DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Claims 1, 3, 6, 9-10, 12, 15-16, 18, 23-25, 29, 31-32, 39, 45, 51 and 54 are pending.
Claim Rejections - 35 USC § 103
Claims 1, 3, 6, 9-10, 12, 15-16, 18, 23, 25, 29, 31-32, 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Satochi (JP 2002-187247) in view of Safai (US 2016/0368170).
Regarding claim 1: Satoshi is directed to an uncured material for forming a phenolic resin sheet comprising
uncured phenolic resin
filler
- a catalyst can be added, although preferably the composition is without a catalyst ([0010] Satoshi) (equivalent to less than 1 wt% catalyst relative to the content of the phenolic resin.
The uncured phenolic resin is used in an amount of preferably 10-60 wt%, the total filler including kaolin clay and aluminum hydroxide is in an amount of 30-80 wt%, and additional fillers in an amount of up to 20 wt% of the composition. The ratio of aluminum hydroxide to kaolin clay is preferably 1:3 to 3:1. See [0011] Satoshi.
It follows a composition comprising 20 wt% uncured phenolic resin, 50 wt% aluminum hydroxide, and 30 wt% of kaolin/other inorganic fillers is well within the scope of both Satoshi and claim 1 of the present invention. Specifically, the resulting composition comprises a ratio of filler to uncured phenolic resin of 4:1, and a ratio of aluminum hydroxide to uncured phenolic resin of 2.5/1.
Satochi doesn’t mention a partially cured phenolic resin sheet.
Safai is directed to a composite composition comprising a matrix including a phenolic resin ([0034] Safai), and a fiber material made into a prepreg. Safai teaches the manufacturing of composite materials is simplified and/or streamlined through use of a prepreg, wherein a prepreg is partially cured to allow easy handling ([0003] Safai). One skilled in the art would have been motivated to have produced a partially cured phenolic resin prepreg to simplify and/or streamline the process and allow easy handling ([0002]-[0003] Safai). Therefore it would have been obvious to one skilled in the art at the time the invention was filed to have produced a partially cured phenolic resin prepreg to arrive at claim 1 of the present invention.
Regarding claims 3, 6: A catalyst can be added, although preferably the composition is without a catalyst ([0010] Satoshi) (equivalent to less than 1 wt% catalyst relative to the content of the phenolic resin ([0010]).
Regarding claims 9-10: The uncured phenolic resin is used in an amount of preferably 10-60 wt%, the total filler including kaolin clay and aluminum hydroxide is in an amount of 30-80 wt%, and additional fillers in an amount of up to 20 wt% of the composition. The ratio of aluminum hydroxide to kaolin clay is preferably 1:3 to 3:1. See [0011] Satoshi.
It follows a composition comprising 10 wt% uncured phenolic resin, 30 wt% aluminum hydroxide, and 60 wt% of kaolin/other inorganic fillers is well within the scope of both Satoshi and claims 9-10 of the present invention. Specifically, the resulting composition comprises a ratio of filler to uncured phenolic resin of 9:1, and a ratio of metal hydroxide to uncured phenolic resin of 3/1.
While a specific composition is not specifically mentioned comprising amounts within the scope of claims 9-10, it would have been obvious to have selected such a composition since the amounts are well within the claimed amounts, as demonstrated above. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected an uncured material within the scope of claims 9-10.
Regarding claim 12: The fillers are particulate and or inert to the rest of the uncured material and/or inorganic materials ([0011] Satoshi).
Regarding claim 15: Satoshi is directed to a material comprising kaolin clay. Other fillers include silica, glass powder etc. ([0011] Satoshi).
Regarding claims 16, 18: Satoshi is directed to a material comprising aluminum hydroxide, which has the formula AlOH3.
Regarding claim 23: The composition can further comprise a thickening agent ([0017] and Example 1 Satoshi) (equivalent to a viscosity controlling agent).
Regarding claim 25, 29: The composition comprises inorganic fibers, including glass fibers which can be in a layer such as a mat or fabric ([0013] Satoshi).
Regarding claims 31-32: The glass fiber content is preferably 5-20 wt% of the composition ([0013] Satoshi), wherein the uncured material is present in an amount of preferably 10-60 wt%. It follows that a ratio of 2:1-1:1 is within the scope of Satoshi.
Regarding claim 39: A method of forming a composite product comprises the steps of:
i) providing an uncured phenolic resin material or uncured phenolic resin sheet
ii. providing a substrate
iii. applying a layer of the uncured phenolic resin or uncured phenolic resin sheet onto a surface of the substrate and
iv. pressing the layer of uncured phenolic resin material or uncured phenolic resin sheet to the substrate such that at least a portion of the uncured phenolic resin material or uncured phenolic resin sheet bonds to the surface.
Specifically, Satoshi discloses the raw material of phenolic resin, filler, fiber, and additives into a mold, heated and pressed onto a base material ([0020]), wherein the base material include a mat of inorganic fiber and binder ([0015]).
Claims 24, 45, 51, 54 are rejected under 35 U.S.C. 103 as being unpatentable over Satoshi, and Safai as applied to claims 23 and 39 above, and further in view of Albertelli et al. (AU 2013248209).
Regarding claim 24: Satoshi doesn’t mention additives, although a specific thickening agent/ viscosity controlling agent is not mentioned.
Albertelli is directed to a method of forming a composite product comprising a phenolic resin, wherein the phenolic polymer contains a diol of butanol, ethanol, and isopropyl alcohol are added to reduce density of crosslinking. It follows that reduced crosslinking will affect the viscosity, and is therefore a viscosity controlling agent. One skilled in the art would have been motivated to have included a diol viscosity controlling agent in Satoshi since when used with a resole results in products having particularly good combination of physical properties, especially strength (p. 32 Albertelli). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a viscosity controlling agent of Albertelli as the additive of choice in Satoshi.
Regarding claim 45: Satoshi mentions a variety of base substrates, although an open cell foam substrate is not mentioned.
Albertelli is directed to a method of forming a composite product by pressure comprising an open cell foamed substrate made of a phenolic resin and is a crushable material, wherein pressure is applied to bond a skin layer to a substrate wherein a portion of the sheet material flows into the surface of the substrate. One skilled in the art would have been motivated to have selected the open cell substrate of Albertelli as the substrate of choice in Satoshi to produce a composite material having a broad range of applications, including doors windows and other panels used in buildings (abstract and p. 3-4 Albertelli). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the substrate of Albertelli as the substrate in Satoshi.
Regarding claim 51: A pressure is applied in units of force and is therefore not directly comparable to pressure. However, Albertelli teaches adding pressure such that the material at least partially flows into cells of the substrate material during the pressing step (p. 18 Albertelli). Hence, it is the Examiners position the particular amount of pressure applied to the substrate is a result-effective variable (MPEP 2144.05). Therefore, a particular amount of pressure within the scope of claim 51 is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to, one of ordinary skill in the art.
Alternatively, the substrate is a crushable material such that during the application of pressure, the surface of the substrate is moulded (p. 11 Albertelli).
Regarding claim 54: A produce comprising an open cell foam substrate and skin of phenolic resin bonded to the substrate wherein the phenolic resin is formed from the uncured material is suggested by the combination of Satoshi and Albertelli.
Response to Arguments
Applicant's arguments filed 1/21/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 2-3 Remarks) the Examiner continues to assert that applying prepreg to the method disclosed in Satochi is obvious despite being unable to provide a single benefit, a clear indication of ex post facto analysis. The Examiner appears to be reluctant to acknowledge that Satochi makes a clear and definitive statement that a liquid resin is preferred. ([0010] Satochi). Bringing Safai into the mix, the Examiner states the prepreg in Safai was in a liquid state prior to curing. While acknowledged, it is irrelevant. Satochi expressly teaches a liquid resin is advantageous for moulding. Accordingly, the use of a semi-solid prepreg merely because it was liquid at an earlier state, does not provide the same advantage and therefore is taught against.
This argument is not found persuasive since if Satochi was exclusively directed to a liquid resole, there would not be any mention of alternatives, such as a novolac type resin including a catalyst. Further, case law states "[I]n a section 103 inquiry, 'the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.'" Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976)). Finally, the processing mentioned in Satochi does not account for the obvious use as a prepreg to fabricate a composite structure, as discussed at [0051] of Safai.
A person skilled in the art would understand the benefit identified in Satochi arises from the resin being a liquid during moulding. Absent impermissible hindsight, there would be no motivation to depart from use of a liquid in favor of a semi solid prepreg.
This argument is not found persuasive since case law holds “[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). See MPEP 2145 (X)(A). In the instant case, the present office action takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, and therefore impermissible hindsight is not required to arrive at the present invention.
Applicant argues (p. 3 Remarks) The Examiner has not disclosed a benefit which is relevant to the present case. Prepreg is typically used to enable the material to be handled and transported in a non-liquid state before moulding into a desired shape. However, the panels are flat as external wall cladding. The Examiner cites paragraph 19 of Satochi, although concave or convex shapes relate to the locking mechanism at the corners, not the overall shape of the panels themselves.
This argument is not found persuasive since a prepreg allows for more complex shapes. Panels used in construction can include more complex shapes, including decorated panels. Alternatively, prepreg panels can be used to bond to other layers during lamination, for instance. Further, the desired shapes used to lock the panels together are part of the panel itself, which require forming into a desired shape.
Applicant argues (p. 4-7 Remarks) the composition in Satochi is likely not suitable for compositions that require fiber impregnation fibers. Applicant cites sections 3.1 and 3.2 of an NPL reference. As explained, an optimum fiber fraction is 55-60%. The use of only 5% by weight glass fibers is nowhere near this range. In practice, prepregs are made using woven fibre mats that are impregnated by dipping and rolling in a resin. Therefore, it is questionable whether it would be feasible to produce a prepreg using such low fibre content. The NPL literature cited by the Examiner again showing a fiberglass mat is impregnated. References directed to prepregs are not even suitable prior art. Safai is an obscure reference with little to no relevance to Satochi, and should be disregarded.
This argument is not found persuasive since Satochi includes up to 30 wt% glass fibers. The composition of Satochi further includes inorganic filler materials. Therefore, it is the Examiners position the composition of Satochi would be suitable for making a prepreg. Safai is directed to a composite composition comprising a matrix including a phenolic resin ([0034] Safai), and a fiber material made into a prepreg, and therefore not an obscure reference and is relevant to the composition of Satochi. Specifically, Satochi is directed to a phenolic resin sheet comprising and uncured phenolic resin and a filler. A prepreg starts with a liquid resin that is partially cured. A prepreg is made by partially curing a liquid resin as taught in Safai. Safai does not teach a different technical matter and does not require a fundamental change of Satochi.
Finally, the NPL cited by the Examiner states that prepregs are indeed commonly used in many industries and is continually increasing, and includes phenolic resin (see Prepreg processing of advanced fibre-reinforced polymer (FRP) composites Section 6.1 and 6.2.1 in Advanced Fibre-Reinforced Polymer (FRP) Composites for Structural Applications, Woodhead Publishing Series in Civil and Structural Engineering 2013, Pages 125-154).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764