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 .
DETAILED ACTION
Response to Amendment/Arguments
Claims 26-46 are pending. Independent claim 26 is amended. New claim 46 is added.
Applicant's amendment and arguments 10/7/2025 with respect to the rejection of present claims 26-27, 29, 34, 36, 48 and 40-45 under 35 U.S.C. 103 as being unpatentable over O’Brien et al. (US 2002/0061374; “O’Brien”) have been fully considered but they are not found persuasive.
Applicant contends that O’Brien does not teach an impact-resisting beam as instantly claimed in claim 26 that comprising a multi-layer composite structure, that the composite structure extending across an entirety of a width of each side of the beam and providing impact resistance to the entire width of each side of the beam, because per applicant, O’Brien teaches its composite tubular member includes an polymeric impact resistant member (element 119 of Fig. 1) that is of C-shape or a U-shape (see remarks, page 6, first pars to page 7, second para) to improved strength and such impact resistant member (element 119 of Fig. 1) which only provides impact resistant to 3 of 4 side of the structure, and does not extending across an entirety of a width of each side of the beam (see remarks, page 7, second para and third para).
In response to applicant’s contention, Applicant's arguments have been carefully studied and fully considered but they are not found persuasive for at least the following reasons. The examiner disagrees with applicant’s characteristic of O’Brien.
As an initial matter, there is no dispute that O’Brien teaches a composite tubular member (100, Fig. 1) that includes a C-shaped or U-shaped member 119 (para [0038], Fig. 1). However, the examiner disagrees with applicant’s characteristic of O’Brien, and in particular, the examiner disagrees with applicant’s interpretation of what is considered “the impact-resisting beam” and what is considered the “multi-layer composite structure” in O’Brien as corresponding to the claimed elements.
In the present case, O’Brien teaches an impact-resisting beam (beam 100, Fig. 1, para [0007], [0011], [0037], O’Brien teaches its structure member is more resistant to impact and is suitable to be used as beam) comprising:
- a multi-layer composite structure including (para [0007], [0011], [0037], Fig. 1): a first fibrous material having a first effective elastic modulus (para [0038] [0041], the layer 116 of fiber ply, and is considered being first fibrous material, which would inherently have an effective elastic modulus, meeting the claimed limitations, and a second fibrous material (para [0051], Fig. 1, the layer 120 of fiber ply, and is considered being second fibrous material) having a second effective elastic modulus (para [0051], the fibrous fiber material of the layer 120 would inherently have an effective elastic modulus, meeting the claimed limitations).
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That is, the first fibrous material of O’Brien (Fig. 1, the layer 116 of fiber ply having a first effective elastic modulus) and the second fibrous material of O’Brien (Fig. 1, the layer 120 of fiber ply having a second effective elastic modulus) collectively is considered being the multi-layer composite structure and considered being equivalent to the instantly claimed multi-layer composite structure of claim 26. In O’Brien, such multi-layer composite structure clearly extends across an entirety of a width of each side of the beam (i.e., beam 100) and providing impact resistance to the entire width of each side of the beam, meeting the claimed limitations. It is the examiner’s position, in O’Brien, while the impact-resisting beam (beam 100) may include a C-shaped or U-shaped member 119 (para [0038], Fig. 1), the multi-layer composite structure of O’Brien does not include such a C-shaped or U-shaped member 119, contrary to applicant’s assertion. Further in this regard, it is noted that O’Brien teaches as in one of its embodiments, its C-shaped or U-shaped impact resistant member (119) is added in a secondary manufacturing step, after the multi-layer composite structure is being formed, for example by bonding to the interior or exterior plies of the multi-layer composite structure (para [0014] [0044]).
The rejections below are updated to address the present claims.
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 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.
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.
Claim(s) 26-27, 29, 34, 36, 48 and 40-46 are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien et al. (US 2002/0061374; “O’Brien”).
Regarding independent claim 26, O’Brien teaches an impact-resisting beam (beam 100, Fig. 1, para [0007], [0011], [0037], O’Brien teaches its structure member is more resistant to impact and is suitable to be used as beam) comprising: a multi-layer composite structure (para [0007], [0011], [0037], Fig. 1) including:
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- a first fibrous material having a first effective elastic modulus (para [0038] [0041], the layer 116 of fiber ply, and is considered being first fibrous material, which would inherently have an effective elastic modulus, meeting the claimed limitations), the first fibrous material comprising one or more layers (Fig. 1, the layer 116) comprising fibers of a first type being arranged with orientation angles of 45º relative to a central longitudinal axis of the beam (see Fig. 1, para [0041], the fibers in layer 116 are being arranged with orientation at an angle of 45º relative to the center longitudinal axis of the beam member), which orientation angle overlaps and falls within the instantly claimed range of orientation angles having absolute values in a range of between 1º and 45º relative to a central longitudinal axis of the beam. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05. O’Brien teaches that fibers of a first type being arranged with orientation angles of 45º relative to a central longitudinal axis of the beam, as discussed above, such that a predetermined load applied to the beam from a direction perpendicular to the central longitudinal axis thereof drives the fibers of the first type towards alignment with the central longitudinal axis of the beam, the alignment of the fibers of the first type being responsible for absorbing a first portion of impact energy of the predetermined load (para [0041], the alignment of the reinforcing fibers in layer 116 are considered capable of absorbing some portion of impact energy when the predetermined load is applied, and is considered as meeting the claimed limitations); and
- a second fibrous material (para [0051], Fig. 1, the layer 120 of fiber ply, and is considered being second fibrous material) having a second effective elastic modulus (para [0051], the fibrous fiber material of the layer 120 would inherently have an effective elastic modulus, meeting the claimed limitations), the second fibrous material comprising one or more layers (Fig. 1, the layer 120) comprising fibers of a second type (Fig. 1, para [0051], the fibers in layer 120), the second fibrous material having elongation property that provides effective elongation or deformation of the beam which prevents splitting of the beam under application of the predetermined load (Fig. 1, para [0051] [0054], the second fibrous material that includes layer 120 would possess some level of elongation property, and is considered capable of providing some level of effective elongation or deformation of the beam which prevents splitting of the beam under application of the predetermined load);
- wherein a cross section of the impact-resisting beam is hollow (see Fig. 1, the beam 10 is hollow); and
- wherein an innermost layer (layer 116) of the impact-resisting beam defines the hollow and is formed of at least one of the first fibrous material or the second fibrous material (see Fig. 1, the layer 116 of the first fibrous material is the innermost layer of the beam, and layer 116 defines the hollow, meeting the claimed limitations).
The first fibrous material of O’Brien (para [0038] [0041], Fig. 1, the layer 116 of fiber ply having a first effective elastic modulus) and the second fibrous material of O’Brien (para [0051], Fig. 1, the layer 120 of fiber ply having a second effective elastic modulus) collectively is considered being the multi-layer composite structure and considered being equivalent to the instantly claimed multi-layer composite structure of claim 26. In O’Brien, such multi-layer composite structure clearly extends across an entirety of a width of each side of the beam (i.e., beam 100, see Fig. 1) and providing impact resistance to the entire width of each side of the beam (see Fig. 1, para [0007] [0015] [0016], the various fiber plies layers provide enhanced strength, impact resistance etc.), meeting the claimed limitations.
Regarding claim 27, O’Brien teaches its multi-layer composite structure further comprises a third fibrous material having a third effective elastic modulus (para [0042], Fig. 1, the layer 118 of longitudinal fibrous fibers is considered being third fibrous material which inherently have an effective elastic modulus, meeting the claimed limitations), the third fibrous material comprising one or more layers (para [0042], Fig. 1, the layer 118) comprising fibers of a third type being arranged in the direction of the central longitudinal axis of the beam (para [0038] [0042], see Fig. 1, the fibrous fibers of the layer 118 are arranged in the direction of central longitudinal axis of the beam).
Regarding claim 29, O’Brien teaches as in one of its embodiments that the fibers for both the first and third types fibers (i.e., for the first fibrous roving material of layer 116 and third fibrous roving material of layer 118) are all having same flat cross section shape, i.e., same shape (para [0038] [0042]), meeting the claimed limitations.
Regarding claim 34, O’Brien teaches that the suitable fibers material for the third type includes carbon fiber (para [0041, [0042], carbon fiber), meeting the claimed limitations.
Regarding claim 36, O’Brien teaches the suitable material for the first fibrous material includes woven fabrics (para [0041]), meeting the claimed limitations.
Regarding claim 38, O’Brien teaches that the suitable fibers material for the first type includes fiber of carbon (para [0041], carbon fiber), meeting the claimed limitations.
Regarding claim 40, O’Brien teaches as in one of its embodiments that its beam has an isotropic transverse cross section of the beam (see Fig.1), meeting the claimed limitations.
Regarding claim 41, O’Brien teaches as in one of its embodiments that a transverse cross section of its beam has an open shape (Fig. 1).
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Regarding claim 42, O’Brien teaches as in one of its embodiments that the transverse cross section of the beam is quadrangular (see Fig. 1).
Regarding claims 43-44, the limitations of claim 26 are taught by O’Brien as discussed above. O’Brien does not specially teach its first and/or the second fibrous material is located at the specific location as instantly claimed.
O’Brien teaches in various embodiments with the inclusion of plurality of fibrous material in various layer configuration and orientation as desired depending on the intended applications to impart the required structural properties (para [0037]-[0043], [0057], see the various embodiments of Fig. 1 and Fig. 3).
It would have been obvious to one of ordinary skill in the art to place either one of the first fibrous material and/or the second fibrous material at the outermost side of the composite structure, leaving the other fibrous material (i.e., the second fibrous material and/or the first fibrous) at innermost side of the composite structure, as desired depending on the intended applications, which would have arrived a satisfactory impact-resisting beam that is the same as instantly claimed, and such variations are predictable to one of ordinary skill in the art.
Regarding claim 45, claim 45 contains process limitations with regards to the specific fabrication process. It is the examiner’s position that the recited process does not result in a patentably distinctive structural difference in the resultant impact-resisting beam. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. In the present case, O’Brien teaches its beam can be made vis suitable process such as pultrusion [para [0037] [0040]).
Regarding claim 46, claim 46 contains process limitations with regards to the specific fabrication process. It is the examiner’s position that the recited process does not result in a patentably distinctive structural difference in the resultant impact-resisting beam. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. In the present case, O’Brien teaches its beam can be made vis suitable process such as pultrusion fabrication, of which the internal reinforcement is formed during the initial pultrusion fabrication, and thus is considered a continuous pultrusion process (para [0037] [0040]).
Claim(s) 28, 30-32, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien as applied to claims 26-27 above, in view of Paine et al. (US. 5,614,305; “Paine”).
The limitations of claims 26 and 27 are taught by O’Brien as discussed above.
Regarding claims 28 and 30-31, O’Brien teaches that the suitable fibers used in the first, the second and the third fibrous materials can vary depending on the intended applications to impart the required structural properties and can include fiberglass, carbon fiber and other reinforcing fibers (para [0037]-[0043], [0057],). O’Brien does not specifically teach the first and the third fibrous materials have the specific properties as instantly claimed.
In the same field of fiber reinforced composite material, Paine teaches a multilayer composite having a plurality of layers each include fibrous material (col. 4, lines 21-60, Fig. 2). Paine teaches that the suitable fibers used in the first, the second and the third fibrous materials can vary depending on the intended applications and can include fiberglass, polyethylene fiber and a variety of other fiber materials as desired (col. 5, lines 1-5). Paine teaches that some fiber structures of the layup can have a different type of fiber: e.g., composition (column 4 line 67- column 5 line 6) which resulting in different properties of the fibrous material (i.e., effective elastic modulus, elongation property).
It would have been obvious to one of ordinary skill in the art to modify the modified impact resisting beam of O’Brien in view the teachings of Paine, to select a suitable fibrous material having the desired effective elastic modulus and elongation property in accordance with the desired/required impact-resisting and mechanical properties of the beam and the position of the first, the second and the third fibrous materials relative to each other as desired depending on the intended applications, such as to have first effective elastic modulus lower than the third effective elastic modulus, and/or to have second fibrous material has the elongation property thereof being larger than elongation property of each of said first and third fibrous materials, and/or to have the second fibrous material has the elongation property thereof being larger than elongation property of each of said first and third fibrous materials, which would have arrived a satisfactory impact-resisting beam that is the same as instantly claimed, in claims 28, and 30-31. One of ordinary skill would have understood how to modify and choose suitable additives for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 32, the limitations of claims 26 and 27 are taught by O’Brien as discussed above. O’Brien teaches its third fibrous material is located between said first and second fibrous materials as instantly claimed (see Fig. 1, layer 116/layer 118/layer 120).
O’Brien does not specifically teach the first and the third fibrous materials have the specific properties as instantly claimed.
In the same field of fiber reinforced composite material, Paine teaches a multilayer composite having a plurality of layers each include fibrous material (col. 4, lines 21-60, Fig. 2). Paine teaches that the suitable fibers used in the first, the second and the third fibrous materials can vary depending on the intended applications and can include fiberglass, polyethylene fiber and a variety of other fiber materials as desired (col. 5, lines 1-5). Paine teaches that some fiber structures of the layup can have a different type of fiber: e.g., composition (column 4 line 67- column 5 line 6) which resulting in different properties of the fibrous material (i.e., impact energy, impact resistance, col. 4, lines 20-40).
It would have been obvious to one of ordinary skill in the art to modify the modified impact resisting beam of O’Brien in view the teachings of Paine, to select a suitable fibrous material having the desired effective elastic modulus in accordance with the desired/required impact-resisting and mechanical properties of the beam and the position of the first, the second and the third fibrous materials relative to each other as desired depending on the intended applications, such as to have first and second effective elastic modulus lower than the third effective elastic modulus, such that under application of the predetermined load at least some of the fibers of the third type split or break resulting in that said third fibrous material absorbs a major part of the impact energy of the predetermined load, which would have arrived a satisfactory impact-resisting beam that is the same as instantly claimed. One of ordinary skill would have understood how to modify and choose suitable additives for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 39, O’Brien teaches that the suitable fibers material for the first type includes fiber glass, carbon fiber and aramid fiber (para [0041]). O’Brien does not specifically teach using aramid fibers as the second type fiber (for the second fibrous material).
In the same field of fiber reinforced composite material, Paine teaches a multilayer composite having a plurality of layers each include fibrous material (col. 4, lines 21-60, Fig. 2). Paine teaches that it is known in the art that aramid fiber and fiber glass are among the suitable reinforcing fiber materials (col. 5, lines 1-5).
It would have been obvious to one of ordinary skill in the art to modify the modified O’Brien, to select suitable fibrous material such as aramid fiber as taught by Paine as the second fibrous materials as desired depending on the intended applications, which would have arrived a satisfactory impact-resisting beam that is the same as instantly claimed. One of ordinary skill would have understood how to modify and choose suitable additives for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Claim(s) 33 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien as applied to claims 26-27 above, in view of EP 2153984 to Masato et al. (“Masato”, of record).
The limitations of claims 26 and 27 are taught by O’Brien as discussed above.
Regarding claim 33, O’Brien does not specifically teach the inclusion of woven or non-crimp fabrics in its third fibrous material.
In the same field of fiber reinforced composite material (para [0001]-[0003]), Masato teaches multilayer fiber reinforced composite that includes layers made of fibrous material that includes woven fabrics (para [0208]).
It would have been obvious to one of ordinary skill in the art to modify O’Brien, to select and include suitable fibrous material in the third fibrous material of its multi-layer composite structure as taught by Masato, such as woven fabrics as taught by Masato, which would have arrived a satisfactory impact-resisting beam that is the same as instantly claimed. One of ordinary skill would have understood how to modify and choose suitable additives for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 37, O’Brien does not specifically teach the inclusion of woven or non-crimp fabrics in its second fibrous material.
In the same field of fiber reinforced composite material (para [0001]-[0003]), Masato teaches multilayer fiber reinforced composite that includes layers made of fibrous material that includes woven fabrics (para [0208]).
It would have been obvious to one of ordinary skill in the art to modify O’Brien, to select and include suitable fibrous material for the second fibrous material of its multi-layer composite structure as taught by Masato, such as woven fabrics as taught by Masato, which would have arrived a satisfactory impact-resisting beam that is the same as instantly claimed. One of ordinary skill would have understood how to modify and choose suitable additives for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Claim(s) 35 is rejected under 35 U.S.C. 103 as being unpatentable over O’Brien as applied to claims 26-27 above, in view of Day et al. (US 2010/0266833; “Day”).
The limitations of claims 26 and 27 are taught by O’Brien as discussed above.
Regarding claim 35, O’Brien teaches as in one of its embodiments that its beam has a transverse cross section of the beam is quadrangular (see Fig. 1) and wherein all four sides of the quadrangle are formed with the first, second and third fibrous materials (see Fig. 1, all four sides of the quadrangle are formed of layer 116/layer 118/layer 120).
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O’Brien does not specifically teach the configuration that two parallel sides of the quadrangle are formed with the first, second and third fibrous materials, and other two parallel sides of the rectangle are formed with said first and second fibrous materials.
In the same field of impact-resisting beam, Day teaches an impact-resisting beam (para [0028], [0124], Fig. 13, Day teaches its structure member is more resistant to impact and is suitable to be used as beam, Fig. 13) comprising: a multi-layer composite structure (para [0124], Fig. 13, layer 177/layer 176/layer 180), of which two parallel sides of the quadrangle are formed with the first, second and third fibrous materials, and other two parallel sides of the rectangle are formed with said first and second fibrous materials (see the beam of Fig. 13, the two parallel sides of the beam do not have layer 180, meeting the claimed limitations).
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It would have been obvious to one of ordinary skill in the art to modify O’Brien in view the teachings of Day, to provide the third fibrous material (layer 118) only at the two facing parallel sides of the quadrangle of the beam (100), and not to include such the third fibrous material (layer 118) at the side parallel sides of the quadrangle of the beam as taught by Day, for the benefit of saving material and/or saving cost, as desired depending on the intended applications, which would have arrived a satisfactory impact-resisting beam that is the same as instantly claimed, and such variations are predictable to one of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached on Monday - Friday 7AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached on 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAN LAN/ Primary Examiner, Art Unit 1782