DETAILED ACTION
This is an Office action based on application number 17/393,457, filed 4 August 2021, which claim priority to US Provisional Application No. 63/064,595 filed 12 August 2020. Claims 15-16, 19, 23, 25-41 are pending. Claim 29 is withdrawn. Claims 1-14, 17-18, 20-22, and 24 are canceled.
Amendments to the claims, filed 8 September 2025, have been entered into the above-identified application.
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 .
Withdrawn Rejections
The 35 U.S.C. §112(b) rejection made of record in the previous Office action is withdrawn due to Applicant’s amendment.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 15-16, 19, 27, 30-35, and 36-41 are rejected under 35 U.S.C. 103 as being unpatentable over Ammons et al. (US Patent No. 3,900,686) (Ammons) in view of Martinez-Rubi et al. (Fabrication of High Content Carbon Nanotube-Polyurethane Sheets with Tailorable Properties) (Martinez), Barrera et al. (US Patent Application Publication No. US 2009/0104386 A1) (Barrera).
Regarding instant claims 15, 30, 36 and 41:
Ammons discloses trilayer laminates comprising a polyurethane layer sandwiched between two plies of glass or sandwiched between a layer of glass and other rigid transparent material such as polycarbonate or acrylic (col. 19, lines 60-67).
Ammons further discloses that the laminates are safety glass articles, particularly motor vehicle windshields (col. 1, lines 7-10). The use of a safety glass laminate as a motor vehicle windshield is construed to teach that the intended laminate is transparent, as required by claim 41.
Said “two plies of glass” and said “layer of glass and other rigid transparent material such as polycarbonate or acrylic” are construed meet the claimed first and second armor materials, and said “polyurethane” is construed to read on “an adhesive which is a polyurethane”.
While Ammons does not explicitly disclose the limitations “armor material” and “adhesive”, the limitations are intended use limitations of the recited materials.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In the instant case, since Ammons discloses the same layers and compositions as recited by the claims, said layers/compositions are construed to be capable of performing the intended use limitations.
Ammons further discloses that the polyurethane is in a sheet form (col. 2, lines 23-34), which is construed as having x, y, and z dimensions, wherein the measurement in the z direction is less than the x and y dimensions, in the same way as the sheet-like formation recited by the claim.
Ammons does not explicitly disclose the polyurethane comprises nanotubes having an in-plane orientation that is sufficient to reduce the coefficient of thermal expansion of the polyurethane.
However, Martinez discloses high content carbon nanotube (CNT)-thermoplastic polyurethane (TPU) sheets (Abstract; page 30840, col. 2, paragraph 2; Table 1).
Martinez teaches that the disclosed polymer films have improved damage tolerance (page 30841, col. 1, paragraph 1).
Martinez further discloses that the polyurethanes have thermoplastic properties (col. 13, lines 34-37).
Further, Barrera discloses a composite comprising a polymer matrix reinforced with nanofibers (Claim 1), wherein said nanofibers are inclusive or carbon nanotubes, and said polymer matrix is inclusive of thermoplastics (paragraph [0012]).
Fig. 27 of Barrera indicates that in laminated sheets or cylinders, a planer orientation of the nanofibers is desired.
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Said planer orientation is construed as the nanofibers are oriented in the x and y dimensions of the sheet.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the CNT-TPU sheets as the polyurethane layer in Ammons. The motivation for doing so would have been that carbon nanotube-thermoplastic polyurethane sheets have improved damage tolerance, wherein improved damage tolerance is considered important for safety glass applications. Further, it would have been obvious to ensure that the carbon nanotubes all have a planer orientation as taught by Barrera. The motivation for doing so would have been that the aligned nanofibers deliver the most optimum mechanical properties.
As to the claimed coefficient of thermal expansion (CTE) properties recited by claims 15 and 30, since the scope of the prior art encompasses an embodiment that is substantially identical to that of the claimed structure, one of ordinary skill in the art would readily conclude that such an encompassed embodiment must have the same properties (i.e., the same reduction of overall CTE and amount CTE in each of the x, y, and z dimensions).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). See MPEP §2112.01(I).
Therefore, it would have been obvious to combine Martinez and Barrera with Ammons to obtain the invention as specified by the instant claims.
Regarding instant claims 16 and 35:
Barrera teaches that a planer orientation of the nanofibers is desired (Fig. 27). A desired planer orientation is construed as one wherein the nanofibers have angles as close to 0° relative to the plane of the sheet as defined by the x-y plane; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 19:
The trilayer laminate comprising a polyurethane layer sandwiched between two plies of glass or sandwiched between a layer of glass and other rigid transparent material such as polycarbonate or acrylic of Ammons is construed to comprise a first material composed of glass.
Regarding instant claim 27:
The limitation “graded composition in the thickness (z) direction” is broad, and the only guidance provided by the original disclosure states that a graded composition has a varying content of nanotubes in the (z) direction.
Martinez suggests that the mechanical properties of the composite films are influenced by the amount of nanotubes embedded therein (Table 2).
Since the instant specification is silent to unexpected results, the specific content and distribution of the nanotube filler is not considered to confer patentability to the claims. As the mechanical properties of the composite film are variables that can be modified, among others, by adjusting the amount and distribution of nanotube filler, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount distribution of nanotube filler in the prior art combination to obtain the desired mechanical properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claims 31-34:
CNPU-55, CNPU-65, and CNPU-80 of Martinez have weight percentages of nanotubes of 45 wt%, 35 wt%, and 20 wt%, respectively (Table 2).
Regarding instant claims 37-39:
Each of CNPU-55, CNPU-65, and CNPU-80 disclosed by Martinez are construed to have the same coefficient of thermal expansion (CTE) as illustrated in Table 2 of Applicant’s original disclosure, wherein each of the (CTE) values fall within at least one range of the claims.
Regarding instant claim 40:
Ammons further discloses the thickness of the polyurethane layer varies between 5 and 120 mils (col. 15, lines 63-66) (i.e., 127 to 3048 μm), which overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Claims 23 and 28 is rejected under 35 U.S.C. 103 as being unpatentable over Ammons in view of Martinez and Barrera as applied to claim 15 above, and further in view of Corkery et al. (US Patent Application No. US 2008/0249221 A1) (Corkery).
Regarding instant claim 23:
Ammons in view of Martinez and Barrera discloses the laminated material comprising the polyurethane layer sandwiched between a layer of glass and other rigid transparent material such as polycarbonate or acrylic, wherein the polyurethane layer is a carbon nanotube-thermoplastic polyurethane sheet as cited in the rejection of claim 15, above.
Ammons in view of Martinez and Barrera does not disclose boron nitride nanotubes.
However, Corkery discloses that polymeric adhesives comprising thermoplastic polyurethanes are known to comprise at least particulate filler inclusive of carbon nanotubes to control mechanical, thermal, optical, and/or physical properties (paragraph [0003]).
Corkery further discloses that desirable, but alternative filler materials are inclusive of boron nitride nanotubes (paragraph [0110]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior at before him or her, to include the boron nitride nanotubes of Corkery into the composite film of Martinez. The motivation for doing so would have been that boron nitride nanotubes are art recognized fillers for thermoplastic polyurethanes capable of controlling mechanical, thermal, optical, and/or physical properties. Furthermore, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Therefore, it would have been obvious to combine Corkery with Ammons in view of Martinez and Barrera to obtain the invention as specified by the instant claim.
Claims 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Ammons in view of Martinez and Barrera as applied to claim 15 above, and further in view of Adams et al. (US Patent No. US 6,895,851 B1).
Regarding instant claims 25-26:
Ammons in view of Martinez and Barrera discloses the trilayer laminate material as cited in the rejection of claim 15, above.
Furthermore, each of CNPU-55, CNPU-65, and CNPU-80 disclosed by Martinez are construed to have the same coefficient of thermal expansion (CTE) as illustrated in Table 2 of Applicant’s original disclosure, wherein each of the (CTE) values fall within at least one range of the claims.
Ammons in view of Martinez, and Barrers=a not explicitly disclose the coefficient of thermal expansion of the armor materials.
However, Adams discloses a lightweight armor system that comprises multiple reinforcement materials layered within a single system, wherein the selection of different reinforcement types allows the designer to vary thermal expansion coefficients throughout the structure to create varying stress states for increased effectiveness of the armor system (col. 1, line 66 to col. 2, line 25).
Since the instant specification is silent to unexpected results, the specific coefficient of thermal expansion of each of the armor layers are not considered to confer patentability to the claims. As the effectiveness of the armor system is a variable that can be modified, among others, by varying the thermal expansion coefficients throughout the structure by varying the selection of the armor material, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thermal expansion coefficients of the different armor layers in the prior art combination to obtain the desired armor effectiveness (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, it would have been obvious to combine Adams with Ammons in view of Martinez and Barrera Levy to obtain the invention as specified by the instant claims.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant argues that there is no reason to combine the prior art references. Specifically, Applicant argues that a person skilled in the art would not be motivated to combine Ammons with Martinez because they teach very different polyurethane compositions. Specifically, Applicant argues that the weight percentage of the additives disclosed in Ammons and Martinez are significantly different, which would render the glass laminates of Ammons being modified such that they would be unsatisfactory for its intended purpose. Applicant contends that a skilled person reviewing Martinez would believe that at least 10 wt.% of carbon nanotubes would be required to improve the mechanical properties of TPU. Applicant submits that Ammons discloses improvements in chemical adhesion by addition of small amounts of chemical modifiers (i.e., 0.8% or a combination of organic phosphorus acid and organo-functional silane and too much of either compound will cause insufficient adhesion and delamination).
Applicant’s arguments are unpersuasive. Specifically, Applicant’s position that that the amount of organic phosphorus acid and organo-functional silane is representative of the restriction of all additives in the polyurethane is unpersuasive. The specific level of 0.8 wt% is only restrictive of the organic phosphorus acid and organo-functional silane. Applicant has not persuasively argued that the amount of carbon nanotubes disclosed by Martinez would detrimentally impact the adhesive properties of the polyurethane such that said layers are insufficient for their intended use in the structure of Ammons.
Applicant’s further arguments that the remaining prior art references do not remedy the deficiencies of Ammons in view of Martinez are unpersuasive as the alleged deficiencies are addressed above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/TAM/Examiner, Art Unit 1788 03/27/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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