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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on September 9, 2025 has been entered.
Allowable Subject Matter
The indicated allowability of Claims 1-4 and 6-9 is withdrawn in view of the newly discovered reference(s) cited in the Information Disclosure Statement dated September 9, 2025. Rejections based on the newly cited reference(s) follow.
Claim Rejections - 35 USC § 103
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 1-4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent No. 6,812,046 to Hamashima et al. (submitted by Applicant in the Information Disclosure Statement dated October 10, 2024) (“Hamashima”) in view of Japanese Patent Application Publication 2016-121318 to Yoshida et al. (submitted by Applicant in the Information Disclosure Statement dated September 9, 2025) (“Yoshida”).
With regard to Claim 1, Hamashima discloses a sizing agent for inorganic fibers having excellent heat resistance and comprising an aqueous solution comprising water, a polyamide compound, and a nitrogen-containing compound. See, e.g., Abstract, entire document. Hamashima discloses that the polyamide compound comprises a constituent unit A and a constituent unit B, page 6, wherein constituent unit A includes a constituent formed from a tetracarboxylic acid or a derivative thereof, page 5, and wherein constituent unit B includes a constituent formed from a diamine or a derivative thereof. Page 8. Hamashima teaches that the ratio of the molar unit of constituent unit A and the constituent unit B is in the range of 1:1 to 1:2. Page 9. “In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists.” M.P.E.P. 2144.05. Hamashima discloses that the nitrogen-containing compound can be a tertiary amine compound or an aprotic nitrogen-containing heterocyclic compound. Page 9. Hamashima teaches that the mass ratio of the content of the polyamide compound to the content of the nitrogen-containing compound is in the range of 95/5 to 35/65, preferably in the range of 90/10 to 40/60. Page 11. However, Hamashima does not disclose the mass ratio content of the polyamide compound to the content of nitrogen-containing compound to be within the narrower range of 54/46 to 31/69. Yoshida is also related to hydrophilic polymer materials that can be used as a coating material or sizing agent for composite materials. See, e.g., Abstract, paragraphs [0070] and [0071], entire document. Yoshida teaches that a hydrophilic polyimide can be obtained using a molar ratio of diamine to tetracarboxylic dianhydride ratio in the range of greater than 1 and less than 2 in order to optimize the degree of polymerization and have a sufficient amount of amino groups. Paragraph [0048]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the ratio of polymer compound to nitrogen-containing compound to be slightly greater than 50/50, such as 1.01, in the sizing agent disclosed by Hamashima in order to provide a polymer with a high degree of polymerization and greater molecular weight, in combination with amino groups at both ends, as shown to be known in the art by Yoshida. With regard to Claim 2, Hamashima discloses that the constituent unit A is formed from a tetracarboxylic acid having an aromatic group. Page 7. With regard to Claim 3, Hamashima discloses that the constituent unit B is formed from a diamine having an aromatic group. Page 8. With regard to Claim 4, Hamashima discloses the nitrogen-containing compound can comprise 1,2-dimethylimidazole. Page 10. With regard to Claim 6, Hamashima discloses that “content ratio of the sizing agent and water in the aqueous liquid is not particularly limited. When the content ratio of the sizing agent is 100 parts by mass, the content of water is preferably 100 to 2000 parts by mass, and more preferably 150 to 1000 parts by mass.” Page 11. With regard to Claims 7-9, Hamashima discloses that the aqueous composition comprising the sizing agent can be adhered to a carbon fiber. Page 12.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. To the extent that the arguments still apply to the primary reference, then those arguments are addressed below.
Applicant argues that narrower and distinct mass ratio ranges of 54/46 to 31/69 for the polyamide3 compound and nitrogen-containing compound provide improvement in long-term storage capacity not recognized by Hamashima. However, in response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this instance, the newly cited Yoshida reference teaches that a mass ratio of 1.01 for these components provides improved polymerization and molecular weight. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789