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 .
Specification
The abstract of the disclosure is objected to because it is unclear whether the limitation “and comprises a residue derived from the resin at a percentage of 10% by mass or more” applies to the recycled carbon fiber or the resin composition itself. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: [0099] “present embodiment is formed form the resin composition” contains a typographical error.
Appropriate correction is required.
The use of the terms "Teflon (R) 6J", "Teflon (R) 640J", "Teflon (R) 6C", "POLYFLON MPAF201L", "POLYFLON MPAF103", "POLYFLON MPAFA500H", "Teflon (R) 30J", "Teflon (R) 31-JR", "Fluon D-1", "METABLEN A-3800", "Blendex 449", "J-85AD-60H", "SE50DUZ", "CXB-2000H", "EXOLIT OP1240", "AT3CN", "jER 1003", "Micron White 5000A", "Dyneon TF-1750", "ADK STAB AO-60", "Licowax PED522", and "B54", which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 5, 6, 8, 11, and 12 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.
Regarding claim 5, “a baked product of a composite of a resin containing a benzene ring and a carbon fiber” is indefinite because it is unclear if “a baked product”, “a resin”, and “a carbon fiber” are recitations of those first identified in claim 1 or if these are new additional elements.
Regarding claim 6, “a baked product of a composite of an epoxy resin and a carbon fiber” is indefinite because it is unclear if “a baked product” and “a carbon fiber” are recitations of those first identified in claim 1 or if these are new additional elements.
Claim 8 recites the limitation "the crystalline thermoplastic resin". There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 11, “a residue derived from the resin” is indefinite because it is unclear if “a residue” is a recitation of that first identified in claim 1 or if these are new additional elements.
Regarding claim 12, it is unclear whether “the recycled carbon fiber comprises a baked product of a composite of a resin containing a benzene ring and a carbon fiber” and “the recycled carbon fiber comprises a baked product of a composite of an epoxy resin and a carbon fiber” are alternative or additive claim limitations.
Regarding claim 12, “a baked product of a composite of a resin containing a benzene ring and a carbon fiber” is indefinite because it is unclear if “a baked product”, “a composite”, “a resin”, and “a carbon fiber” are recitations of those first identified in claim 1 or if these are new additional elements.
Regarding claim 12, “a baked product of a composite of an epoxy resin and a carbon fiber” is indefinite because it is unclear if “a baked product”, “a composite”, and “a carbon fiber” are recitations of those first identified in claim 1 or if these are new additional elements.
Claim 12 recites the limitation "the crystalline thermoplastic resin". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimaki et al (JP 2016041800 A, translation attached) in view of Toyoshima et al (WO 2018212016 A1, translation attached) and Muto et al (US 20210395447 A1).
Regarding claims 1, 9, and 10, Fujimaki discloses a carbon fiber reinforced polyester resin comprising a thermoplastic polyester (A), carbon fiber (B), and a polyfunctional epoxy resin binder (C) [0001] with 100 parts by mass of the polyester component, 5 to 150 parts of the carbon fiber, and 0.1 to 2 parts by mass of the epoxy component [0009]. This epoxy resin binder reads on applicant’s claimed epoxy functional group-containing compound. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). Further, Fujimaki states that recycled carbon fibers are suitable [0011], [0016] particularly those recovered from a carbon fiber-reinforced thermosetting epoxy resin composite [0020] and discloses a baking to produce these recycled fibers [0028].
Fujimaki does not particularly disclose the amount of residue in their recycled carbon fiber.
In the same field of endeavor, Toyoshima discloses a method of recycling/regenerating carbon fibers (Abstract) involving baking a carbon fiber/resin composite (page 2, lines 13-17), particularly a thermoplastic polyester (page 4, lines 43-52). Toyoshima particularly discloses that the resin residue may be between 0.1 and 30 mass % of the regenerated carbon fiber (page 2, lines 49-51). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). Toyoshima further teaches that this method reduces variation in resin residue content (Abstract).
Neither Fujimaki nor Toyoshima particularly discloses the inclusion of 5 to 60 parts by mass of a flame retardant.
In the same field of endeavor, Muto discloses a thermoplastic resin composition comprising 10 to 50 parts by mass of a brominated flame retardant [0018]. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the carbon fiber reinforced polyester resin of Fujimaki with the recycled carbon fibers of Toyoshima and the flame retardants taught by Muto with the expected result of a more flame-retardant resin composition with reduced variations in resin residue content.
Regarding claims 2, 3, 4, 5, and 6, the combination of Fujimaki, Toyoshima, and Muto discloses all limitations of claim 1 as set forth above. Fujimaki further discloses the particular use of thermoplastic polyesters including polybutylene terephthalate in their composition [0002]. "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989). See MPEP 2131.02. In the instant case, the species of polybutylene terephthalate resin anticipates the genus of crystalline thermoplastic resins and the genus of resins containing a benzene ring. Further, Fujimaki’s claimed composition does not require a blend of thermoplastic polyesters, and thus Fujimaki teaches compositions wherein 100% of the thermoplastic resin is a polybutylene terephthalate resin. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). Fujimaki also discloses that particularly suitable recycled carbon fibers are those recovered from a carbon fiber-reinforced thermosetting epoxy resin composite [0020].
Regarding claims 7 and 14, the combination of Fujimaki, Toyoshima, and Muto discloses all limitations of claim 1 as set forth above. Muto particularly discloses a brominated flame retardant [0018], which reads on applicant’s halogen-based flame retardant. Regarding the mass ratio, Muto’s teaching of 10 to 50 parts by mass of the brominated flame retardant [0018] combined with Fujimaki’s teaching of 5 to 150 parts by mass of the carbon fiber [0009], both with respect to 100 parts by mass of polyester resin, results in mass ratios of carbon fiber to flame retardant of 0.1 to 15. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claim 8, the combination of Fujimaki, Toyoshima, and Muto discloses all limitations of claim 1 as set forth above. Muto further discloses the addition of 0.1 to 30 parts by mass of an antimony compound with respect to 100 parts by mass of the resin [0018]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claim 11, the combination of Fujimaki, Toyoshima, and Muto discloses all limitations of claim 1 as set forth above. Toyoshima further discloses that the resin residue may be between 0.1 and 30 mass % of the regenerated carbon fiber (page 2, lines 49-51). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claim 12, the combination of Fujimaki, Toyoshima, and Muto discloses all limitations of claim 1 as set forth above. Fujimaki teaches a composition wherein 100% by mass of the resin composition is a polybutylene terephthalate resin, which contains a benzene ring, as well as an epoxy resin-based recycled carbon fiber composition, as set forth with respect to claims 2-6 above. Fujimaki also teaches the inclusion of an epoxy group-containing compound as set forth above with respect to claim 1. Toyoshima discloses a recycled carbon fiber composition wherein the resin residue may be between 0.1 and 30 mass % of the regenerated carbon fiber as set forth with respect to claim 11 above. Lastly, Muto discloses a thermoplastic resin composition comprising 10 to 50 parts by mass of a brominated flame retardant and 0.1 to 30 parts by mass of an antimony compound with respect to 100 parts by mass of the resin, as set forth with respect to claims 7, 8, and 14 above. Thus, the combination of Fujimaki, Toyoshima, and Muto discloses all limitations of claim 12.
Regarding claim 13, the combination of Fujimaki, Toyoshima, and Muto discloses all limitations of claim 1. Fujimaki particularly discloses that the carbon fiber is 5 to 150 parts by mass with respect to 100 parts by mass of the polyester resin. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claims 15, 16, and 17, the combination of Fujimaki, Toyoshima, and Muto discloses all limitations of claim 1 as set forth above. Fujimaki further discloses pellets [0032] and molded articles [0021] using this composition and particularly discloses that the composition is useful in automobiles and linear motor cars [0039].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 11-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 10, and 12 of copending Application No. 18/609,029 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims pellets and molded products formed from a composition of a polycarbonate resin, recycled carbon fibers as a heated product of carbon fiber reinforced resin, and a halogen-based flame retardant. While a polybutylene terephthalate resin is not claimed in the copending application, polycarbonate resins produced from carboxylic acid diesters such as terephthalic acid are disclosed in the copending specification [0010-0012]. The specification also discloses thermoplastic resins [0082] and antimony compounds [0080], as well as use of epoxy resins in the carbon fiber reinforced resin [0022]. Moreover, the molded product is disclosed as useful in vehicle parts [0093].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 9-11, and 13-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 8, 13, 14, 16, and 22 of copending Application No. 18/372,471 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a resin composition, pellet, and molded article made from said resin composition, with said resin composition comprising a thermoplastic resin which is polybutylene terephthalate, recycled carbon fiber, a functional group-containing compound such as an epoxy-containing compound, and an additive which the specification states may be a flame retardant. While a halogen-based flame retardant is not specifically claimed, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. Moreover, the molded article is disclosed as useful in vehicle parts [0071].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kusama et al (US 20240239970 A1) discloses a thermoplastic resin composition and molded body, wherein the resin composition contains a recycled carbon fiber and optionally a halogen-based flame retardant.
Takashima et al (US 20240218159 A1) discloses a pellet and molded product formed from a resin composition comprising 5 to 65 parts by mass of recycled carbon fibers as a heated product of carbon fiber reinforced resin and 0.01 to 0.30 parts by mass of a metal salt-based flame retardant, relative to 100 parts by mass of a polycarbonate resin. The composition may optionally include a halogen-based flame retardant
Nishino et al (US 20230145210 A1) discloses a composition of a polycarbonate resin and recycled carbon fibers at 5 to 65 parts by mass which is a heated product of a carbon fiber-reinforced resin, as well as pellets and molded articles using said composition which are applicable as vehicle components.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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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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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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