Ex parte FERNANDEZ et al. - Page 5






            material.  See Answer, page 4.  As stated in the Answer, “[i]t is the examiner’s position    
            that it would have required no more than routine experimentation to choose and               
            determine the specific sizing agent commensurate with the desired properties of the          
            end product.”  See Answer, pages 4 and 5.  We disagree.                                      
            Edelman is directed to carbon fibers coated with a sizing agent.  See Edelman,               
            Abstract, column 1, line 67 - column 2, line 2, and column 2, lines 30-32.   The             
            sizing agent is applied after the thermal treatment.  See column 6, lines 4-7 and            
            Example 2.                                                                                   
            Weldy discloses carbon fibers coated with a sizing composition.  See Abstract, and           
            column 1, lines 45-47.  Indeed, Weldy states that the size composition does not              
            detract from the adhesion between the carbon fibers and the resin matrix.                    
            Miller likewise discloses a sizing formulation adapted for use with carbon fibers.           
            See Abstract, and column 2, lines 60-63.  Miller discusses at length removal of the          
            sizing.                                                                                      
            However, although the carbon filament yarns of each of the references of                     
            record  contain sizing agents, there is no teaching or suggestion that the carbon            
            filament yarns meet the conditions of the claimed subject matter, which require both         
            “a sizing material at least partially coating said plurality of filaments,” and “wherein     
            said sizing material of each said filament is substantially separated from the sizing        
            material of said at least one other said filament.”                                          
            Furthermore, the examiner has provided no evidence in support of his contention              
            that the choice of a specific sizing agent would result in a composition meeting the         
            requirements of the claimed subject matter.                                                  


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