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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/16/2025 has been entered.
Response to Amendment
Applicant amendment filed 10/16/2025 has been entered and is currently under consideration. Claims 8-14 remain pending in the application.
Claim Objections
Claim 9, 12, and 14 objected to because of the following informalities:
In claim 9, “the at least one locally fortified core layer” should read --at least one locally fortified core layer --.
In claim 10, “the at least one locally fortified core” should read --at least one locally fortified core layer--.
In claim 12, “the locally resin-fortified core layer” should read –the locally fortified core layer--.
In claim 14, “the locally resin-fortified core layer” should read –the locally fortified core layer--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8-14 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 is rendered indefinite because it is not clear what the scope the term “off-the-shelf” includes. For example, it is not clear if the term is meant to indicate a specific type of core layer or a process to obtain said core layer, etc. Furthermore, the specification does not provide any explanation of the scope or any special definition for the claim term. The examiner notes that the specification contains no reference to the term “off-the-shelf” in any capacity.
The term “unnecessary resin cost and weight” in claim 8 is a relative term which renders the claim indefinite. The term “un” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 10 is rendered indefinite because it requires “at least one locally fortified core, …, is placed” and “the resin-fortified core layer is resin-fortified before, during, or after being placed”. The fortified core layer cannot exist before being resin fortified, and therefore cannot be resin-fortified during or after placement since it must be resin-fortified prior to placement to be considered a fortified core layer. It is also not clear if the claim is reciting an additional resin fortification to the resin-fortification of claim 8.
Claim 11 is rendered indefinite because it is not clear how many sheets are required by the claim.
The term “proper size and distribution” in claim 12 is a relative term which renders the claim indefinite. The term “proper” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 13 contains the trademark/trade name Lantor®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe core layer sheet and, accordingly, the identification/description is indefinite. While claim 13 has been amended to include further limitations, the original issue at hand regarding the indefiniteness of the trademarks/trade names are still present as long as said trademarks/trade names are used.
All claims dependent on the above rejected claims are rejected as well because they include all the limitations of the rejected 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.
Claim(s) 8-12, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ehsani (US 2019/0063642 of record) in view of Shinohara et al. (US 2019/0002654 of record) hereinafter Shinohara.
Regarding claim 8, Ehsani teaches:
A method of manufacturing a fortified core layer for constructing a pipe or reinforcing and repairing a pipe from inside or outside ([0017-0020, 0031]), the method comprising:
providing at least one off-the-shelf core layer sheet ([0017, 0024, 0026]); and
injecting or infusing a resin into the core layer sheet ([0020, 0026]).
Ehsani does not teach manufacturing a locally fortified core layer,
providing at least one off-the-shelf core layer sheet that includes core shores and connected or disconnected core canals, wherein the core canals, per volume, absorb more resin than the core shores; and
injecting or infusing a different amount of resin, according to engineering design and calculations, into different localized parts of the core layer sheet, the core canals, and/or the core shores, to obtain desired localized mechanical properties and desired localized strengths while avoiding unnecessary resin cost and weight.
In the same field of endeavor regarding reinforced composites, Shinohara teaches:
providing at least one off-the-shelf core layer sheet ([0068-0069]) that includes core shores and connected or disconnected core canals (Fig 4-5; [0055, 0067]), wherein the core canals, per volume, absorb more resin than the core shores (Fig 4-5; [0055, 0067]); and
injecting or infusing a different amount of resin ([0073]), according to engineering design and calculations, into different localized parts of the core layer sheet, the core canals, and/or the core shores, to obtain desired localized mechanical properties and desired localized strengths while avoiding unnecessary resin cost and weight (Fig 4-5; [0055, 0066-0067]) for the motivation of optimizing between mechanical characteristics and lightness ([0066-0067]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the method as taught by Ehsani to use the variable porosity core and resin impregnation as taught by Shinohara in order to optimize between mechanical characteristics and lightness.
Regarding claim 9, Ehsani in view of Shinohara teaches the method of claim 8.
Ehsani further teaches wherein the at least one locally fortified core layer is sandwiched between at least two resin fortified sheets of material and is wrapped around a mandrel of any shape and size to fabricate a pipe ([0031]).
Regarding claim 10, Ehsani in view of Shinohara teaches the method of claim 8.
Ehsani further teaches wherein at least one locally fortified core, with or without other sheets of materials, is placed over inside or outside walls of a damaged or weak pipe to repair and/or strengthen the walls of the pipe and wherein the locally fortified core layer is resin-fortified before, during, or after being placed over the walls of the pipe ([0026, 0031, 0035]).
Regarding claim 11, Ehsani in view of Shinohara teaches the method of claim 10.
Ehsani further teaches wherein a layer of epoxy or other resin is applied between the pipe walls and the sheet that is situated against the wall ([0031, 0035]).
Regarding claim 12, Ehsani in view of Shinohara teaches the method of claim 8.
Shinohara teaches wherein layout of the off-the-shelf core layer sheet is designed to include canals of proper size and distribution and fortification of the locally fortified core layer is designed and calculated to result in a desired strength ([0066-0067]).
Therefore one of ordinary skill would understand that a pipe comprising the core layer sheet would possess the same properties for each locality of the pipe the core layer is used.
Regarding claim 14, Ehsani in view of Shinohara teaches the method of claim 9.
Ehsani further teaches wherein adhesives are added between layers of the locally fortified core layer and the sheets of the fortified materials ([0022]).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ehsani in view of Shinohara as applied to claim 8 above, and further in view of Lantor Coremat (2021).
Regarding claim 13, Ehsani in view of Shinohara teaches the method of claim 8.
Shinohara further teaches the off the shelf core layer sheet includes a structure in a form of islands and channels Fig 4-5: part R1, residual part R2; [0055, 0065-0067].
Ehsani in view of Shinohara does not teach wherein the off-the-shelf core layer sheet is manufactured by Lantor® company and includes a structure in which microspheres are incorporated in a polyester based fleece with a pressure resistant binder in a form of islands/shores and channels/canals and includes hexagon foam cells that do not absorb any resin while channels between the cells allow the resin to flow, and wherein it includes a structure in which microspheres are incorporated in a polyester based fleece in a form of islands and channels and is made with a styrene dissolvable binder.
In the same field of endeavor regarding reinforced composites, Lantor Coremat teaches an off-the-shelf Coremat core layer sheet which includes a structure in which microspheres are incorporated in a polyester based fleece in a form of islands and channels and is made with a styrene dissolvable binder for the motivation of providing a product that wets out quickly but also remains intact long enough to be processed (first paragraph).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the core layer sheet as taught by Ehsani in view of Shinohara to include the microspheres, polyester fleece, and styrene binder as taught by Lantor Coremat in order to provide a product that wets out quickly but also remains intact long enough to be processed.
Response to Arguments
Applicant's arguments filed 10/16/2025 have been fully considered but they are not persuasive.
Applicant argues that resin cannot be infused or injected into Shinohara’s manufactured product. However, [0069] of Shinohara recites “The fiber-reinforced mat may be formed of the reinforced fibers 3 alone”. Shinohara teaches subsequently “impregnating the fiber-reinforced mat with the resin” ([0073]). Therefore, Shinohara teaches a product that “as is” meets the limitations of the claimed “off the shelf core layer”. The examiner notes that the specific production method and product alluded to by the applicant is one example of many that Shinohara discloses. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123. Furthermore, the examiner notes that Ehsani teaches a impregnating core layer sheets that are transported to a job site off-the-shelf ([0026]). 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 that Shinohara teaches a product of resin, fibers, and voids that after being manufactured cannot be injected or infused with additional resin. However, applicant is inappropriately comparing the final product of Shinohara to the intermediate core layer sheet as claimed as discussed above. To clarify, Shinohara teaches an intermediate mat that meets the limitations of the claimed core layer sheet, and the final product of Shinohara after resin impregnation is comparable to the fortified product of the claimed method. Furthermore, while not relevant to the claims at hand, there contains no teaching in Shinohara that this final product cannot be injected or infused additional resin after manufacture. Applicant argues that the size of the mat prevents injection or infusion of resin. This is directly contradicted by [0073] Shinohara which recites “impregnating the fiber-reinforced mat with the resin”. Furthermore, applicant has provided no evidence supporting the above argument, and attorney arguments cannot take the place of evidence. Applicant argues that Shinohara’s mat cannot be tailored to one’s own desired specification. However, Shinohara teaches a that the design parameters of the mat can be adjusted based on considerations given to weight and strength of the final product (Fig 4-5; [0055, 0066-0067]).
Applicant argues that Shinohara does not teach any kind of resin can be used to customize any off-the-shelf material. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies 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 examiner further notes that Shinohara does not contain any teaching of limiting the invention to only the materials disclosed.
Applicant argues that Ehsani and Shinohara differ from the claimed invention in structure and function. However, applicant has provided no persuasive evidence regarding differences in structure. As to the function, Ehsani teaches onsite manufacturing, replacing, repairing, or reinforcing of pipes with minimum cost, effort, and time using “very light-weight” off-the-shelf core sheets ([0013, 0024]). Shinohara similarly is optimizing for lightness using greater porosity ([0066]), i.e. deliberately controlling the amount of resin used to attain desired characteristics. Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Therefore, the prior art teaches not only the claimed method, but the advantages and benefits of the instant invention as well.
For at least the above reasons, the application is not in condition for allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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/ALEXANDER A WANG/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741