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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/8/2025, 7/10/2025 and 6/21/2024 have been considered by the examiner.
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.
Claim(s) 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over TW 1777594B published 9/11/2022 (more than one year before the instant effective filing date of 9/27/23) also published as EP4098682A1 and citing there to as the English equivalent.
Regarding Claims 1-15:
EP 4098682A1 teaches a sizing agent covering a carbon fiber (meeting the claim limitations for a carbon fiber and for a sizing layer covering the fiber) used to produce a carbon fiber composite material [0029] the sizing agent includes a first composition solution and a second composition solution. The first composition solution includes a polyamic acid a solvent and a surfactant [0032] (meeting the limitation for a solvent)
The first composition solution includes dimethyl ethanolamine (this is a tertiary amine compound meeting the limitation for an alkali agent of claims and having a molar mass of 89.14 within the claimed range of claims) at a concentration of 10 wt.% added to polyamic solution (10 g/ molar mass of dimethyl ethanolamine of 89.14= moles of 0.112 (meeting claimed molar ratio) and the polyamic solution at a concentration of 60 wt.% (the solvent was N methyl pyrrolidone – being the same solvent used in the instant application [0029]) the concentration of polyamic acid was 30 wt.% -- so that is 54% polyamic acid in the solution once the dimethyl ethanolamine is added leaving a ratio of dimethyl ethanolamine to polyamic acid of 10/54 = 0.185 or 18..5 part of dimethyl ethanolamine per 100 pbw polyamic acid(within the claimed range of 100 pbw polyamic acid and alkali agent 3-30 pbw)[0045]
The sizing agent is 0.2 to 5 wt.% concentration and ratio of sizing agent to carbon fiber is 0.5 to 4 % [0021-0022]
See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
Regarding Claim 9:
The carbon fiber with sizing agent is blended into the resin matrix [0042-0043]
Regarding claim 10:
The composite material includes a resin matrix of poly ether ketone, poly ether ketone ketone, and/or poly aryl ether ketone [0025] (meeting claim 10 for polyphenylene sulfide, polyamic acid and/or polyether ketone – the use of or requires only one)
Regarding claims 2 and 5 and 11 and 13 (as well as the claims which depend therefrom such as claims 12, 14-15
The polyamic acid is prepared by subjecting a dianhydride and a diamine to a reaction [0010] The reference teaches reactants also taught by the instant application at [0028]
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(the solvent was N methyl pyrrolidone – being the same solvent used in the instant application for forming the polyamic acid [0029])
[0031] the dianhydride includes benzophenone tetracarboxylic dianhydride (molar mass 322.23g/mol)(this being a named dianhydride for formation of polyamic acid in the instant spec at [0028]) (benzo phenome tetracarboxylic dianhydride and 4, 4, diamino diphenyl ether meeting claim 11 thereby meting the claimed molecular weight of claim 11 as well as claim 2))
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Since the reactants taught to form the polyamic acid by the prior art are the same and/or similar to those of the instant application the molecular weight will overlap the claimed range of the instant claims and will necessarily possess the function and properties of the instant claims in ranges which meet and/overlap the claimed ranges including but not limited to molecular weight the claimed formulae as well as the overlapping the molar ratio of alkali agent to polyamic acid of from 0.01 to 0.2 etc.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
Further Regarding claims 8 and 14-15, etc. – limitations for heat loss:
The heat loss ratio of the fiber material at 400ºC is not larger than 1.2 % of the sizing agent itself [0024]The heat loss ratio of the carbon fiber is not larger than 1.2% [0044] See also [0058-0059] The sizing agent improves heat resistance of the carbon fiber materials and enhances thermal properties [0060]
Since the reactants taught to form the polyamic acid by the prior art are the same and/or similar to those of the instant application the molecular weight will overlap the claimed range of the instant claims and will necessarily possess the function and properties of the instant claims in ranges which meet and/overlap the claimed ranges including but not limited to molecular weight the claimed formulae and thermal weight loss ranges at 300ºC for 30 minutes etc. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
Claim(s) 2, 5, 6, 8, 11-15 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over TW 1777594B published 9/11/2022 (more than one year before the instant effective filing date of 9/27/23) also published as EP4098682A1 and citing there to as the English equivalent as applied to claims 1-15 above alternatively further in view of Kibayashi et al (US 2012/0123053)
Regarding Claims 2, 5, 6, 8, 11-15:
TW 1777594B discloses the limitations above set forth. While the examiner maintains the prior art renders obvious the claim limitations including the claimed formula, molecular mass, properties such as thermal weight loss as it teaches the same reactants for forming the claimed polyamic acid as above set forth; assuming, arguendo, it does not:
Kibayashi et al (US 2012/0123053) like the primary reference teaches a carbon fiber coated with a sizing (Abstract) The carbon fiber is coated with 0.1 to 0.3 wt.% sizing [0009] The carbon fibers are impregnated into resin and matrix resins including polysulfone resin, polyether sulfone resin polyether ether ketone resin polyether ketone ketone resin poly phenyl sulfide resins [0057] (meeting claim 10)
The weight loss ratio based on the sizing amount is Ws (%)=e/Fx100 F is amount of sizing and E weigh different is measure between 130 ºC and at 415ºC for etc. the weight loss ration based on the sizing amount is 75 or less or 3 % or less [0062-0063]
Solvents such as N-methyl pyrrolidone are used [0065] polyamic acid precursor for polyimide [0032]
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Meeting claimed formula (I) where X is a (1-1-2) and Y is the benzene oxygen benzene group/ether group (1-2-3) and n overlaps the claimed n)
Example 1 discloses a carbon fiber submerged in a sizing bath of 0.1-2 wt.% polyamic acid (Fig 21) dimethyl aminoethanol [0080] Example 6 discloses a carbon fiber submerged in sizing bath of 0.1 to 2 wt.% polyamic acid of Fig 23 DMFF solution [0087]
Example 11 teaches a carbon fiber submerge in sizing bath of0.1 to 2 wt. % polyamic acid (Fig 23) and ammonium salt water solution [0093]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to try to use the polyamic acid of Fig 23 of Kibayashi as the polyamic acid of TW 1777594B as it is suitable for use in sizing agents coating carbon fibers in resin matrixes and corresponds to those already contemplated by TW 177594B. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (emphasis added by examiner) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious).
The formula of the combined references being the claimed polyamic acid will necessarily possess the claimed molecular weight thermal weight loss etc. of the instant claims in ranges which meet and/or overlap the instantly claimed ranges as above set forth. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,320,061 further in view of Kibayashi et al (US 2012/0123053). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a sizing composition with a polyamic acid formed from the same reactant types in ranges which overlap (as above set forth rendering obvious overlapping ranges of molecular mass, thermal weight loss, and formula, etc. as made from the same reactants) covering a fiber and in a resin matrix of the same type (i.e. PEEK) the sizing composition is a solution (i.e. solvent) The issued patent does not include an alkali component of the instant claims; however:
Kibayashi et al (US 2012/0123053) being analogous art teaches a carbon fiber coated with a sizing (Abstract) The carbon fiber is coated with 0.1 to 0.3 wt.% sizing [0009] The carbon fibers are impregnated into resin and matrix resins including polysulfone resin, polyether sulfone resin polyether ether ketone resin polyether ketone ketone resin poly phenyl sulfide resins [0057] (meeting claim 10)
The weight loss ratio based on the sizing amount is Ws (%)=e/Fx100 F is amount of sizing and E weigh different is measure between 130 ºC and at 415ºC for etc. the weight loss ration based on the sizing amount is 75 or less or 3 % or less [0062-0063]
Solvents such as N-methyl pyrrolidone are used [0065] polyamic acid precursor for polyimide [0032]
Example 1 discloses a carbon fiber submerged in a sizing bath of 0.1-2 wt.% polyamic acid (Fig 21) dimethyl aminoethanol [0080] Example 6 discloses a carbon fiber submerged in sizing bath of 0.1 to 2 wt.% polyamic acid of Fig 23 DMFF solution [0087]
Example 11 teaches a carbon fiber submerge in sizing bath of0.1 to 2 wt. % polyamic acid (Fig 23) and ammonium salt water solution [0093]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to try to use the dimethyl amino ethanol of Kibayashi as the in the sizing composition of the issued patent as it is suitable for use in sizing agents coating carbon fibers in resin
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action. For example, Ichikawa et al (US 2018/0346668) teaching carbon fiber in resin matrix coated with sizing composition etc.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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