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
Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/07/2026.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ito US 20200247986 in view of Hunter US 20120010329.
Regarding claims 1-10, Ito teaches a resin composition (Abstract). Ito teaches the resin composition is cured at 2 hours at 180C (Paragraph [0118]). Ito is silent on the thermal diffusivity rate of the composition. Ito also teaches the char generation rate is between 4 and 30% (Tables 1-3). Ito teaches the char generation rate is measured at 650C. Ito is silent on the char generation rate at 600C.
However, Ito teaches the composition comprises an amine-based hardener
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where R1 is R 1 represents a hydrocarbon
group with a carbon number of 2 to 4 (Paragraph [0018-0019]) This reads on the structure of claim 4, chemical formula 1, where R is a hydrocarbon group having 1-4 carbon atoms. This reads on the limitations of claim 4.
Ito teaches the composition further comprises a thermoplastic resin (Paragraph [0074]). Ito also teaches the composition comprises thermoplastic resin particles (Paragraph [0076]). This reads on the limitations of claims 8 and 9.
Ito also teaches the composition comprises a component (A) where component A has the structure of
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where R7 and R8 are each independently selected from a hydrogen atom, an aliphatic hydrocarbon group with a carbon number of 1 to 4, an alicyclic hydrocarbon group with a carbon number of 3 to 6, an aromatic hydrocarbon group with a carbon number of 6 to 10, a halogen atom, an acyl group, a trifluoromethyl group and a nitro group. (Paragraph [0038]). It would have been obvious to select this structure as the structure of component (A) because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
This reads on the limitations of claims 5 and 6 where R7 is a hydrocarbon having 1-4 carbon groups and X is a hydrogen atom. It would have been obvious to select this structure as the structure of component (A) because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Ito also teaches that component (A) is 10-50 parts by weight of the epoxy resins. This overlaps with claimed range of 10-60 parts by weight of component (C). This reads on the limitations of claim 7.
Ito also teaches the composition comprises a filler component such as carbon particles (Paragraph [0077]). However, Ito is silent on the carbon particle being graphite.
Hunter teaches an epoxy resin composition used in application for the aerospace industry, (Title, Paragraph [0098]). Hunter teaches the composition comprises an amine-based hardener and a filler (Paragraph [0069] and [0093]). Hunter teaches the filler can be graphite (Paragraph [0093]). It would have been obvious to select graphite as the filler because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. Hunter also teaches impregnating fibers with the epoxy resin to form a prepreg (Paragraph [0012]).
Hunter teaches a similar composition for a similar application. It would have been obvious combine the teachings of Ito and Hunter and use the graphite filler of Hunter as the carbon particle filler of Ito because this represents a suitable filler identified by Hunter as being suitable for use in applications similar to Ito. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. This reads on the limitations of claims 2 and 3.
Ito also teaches a prepreg composition can be formed by impregnating a reinforced fiber with the epoxy resin composition (Paragraph [0078]). This reads on the limitations of claim 10. Ito also teaches the resulting prepreg can be used in various applications including industrial equipment, civil engineering and aerospace engineering (Paragraph [0003]).
Ito in view of Hunter does not expressly disclose the char generation rate at 600C or the thermal diffusivity of the epoxy resin composition. Nevertheless, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore, the epoxy resin composition of Ito in view of Hunter as described above will therefore necessarily possess the claimed char generation and thermal diffusivity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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