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 .
Status of the Claims
The amendment/remarks filed 02/19/2026 have been entered and fully considered. Claims 1-2, 4-10, and 12-16 are pending. Claims 3 and 11 are cancelled. Claim 1 is amended. Claims 1-2, 4-10, and 12-16 are examined herein.
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 1-2, 4-10, and 12-16 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.
Claim 1 recites “the lamination sheet comprises the first and second sheets in a lay-up ratio of 1:3.” Applicant submitted a declaration under 37 CFR 1.132 on 02/19/2026 appearing to contain new data and alleging unexpected results in the claimed invention, particular in relation to the lay-up ratio in relation to weight reduction, thickness, and falling weight impact energy. It is noted that Table 1 in the declaration contains illegible text. In view of this, the declaration cannot be fully evaluated. For the purpose of compact prosecution, the declaration is evaluated herein as best it can be. Applicant is now alleging that the newly claimed range is a different invention to the originally disclosed range since the newly claimed range has properties unique from the originally disclosed range. The lay-up ratio is discussed in the specification as filed at paragraphs [0511]- [0512] and [0542]-[0543]. There is no discussion of a lay-up ratio of 1:3 having unique or unexpected properties, particularly in relation to the alleged properties. Therefore, the claim contains new matter. Claims 2, 4-10, and 12-16 depend from claim 1 and are rejected for the same reason.
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.
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 1-2, 4-5, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0252059 A1 (“Choi”) in view of DE 10 2009 053 138 A1 (“Riepenhausen” – machine translation cited herein).
Regarding claim 1, the preamble recites “A lower protecting plate of a battery module for an electric car.” The recitation “of a battery module” is interpreted as limiting. When reading the preamble in the context of the entire claim, the recitation “for an electric car” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Choi recites a lower case body 200 of a battery pack case for an electric vehicle (Abstract; Fig. 2). The lower case body comprises a long fiber reinforced thermoplastics (“first sheet”) in which a long fiber is reinforced in a plastic matrix ([0063]). The plastic matrix comprises a thermoplastic resin ([0064]). Continuous fiber reinforced members 220a, 220b, 220c (“second sheet”) are locally disposed in the lower case body 200 (Figs. 8-11; [0089]-[0106]). The continuous fibers are disposed in a plastic matrix ([0103]]-[0106]). Choi discloses the continuous fiber is provided as a woven fabric ([0108]).
Choi further discloses the continuous fiber reinforced members 220a, 220b are provided with multiple layers (i.e. a plurality of sheets) ([0090]).
Choi further discloses both of the continuous fiber reinforced members 220a and 220b can be provided (Figs. 8, 9). Choi does not expressly disclose the first and second sheets in a lay-up ratio of 1:3. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a further one of the continuous fiber reinforced members 220a, 220b, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In this case, providing another continuous fiber reinforced member would result in one first sheet and three second sheets and a lay-up ratio of 1:3 and would serve to further strengthen and reinforce the case body.
While Choi does not expressly disclose the matrix in the second sheet is a resin, Choi teaches the concept of providing the same matrix material to improve interfacial bonding between components ([0078]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the same resin material to improve interfacial bonding.
Choi further discloses the long fiber has an average length of 20 mm or more ([0025]). The claimed length would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the length and diameter disclosed by Choi overlap the length and diameter as claimed. In the case where the claimed ranges “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). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05.
The limitation “the first sheet in the lower protective plate is disposed at impacted side” does not structurally distinguish either side or over the prior art. However, even if it did structurally distinguish one side, it is noted that Choi discloses the continuous fiber reinforced members 220a and 220b may be disposed on the upper surface (inner surface), the undersurface, or both upper surface and undersurface of the lower case 200 as desired in a particular configuration and within a certain area. This would additionally meet the claim limitation.
Choi does not expressly disclose the first sheet has a thickness of 0.1 mm to 10 mm and the second sheet has a thickness of 0.1 mm to 10 mm.
However, Riepenhausen discloses a battery box made of a fiber-reinforced material (Abstract; [0021]). Riepenhausen teaches that the battery box has a rigid structure which can be achieved through geometric design (for example, wall thickness). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the thickness of the lower case body of Choi through routine experimentation because Riepenhausen teaches the thickness affects the rigidity of the structure.
It is deemed that the falling weight impact strength is an inherent characteristic and/or property of the specifically disclosed fiber-reinforced plastic composite. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 2, modified Choi discloses the lower protecting plate of claim 1. Choi further discloses a reinforced member 220a, 220b, 220c comprising long fibers is provided ([0102]). This constitutes a plurality of sheets.
Regarding claim 4, modified Choi discloses the lower protecting plate of claim 1. Choi discloses an example where 30 wt % long fiber (in this case, carbon fiber) is provided in the lower case 200 ([0121]). This equals approximately 43 parts by weight on the basis of 100 parts by weight of the matrix resin. See also the broader discussion in [0069].
Regarding claim 5, modified Choi discloses the lower protecting plate of claim 1. As discussed above, Choi further discloses the long fiber has an average length of 20 mm or more ([0025]). Choi further discloses an aspect ratio (length/diameter) of 1,000 to 10,000 ([0018], [0025], [0066]-[0067]). Choi therefore discloses the long fibers have a diameter of 20 µm or less. The claimed diameter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the length and diameter disclosed by Choi overlap the length and diameter as claimed. In the case where the claimed ranges “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). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05.
Regarding claim 6, modified Choi discloses the lower protecting plate of claim 1. Choi discloses the continuous fiber is present in an amount of about 30 wt % to about 70 wt % of the total weight of the plastic composite material forming the reinforced members ([0106]). This equates to about 42 wt% to about 233 wt% on the basis of 100 parts by weight of the matrix resin. The claimed weight percentage would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the weight percentage disclosed by Choi overlaps the weight percentage as claimed. In the case where the claimed ranges “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). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05. Moreover, Choi provides motivation to optimize the weight percentage. When the weight of the long fiber is less than about 30 wt %, desired mechanical characteristics may not be achieved, and when the weight of the long fiber is greater than about 70 wt %, the flowability may be reduced during the molding, causing reduction of moldability and deterioration of the exterior quality. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of continuous fiber to achieve the desired mechanical characteristics while not reducing moldability or deteriorating the exterior quality.
Choi is silent regarding a basis weight of the fabric ranges from 800 g/m2 to 1100 g/m2.
Riepenhausen discloses a battery box made of a fiber-reinforced material (Abstract; [0021]). Riepenhausen teaches that the battery box has a rigid structure which can be achieved through geometric design (for example, wall thickness). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the thickness of the lower case body of Choi through routine experimentation because Riepenhausen teaches the thickness affects the rigidity of the structure. Given the materials and composition of the layer taught by Choi and the teaching of thickness taught by Riepenhausen, the claimed basis weight (mass of fibers per unit area) would have been obvious for the same reason.
Regarding claim 8, Choi discloses the lower protecting plate of claim 1. Choi further discloses the lower case body 200 and reinforced member 220a, 220b, 220c can comprise a blend of long fibers and continuous fibers ([0070], [0105]). When each is provided, this constitutes alternately laminating the first and second sheets.
Regarding claims 9-10, Choi discloses the lower protecting plate of claim 1. Choi further discloses the reinforced members 220a and 220b can be provided in multiple layers ([0090], [0096]). Choi further discloses the lower case body 200 and reinforced member 220a, 220b, 220c can comprise a blend of long fibers and continuous fibers ([0070], [0105]). Therefore, when the blends are provided in each layer and the reinforced members are provided in multiple layers, this constitutes layered arrangements of the instant claims.
Claims 7 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0252059 A1 (“Choi”) in view of DE 10 2009 053 138 A1 (“Riepenhausen” – machine translation cited herein) as applied to claim 1 above, and further in view of WO 2018/056723 A1 (“Oh” – US 2020/0368998 A1 cited herein as an English equivalent).
Regarding claim 7, modified Choi discloses the lower protecting plate of claim 1. Choi does not expressly disclose the continuous fiber has a section diameter of 1 µm to 200 µm.
Oh discloses a fiber reinforced composite material (Abstract). The fiber may be a continuous fiber ([0036]). The fibers have a cross section the diameters of which range, for instance, from about 1 μm to about 200 μm. When a cross section of each of the strands of fiber of the fiber reinforcement has the above range of diameters, 1 to 30 layers of each of the strands of fiber of the fiber reinforcement may be arranged in parallel while having orientation, and the resin matrix may be easily impregnated during the process of manufacturing the fiber reinforced sheet. Additionally, the fiber reinforced sheet may have proper thickness ([0038]). For these reasons, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the section diameter of the continuous fiber as taught by Oh.
Regarding claim 12, modified Choi discloses the lower protecting plate of claim 1. Choi does not expressly disclose the second sheet comprises at least one 2-1 sheet and at least one 2-2 sheet having different fabric orientation angles.
Oh discloses a reinforced composite material comprising a laminate of a plurality of fiber reinforced sheets 10 (“second sheets”), wherein each of the fiber reinforced sheets comprises: a fiber reinforcing material having orientation; and a resin base material (Abstract; Fig. 1). The plurality of fiber reinforced sheets 10 include a first fiber reinforced sheet 11 that includes a fiber reinforcement having orientation in a first direction having an angle of +θ with respect to a reinforcement required direction (X), and a second fiber reinforced sheet 12 that includes a fiber reinforcement having orientation in a second direction having an angle of -θ with respect to the reinforcement required direction (X) (Fig. 1; [0025]). The fiber reinforcement 20 in each fiber reinforced sheet 10 is a continuous fiber ([0036]). The reinforced composite material has strength and rigidity above a certain level, high elongation, and high energy absorption and, accordingly, allow an article to which the reinforced composite material is applied to have improved impact absorption ([0010)]). Additionally, an article to which the reinforced composite material is applied has high strain with respect to external force and high impact absorption ([0011]). For these reasons, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the reinforced composite material of Oh as the reinforced members 220a and 220b of Choi.
Regarding claim 13, modified Choi discloses the lower protecting plate of claim 12. Oh discloses the angle θ is about 1° to about 44° ([0026]). Therefore, the angle between the first direction +θ and the angle between the first direction -θ
θ
-
-θ
=2θ
is about 2° to about 88°.
Regarding claim 14, modified Choi discloses the lower protecting plate of claim 12. In examples, Oh discloses the first fiber reinforced sheet (A) and the second fiber reinforced sheet (B) are laminated having a structure of A/B/A/B/A/B/A/B ([0065]).
Regarding claim 15, modified Choi discloses the lower protecting plate of claim 12. In examples, Oh discloses the first fiber reinforced sheet (A) and the second fiber reinforced sheet (B) are laminated having a structure of A/A/A/A/B/B/B/B ([0069]).
Regarding claim 16, modified Choi discloses the lower protecting plate of claim 12. In examples, Oh discloses the laminate of the plurality of fiber reinforced sheets may be a laminate in which the first fiber reinforced sheet and the second fiber reinforced sheet are alternately stacked (as in A/B/A/B/A/B/A/B, [0065]) or a laminate in which a plurality of first fiber reinforced sheets continuously stacked and a plurality of second fiber reinforced sheets continuously stacked are stacked (as in A/A/A/A/B/B/B/B, [0069]) ([0032]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine these two alternative stacking arrangements as the arrangements are recognized by Oh as being useful for the same purpose. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). See also MPEP 2144.06(I). In this modification, a structure of continuously stacked sheets being alternately stack is present (in the manner of A/A/B/B/A/A/B/B though not limited thereto).
Response to Arguments
The objection to the claims is withdrawn in view of the amendment to claim 1.
Applicant submitted a declaration under 37 CFR 1.132 on 02/19/2026. It is noted that Table 1 in the declaration contains illegible text. In view of this, the declaration cannot be fully evaluated. For the purpose of compact prosecution, the declaration is evaluated herein as best it can be.
Applicant argues the presence of unexpected results from the claimed invention and cites the 02/19/2026 declaration in support. Applicant’s argument is not persuasive. Declarant states when the lay-up ratio did not satisfy 1:3, it was confirmed that the thickness of the article failed to meet the range of 1.8 mm to 2.2 mm and the falling weight impact energy was 9.0 J/mm or less. The thickness is presumed to be a total thickness.
It is noted that the features upon which applicant relies (i.e., total thickness of 1.8 mm to 2.2 mm, and falling weight impact energy of greater than 9.0 J/mm) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The scope of the independent claim encompasses embodiments that are outside this range. For example, either thickness of the first or second sheet can individually be above 2 mm and the falling weight impact energy can be 9.0 J/mm or less.
As noted above, much of the text in Table 1 of the declaration is illegible making the scope of the evidence difficult to ascertain. However, please note that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In this case, particular thicknesses of the first and second sheets are shown in the data, but a range is recited in claim 1. Furthermore, it is unknown what the composition of the sheets used in the declaration is.
It is further noted that applicant is now alleging that the newly claimed range is a different invention to the originally disclosed range since the newly claimed range has properties unique from the originally disclosed range. The lay-up ratio is discussed in the specification as filed at paragraphs [0511]- [0512] and [0542]-[0543]. There is no discussion of a lay-up ratio of 1:3 having unique or unexpected properties, particularly in relation to the alleged properties. Therefore, the claim contains new matter.
Applicant argues that Manufacture Example 1-3-1 (where the impact site is the second sheet-continuous fiber) have a lower falling weight impact strength. However, this does not show that the falling weight impact strength would not fall within the claimed range. The falling weight impact strength of this example does in fact fall within the claimed range.
While Choi does not expressly disclose the first and second sheets in a lay-up ratio of 1:3, it is the position of the Office that it would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a further one of the continuous fiber reinforced members 220a, 220b, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In this case, providing another continuous fiber reinforced member would result in one first sheet and three second sheets and a lay-up ratio of 1:3 and would serve to further strengthen and reinforce the case body.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-6PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at 571-272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727
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