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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-6, and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 1, the claim recites “wherein said resin layer has a thickness of 10 µm or less” in line 9. There is no support in the specification as originally filed for this limitation in the claim. While the specification as originally filed provides support to recite a resin layer having a thickness of 5-50 µm (instant specification, [0054]), this does not provide support to broadly recite wherein the resin layer has a thickness of 10 µm or less, which includes all values below 5 µm (e.g., 4 µm, 3 µm, etc.) for which there is no support.
Claims 3-6 are rejected under 35 U.S.C. 112(a) due to their ultimate dependency on claim 1.
With respect to claim 11, the claim recites “wherein the metal member, the resin layer… are prevented from penetrating into the resin layer” in lines 10-11. There is no support in the specification as originally filed for this limitation in the claim. While the specification as originally filed provides support to recite preventing penetration of the carbon fiber into the resin layer in [0015] and [0027] and support to recite that the resin layer prevents the penetration of the carbon fiber to the metal member in [0071], there is no support to recite that the metal member and the resin layer are prevented from penetrating into the resin layer as presently claimed.
With respect to claim 11, the claim recites “wherein said resin layer has a thickness of 10 µm or less” in line 16. There is no support in the specification as originally filed for this limitation in the claim. While the specification as originally filed provides support to recite a resin layer having a thickness of 5-50 µm (instant specification, [0054]), this does not provide support to broadly recite wherein the resin layer has a thickness of 10 µm or less, which includes values below 5 µm (e.g., 4 µm, 3 µm, etc.) for which there is no support.
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.
Claim 11 is 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.
With respect to claim 11, the claim recites “wherein… the resin layer… [is] prevented from penetrating into the resin layer” in lines 10-11. The scope of the claim is confusing because it is not clear how the resin layer is prevented from penetrating into the resin layer (i.e., it is unclear how the resin layer is prevented from penetrating into itself).
Response to Arguments
Due to the filing of a certified translation of the priority application JP 2018-071938 on 15 September 2025 and the statement of common ownership provided in the remarks filed 15 September 2025, the 35 U.S.C. 103 rejections of claims 1, 3-6, and 11 over Ibaragi et al. (WO 2019/202975 A1, “Ibaragi ‘975”) and the 35 U.S.C. 103 rejections of claims 1, 3-6, and 11 over Ibaragi et al. (WO 2019/132042 A1, “Ibaragi ‘042”) are withdrawn. This is because neither reference qualifies as prior art under 35 U.S.C. 102(a)(1) because they were published after the earliest effective filing date of the claimed invention. Ibaragi ‘975 has an earliest effective filing date that is later than the effective filing date of the present application and therefore does not qualify as prior art. Further, given the statement of common ownership regarding Ibaragi ‘042 provided in the remarks filed 15 September 2025, Ibaragi ‘042 no longer qualifies as prior art under 35 U.S.C. 102(a)(2) because the reference was commonly owned or assigned no later than the effective filing date of the claimed invention (i.e., the 35 U.S.C. 102(b)(2)(C) exception applies).
Due to the amendment to claims 1 and 11, the 35 U.S.C. 103 rejections of claims 1, 4, 6, and 11 over Kawatou et al. (WO 2017/090676 A1, “Kawatou”); the 35 U.S.C. 103 rejections of claim 3 over Kawatou in view of Federal Steel Supply (Different Types of Steel) and the evidence provided by Takahashi et al. (US 2019/0177854 A1, “Takahashi”); and the 35 U.S.C. 103 rejection of claim 5 over Kawatou in view of Hirano et al. (JP 2016-003257 A, “Hirano”) are withdrawn. This is because Kawatou discloses the thickness of the adhesive layer (corresponding to the claimed resin layer) is 20 µm ([0106]) as opposed to the claimed range of 10 µm or less. There is no indication that it would have been obvious to one of ordinary skill in the art to use a resin layer having a thickness below 20 µm.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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