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 .
Examiner’s Note
The Examiner acknowledges the amendment of claims 1, 4, 7 – 10, 12, & 16 – 17, and the addition of new claims 23 – 26. Claims 12, 16 – 20, & 22 are withdrawn from consideration.
Election/Restrictions
Newly submitted claims 24 – 25 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Applicant’s specification teaches thermally conductive strips comprise strips comprise aluminum, gold, or silver (paragraphs [0025], [0055], [0067]). Aluminum was claimed in original claim 7. The specification does not support the embodiments of claims 7, 24, & 25 existing in a single embodiment. As such, the subject matter of claims 7, 24, & 25 are each separate and distinct embodiments (species). Claims 7, 24, & 25 are distinct species that would have been restricted if presented in the original claims.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 24 – 25 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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, 3 – 4, 7 – 11, 21, 23, & 26 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.
With regard to claim 1, the claim amendment recites “cure of a thermoset resin matrix of the multi-layered composite film.” However, Applicant’s specification does not support the entire genus of curable thermoset resin matrix. The specification supports “epoxy or cyanate ester thermosetting polymer capable of 350°F service temperature” (paragraphs [0017], [0023], & [0047]), which are a much smaller set of species than the recited “thermoset resin matrix” genus. Therefore, Applicant’s specification does not have proper support the other species of thermosetting resin in the recited genus that are not epoxy or cyanate ester thermosetting polymer capable of 350°F service.
Claims 3 – 4, 7 – 11, 21, 23, & 26 are dependent on claim 1 and therefore also rejected.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3 – 4, 7 – 11, 23, & 26 are rejected under 35 U.S.C. 103 as being unpatentable over Gläsner (US 2016/0243795 A1), in view of Ahrens et al. (U.S. Patent No. 4,323,623) & Masakazu et al. (JP 2002-120310 A).
**Mitsubishi
***Paran Advanced Composites
With regard to claim 1, Gläsner teaches a profile molded part made of fibrous composite plastic material reinforced by glass fibers or carbon fibers (CFRP) (paragraph [0002]), wherein the molded particle is provided with a covering made of a pre-formed thin-film glass material forming an outer surface. The thin-film glass has a thickness of 0.001 mm to 1.1 mm (0.00003937 inches to 0.043 inches) (paragraph [0008]), which includes Applicant’s claimed range of about 0.001 to about 0.040 inches. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Gläsner fails to teach a fibrous composite plastic material part comprises plurality of composite layers comprising a carbon fiber, fiberglass, or a combination of both.
However, the courts have held that mere duplication of parts has no patentable significant unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Gläsner teaches the composite layers comprise a plastic resin matrix. Based on the teachings of evidentiary references **Mitsubishi, the term “plastic” in carbon fiber plastic reinforced (CFPR) includes at least one of thermoplastic and thermoset resin material.
Furthermore, the cover layer is generated by inserting a glass film or thin glass for one-sided molding method into a tool or into a mold prior to an infusion, injection or curing process, wherein a resin infusion and curing directly with the glass film can be realized (paragraph [0008]). The optional curing method includes pre-preg autoclave method (paragraph [0008]), which further suggests Gläsner envisioned the “plastic” material to include thermoset resin materials because the autoclave method cures a substance via heat and pressure (see evidentiary reference ***Paran Advanced Composites). Thermoset resin materials are cured (“set”) by heat (thermal energy).
Gläsner does not explicitly teach the thermoset resin material is cured in the autoclave at a temperature between about 130°F and 350°F and at a pressure of between about 15 psi and 85 psi while held under vacuum pressure.
Ahrens et al. teach a graphite (carbon) fiber reinforced epoxy (thermoset) composite layer is cured in an autoclave at a temperature of about 240°F in a vacuum at 85 psi. (Col. 6, Lines 38 – 60).
Therefore, based on the teachings of Ahrens et al., it would have been obvious to one of ordinary skill in the art to use known methods parameters, such as autoclave the composite at a temperature of about 240°F in a vacuum at 85 psi, for curing a carbon fiber reinforced thermoset resin composite such as taught by Gläsner et al.
Gläsner does not teach the glass-composite interface is void-free.
However, Applicant’s specification teaches the manufacturing process ensures proper curing at the glass-carbon interface to ensure no voids (spec, paragraph [0016]). Therefore, the combined teachings of Gläsner and Ahren et al. would inherently result in glass-composite interface that is void-free.
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
Gläsner teaches the roughness of the cover layer is <250 nm (Gläsner’s claim 68), which overlaps Applicant’s claimed range of 1 nm < Ra < 1 µm. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Baker et al. teach the article is used as a heat dissipation article for aerospace vehicles (Col. 5, Line 46), but do not explicitly teach the article further comprises one or more thermally conductive strips embedded at predetermined positions in each composite layer to conduct heat through the thickness of the plurality of composite layers in a direction perpendicular to the plurality of composite layers.
Masakazu et al. teach the skin heat transport panel (heat dissipation article) further comprises one or more thin meandering rod shaped heat pipes (“thermally conductive strips”) for good heat transfer between composite layers (paragraph [0012], pg. 2). Surface portion (21 & 23, 31 & 33) of the heat pipes are embedded in each layer of the composite material (24 & 25, 34 & 35). Connecting parts 22 & 32 are perpendicular to the plurality of composite layers (24 & 25, 34 & 35). The connecting parts are embedded into each layer to transfer (conduct) heat through the thickness of the plurality of composite layers in a thickness direction (perpendicular to the plurality of composite layers) (Figs. 8 – 9 shown below).
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Furthermore, Masakazu et al. teach the heat pipes (i.e., “thermally conductive strips”) are configured such that a lower linear portion that substantially parallel to and in contact with the bottom surface (25) of a composite layer and an upper linear portion that is substantially parallel to and in contact with a top surface (24) of a composite layer (21 & 23) are connected by a connecting part 22 (Applicant’s “arcuate portion”), where the substantially linear portions are substantially parallel to each other and contact the top and bottom surfaces of the composite layer (24 & 25) (Figs. 8 – 9).
Therefore, based on the teachings of Masakazu et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate one or more thin meandering rod shaped heat pipes (i.e., “thermally conductive strips”) into each composite layer for good heat transfer perpendicularly between composite layers.
With regard to claim 3, as discussed above for claim 1, Gläsner teaches the thin-film glass has a thickness of 0.001 mm to 1.1 mm (0.00003937 inches to 0.043 inches) (paragraph [0008]), which includes Applicant’s claimed range of about 0.002 to about 0.020 inches.
With regard to claim 4, Gläsner teaches an intermediate layer, such as an adhesive material composed of resin, connecting the thin glass cover layer to the fibrous composite plastic part (paragraph [0006]).’
Gläsner do not teach the reinforcing fibers of the fibrous composite plastic part of uniaxial.
Masakazu et al. teach a skin heat transport pane (heat dissipation article) comprises highly heat conductive carbon fibers. The carbon fibers are unidirectional (uniaxial) in each layer in the direction orthogonal to the axial direction of the straight pipe portion. The unidirectional carbon fibers are arranged so as to be in contact with the outer surfaces of adjacent (heat) pipes (pgs. 3 – 4).
Therefore, based on the teachings of Masakazu et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date that when the molded article taught by Gläsner is used as a heat dissipation article, to direct orientation of heat transport in the fiber plastic composite by aligning the reinforcing carbon fibers taught by Gläsner in the direction of desired heat transport (dissipation).
With regard to claim 7, Masakazu et al. teach the flat heat pipes are made of aluminum to reduce the weight of the panel (paragraph [0012], pg. 2).
With regard to claim 8, Masakazu et al. fail to explicitly teach each thermally conductive strip is from about 0.01 to about 0.75 inches in its largest dimension on the top and bottom of the multi-layered composite film.
Masakzu et al. teach the heat pipes are arranged across the length of each composite layer (Figs. 8 – 9) forming the skin transport panel on the surface of satellite equipment. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the length of the heat pipes (“thermally conductive strips”) through routine experimentation in order to achieve the desired heat dissipation for the size of the satellite equipment. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 9, as shown in Figs. 8 – 9 above, Masakazu et al. teach the heat pipes (22 & 32) (“thermally conductive strips”) in adjoining layers are vertically aligned to facilitate conducting heat through the thickness of the plurality of composite layers in a direction that is perpendicular to the plurality of composite layers. With regard to claim 10, Gläsner teaches the cover layer (i.e., thin glass film) can be used as a support layer for materials, such as graphite particles, oxide ceramics (i.e., “thin film”) and the like in order to further improve surface properties (paragraph [0007]).
Gläsner do not teach the particles are deposited as a coating.
However, claim 10 defines the product by how the product was made (i.e., “coating”). Thus, claim 10 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a layer of particles deposited on the top surface of the glass film (i.e., “glass micro sheet”). The reference suggests such a product.
Examiner refers applicant to MPEP § 2113 [R - 1] regarding product-by-process claims. “The patentability of a product does not depend on its method or production. If the product in the product-by-process claim is the same as or obvious from a product or 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) (citation omitted)
Once the examiner provides a rationale tending to show that the claimed product appears to be same or similar to that of the prior art, although produced by a different process, the burden shifts to the 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).
With regard to claim 11, when reading the preamble in the context of the entire claim, the recitation “a satellite panel” 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.
With regard to claim 23, as discussed above for claim 1, based on the teachings of Masakazu et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate one or more thin meandering rod shaped heat pipes (i.e., “thermally conductive strips”) into each composite layer for good heat transfer perpendicularly between each layer of the composite layers. This would result in a lower linear portion parallel and in contact with the top surface of an adjoining lower one of the plurality of composite layers and the upper linear portion parallel and in contact with the bottom surface of an adjoining upper one of the plurality of composite layers.
With regard to claim 26, Masakzu et al. fail to explicitly teach the center of each thermally conductive strip is positioned from about 0.02 to about 3 inches from the center of the thermally conductive strip that is closest to that thermally conductive strip.
However, Masakazu et al. teach a plurality of rod-shaped heat pipes are arranged to reduce the temperature distribution across the surface of satellite equipment (paragraphs [0002] – [0003, pgs. 1 – 2). Futhermore, Masakazu et al. teach the interval between the parallel pipes may be narrowed for improved heat transport (pg. 4). Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the arrangement of the heat pipes (i.e. the center-to-center position between adjacent thermally conductive strips) through routine experimentation in order to achieve the desired temperature distribution and heat transport. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 21 is rejected under 35 U.S.C. 103 as being unpatentable over Gläsner, Ahrens et al., & Masakazu et al., as applied to claim 1 above, and further in view of DE 202018104840 U (2018).
With regard to claim 21, Gläsner does not teach the composite layers are carbon fiber-reinforced composite layers which comprise epoxy or cyanate ester thermosetting polymer.
DE 202018104840 U (2018) teach a hybrid composite material for providing thermal insulation (pg. 2) comprising a fiber-reinforced composite comprises an epoxy resin reinforced with carbon fibers. Epoxy resins have good adhesion and heat resistance (pg. 4).
Therefore, based on the teachings of ‘840, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use epoxy resin as the plastic resin in the carbon reinforced plastic composite taught by Gläsner because epoxy resins have good adhesion and heat resistance.
Response to Arguments
Claim 1 was previously rejected over Baker et al. (US 5,441,682), Masakazu et al. (JP 2002-120310 A), Deminet (US 4,238,265), and Cedillo-Gonzalez et al. (Physics Procedia). Claim 21 was further rejected in view of Gould et al. (CN 1839024 A).
Baker et al. teach the carbon fiber reinforced resin is a sol-gel binder. Gould et al. teach organic aerogel sheets composed of epoxy resin or cyanate ester formed by sol-gel chemistry and reinforced with carbon fibers.
However, an organic aerogel resin reinforced with carbon fibers as taught by Baker et al. & Gould et al. would not form a void-free interface with the glass sheet, as recited by Applicant’s claim 1. Therefore, the rejection of the current claims over Baker et al. is withdrawn.
Applicant argues, “Applicant respectfully submits that in the present case the process steps recited in the Claim 1 impart distinctive structural characteristics to the claimed article- a pre-formed glass micro sheet bonded to a composite film during cure of the composite to produce a glass-composite interface that is void-free” (Remarks, Pg. 14).
EXAMINER’S RESPONSE: Applicant’s arguments with respect to the rejection(s) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the references discussed above.
In light of the new cited art, the glass-composite interface of the cited prior art would have been inherently void-free based on the method of forming the carbon fiber reinforced thermoset resin composite.
Applicant argues, “Furthermore, Applicant respectfully submits that Gläsner does not disclose or suggest an article that includes plurality of thermally conductive strips embedded at predetermined positions…” (Remarks, Pg. 14).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The recited thermally conductive strips are taught by Masakasu. 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, “Masakazu does not disclose that the lower surface of the serpentine capillary heat pipe is substantially parallel to and in contact with a bottom surface of an associated on of a plurality of conductive composite materials and the upper surface of that serpentine capillary heat pipe is substantially parallel to and in contact with a top surface of the associated one of the plurality of conductive composite materials. Rathe, Masakazu discloses the lower surface of the serpentine capillary heat pipe being embedded within a lower composite material, the upper surface of the serpentine capillary heat pipe being embedded with an upper composite material, and a honeycomb core material inserted between and bonded to the lower composite material with the embedded lower surface of the serpentine capillary heat pipe and the upper composite material with the embedded upper surface of the serpentine capillary heat pipe” (Remarks, Pgs. 13 & 15).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Masakazu teaches forming the heat pipes above and below the honeycomb (a thermal insulating layer), embedded within the skin layers. It would have been obvious to one of ordinary skill in the art to form the pipes above and below the composite layer(s) (thermal insulating layer) taught by Glasner in a similar manner as the honeycomb.
Second, as discussed above, it would have been obvious to one of ordinary skill in the art to incorporate the heat pipes taught by Masakazu on the surface of a plurality of carbon fiber reinforced plastic layers, such as discussed in Gläsner. 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).
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781