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 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 17 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.
Regarding claim 17, this limitation has now been added to amended parent claim 1. It is unclear why it is repeated in claim 17.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 17, this limitation has now been added to amended parent claim 1. Accordingly, claim 17 fails to properly further limit claim 1.
Claim Rejections - 35 USC § 103
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.
Claims 1, 6-7, 9-11 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Gaillard (WO 2015/121584 A2, referencing US 2016/0347009 as an English language equivalent) in view of Binnersley (US 4640861) and Baba (US 2016/0237227 A1), and optionally further in view of Cogswell (US 4549920).
Regarding claim 1, Gaillard teaches an impregnated fibrous material comprising a fibrous material of continuous fibers and at least one thermoplastic polymer matrix comprising at least one thermoplastic polymer, wherein the at least one thermoplastic polymer of the at least one thermoplastic polymer matrix is a non-reactive amorphous polymer whose glass transition temperature is such that Tg>100°C, or a non-reactive semi-crystalline polymer whose melting temperature is Tf>150°C (Abstract; paragraphs 1, 35, 69-71 and 83, claims 7-8). Gaillard teaches many of the same thermoplastic polyamide polymers taught by Applicant, and thus it is reasonably clear they satisfy the claimed properties of Tg or Tf and of being non-reactive (paragraph 71). Several of the listed polyamides are semi-crystalline polymers with a Tf>150°C, such as polyamide 6. It is clear from paragraph 65 of Gaillard that the thermoplastic polymers soften or melt at elevated temperatures. There is no indication that they chemically react like thermoset polymers or pre-polymer materials. Accordingly, it is reasonably clear these thermoplastic polymers are non-reactive. The volume percentage of polymer in the impregnated material relative to the fibrous material is preferably 45 to 80% (paragraph 92), which corresponds to a fiber content of about 56% to 69% by volume of the impregnated material, which overlaps the claimed range of 54 to 65% by volume (e.g. 80% polymer relative to fiber corresponds to 80 parts by volume fiber to 100 parts by volume fiber, or 100/(100 + 80) × 100 = 56% volume content by fiber). It is noted that a claimed range which overlaps, lies within, or is near a prior art range establishes a prima facie case of obviousness for using values in the claimed range. Gaillard teaches homogeneous distribution of the polymer uniformly around the fibers to minimize porosity (voids) and even eliminate porosity (paragraphs 91 and 115), thus indicating a porosity of about 0%, which is well within the claimed range, or at least indicating a porosity well within the claimed range of less than 5%. These teachings also suggest impregnation on opposite sides of said fibrous material. It is reasonably clear from paragraph 68 of Gaillard that liquid crystal polymers are not required and are not included in some embodiments, thus satisfying the claimed limitation of being free of non-reactive liquid crystal polymers (LCP). As to the limitation of impregnation being carried out with at least one expansion in width of the fibrous material, the claimed product of an impregnated fibrous material is not limited to recited method steps, but rather is only limited to the structure implied thereby. The recitation of an expansion step in width of the fibrous material, such as spreading out the fibers, is not considered to distinguish over the structure of Gaillard as modified below, because such structure includes fibers spread over a width and impregnated with resin to form the impregnated fibrous material. Gaillard teaches the at least one thermoplastic polymer may comprise an aliphatic polyamide such as polyamide 6, polyamide 11, polyamide 12, polyamide 46, polyamide 610 or polyamide 612 (paragraphs 36, 71 and 83). It is noted that the language at lines 34-52 only modifies alternatives recited in lines 26-28. Claim 1 does not require a semi-aromatic polyamide.
Gaillard differ from claim 1 in that:
i. Gaillard does not recite Tg and Tf are determined by differential scanning calorimetry (DSC).
ii. Gaillard does not recite a fiber content by volume is constant in at least 80% of the volume of the impregnated fibrous material.
iii. Gaillard does not explicitly recite impregnation on opposite sides of said fibrous material.
iv. Gaillard does not recite a number average molecular weight (Mn) changes by less than 50% during heating at a heating calender.
v. Gaillard does not recite the at least one thermoplastic polymer has a Mn in a range from 12,000 to 30,000.
vi. The claimed expansion in width of the fibrous material is further addressed here.
(i) The claimed product is not limited to any particular method steps of determining Tg or Tf. Only a polymer having the recited Tg or Tf is required. The above noted teachings of Gaillard reasonably suggests a polymer having a Tg or Tf in the claimed ranges. It is noted that a claimed range which overlaps, lies within, or is near a prior art range establishes a prima facie case of obviousness for using values in the claimed range. See MPEP 2144.05. Moreover, Gaillard teaches many of the same thermoplastic polyamide polymers suggested by Applicant (paragraph 71), and thus it is reasonable to expect they have Tg or Tf values in the claimed ranges.
(ii, iii) As noted above, Gaillard teaches homogeneous distribution of the polymer uniformly around the fibers to minimize porosity (voids) and even eliminate porosity (paragraphs 91 and 115), but does not recite further details of the fiber distribution. Binnersley teaches that resin-rich zones are undesirable in that they act as stress concentrators that can initiate failure (column 7, lines 58-67). Binnersley seeks a highly uniform distribution of fibers with full impregnation including opposite sides to provide a matrix free of voids with fiber distributed as uniformly as possible to yield parts having less variation in properties and permit more efficient design criteria (column 1, lines 17-31; column 5, lines 24-31; column 6, lines 3-29; column 8, lines 1-12; Figure 5). Thus Binnersley reasonably suggests constant fiber content by volume throughout the impregnated fibrous material, i.e. about 100% thereof, which falls well within the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide these limitations in Gaillard, and to provide a void free thermoplastic matrix as suggested by Gaillard and Binnersley, because one of ordinary skill in the art would have been motivated to provide the above noted advantages in accordance with the teachings of Binnersley.
(iv) It is noted that this limitation is directed to the process of manufacture and only limits the claimed impregnated fibrous material in terms of the implied structure. This limitation does not appear to distinguish over the structure of the modified impregnated fibrous material of Gaillard as applied above because it only results in a polymer impregnated fibrous material, the polymer having a number average molecular weight. Naturally the modified material of Gaillard has such properties. Alternatively, in related art, Cogswell teaches that the impregnating thermoplastic resins are normally fully polymerized materials which are only melted for impregnation (column 2, lines 35-51; column 3, lines 56-67; column 4, lines 1-24), i.e. the molecular weight is not changed by the impregnation process. Cogswell teaches many of the same polymers suggested by Gaillard including polyamide. Thus Cogswell provides evidence that this limitation naturally flows from the modified impregnated fibrous material of Gaillard when using such polymers. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in Gaillard because one having ordinary skill in the art would have been motivated to use fully polymerized materials which have this property in accordance with normal practice in the art, as evidenced by the above noted teachings of Cogswell. To the extent that heating at a heating calender has any impact on the implied structure of the claimed impregnated fibrous material, such is clearly taught by Gaillard.
(v) Gaillard does not recite particular values for the thermoplastic polymer number-average molecular weight (Mn). However, Gaillard is drawn to preimpregnated fibrous materials for use in manufacturing parts with good mechanical strength for mechanical, aeronautical, automobile and other applications (paragraph 5). In the art of thermoplastic matrix impregnated fibrous materials, Baba uses similar polymeric materials including aliphatic polyamides such as PA6, PA11, PA12, PA46, PA610 and PA612. Baba teaches Mn values of greater than 5,000 and less than 50,000 are desirable to provide sufficiently low viscosity for uniform impregnation without defects and to provide high strength in applications including mechanical components, airplanes and automotive components (paragraphs 15, 38, 43, 51 and 72-73). It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Mn values in the claimed range in the modified material of Gaillard because one having ordinary skill in the art would have been motivated to achieve the above noted benefits in accordance with the teachings of Baba.
(vi) As noted above the recitation of an expansion step does not distinguish over the structure of the modified impregnated fibrous material of Gaillard. Alternatively, in related art, Cogswell teaches such expansion in width of the fibrous material to facilitate penetration of the polymer into the fibers (column 3, lines 65-68; column 4, lines 1-9). Moreover, the expansion taught by Cogswell involves tensioning over spreader surfaces and Binnersley also suggests such tensioning over surfaces as part of the impregnation process (column 3, lines 21-27). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the structure associated with such a step in the modified material of Gaillard because one of ordinary skill in the art would have been motivated to achieve the above noted advantage in accordance with the teachings of Cogswell.
Regarding claims 6-7 and 9-11, Gaillard clearly satisfies these additional limitations. The limitation in claim 9 of a homogeneous distribution in at least 95% of the volume of the ribbon is satisfied for the reasons provided above.
Claim 17 is satisfied for the reasons provided above.
Response to Arguments
Applicant's arguments filed 02 October 2025 have been fully considered but they are not persuasive.
Applicant notes the Tg has been narrowed as well as the molecular weight range. In response, Gaillard teaches semi-crystalline polyamides with a Tf in the claimed range, such as polyamide 6. This satisfies the claimed semi-crystalline alternative. As to the molecular weight range, Baba was applied for teaching Mn values of greater than 5,000 and less than 50,000 are desirable to provide sufficiently low viscosity for uniform impregnation without defects and to provide high strength in applications including mechanical components, airplanes and automotive components (paragraphs 15, 38, 43, 51 and 72-73). It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Applicant has not provided evidence of unexpected results for the claimed range.
Applicant argues Gaillard does not teach a molecular weight in the claimed range. In response, the rejection is based on a combination of references. As noted above, Baba was relied upon for suggesting this limitation.
Applicant argues Gaillard does not teach the expansion. First it is noted the claims are drawn to a product, not a process. The claimed product is only limited to any structure implied by the expansion step. Applicant has not argued any specific structure imparted by this limitation. Moreover, to the extent such expansion provides a specific structure, Cogswell was optionally applied for suggesting such expansion.
The examiner maintains that the fiber volume and uniformity ranges have been satisfied for the reasons detailed in the grounds of rejection. Applicant does not provide specific arguments as to how these limitations have not been satisfied.
Applicant argues Binnersley does not teach molecular weight, molecular weight stability or width expansion. In response, the rejection is based on a combination of references. Binnersley was applied for teaching a highly uniform distribution of fibers with full impregnation including opposite sides to provide a matrix free of voids with fiber distributed as uniformly as possible to yield parts having less variation in properties and permit more efficient design criteria (column 1, lines 17-31; column 5, lines 24-31; column 6, lines 3-29; column 8, lines 1-12; Figure 5). Thus Binnersley reasonably suggests constant fiber content by volume throughout the impregnated fibrous material, i.e. about 100% thereof, which falls well within the claimed range. As noted above, Baba was relied upon for the molecular weight limitation. Cogswell was optionally applied for the expansion. As to molecular weight stability, it is noted that this limitation is directed to the process of manufacture and only limits the claimed impregnated fibrous material in terms of the implied structure. This limitation does not appear to distinguish over the structure of the modified impregnated fibrous material of Gaillard as because it only results in a polymer impregnated fibrous material, the polymer having a number average molecular weight. Naturally the modified material of Gaillard has such properties. Alternatively, in related art, Cogswell was applied for teaching that the impregnating thermoplastic resins are normally fully polymerized materials which are only melted for impregnation (column 2, lines 35-51; column 3, lines 56-67; column 4, lines 1-24), i.e. the molecular weight is not changed by the impregnation process. Cogswell teaches many of the same polymers suggested by Gaillard including polyamide. Thus Cogswell provides evidence that this limitation naturally flows from the modified impregnated fibrous material of Gaillard when using such polymers.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues Baba’s molecular weight range is broader than the claimed range. In response, it is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Applicant has not provided evidence of unexpected results for the claimed range.
Applicant’s arguments against Cogswell are not persuasive for the reasons provided above.
Applicant argues Gaillard, Binnersley, Baba and Cogswell are drawn to disparate teachings. In response, all of these references are drawn to impregnation of fiber reinforcement with thermoplastic matrix resin material. Moreover, Binnersley is drawn to advantages of fiber uniformity, Baba suggests molecular weights for effective impregnation and Cogswell optionally provides evidence the polymers of Gaillard are molecular weight stable and that the structure associated with an expansion step may be provided for facilitating impregnation. Accordingly, the examiner maintains that these references are analogous in that they are in the same field of endeavor as the claimed invention and/or they are reasonably pertinent to the above noted problems faced by the current inventors. The teaching, suggestion and/or motivation for applying each secondary reference is clearly recited in the grounds of rejection.
The additional arguments directed to the claimed molecular weight range are not persuasive for the reasons provided above.
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 MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
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