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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 18 November 2024 has been entered.
Claim Rejections - 35 USC § 112
3. 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.
Claim 11 is 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 11, while there is support in the present specification to recite preventing penetration of the carbon fiber into the resin layer in paragraphs 0015 and 0027 and there is support to recite that the resin layer prevents the penetration of the carbon fiber to the metal member in paragraph 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.
6. 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 scope of the claim is confusing given that it is not clear how the resin layer is prevented from penetrating into the resin layer.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4, 6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kawatou et al. (WO 2017/090676 A1, “Kawatou”). It is noted that the disclosure of Kawatou is based off a machine translation of the reference included with this action.
With respect to claims 1, 4, 6, and 11, Kawatou discloses a fiber-reinforced resin composite laminate ([0008]) comprising a fiber-reinforced thermoplastic resin layer bonded to a metal plate layer ([0009]). The laminate has an adhesive layer (i.e., resin layer) between the fiber-reinforced thermoplastic resin layer and the metal plate layer ([0015]). The metal plate layer includes iron or stainless steel ([0033]). The fiber-reinforced thermoplastic resin layer includes carbon fiber in an amount of 10-80 vol% ([0050], [0057], [0094]); the thermoplastic polymer (i.e., matrix resin) includes polycarbonate, PET, and polypropylene ([0056]). The adhesive includes epoxy adhesives (i.e., a thermosetting resin) ([0067]). The thickness of the adhesive layer is 20 µm ([0106]). There is no disclosure in Kawatou regarding the carbon fibers penetrating into the resin layer, and thus it is the examiner’s position that the metal plate layer and carbon fibers do not penetrate into the resin layer. While there may be no explicit disclosure from Kawatou regarding an indentation elastic modulus at 160-180°C of the resin layer (i.e., the epoxy) being higher than an indentation elastic modulus of the matrix resin (i.e., the polycarbonate, PET, etc.), given that Kawatou discloses an otherwise identical article made from identical layers made from identical materials as that presently claimed, it is clear the resin layer (i.e., epoxy) of Kawatou would necessarily inherently have an indentation elastic modulus at 160-180°C that is higher than an indentation elastic modulus of the matrix resin (i.e., polycarbonate, PET, etc.), absent evidence to the contrary.
In light of the overlap between the claimed metal-carbon fiber reinforced plastic composite and that taught by Kawatou, it would have been obvious to one of ordinary skill in the art to use a metal-carbon fiber reinforced plastic composite that is both taught by Kawatou and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kawatou et al. (WO 2017/090676 A1, “Kawatou”) as applied to claim 1 above, and further in view of Federal Steel Supply (Different Types of Steel) and the evidence provided by Takahashi et al. (US 2019/0177854 A1, “Takahashi”). It is noted that the disclosure of Kawatou is based off a machine translation of the reference included with this action.
With respect to claim 3, while Kawatou discloses its laminate can be molded ([0008]) and discloses the metal plate layer includes iron or stainless steel ([0033]), Kawatou does not disclose wherein the metal plate is a plated steel material provided with a galvanized layer.
Federal Steel Supply teaches that galvanized steel prevents the formation of rust and provides a harder surface and is often used in applications requiring bending to form (i.e., molding) (page 2, “Sheets of steel are galvanized by dipping them into a zinc bath… to prevent ruse as well as providing a harder surface. Galvanized steel is often used in applications that require bending to form…”). As evidenced by Takahashi, galvanized steel is a steel sheet plated with a zinc-based plating ([0008]), and thus galvanized steel is a plated steel material provided with a galvanized layer.
Kawatou and Federal Steel Supply are analogous inventions in the field of products that are molded and involve the use of steel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the steel Kawatou to be galvanized steel as taught by Federal Steel Supply in order to provide a steel layer that prevents the formation of rust and provides a harder surface but is acceptable for use in molding (Federal Steel Supply, page 2, “Sheets of steel are galvanized by dipping them into a zinc bath… to prevent ruse as well as providing a harder surface. Galvanized steel is often used in applications that require bending to form…”).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kawatou et al. (WO 2017/090676 A1, “Kawatou”) as applied to claim 1 above, and further in view of Hirano et al. (JP 2016-003257 A, “Hirano”). It is noted that the disclosure of Kawatou is based off a machine translation of the reference included with this action while the disclosure of Hirano is based off a machine translation of the reference included with the action mailed 24 August 2023.
With respect to claim 5, while Kawatou discloses the thermoplastic polymer (i.e., matrix resin) includes polycarbonate, PET, and polypropylene ([0056]), Kawatou does not disclose wherein the matrix resin includes phenoxies.
Hirano teaches a fiber-reinforced composite material joined to a metal material ([0011]) where the fiber-reinforced composite comprises an adhesive layer that bonds to the metal and a reinforcing fiber nonwoven fabric impregnated with thermoplastic resin ([0014-0015]). The reinforcing fiber is made from carbon fiber ([0040]). The adhesive is made from epoxy ([0042]). The thermoplastic layer is made from resins including polyethylene terephthalate, polypropylene, polycarbonate, and phenoxy resins ([0041]).
Kawatou and Hirano are analogous inventions in the field of carbon fiber reinforced composites using epoxy resins as adhesive layers and a resin layer reinforced with carbon fiber made from thermoplastic resins.
In light of the disclosure of the equivalence and interchangeability of polyethylene terephthalate, polypropylene, and polycarbonate and phenoxy resin as disclosed by Hirano, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a matrix resin made from phenoxy resin in Kawatou and thereby arrive at the claimed invention.
Claims 1, 3-6, and 11 are rejected under 35 U.S.C. 103 as being obvious over Ibaragi et al. (WO 2019/202975 A1, “Ibaragi ‘975”). It is noted that the disclosure of Ibaragi ‘975 is based off US 2021/0039356 A1, which serves as an English language equivalent.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
With respect to claims 1, 3-6, and 11, Ibaragi ‘975 discloses a metal and carbon-fiber-reinforced plastic composite having a metal member, a resin layer positioned at a surface of the metal member, and a carbon fiber reinforced plastic positioned on the resin layer (Abstract, [0001], [0013]). The carbon fibers are present in an amount of 20-70 vol% ([0019]). The metal member is a ferrous material including an iron-based alloy (i.e., ferrous alloy) including stainless steel ([0021], [0046]) and is subjected to a surface treatment by galvanization plating ([0047]). The resin layer has a thickness of 20-300 µm ([0053]) and is made from thermosetting resins ([0055]), such as epoxy resin, urethanes, and phenols ([0060]). The carbon-fiber-reinforced plastic (CFRP) is made from a matrix resin ([0079]) that is a thermoplastic resin ([0083], including a phenoxy resin, polyethylene terephthalate, polycarbonate, polyamide (i.e., nylon), and polyphenylene sulfide ([0085]). Ibaragi ‘975 does not require that the metal member and carbon fibers penetrate into the resin layer given that Ibaragi ‘975 does not require that the resin compositions forming the resin layer and the CFRP layer are the same ([0059]). While there may be no explicit disclosure from Ibaragi ‘975 regarding an indentation elastic modulus at 160-180°C of the resin layer being higher than an indentation elastic modulus at 160-180°C of the matrix resin, given that Ibaragi ‘975 discloses an otherwise identical article made from identical layers made from identical materials as that presently claimed, it is clear the resin layer of Ibaragi ‘975 would necessarily inherently have an indentation elastic modulus at 160-180°C that is higher than an indentation elastic modulus at 160-180°C of the matrix resin, absent evidence to the contrary.
In light of the overlap between the claimed metal-carbon fiber reinforced plastic composite and that taught by Ibaragi ‘975, it would have been obvious to one of ordinary skill in the art to use a metal-carbon fiber reinforced plastic composite that is both taught by Ibaragi ‘975 and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 1, 3-6, and 11 are rejected under 35 U.S.C. 103 as being obvious over Ibaragi et al. (WO 2019/132042 A1, “Ibaragi ‘042”). It is noted that the disclosure of Ibaragi ‘042 is based off US 2020/0316915 A1, which serves as an English language equivalent.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
With respect to claims 1, 3-6, and 11, Ibaragi ‘042 discloses a metal/fiber-reinforced resin material composite having a metal member and fiber-reinforced resin material laminated and integrated and laminated together using an adhesive resin layer ([0001], [0026-0027]). The adhesive resin layer corresponds to the claimed resin layer. The metal member is made from iron and alloys thereof (i.e., is a ferrous material or ferrous alloy) ([0057]) including steel and is surface treated by galvanization (i.e., is a plated steel material provided with a galvanized layer) ([0058]). The fiber reinforced layer (FRP layer) has a matrix resin and a reinforcing fiber material in the resin matrix ([0061]). The matrix resin includes thermoplastic resins, including phenoxy resin, polyethylene terephthalate, polycarbonate, polyamide (i.e., nylon), and polyphenylene sulfide ([0062]). The reinforcing material is present in an amount of about 50 vol% ([0064]). The reinforcing fiber material is carbon fiber ([0068]). The adhesive resin includes a thermosetting resin, such as epoxy ([0085]). The adhesive resin layer has a thickness of 20-500 µm ([0106]), overlapping the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Ibaragi ‘042 does not disclose wherein the metal member and carbon fibers penetrate into the resin layer, and thus it is the examiner’s position that the carbon fibers do not penetrate into the resin layer; this is further supported by Fig. 1 of Ibaragi ‘042, which demonstrates the carbon fibers 102 do not penetrate into the adhesive resin layer 13. Further, while there may be no explicit disclosure from Ibaragi ‘975 regarding an indentation elastic modulus at 160-180°C of the resin layer being higher than an indentation elastic modulus at 160-180°C of the matrix resin, given that Ibaragi ‘975 discloses an otherwise identical article made from identical layers made from identical materials as that presently claimed, it is clear the resin layer of Ibaragi ‘975 would necessarily inherently have an indentation elastic modulus at 160-180°C that is higher than an indentation elastic modulus at 160-180°C of the matrix resin, absent evidence to the contrary.
In light of the overlap between the claimed metal-carbon fiber reinforced plastic composite and that taught by Ibaragi ‘042, it would have been obvious to one of ordinary skill in the art to use a metal-carbon fiber reinforced plastic composite that is both taught by Ibaragi ‘042 and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Response to Arguments
Due to the amendment to claim 1, the 35 U.S.C. 103 rejections of claims 1 and 4-6 over Hirano et al. (JP 2016-003257 A) in view of Kitano et al. (JP 2006-198784 A), the 35 U.S.C. 103 rejection of claim 3 over Hirano et al. (JP 2016-003257 A) in view of Kitano et al. (JP 2006-198784 A), Federal Steel Supply (Different Types of Steel), and the evidence provided by Takahashi et al. (US 2019/0177854 A1), the 35 U.S.C. 103 rejections of claims 1, 4, 6, and 11 over Kaneko et al. (JP 2018-069658 A), the 35 U.S.C. 103 rejection of claim 3 over Kaneko et al. (JP 2018-069658 A) in view of Federal Steel Supply (Different Types of Steel) and the evidence provided by Takahashi et al. (US 2019/0177854 A1), the 35 U.S.C. 103 rejection of claim 5 over Kaneko et al. (JP 2018-069658 A) in view of Hirano et al. (JP 2016-003257 A), the 35 U.S.C. 103 rejections of claims 1, 6, and 11 over Morikane et al. (JP 2012-046738 A), the 35 U.S.C. 103 rejection of claim 3 over Morikane et al. (JP 2012-046738 A) in view of Federal Steel Supply (Different Types of Steel) and the evidence provided by Takahashi et al. (US 2019/0177854 A1), and the 35 U.S.C. 103 rejections of claims 4-5 over Morikane et al. (JP 2012-046738 A) in view of Hirano et al. (JP 2016-003257 A) are withdrawn. This is because Hirano et al. does not disclose wherein the density of carbon fiber in the carbon fiber reinforced plastic is 30 vol% or more; instead, Hirano et al. discloses the volume ratio of reinforcing fibers is 20 vol% or less ([0020]) and further discloses the carbon fibers penetrate into other layers (Fig. 1-2, [007], [0015]). Further, both Kaneko et al. and Morikane et al. are silent regarding the density of carbon fiber being 30 vol% or more. However, upon updating the searches, the claims are newly rejected under 35 U.S.C. 103 for the reasons set forth above.
Applicant’s arguments with respect to claims 1, 3-6, and 11 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kawamura (WO 2020/202457 A1, using US 2022/0145026 A1 as an English language equivalent) discloses a metal-carbon fiber reinforced resin material composite including a metal member, a coating layer disposed on a surface of the metal member containing a resin, and a carbon fiber reinforced resin material layer containing a matrix resin and a carbon fiber material (Abstract, [0031]). The metal member is made from iron and alloys thereof (i.e., ferrous material and ferrous alloys) including stainless steel, which is surface treated by using a zinc-based plating (i.e., is steel plated with a galvanized layer) ([0064-0065]). The coating layer is made from a thermosetting resin including an epoxy resin ([0096]) and has a thickness of 10-500 µm ([0098]), which overlaps the presently claimed range. The carbon fiber reinforced resin material layer (CFRP layer) is made from carbon fiber in a matrix resin ([0070]), where the matrix resin includes thermoplastic resins such as phenoxy resin ([0074]). The carbon fiber is present in an amount of 60% by volume ([0167]). However, given the publication date and effective filing date of the reference, Kawamura is not applicable against the present claims under either 35 UCS 102(a)(1) or 35 USC 102(a)(2).
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 08:30-17:30 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 on (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