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/Restrictions
Applicant’s election without traverse of Group I, claims 1, 2, 4, and 5, in the reply filed on 07/30/2026 is acknowledged.
Claim 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/30/2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ichiyanagi (JP 11-269266 A, cited in IDS, made of record 02/12/2024, machine translation in English used for citation, made of record 07/16/2026).
Regarding claim 1, Ichiyanagi teaches a highly heat-resistant organic fine powder [0003], wherein the heat-resistant organic powder is polybenzoxazole [0004], wherein the highly heat-resistant organic powder is characterized by having a residual weight retention rate of 30% or more after heating in air 500°C for one hour [0004], wherein the specific surface area by the BET method is 1 m2/g or more [0004], wherein the powder is obtained by pressing a nonwoven fabric comprising polybenzoxazole fibers to create a hard state with a density of 0.5 g/cc or higher, placing it on a lathe, machining the felt surface with a cutting tool while it rotates to obtain powder [0012], or wherein the powder is obtained by obtaining a nonwoven fabric comprising polybenzoxazole fibers and having a density of 0.35 g/cc, processing the nonwoven fabric, pressing the nonwoven fabric to create a hard state with a density of 0.65 g/cc, placing it on a lathe, cutting the surface of the felt with a cutting tool while it rotates to obtain powder [0015], which reads on a polybenzoxazole powder having an apparent density of more than 0.2 g/cm3, and a specific surface area of 1 m2/g or more.
Ichiyanagi does not teach with sufficient specificity that the polybenzoxazole powder has a specific surface area of 10 m2/g or more. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select a specific surface area by the BET method of Ichiyanagi’s highly heat-resistant organic fine powder to be 10 m2/g or more. The proposed modification would read on the polybenzoxazole powder having a specific surface area of 10 m2/g or more as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a specific surface area that is suitable for Ichiyanagi’s highly heat-resistant organic fine powder and/or because it would have been obvious to try with a reasonable expectation of success because Ichiyanagi teaches that the highly heat-resistant organic fine powder is characterized by the specific surface area by the BET method is 1 m2/g or more [0004], which encompasses 10 m2/g or more. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
The Office recognizes that all the claimed physical properties are not positively taught by Ichiyanagi, namely that the polybenzoxazole powder has a temperature at 5% weight loss of 550°C or higher. However, Ichiyanagi renders obvious all the claimed ingredients, amounts, process steps, and process conditions of the polybenzoxazole powder as explained above. Furthermore, the specification of the instant application recites that the polybenzoxazole powder has a temperature at 5% weight loss of 550°C or higher [0013, 0042]. Also, Ichiyanagi teaches that the heat-resistant organic powder is polybenzoxazole [0004], and that the highly heat-resistant organic powder is characterized by having a residual weight retention rate of 30% or more after heating in air 500°C for one hour [0004]. Therefore, the claimed physical properties would naturally arise from the polybenzoxazole powder that is rendered obvious by Ichiyanagi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 2, the Office recognizes that all the claimed physical properties are not positively taught by Ichiyanagi, namely that the polybenzoxazole powder shows a breakdown voltage of 5 kV/mm or more in the form of a compact produced by pressing and molding 1000 g of the polybenzoxazole powder per 1 m2 at 200°C and a pressure of 40 MPa. However, Ichiyanagi renders obvious all the claimed ingredients, amounts, process steps, and process conditions of the polybenzoxazole powder according to claim 1 as explained above. Furthermore, the specification of the instant application recites that the polybenzoxazole powder shows a breakdown voltage of 5 kV/mm or more in the form of a compact produced by pressing and molding 1000 g of the polybenzoxazole powder per 1 m2 at 200°C and at a pressure of 40 MPa [0014], and that the polybenzoxazole powder shows a breakdown voltage of preferably 5 kV/mm or more, more preferably 6 kV/mm or more, particularly preferably 10 kV/mm or more in the form of a compact produced by pressing and molding 1000 g of the polybenzoxazole powder per 1 m at 200°C and a pressure of 40 MPa [0043]. Therefore, the claimed physical properties would naturally arise from the polybenzoxazole powder that is rendered obvious by Ichiyanagi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 4, Ichiyanagi teaches that the powder can be compressed and molded [0014], which reads on a polybenzoxazole powder compact comprising the polybenzoxazole powder according to claim 1 as claimed.
Regarding claim 5, Ichiyanagi teaches that the powder can be compressed and molded [0014], that it is certainly possible to use the material after impregnation with heat resistant and flame-retardant resins such as phenolic resin [0014], and that it is also possible to mix it with other heat-resistant powders [0014], which reads on a composite material comprising the polybenzoxazole powder according to claim 1 as claimed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/ Primary Examiner, Art Unit 1767
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