-27 have been interpreted for examination/prior art purposes as reciting “the carbon fiber” instead of “the fiber”, these rejections nevertheless need addressing, while avoiding introducing new matter.
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 1, 4-9, 12-15, 17, and 25-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jackson. Regarding claims 1, 4, and 8, Jackson discloses a method comprising advancing a carbon fiber precursor comprising polyacrylonitrile (see Jackson at, e.g., par. 48-52) through at least one oxidation zone -and thus, at least one oxidation oven as claimed- at ≥180 oC or ≥220 oC (id. at, e.g., par. 52 and 105; Fig. 2), with a specific example employing 226-254 oC T (id. at, e.g., Ex. 8; Table 9) to give an oxidized fiber; the advancing comprises subjecting the fiber to a first plurality of passes, in which a -4% stretch is applied, and to a second plurality of passes, in which a 4% stretch is applied (id. at, e.g., par. 69 and 107; Ex. 8; Table 9; Fig. 4). Note: a negative stretch % is considered to meet the claimed ≤0.5% stretch per par. 68 of the specification-as-filed.
Regarding claim 5, given Jackson’s silence as to any difference between the stretch % of its plurality of passes, the claimed condition is considered to be implicitly met. MPEP 2112 (regarding implicit disclosure).
Regarding claim 6, Jackson’s teaching that its stretching % is “usually, but not necessarily” less than or equal to that in the immediately preceding zone/pass (see Jackson at, e.g., par. 65) is taken as an implicit disclosure that, at least sometimes, the claimed contrary condition is met. MPEP 2112 (regarding implicit disclosure).
Regarding claims 7 and 13-15, Jackson’s fiber exits each oxidation zone/oven as part of a pass; five- and 22-pass examples are disclosed. See id. at, e.g., par. 107-108; Fig. 4.
Regarding claim 9, Jackson’s precursor fibers can be 0.1-3 dpf, with 0.8-1.2 dpf being specifically disclosed. See id. at, e.g., par. 75.
Regarding claim 12, Jackson advances its fiber into a plurality of oxidation zones (#1-#4), which can be separate oxidation units/furnaces, wherein each successive zone has a T greater than the preceding zone. See id. at, e.g., par. 105 and 123; Ex. 8; Table 9; Fig. 2.
Regarding claim 17, Jackson passes its oxidized fiber through a low temperature (“LT”) furnace at 565-665 oC and then subsequently passes the oxidized fiber through a carbonizing furnace. See id. at, e.g., par. 14 and 93; Ex. 8; Table 9.
Regarding claim 25, given Jackson’s silence as to any difference of its fiber’s average diameter between before entering its oxidation oven/zone versus exiting said oven/zone, a 0% difference is considered to be implicitly met. MPEP 2112 (regarding implicit disclosure).
Regarding claim 26, Jackson’s fiber comprises bundles (“tows”) of 24,000 filaments per tow band. See Jackson at, e.g., par. 4; Ex. 8; Table 9.
Regarding claim 27, as Jackson anticipates claim 1’s method, claim 27, which is considered to merely recite a property of the material formed by claim 1’s method, is likewise considered to be met/present. MPEP 2112.01, citing, e.g., In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 2-3 and 6 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Jackson. Regarding claims 2-3, Jackson’s teachings are as above. While Jackson does not teach a specific example applying/employing a 0% stretch in each of its first plurality of passes, Jackson does teach the appropriateness of employing a 0% stretch for its ≥1 passes, rendering it prima facie obvious to do so. See Jackson at, e.g., par. 65 and 69; MPEP 2143 I.(E) & 2144.07.
Additionally and/or alternatively regarding claim 6, Jackson’s teaching that its stretching % is “usually, but not necessarily” less than or equal to that in the immediately preceding zone/pass (see Jackson at, e.g., par. 65) is taken as an implicit teaching (MPEP 2144.01) that, at least sometimes, the claimed contrary condition is met. Additionally and/or alternatively still, the claimed condition (in which each successive pass has a stretch % greater than that of the immediately preceding pass) is viewed as an acceptable albeit possibly nonpreferred embodiment, the employing of which is nevertheless considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since Jackson does not discourage or discredit such a condition. MPEP 2123.
Potentially Allowable Subject Matter
Claim 22 would be allowable if the 35 U.S.C. 112(b)/2nd par. rejection thereof was overcome and if the claim was rewritten in independent form including all of the limitations of the base claim and any intervening claims. Regarding claim 22, the most pertinent prior art of record, Jackson, performs sizing and surface treatment steps, but consistently and uniformly teaches that such steps are performed upon the post-carbonized carbon fiber, not upon the precursor fiber as claimed (see Jackson at, e.g., par. 26, 96, 102; clms. 39-40); performing such treatments upon the precursor fiber as claimed is considered a non-obvious variation of Jackson’s methodology. MPEP 2143.01 V-VI & 2145 X.D.3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ July 16, 2026
Primary Examiner
Art Unit 1736
1 Claim 28 is a product-by-process claim. Since it has been held that the patentability of a product and its method of production are determined separately, the referred-to process limitations of claim 1 have not been accorded patentable weight vis-à-vis claim 28’s product, except to the extent that the process steps suggest structural features of the resulting product. See In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985), In re Brown, 173 USPQ 688, 688 (CCPA 1977), and In re Fessman, 180 USPQ 324, 326 (CCPA 1977); MPEP 2113.
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