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 .
The Office Action is in response to the application filed 04/03/2026.
Claim Analysis
Summary of Claim 15:
A fiber-reinforced thermoplastic resin composition comprising
5 to 50 parts by weight of reinforcing fibers (A) containing at least carbon fibers, 20 to 94.5 parts by weight of a thermoplastic resin (B), and 0.5 to 30 parts by weight of a rosin resin (C), wherein the rosin resin (C) has an acid value and/or hydroxyl value of 100 mgKOH/g or more, and a thermal loss at 270°C of the rosin resin (C) is less than 5%.
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 21 and 25-29 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 pre-AIA the applicant regards as the invention.
Claim 21 recites “the organic fiber”. However, Claim 20, which Claim 21 depends upon, only recites “organic fibers” (emphasis added). It is unclear whether the organic fiber of Claim 21 is the same as the organic fibers of Claim 20. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, the organic fiber of Claim 21 will be interpreted to be the organic fibers of Claim 20.
Claim 25 recites “the thermoplastic resin (Bb) is contained”. However, it is unclear what is being contained (thermoplastic resin (Ba) and the thermoplastic resin (Bb), or just the thermoplastic resin (Bb)) and where they are contained.
Claim 25 recites “a melt kneaded resin composition (B1) obtained by melt- kneading the thermoplastic resin (Ba) and the thermoplastic resin (Bb)” and then, “the melt kneaded resin composition (B1) contains the thermoplastic resin (Ba)”. However, it is unclear if composition (B1) contains additional thermoplastic resin (Ba) that is in addition to the thermoplastic resin (Ba) that is the melt kneaded to form the melt kneaded resin composition (B1) which renders the claim indefinite. For the purposes of examination, the melt kneaded resin composition (B1) will be interpreted to not require the thermoplastic resin (Ba) that is in addition to the thermoplastic resin (Ba) that is the melt kneaded to form the melt kneaded resin composition (B1) as supported in the instant Specification [¶ 0072].
Claim 25 recites “wherein the thermoplastic resin (Bb) comprises a thermoplastic resin having a reactive functional group, 20 to 94.5 parts by weight of a melt kneaded resin composition (B1)” which implies 20 to 94.5 parts by weight of a melt kneaded resin composition (B1) is comprised in the thermoplastic resin (Bb). However, this is contrary to what is recited later in the claim (“(B1) obtained by melt- kneading the thermoplastic resin (Ba) and the thermoplastic resin (Bb)”) and to the instant Specification which discloses “the melt kneaded resin composition (B1) comprises the thermoplastic resin (Ba), the resin (Bb) having a reactive functional group and a compound (Bc)” [instant Specification, ¶ 0068]. For the purposes of examination, Claim 25 will be interpreted to read “wherein the thermoplastic resin (Bb) comprises a thermoplastic resin having a reactive functional group” at the end of the claim such that thermoplastic resin Bb does not contain 20 to 94.5 parts by weight of composition B1.
Claim 25 recites “a compound (Bc) produced by a reaction of the resin (Bb) having a reactive functional group, the resin (Ba) and the resin (Bb)” which lists resin (Bb) twice. However, it is unclear the two instances of resin (Bb) are due to a typographical error or if there are two types of resin (Bb) – one having a reactive functional group and one without. For the purposes of examination, the claim will be interpreted to read “a compound (Bc) produced by a reaction of the resin (Bb) having a reactive functional group and the resin (Ba)”.
Claim 25 recites “the resin (Ba)” and Claims 25-28 recite “the resin (Bb)”. There is insufficient antecedent basis for these limitations in the claims. For the purposes of examination, “the resin (Ba)” and “the resin (Bb)” will be interpreted to be “the thermoplastic resin (Ba)” and “the thermoplastic resin (Bb)” (emphasis added), respectively, to be consistent with “the thermoplastic resin (Ba)” and “the thermoplastic resin (Bb)” of Claim 24, upon which Claims 25-28 depend .
Claims 26-29 are rejected for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 102/103
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 16, 18, 20, 23-29 rejected are under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Imai et al. (US 2012/0028047 A1; cited in the IDS submitted on 04/03/2024; hereafter as “Imai”).
Regarding Claims 16 and 18, Imai teaches a fiber reinforced resin composition comprising thermoplastic resin [Claim 1; ¶ 0023; Examples 44-45], corresponding to the fiber-reinforced thermoplastic resin composition of Claim 16, comprising:
20 parts by weight (equivalent to 9.5 wt. %) carbon fiber filler [Examples 44-45; ¶ 0190; Claim 8], corresponding to 5 to 50 parts by weight (equivalent to 3.8-71 wt. %) of reinforcing fibers (A) containing at least carbon fibers of Claim 16;
A combined 100 parts by weight (equivalent to 48 wt. %) of nylon and glycidylmethacrylate modified polyethylene copolymer [Examples 44-45], corresponding to 20 to 94.5 parts by weight (equivalent to 20-94.5 wt. %) of a thermoplastic resin (B) of Claim 16;
90 parts by weight (equivalent to 43 wt. %) of rosin modified polybutylene terephthalate resin [Example 44; ¶ 0059, 0078], corresponding to 0.5 to 30 parts by weight (equivalent to 0.34-55 wt. %) of a rosin resin (C), corresponding to wherein the rosin resin (C) is modified of Claim 18.
However, Imai does not explicitly disclose wherein the rosin resin (C) has an acid value and/or hydroxyl value of 100 mgKOH/g or more of Claim 16 and a thermal loss at 270 °C of the rosin resin (C) is less than 5% of Claim 16.
Nevertheless, Imai teaches the same rosin resin as required by the instant claim as set forth in the rejection above. Therefore, the rosin resin of Imai would inherently result in the same acid value, hydroxyl value, and thermal loss as required by the instant claims if the rosin resin of Imai was subjected to the same testing. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding Claims 20, 23-25 and 29, Imai further teaches:
Glass fibers [¶ 0190], thereby reading on the glass fibers of Claim 20;
A first resin, nylon resin A1 [Examples 44-45; ¶ 0187; Claim 4], thereby reading on wherein the thermoplastic resin (B) contains polyamide of Claim 23, corresponding to the thermoplastic resin (Ba) of Claim 24, and corresponding to wherein the thermoplastic resin (Ba) is a polyamide resin of Claim 29;
A second resin, glycidylmethacrylate modified polyethylene copolymer resin A2 [Examples 44-45; ¶ 0189], thereby reading on wherein the thermoplastic resin (B) contains polyolefin of Claim 23, corresponding to the thermoplastic resin (Bb) that is different from thermoplastic resin (Ba) of Claim 24, corresponding to the thermoplastic resin (Bb) comprises a thermoplastic resin having a reactive functional group of Claim 25, and corresponding to wherein the thermoplastic resin (Bb) is a polyolefin resin of Claim 29;
0.2-90 wt. % melt-kneaded product A was prepared by melt-kneading first resin A1 and a second resin A2 that has a reactive functional group to form a matrix resin [Abstract; Claim 1], corresponding to 20 to 94.5 parts by weight of a melt kneaded resin composition (B1) obtained by melt-kneading the thermoplastic resin (Ba) and the thermoplastic resin (Bb) of Claim 25; and
Wherein second resin A2 (corresponding to resin Bb), being dispersed as particles in a matrix resin that comprises the first resin A1 (corresponding to resin Ba), and said particles having a number average particle diameter of 10 to 1,000 mn [Claim 1], corresponding to the resin (Bb) having a reactive functional group is dispersed in the thermoplastic resin (Ba) in a particle-like form with a number average particle diameter of 10 to 1,000 nm of Claim 25.
Regarding Claims 26-28, Imai further teaches:
First resin A1 (which corresponds to thermoplastic resin Ba) forms a continuous phase [¶ 0124], corresponding to wherein the thermoplastic resin (Ba) forms a continuous phase of Claim 26;
Second resin A2 (which corresponds to the thermoplastic resin Bb) forms a dispersal phase, corresponding to the resin (Bb) forms a dispersed phase of Claim 26;
Second resin A2 comprises finer particles of 1 to 100 nm produced through the reaction of the first resin A1 and the second resin A2 [¶ 0124; Claim 1], corresponding to fine particles composed of the compound (Bc) having a particle diameter of 1 to 100 nm are contained in the dispersed phase of Claim 26;
Wherein the finer particles resulting from the reaction of the components (A1) and (A2) account for 20% or more of the particles of the component (A2) in terms of area proportion [ ¶ 0092, 0124], corresponding to wherein an area ratio of the fine particles composed of the compound (Bc) in the dispersed phase formed by the resin (Bb) is 20% or more of Claim 27; and
Wherein the second resin A2 has an amino group, carboxyl group, metal salts of carboxyl group, epoxy group or anhydride group [¶ 0072], thereby reading on wherein the reactive functional group of the resin (Bb) is an amino group, a carboxyl group, a metal salt of a carboxyl group, an epoxy group, or an acid anhydride group of Claim 28.
Claims 16-21, 23-25, and 27-29 rejected are under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ogawa et al. (WO 2021/106746A1; cited in the IDS submitted on 04/03/2024; English translation incorporated herein; hereafter as “Ogawa”).
Regarding Claims 16-17, and 20, Ogawa teaches a fiber-reinforced resin comprising thermoplastic resin [Abstract; Example 3-3; ¶ 0356-0359; Claim 6], corresponding to the fiber-reinforced thermoplastic resin composition of Claim 16, further comprising:
30 parts by weight (equivalent to 30 wt. %) glass fiber, comprising carbon fibers [Claim 5; Example 3-3; ¶ 0356-0359], corresponding to 5 to 50 parts by weight (equivalent to 3.8-71 wt. %) of reinforcing fibers (A) containing at least carbon fibers of Claim 16, and thereby reading on the glass fibers of Claim 20;
69 parts by weight (equivalent to 69 wt. %) polypropylene [Claim 6; Example 3-3; ¶ 0356-0359], corresponding to 20 to 94.5 parts by weight (equivalent to 20-94.5 wt. %) of a thermoplastic resin (B) of Claim 16;
0.65 parts by weight (equivalent to 0365 wt. %) of Chinese gum rosin [Example 3-3; ¶ 0356-0359; Manufacturing Example 10], corresponding to 0.5 to 30 parts by weight (equivalent to 0.34-55 wt. %) of a rosin resin (C) of Claim 16;
Wherein the composition has a hydroxyl value of 100 mgKOH/g [Example 3-3; Table 1], thereby reading on wherein the rosin resin (C) has a hydroxyl value of 100 mgKOH/g or more of Claim 16; and
Which is equivalent to 1 wt. % Chinese gum rosin with respect to polypropylene (
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), corresponding wherein the rosin resin (C) is contained at 1 to 100 parts by weight (1-100 wt. %) equivalent to ) relative to 100 parts by weight of the reinforcing fibers (A) of Claim 17.
However, Ogawa does not explicitly disclose a thermal loss at 270 °C of the rosin resin (C) is less than 5% of Claim 16.
Ogawa teaches the same rosin resin with the same hydroxyl value as required by the instant claim as set forth in the rejection above. Therefore, the rosin resin of Ogawa would inherently result in the same thermal loss as required by the instant claims if the rosin resin of Ogawa was subjected to the same testing. In this case, since hydroxyl values and thermal loss are closed related parameters that are functions of a material’s crosslinking density and high-temperature structural integrity, it would be obvious to one of ordinary skill that a high hydroxyl value is a reasonable indication of low thermal loss value. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding Claims 18-19, and 21, Ogawa further teaches:
Reacting Chinese gum rosin to produce rosindiol [Manufacturing Example 10], corresponding to wherein the rosin resin (C) is modified of Claim 18, and thereby reading on wherein the rosin resin (C) contains rosin polyol of Claim 19;
Polyester fiber [¶ 0173], thereby reading on the polyester fiber of Claim 21;
Regarding Claims 23-25, 27, and 29, Ogawa further teaches:
29-98 wt. % matrix resin that is melt-kneaded [¶ 0213, 0230], corresponding to 0 to 94.5 parts by weight of a melt kneaded resin composition (B1) of Claim 25;
Wherein the matrix resin comprises thermoplastic resins such as:
Polyamide resin [¶ 0192], thereby reading on the polyamide resin of Claim 23, corresponding to the thermoplastic resin (Ba) of Claim 24, and thereby reading on wherein thermoplastic resin (Ba) is a polyamide resin of Claim 29;
Polyolefin resin [¶ 0192], thereby reading on the polyolefin resin of Claim 23, corresponding to the thermoplastic resin (Bb) of Claim 24, corresponding to wherein the thermoplastic resin (Bb) comprises a thermoplastic resin having a reactive functional group of Claim 25, corresponding to wherein the resin (Bb) is a polyolefin resin of Claim 29;
Wherein the polyamide resin and polyolefin can be used in combination to produce a matrix resin [¶ 0184], corresponding to a compound (Bc) produced by a reaction of the resin (Bb) having a reactive functional group and the resin (Ba) of Claim 25;
An emulsion comprising thermoplastic resin, rosin resin, and particles with a volume-average particle size of less than 0.7 µm [¶ 0168], corresponding to the melt-kneaded resin composition (B1) having a particle-like form with a number average particle diameter of 10 to 1,000 nm that is dispersed in the thermoplastic resin (Ba) of Claim 25; and
Wherein particle diameters of 10 to 1,000 nm have area ratios of 10-100,000%, corresponding to wherein an area ratio of the fine particles composed of the compound (Bc) in the dispersed phase formed by the resin (Bb) is 20% or more of Claim 27.
Regarding Claim 28, Ogawa further teaches:
Polycarboxylic acid [¶ 0197], thereby reading on wherein the reactive functional group of the resin (Bb) is a carboxyl group of Claim 28.
Claim Rejections - 35 USC § 103
Claims 17 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Imai et al. (US 2012/0028047 A1; cited in the IDS submitted on 04/03/2024; hereafter as “Imai”).
Imai teaches the fiber-reinforced thermoplastic resin composition, carbon fibers, thermoplastic resin, rosin resin, and hydroxyl value of Claim 16 as set forth above and incorporated herein by reference.
Regarding Claim 17, Imai further teaches:
fibrous filler C accounts for 0.1 to 300 parts by weight per 100 parts by weight of the resin composition [Claim 1];
10-99.9 wt. % of the third resin B (corresponding to the rosin resin) with respect to the resin composition [Claim 1]; and
Which is equivalent to 0.033-991 parts by weight third resin B with respect to 100 parts by weight of the fibrous filler C (
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), which overlaps with wherein the rosin resin (C) is contained at 1 to 100 parts by weight relative to 100 parts by weight of the reinforcing fibers (A) of Claim 17.
Regarding Claim 22, Imai further teaches reinforcement fiber length of 0.2 mm [Table 6; Examples 44-45], which overlaps with wherein a weight average fiber length (Lw) of the reinforcing fibers (A) is 0.1 to 7.0 mm of Claim 22.
However, Imai does not explicitly teach wherein the rosin resin (C) is contained at 1 to 100 parts by weight relative to 100 parts by weight of the reinforcing fibers (A) of Claim 17, and wherein a weight average fiber length (Lw) of the reinforcing fibers (A) is 0.1 to 7.0 mm of Claim 22.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Imai for the ratio of rosin resin to fibrous filler of Claim 17 (0.033-991), and reinforcement fiber length of Claim 22 (number average fiber length of 0.2 mm) overlaps the instantly claimed ranges (1-100, and weight average fiber length of 0.1-7 mm, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Claims 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Imai et al. (US 2012/0028047 A1; cited in the IDS submitted on 04/03/2024; hereafter as “Imai”) in view of Ogawa et al. (WO 2021/106746A1; cited in the IDS submitted on 04/03/2024; English translation incorporated herein; hereafter as “Ogawa”).
Imai teaches the fiber-reinforced thermoplastic resin composition, carbon fibers, thermoplastic resin, rosin resin, and hydroxyl value of Claim 16 as set forth above and incorporated herein by reference.
However, Imai does not explicitly teach wherein the rosin resin (C) contains at least one selected from a group consisting of hydrogenated rosin, polymerized rosin, acid modified rosin, rosin ester and rosin polyol of Claim 19, and wherein the organic fiber is at least one selected from a group consisting of polyamide fiber, polyester fiber, liquid crystal polyester fiber, polyarylene sulfide fiber and fluoro resin fiber of Claim 21.
Nevertheless, Ogawa teaches a fiber-reinforced thermoplastic resin composition comprising carbon fibers, thermoplastic resin, rosin resin [Abstract], and further comprising:
α,β-unsaturated carboxylic acid-modified rosin [¶ 0037-0038], thereby reading on wherein the rosin resin (C) contains acid modified rosin of Claim 19; and
Polyester fiber [¶ 0173], thereby reading on the polyester fiber of Claim 21.
Ogawa offers the motivation that acid modified rosin has excellent emulsifying properties [¶ 0037-0038], and the fibrous filler can be modified with functional groups on their surface if needed to impart particular properties to the fibers [¶ 0177-0178].
Imai and Ogawa are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing fiber-reinforced thermoplastic resin composition comprising carbon fibers, thermoplastic resin, rosin resin.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the acid modified rosin and polyester fiber of Ogawa with the fiber-reinforced thermoplastic resin composition of Imai thereby arriving at the claimed invention.
Claims 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (WO 2021/106746A1; cited in the IDS submitted on 04/03/2024; English translation incorporated herein; hereafter as “Ogawa”).
Ogawa teaches the fiber-reinforced thermoplastic resin composition, carbon fibers, thermoplastic resin, rosin resin, and hydroxyl value of Claim 16 as set forth above and incorporated herein by reference.
Regarding Claims 22 and 26, Ogawa further teaches:
3 mm chopped glass fiber strands [Examples 3-1, 3-3; ¶ 0356]; and
an emulsion comprising thermoplastic resin, rosin resin, and particles with a volume-average particle size of less than 0.7 µm [¶ 0168], wherein the emulsion corresponds to the continuous phase of Claim 26, and the particles form the dispersed phase of Claim 26.
However, Ogawa does not explicitly teach wherein a weight average fiber length (Lw) of the reinforcing fibers (A) is 0.1 to 7.0 mm of Claim 22, and the particle diameter of 1 to 100 nm of Claim 26.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the glass fiber length (3mm) and particle diameter (<0.7 µm) overlaps the instantly claimed ranges (0.1 to 7.0 mm, 1 to 100 nm) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE LANEE REUTHER can be reached on (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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/DORIS LING/Examiner, Art Unit 1764
/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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