DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
This office action is in response to the papers as filed 8/11/2025.
Claim(s) 1-5 is/are pending.
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.
I. Claim(s) 1-5 – or as stated below – is/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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “(f) preparing other PAN fibers...” Claim 1 then goes on to recite ““(g) selecting the PAN fiber having…” followed by a list of characteristics/properties. This language lacks antecedent basis, i.e. it is unclear which PAN fiber is being referenced: that of limitation (e) or the infinite fibers claimed in limitation (f). Limitation (g) presupposes that all PAN fibers must be different with all of the superlative adjectives employed: “the lowest number of surface defects,” “the most homogeneous interior,” “the greatest tenacity,” etc. Nowhere in limitation (f) is any such constraint placed on the fibers.
Claim 1 is separately indefinite as it is unclear if “the fiber” referenced in limitation (g) refers to a single PAN fiber that must have all of list of superlative adjective properties, or whether this refers to selecting seven different fibers (seven for each superlative adjective property listed).
Claim 1 is separately indefinite as limitation (g) contains a list of properties in the form [superlative adjective property], in relation to “other PAN fibers” (limitation f), which can be anything, i.e. they are variable. Referring to something that is variable is indefinite. MPEP 2173.05(b) II.
Claim 1 is separately indefinite as it recites “homogeneous interior.” This term is unclear and/or is a relative term. What must be homogeneous? How similar must the interior be to be “homogeneous?” As understood, these are unconventional terms. If Applicants have evidence otherwise, please submit it. This would be helpful in withdrawing the rejection.
Claim 1 is separately indefinite as it recites “compactness of structure.” This term is unclear and/or is a relative term. What must be compact? How close together must whatever structure is claimed (this is unclear) be to be “compact?” As understood, these are unconventional terms. If Applicants have evidence otherwise, please submit it. This would be helpful in withdrawing the rejection.
Claim 2 is missing a space between the number “1” and “wherein.”
Claim 3 contains the language of Claim 1, with added stabilization/oxidizing and carbonization steps. All issues from Claim 1 identified above apply to Claim 3, mutatis mutandis.
Claim 4 depends from Claim 3, drawn to a product or a composition of matter. Claim 4 however is drawn to a process. This process lacks antecedent basis.
Claim 5 depends from Claim 3, drawn to a product or a composition of matter. Claim 4 however is drawn to a process. This process lacks antecedent basis.
Claim Rejections - 35 USC § 102
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.
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.
I. Claim(s) 1-2 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu, et al., Modification of Polyacrylonitrile Precursors for Carbon Fiber via Copolymerization of Acrylonitrile with Ammonium Itaconate, Journal of Applied Polymer Science 2006; 102: 2175-2179 (hereinafter “Liu at __”) in view of:
Burnay, et al., Defect structure of PAN-based carbon fibers, Journal of Microscopy 1973; 97(1-2): 153-163 (hereinafter “Burnay at __”), and
Lee, et al., Microstructural evolution of polyacrylonitrile fibers during industry-mimicking continuous stabilization, Carbon 2022; 195: 165-173 (hereinafter “Lee at __”).
With respect to Claim 1, this claim requires “(a) obtaining acrylonitrile.” Liu teaches acrylonitrile (AN). (Liu at 2175, col. 2 – Experimental).
Claim 1 further requires “(b) obtaining a bis ammonium salt of itaconic acid.” Ammonium itaconate, a bis ammonium salt of itaconic acid, is obtained. (Liu at 2176, col. 1).
Claim 1 further requires “(c) polymerizing acrylonitrile and the bis ammonium salt of itaconic acid in an addition polymerization reaction to obtain a solid PAN polymer.” The two are polymerized. (Liu at 2176, col. 1 – Polymerization).
Claim 1 further requires “the PAN polymer consists essentially of acrylonitrile in the polymer in an amount of about 92 wt. % to about 97 wt. % and bis ammonium salt of itaconic acid in the polymer in an amount of about 3 wt. % to about 8 wt. %.” Liu teaches AIA concentrations of 2.1 wt.%, which is interpreted as “about 3 wt. %.” (Liu at 2176, col. 1 – Polymerization; 2177, Fig. 2). As understood, the balance is acrylonitrile. Id.
Claim 1 further requires “(d) preparing a spin dope of the PAN polymer.” A dope is prepared. (Liu at 2176, col. 1: “A 18% solution of copolymer in DMSO (dope)…”).
Claim 1 further requires “(e) spinning the spin dope to obtain a PAN fiber.” Spinning is taught. (Liu at 2176, col. 1 – wet spinning).
Claim 1 further requires “(f) preparing other PAN fibers in accordance with steps (a) - (e).” Liu teaches changing the concentration “according to respective experiment.” (Liu at 2176, col. 1). This is interpreted as preparing other fibers.
Claim 1 further requires “(g) selecting the PAN fiber having the lowest number of surface defects, the most homogeneous interior, the greatest tenacity, the smallest number of microvoids, the smallest size of microvoids, the most aligned arrangement of crystallites on the surface, and the most compact structure to be the carbon fiber precursor.” Liu teaches tenacity. (Liu at 2178, Table 1). Liu teaches void volume, which reasonably suggests number and size of microvoids. Id. To the extent Liu doesn’t, Lee provides an extensive discussion of microvoids, among other properties. (Lee at 170, col. 1 et seq. – discussing microvoids; Lee at 171, Fig. 6). Lee also teaches what – as best understood – is understood to be hogomeneity of the interior and compactness of the structure. (Lee at 171, Fig. 6). Crystallinity is taught. (Lee at 168; passim). To the extent Liu may not literally recite the other properties/characteristics, Burnay teaches voids and defects. (Burnay at 154 – Experimental). Burnay teaches crystallites and discusses alignment. (Burnay at 155).
The properties and their characterization are known to the skilled artisan.
Characterizing them reflects application of known techniques to achieve predictable results. This does not impart patentabilty. MPEP 2143; KSR. Selecting the “best one” is an obvious expedient. As discussed in other applications in this family, the patent laws require one of skill in the art to be able to discern a “best mode.” See 35 U.S.C. 112(a). Picking the “best one” (i.e. the “superlative adjective property”) is an obvious expedient, at least for enhancing commercial opportunities. “[A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal-and even common-sensical-we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (emphasis added). It is common sense to select the best property. There may be additional motivations to rank the best one, as it necessarily implies discerning the “second best,” “third best,” etc., doing a cost-benefit analysis, etc.
As to Claim 2, itaconic acid is contacted with ammonia. (Liu at 2175, col. 2 – 2176, col. 1).
II. Claim(s) 1-2 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu, et al., Modification of Polyacrylonitrile Precursors for Carbon Fiber via Copolymerization of Acrylonitrile with Ammonium Itaconate, Journal of Applied Polymer Science 2006; 102: 2175-2179 (hereinafter “Liu at __”) in view of:
Burnay, et al., Defect structure of PAN-based carbon fibers, Journal of Microscopy 1973; 97(1-2): 153-163 (hereinafter “Burnay at __”), and
Lee, et al., Microstructural evolution of polyacrylonitrile fibers during industry-mimicking continuous stabilization, Carbon 2022; 195: 165-173 (hereinafter “Lee at __”), and futher in view of:
Cui, et al., The Degradation and Prestabilization of Acrylonitrile Copolymers, Journal of Applied Polymer Science 2010; 117: 1596-1600 (hereinafter “Cui at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 1 – to the extent Liu can be characterized as not teaching “about” 3-8 wt% of ammonium itaconate (no such concession is made), this does not impart patentability. Cui teaches 3.5 % AIA . (Cui at 1597, Table 1). One of skill in the art would be motivated to use the claimed values to improve performance of the peroxidized fiber. See (Cui at 1600 - Conclusions).
III. Claim(s) 3-5 – or as stated below – is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wang, et al., High-Temperature DSC Study of Polyacrylonitrile Precursors during Their Conversion to Carbon Fibers, Journal of Applied Polymer Science 2007; 106: 1787-1792 (hereinafter “Wang at __”).
With respect to Claim 3, this claim requires “[a] carbon fiber prepared according to a process comprising: (a) obtaining acrylonitrile; (b) obtaining a bis ammonium salt of itaconic acid; (c) polymerizing acrylonitrile and the bis ammonium salt of itaconic acid in an addition polymerization reaction to obtain a solid PAN polymer; wherein the PAN polymer consists essentially of acrylonitrile in the polymer in an amount of about 92 wt. % to about 97 wt. % and bis ammonium salt of itaconic acid in the polymer in an amount of about 3 wt. % to about 8 wt. %; (d) preparing a spin dope of the PAN polymer; (e) spinning the spin dope to obtain a PAN fiber;(f) preparing other PAN fibers in accordance with steps (a) - (e); (g) selecting the PAN fiber having the lowest number of surface defects, the most homogeneous interior, the greatest tenacity, the smallest number of microvoids, the smallest size of microvoids, the most aligned arrangement of crystallites on the surface, and the most compact structure to be the carbon fiber precursor; (h) heating the carbon fiber precursor at low temperature to obtain an oxidized polyacrylonitrile fiber; and (j) heating the oxidized polyacrylonitrile fiber at high temperature to obtain the carbon fiber.” (emphasis added). This is a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent they suggest structure or composition. This claim is construed as requiring a generic carbon fiber. No properties are required. To the extent the “selecting [superlative adjective property]” language impart something, which is not conceded, it is in relation to all/infinite PAN fibers. Stated differently, it claims all values, which is tantamount to claiming no values when comparing to the prior art. Wang teaches carbon fibers. (Wang at 1971, col. 2: “the resultant carbon fibers were listed in Table IV,” Wang at 1792 – Table IV; passim).
As to Claim 4, and notwithstanding the issues above, this claim is interpreted as limiting the process steps recited in product-by-process Claim 3. The heating is taught. (Wang at 1792 – Conclusion). As such, whatever structure is imparted is necessarily present.
As to Claim 5, and notwithstanding the issues above, this claim is interpreted as limiting the process steps recited in product-by-process Claim 3. The heating is taught. (Wang at 1792 – Conclusion). As such, whatever structure is imparted is necessarily present.
Conclusion
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736