DETAILED ACTION
Claim Status
Claim(s) 1-4, 6-7, 11-14, 16-17 is/are pending.
Claim(s) 1-4, 6-7, 11-14, 16-17 is/are rejected.
Claim(s) 5, 8-10, 15, 18-20 is/are cancelled by Applicant.
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 .
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 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.
Double Patenting
The rejections on the ground of nonstatutory double patenting based on U.S. Patent No. 9,346,944 (HOFFMANN ET AL) in the previous Office Action mailed 01/30/2025 have been withdrawn in view of the Claim Amendment filed 04/07/2025.
U.S. Patent No. 9,346,944 fails to claim glass fibers with the required CaO content.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The rejections under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, in the previous Office Action mailed 10/22/2025 have been withdrawn in view of the Claim Amendments filed 01/21/2026.
Claim Rejections - 35 USC § 103 (AIA )
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 1-4, 6-7, 11-14, 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• KUSY ET AL (US 5,869,178),
in view of: LI ET AL (US 2016/0068428) or LI ET AL (US 2015/0018194);
and in view of CADFIL - FILAMENT WINDING SOFTWARE & TECHNOLOGY (hereinafter CADFIL);
and in view of BAKER ET AL (US 2014/0235759);
and in view of DEGGINGER ET AL (US 4,098,943);
and in view of YAMASAKI ET AL (US 2005/0053787).
KUSY ET AL ‘178 discloses pultruded glass fiber-reinforced composite materials (e.g., for cables, profiles, etc.), wherein the composite material comprises:
• a curable resin (e.g., acrylic, epoxy, etc.);
• 9-91 vol% of reinforcing glass fiber (or filament or fiber bundle);
wherein various mechanical properties (e.g., tensile strength, tensile elastic modulus; flexural modulus, etc.) generally increase with increasing vol% of reinforcing fiber;
wherein illustrative, non-limiting examples of fiber-reinforced composite materials with a S-2 glass fiber content ranging between 33-79 vol% can exhibit (but are not limited to):
• typical flexural modulus values of 20-60 GPa.
The fiber-reinforced composite material is formed by a pultrusion process comprising:
• drawing a bundle of fibers from one or more spools and;
• separating said fiber bundles and applying a bath of curable resin to the fibers (44) (corresponding to the recited “passing the bundle through a bath of polymer resin material”);
• re-bundling the resin-coated or monomer-coated fibers;
• pulling the resin-coated fiber bundles through a forming die (50) (corresponding to the recited “shaping die”);
• curing the resin-coated fiber bundles to form a cured fiber-reinforced composite material.
(entire document, e.g., Figure 1-3, etc.; line 5-30, col. 1; line 5-55, col. 2; line 1-32, col. 4; line 32-53, col. 5; line 1-30, col. 7; line 64, col. 7 to line 4, col. 8; line 32, col. 10 to line 45, col. 11 line 11-32, col. 12; line 35-55, col. 15; etc.) However, the reference does not specifically discuss the mechanical properties of the glass fiber.
LI ET AL ‘428 disclose curable fiberglass-reinforced composites comprising:
• high modulus, high strength glass fiber capable of exhibiting:
• Young’s modulus (i.e., modulus of elasticity) greater than 87 GPa (e.g., greater than 90 GPa; etc.);
• tensile strength greater than 5000 MPa (e.g., greater than 5500 MPa; etc.);
• typical densities of 2.51 to 2.7 g/cm3;
wherein the glass fiber is formed from a glass composition comprising:
51-65 weight percent SiO2;
12.5-22 weight percent Al2O3;
0-16 weight percent CaO;
0-12 weight percent MgO;
0-2.5 weight percent Na2O;
0-1 weight percent K2O;
0-2 weight percent Li2O;
0-3 weight percent TiO2;
0-3 weight percent ZrO2;
0-3 weight percent B2O3;
0-3 weight percent P2O5;
0-1 weight percent Fe2O3;
0-11 weight percent total other constituents;
wherein B2O3 is not required;
wherein some embodiments contain:
• 11 to less than 20 wt% Al2O3 combined with 7-17 wt% MgO;
• 14-19 wt% Al2O3 combined with 10-16 wt% MgO; etc.
• a polymer resin (e.g., curable thermosetting resins, such as polyurethane, epoxy, vinyl ester; polyester; etc.):
wherein the curable composite materials produced by conventional fiber-reinforced composition production methods (e.g., pultrusion; extrusion compounding; compression molding; filament winding; prepreg/autoclave curing; etc.) in order to produce a wide variety of lightweight, high modulus, high strength products for numerous applications (e.g., but not limited to, aerospace; aviation; military; security or anti-ballistic; automotive; wind energy and/or alternative energy; pressure vessels; transportation; infrastructure; etc.) with improved properties (e.g., strength, impact resistance, etc.) compared to composites made with E-glass, R-glass, and/or S-glass fibers. (LI ET AL ‘428, entire document, e.g., paragraph 0003-0004, 0005, 0007, 0014-0015, 0024, 0046-0048, 0071-0178, 0186, 0202, 0205, 0235, 0239, 0251, etc.)
LI ET AL ‘194 disclose curable fiberglass-reinforced composites comprising:
• high modulus, high strength glass fiber capable of exhibiting:
• Young’s modulus (i.e., modulus of elasticity) greater than 87 GPa (e.g., greater than 90 GPa; etc.);
• tensile strength greater than 5000 MPa (e.g., greater than 5500 MPa; etc.);
• typical densities of 2.51 to 2.7 g/cm3;
wherein the glass fiber is formed from a glass composition comprising:
51-65 weight percent SiO2;
12.5-22 weight percent Al2O3
(with a suggested range of 14.5-19 weight percent);
0-16 weight percent CaO;
0-12 weight percent MgO
(with a suggested range of 0-12 weight percent);
0-2.5 weight percent Na2O;
0-1 weight percent K2O;
0-2 weight percent Li2O;
0-3 weight percent TiO2;
0-3 weight percent ZrO2;
0-3 weight percent B2O3;
0-3 weight percent P2O5;
0-1 weight percent Fe2O3;
0-11 weight percent total other constituents;
wherein B2O3 is not required;
• a polymer resin (e.g., curable thermosetting resins, such as polyurethane, epoxy, vinyl ester; polyester; etc.):
wherein the curable composite materials produced by conventional fiber-reinforced composition production methods (e.g., pultrusion; extrusion compounding; compression molding; filament winding; prepreg/autoclave curing; etc.) in order to produce a wide variety of lightweight, high modulus, high strength products for numerous applications (e.g., but not limited to, aerospace; aviation; military; security or anti-ballistic; automotive; wind energy and/or alternative energy; pressure vessels; transportation; infrastructure; etc.) with improved properties (e.g., strength, impact resistance, etc.) compared to composites made with E-glass, R-glass, and/or S-glass fibers. (LI ET AL ‘194, entire document, e.g., paragraph 0003-0004, 0006, 0011-0014, 0037-0040, 0045, 0055-0104, 0161, 0165, 0174, 0176-0178, etc.)
CADFIL provide evidence that for a fiber-reinforced composite material, 88 wt% glass fiber content generally corresponds to about 75-76 vol% glass fiber (assuming typical density values for glass fiber and epoxy (or polyester) resins). The reference further provides evidence that, increased resin density (e.g., greater than 1.1 g/cm3), allows for a higher vol% of glass filler for a given wt% (i.e., about 88 wt%) of glass fiber.
BAKER ET AL ‘759 discloses that it is well known in the art to incorporate micro-scale or nano-scale particulate fillers (e.g., carbon nanotubes, metals, ceramics, etc.) into curable fiber-reinforced composite materials in order to provide enhanced properties (e.g., stiffness, strength, toughness, fatigue strength, etc.); (paragraph 0013-0017, etc.)
DEGGINGER ET AL ‘943 discloses that it is well known in the art to incorporate particulate fillers (e.g., minerals, metal oxides, silicon-based fillers, etc.) into fiber-reinforced composite materials in order to provide increased modulus and stiffness. (col. 7, line 1-33, 53-55, etc.)
YAMASAKI ET AL ‘787 discloses that it is well known in the art to incorporate particulate fillers (e.g., carbon nanotubes, clays, ceramics, silica, etc.) into curable fiber-reinforced composite materials in order to modify the elastic modulus of the composite material. (col. 7, line 1-33, 53-55, etc.)
Regarding claim 1-4, 6, 11-14, 16, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the high modulus, high strength glass fiber of LI ET AL ‘428 or LI ET AL ‘194 (as a replacement for conventional S2 glass fiber) in the pultruded composite materials of KUSY ET AL ‘178 in order to produce known composite products (e.g., pipes, cables, profiles, electronic components, etc.) with excellent mechanical properties (e.g., strength, stiffness, resistance to bending or deformation, etc., as represented by an elastic modulus of 50 GPa or more) which exceeds the mechanical performance properties of similar composites utilizing S2 glass fibers.
Further regarding claims 1, 11, since: LI ET AL ‘428 disclose glass fibers formed from glass compositions containing: (i) 11 to less than 20 wt% Al2O3 combined with 7-17 wt% MgO; or (ii) 14-19 wt% Al2O3 combined with 10-16 wt% MgO; or (iii) 12.5-22 wt% Al2O3 combined with up to 12 weight percent MgO; wherein the glass fibers are capable of exhibiting a tensile strength greater than 5000 MPa (e.g., greater than 5500 MPa; etc.); LI ET AL ‘428 discloses glass fibers formed from a glass composition containing with an Al2O3 / MgO weight ratio which at least partially overlaps the recited “Al2O3 / MgO ratio of no greater than 2.0” -- for example, but not limited to:
19.99 wt% Al2O3 / 17 wt% MgO = 1.2;
19.5 wt% Al2O3 / 15 wt% MgO = 1.3;
19.1 wt% Al2O3 / 12 wt% MgO = 1.6;
22 wt% Al2O3 / 12 wt% MgO = 1.8;
21 wt% Al2O3 / 10.5 wt% MgO = 2.0;
20 wt% Al2O3 / 10 wt% MgO = 2.0;
20 wt% Al2O3 / 11 wt% MgO = 1.8;
19 wt% Al2O3 / 9.5 wt% MgO = 2.0;
19 wt% Al2O3 / 10 wt% MgO = 1.9;
19 wt% Al2O3 / 11 wt% MgO = 1.7; etc.
19 wt% Al2O3 / 12 wt% MgO = 1.6; etc.
Similarly, further regarding claims 1, 11, since: LI ET AL ‘194 disclose glass fibers formed from a glass composition containing: (i) 12.5-22 weight percent Al2O3 (with a suggested range of 14.5-19 weight percent) combined with up to 12 weight percent MgO; wherein the glass fibers are capable of exhibiting a tensile strength greater than 5000 MPa (e.g., greater than 5500 MPa; etc.); LI ET AL ‘194 discloses glass fibers formed from a glass composition containing with an Al2O3 / MgO weight ratio which at least partially overlaps the recited “Al2O3 / MgO ratio of no greater than 2.0” -- for example, but not limited to:
22 wt% Al2O3 / 12 wt% MgO = 1.8;
21 wt% Al2O3 / 10.5 wt% MgO = 2.0;
20 wt% Al2O3 / 10 wt% MgO = 2.0;
20 wt% Al2O3 / 11 wt% MgO = 1.8;
19 wt% Al2O3 / 10 wt% MgO = 1.9;
19 wt% Al2O3 / 12 wt% MgO = 1.6; etc.
Further regarding claims 1, 11, since: KUSY ET AL ‘178 discloses glass fiber-reinforced composites capable of exhibiting modulus values in the tens of GPa range; one of ordinary skill in the art would have selected: (i) the glass fiber content (as suggested by KUSY ET AL ‘178); and/or (ii) incorporated effective amounts of known additives typically used in fiber-reinforced composite materials (e.g., additional stiffening and reinforcing particulate fillers, etc. as suggested in BAKER ET AL ‘759 and YAMASAKI ET AL ‘787 and MOTOI ET AL ‘343, which do not contribute to the recited “fiber weight fraction (FWF)”); in the composite material of KUSY ET AL ‘178 in order to produce composite materials with sufficiently high elastic modulus for specific applications requiring high stiffness or resistance to bending (as represented by an elastic modulus of 50 GPa or more).
Further regarding claims 1, 11, one of ordinary skill in the art would have utilized the minimum amount of high modulus, high strength glass fiber of LI ET AL ‘194 or LI ET AL ‘428 in the composites of KUSY ET AL ‘178 (e.g., less than about 75 vol%, which generally corresponds to about 88 wt%, as evidenced by CADFIL) necessary to attain a predetermined mechanical property (e.g., elastic modulus, flexural modulus, tensile modulus, etc.) required for specific applications in order to reduce weight (e.g., because glass fiber materials generally have a density which is significantly higher (e.g., about 2.5 to 2.6 g/cm3) than polymeric resins (e.g., about 1.0 to 1.5 g/cm3)) and/or material costs (e.g., because high performance specialty glass fiber materials, while providing superior tensile or stiffness properties, can be a relatively expensive component in a composite, compared to polymeric resins). Furthermore, since the densities of conventional strengthening and/or stiffening particulate fillers (e.g., metal oxides, ceramics, etc.) are typically greater than polymers, the presence of such particulate fillers would generally increase the density of the resin component of the composite, which in turn allows for a higher vol% of glass filler (e.g., up to about 85 vol%, etc.) for a given wt% (i.e., about 88 wt%) of glass fiber, as evidenced by CADFIL.
Further regarding claims 1, 11, since: (1) KUSY ET AL ‘178 discloses glass fiber-reinforced composites capable of exhibiting modulus values in the tens of GPa range and further discloses that mechanical properties such as tensile strength, tensile elastic modulus, flexural modulus generally increase with increasing vol% of reinforcing fiber; (2) BAKER ET AL ‘759 and DEGGINGER ET AL ‘943 and YAMASAKI ET AL ‘787 discloses that it is well known in the art to incorporate various non-glass fiber fillers into curable fiber-reinforced composite materials in order to provide enhanced or tailored properties (e.g., stiffness, elastic modulus, mechanical strength, toughness, fatigue strength, etc.); one of ordinary skill in the art would have selected: (i) the glass fiber content (as suggested by KUSY ET AL ‘178); and/or (ii) incorporated effective amounts of known additives typically used in fiber-reinforced composite materials (e.g., additional stiffening and reinforcing particulate fillers, etc. as suggested in BAKER ET AL ‘759 and YAMASAKI ET AL ‘787 and MOTOI ET AL ‘343, which do not contribute to the recited “fiber weight fraction (FWF)”); in the composite material of KUSY ET AL ‘178 in order to produce composite materials with sufficiently high elastic modulus and flexural modulus and tensile modulus (claims 1, 11) for specific applications (e.g., but not limited to, aerospace; aviation; military; security or anti-ballistic; automotive; wind energy and/or alternative energy; pressure vessels; transportation; infrastructure; etc.) requiring high strength and/or high stiffness and/or resistance to bending or deformation (as represented by: an elastic modulus of 60 GPa or more; a flexural modulus of 50 GPa or more; a tensile modulus of 50 GPa or more).
Regarding claims 7, 17, since the high strength, high modulus glass fibers of LI ET AL ‘194 and LI ET AL ‘428 have glass compositions, elastic modulus values, and densities which are comparable to the glass compositions, elastic modulus values, and densities of the “high-performance” glass fibers in the present claims, the Examiner has reason to believe that the high strength, high modulus glass fibers of LI ET AL ‘194 and LI ET AL ‘428 are capable of exhibiting specific modulus values (i.e., modulus (GPa) / density (kg/m3)) which at least partially read on the specific modulus values recited in claims 7, 17, therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594. For example, Example 1 in LI ET AL ‘428 has a modulus of 89.2 GPa and a density of 2.62, resulting in a specific modulus of about 34 MJ/kg.
The Examiner cautions that if Applicant chooses to argue that the recited combination of physical properties for the composite part recited in claims 1, 11 (i.e., elastic modulus, flexural modulus, tensile modulus) at the recited FWF loading cannot be obtained by one of ordinary skill in the art using known improvement and/or modification techniques or methods (e.g., as discussed above in the rejections under 35 U.S.C. 103) using routine experimentation and routine optimization, this will raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement. Furthermore, Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a), in particular an insufficient scope of enablement.
Response to Arguments
Applicant's arguments filed 01/21/2026 have been fully considered but they are not persuasive.
(A) Applicant argues that “The cited art does not teach or suggest this combination, and the Office Action does not provide the required articulated rationale or a reasonable expectation of success for achieving these simultaneous properties under the claimed constraints.” However, contrary to Applicant’s assertions, the rejections under 35 U.S.C. 103 in the present Office Action clearly set forth articulated rationale for why the recited combination of physical properties (i.e., elastic modulus; tensile modulus; flexural modulus) can be obtained by one of ordinary skill in the art using routine experimentation and optimization.
Regarding the requirement of “a reasonable expectation of success”, Applicant has not provided persuasive arguments why the combination of familiar elements (i.e., the glass fiber-reinforced composite material of KUSY ET AL ‘178; high strength, high modulus glass fibers of LI ET AL ‘194 and LI ET AL ‘428) according to known methods (i.e., utilizing the high strength, high modulus glass fibers of LI ET AL ‘194 and LI ET AL ‘428 as the glass fiber component in the composite material of KUSY ET AL ‘178) would not yield reasonably predictable results and a reasonable expectation of success of producing a desirable product (i.e., a composite material with desirable combinations of high elastic modulus and high tensile modulus and high flexural modulus properties which can be readily adjusted by one of ordinary skill in the art to meet the requirements of demanding applications (e.g., lightweight, high modulus, high strength products for numerous applications, such as aerospace; aviation; military; security or anti-ballistic; automotive; wind energy and/or alternative energy; pressure vessels; transportation; infrastructure; etc.), even with reduced glass fiber loadings.
If Applicant chooses to argue that the recited combination of physical properties for the composite part recited in claims 1, 11 (i.e., elastic modulus, flexural modulus, tensile modulus) at the recited FWF loading cannot be obtained by one of ordinary skill in the art using known improvement and/or modification techniques or methods (e.g., as discussed above in the rejections under 35 U.S.C. 103) using routine experimentation and routine optimization, this will raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement. Furthermore, Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a), in particular an insufficient scope of enablement.
(B) Applicant argues that “the two LI disclosures encompass a multitude of materially
different compositional combinations, each capable of yielding distinct fiber properties”. Applicant further argues that “Both references disclose broad, independent ranges for Al2O₃ and MgO within highly variable compositions that include numerous optional and alternative constituents.” However, the present glass fiber composition utilizes the open phrase “comprising”, which permits the presence of any type(s) in any amount(s) of additional components, as long as the explicitly recited components are present in the recited amounts. Therefore, the mere presence of different or optional or alternative components in the glass fiber compositions of LI ET AL '428 and LI ET AL '194 does not provide a clear teaching away from the references’ disclosure of glass fiber compositions which at least partially overlap the claimed glass fiber compositions in every required component. Applicant has not provided evidence of the criticality of the claimed glass fiber composition which is commensurate in scope with the present claims. Additionally, Applicant has not provided persuasive arguments that the mere presence of some differences between the claimed glass fiber composition and the glass fiber compositions disclosed in LI ET AL '428 and LI ET AL '194 somehow clearly teaches away from the claimed glass fiber compositions.
As shown by Applicant’s own Table, LI ET AL '428 and LI ET AL '194 each disclose glass fiber compositions in which the ranges of the SiO2 and Al2O3 and MgO and CaO components at least partially (and in some cases, significantly) overlap the ranges of the same components in the claimed glass fiber composition. Furthermore, the present glass fiber composition utilizes the open phrase “comprising”, which permits the presence of any type(s) in any amount(s) of additional components, as long as the explicitly recited components are present in the recited amounts.
MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024]
See MPEP § 2131.03 for case law pertaining to rejections based on the anticipation of ranges under 35 U.S.C. 102 and 35 U.S.C. 102 /103.
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Therefore, in the present instance, even though the ranges of the various components of the glass fiber disclosed in LI ET AL '428 and LI ET AL '194 is not completely identical with the claimed glass composition, there is sufficient overlap in the LI ET AL '428 and LI ET AL '194 glass fiber compositions to establish a prima facie case of obviousness with respect to the recited glass fiber composition. Applicant has not provided adequate objective evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited glass fiber composition.
(C) Applicant argues that LI ET AL '428 and LI ET AL '194 do not teach that the Al₂O₃/MgO ratio is a pertinent variable, let alone that maintaining Al₂O₃/MgO no greater than 2.0 is critical or has a defined effect.” Applicant further argues that “The Office Action's approach, i.e., picking isolated Al2O₃ and MgO values from those broad windows and calculating that certain pairs happen to yield ratios ≤ ≤2.0, amounts to a post hoc arithmetic exercise. It is not a disclosure, teaching, or suggestion in the art that a person of ordinary skill would recognize, target, or ascribe significance to the claimed Al₂O₃-MgO relationship.
However, aside from Applicant’s generalized assertions, Applicant has not provided objective evidence commensurate in scope with the present claims that the recited Al₂O₃/MgO ratio is in fact critical or results in a specific effect on the physical properties of the glass fiber. While the disclosure as originally filed states that that the recited Al₂O₃-MgO ratio is essential or critical to obtain glass fibers with a tensile strength of at least 4800 MPa, at least LI ET AL ‘428 discloses several Examples which provided evidence that glass fibers with tensile modulus values of greater than 4800 MPa can still be achieved using glass fiber compositions with Al₂O₃-MgO ratios either greater than or less than 2, which reasonably indicates that other compositional factors (e.g., the amount of other components, etc.) besides the Al₂O₃-MgO ratio are significant or critical with respect to the tensile modulus of a glass fiber.
In contrast, Applicant has not provided objective evidence of the alleged criticality or specific effect of the recited Al₂O₃/MgO ratio commensurate in scope with the present claims. In particular the two working Examples in the specification only use “HP glass fibers” of unspecified composition, and therefore, the criticality or particular significance of the recited Al₂O₃/MgO ratio cannot be clearly established or determined. Since both LI ET AL '428 and LI ET AL '194 explicitly disclose or at least reasonably suggest a significant range or glass fiber compositions which exhibit Al₂O₃/MgO ratios of 2.0 or less (as discussed in detail in the above rejections under 35 U.S.C. 103), a prima facie case of obviousness with respect to the recited Al₂O₃/MgO ratios exists. Applicant has not overcome this prima facie case of obviousness (with respect to the recited Al₂O₃/MgO ratios) by providing adequate objective evidence of unexpected results and/or criticality commensurate in scope with the present claims resulting from the recited Al₂O₃/MgO ratios.
(D) Applicant argues that “A prima facie case based on overlapping ranges may be rebutted where the prior art's disclosure is so broad-and its members so dissimilar-that it does not meaningfully direct a skilled artisan toward the claimed range. See MPEP $2144.05.” However, Applicant has not provide persuasive arguments that adequately rebut the prima facie case of obviousness established in the above rejections under 35 U.S.C. 103, especially in view of: (i) the relative breadth of the recited glass fiber composition; and (ii) the teachings of LI ET AL '428 and LI ET AL '194, which disclose, individually or in combination, glass fiber compositions in which the ranges of the SiO2 and Al2O3 and MgO and CaO components at least partially (and in some cases, significantly) overlap the ranges of the same components in the claimed glass fiber composition. Applicant has not provided objective evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited glass fiber composition, especially giving the complete lack of details regarding the composition of the “HP glass fibers” used in the working Examples in the specification.
(E) Applicant argues that “when a reference merely touches or overlaps a claimed range but provides no specific examples within that range, anticipation requires a case-by-case analysis. To anticipate, the reference must disclose the claimed subject matter with sufficient specificity to constitute anticipation under the statute. See MPEP §2131.03.” However, it must be noted that the basis of the present rejections is not anticipation under 35 U.S.C. 102, but rather obviousness under 35 U.S.C. 103. As discussed in detail above, LI ET AL '428 and LI ET AL '194 establish a prima facie case of obviousness with respect to the glass fiber composition.
Furthermore, regarding Applicant’s assertions that the lack of specific experimental Examples in LI ET AL '428 and LI ET AL '194 satisfying the requirements of the recited glass fiber composition constitutes a failure to establish “anticipation”, the teaching of a reference are not limited solely to the working Examples in said reference, but encompass the reference as a whole.
MPEP 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments [R-07.2022]
I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.").
See also MPEP § 2131.05 and § 2145, subsection X.D., which discuss prior art that teaches away from the claimed invention in the context of anticipation and obviousness, respectively.
II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In the present instance, as discussed in detail in the rejections under 35 U.S.C. 103 in the present Office Action, LI ET AL ‘428 and LI ET AL ‘194 at least broadly disclose glass fibers made from a glass composition: (i) containing SiO2 and Al2O3 and MgO and CaO in amounts which at least partially (and in some cases, significantly) overlap the ranges of the same components in the claimed glass fiber composition; and (ii) exhibit Al2O3 / MgO ratios which at least partially overlap the recited Al2O3 / MgO ratios of less than 2. Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited glass fiber composition, particularly when the working Examples in the Specification fail to provide any information on: (i) the SiO2 and Al2O3 and MgO and CaO content of the “HP glass fiber” fiber used; and (ii) the recited Al2O3/MgO ratio of the “HP glass fiber” used; and (iii) the tensile strength of the “HP glass fiber” used.
(F) Applicant argues that the Examiner has failed to provide any evidence or reasoned explanation showing that a person of ordinary skill would be capable of producing “a pultruded composite at FWF ≤ 88 wt.%, will deliver the full claimed property suite (elastic ≥ 60 GPa per ASTM D7205; flexural ≥ 50 GPa per ASTM D790; tensile modulus ≥ 50 GPa per ASTM D7205)” or that “the claimed properties would inherently or necessarily be achieved at or below the FWF cap.”
However, Applicant has not provided persuasive arguments why one of ordinary skill in the art would be unable to produce composite materials with the recited physical properties (elastic modulus; flexural modulus; tensile modulus) at FWF values of 88% or less using routine experimentation and optimization methods, in view of:
(i) the combined teachings of KUSY ET AL ‘178 and LI ET AL ‘428 and LI ET AL ‘194 regarding the usefulness and desirability of using high modulus, high strength glass fibers as a replacement for conventional glass fiber in composite materials; and/or
(ii) the general desirability of using just enough glass fiber to attain relatively high elastic modulus, flexural modulus, and tensile modulus composite materials (e.g., to reduce weight and/or material costs; and/or
(iii) the well-recognized ability to further modify or increase the elastic, flexural, and tensile properties of composite materials using known additives typically used in fiber-reinforced composite materials (e.g., additional stiffening and reinforcing particulate fillers, etc. as suggested in BAKER ET AL ‘759 and YAMASAKI ET AL ‘787 and MOTOI ET AL ‘343, which do not contribute to the recited “fiber weight fraction (FWF)” of the composite.
If Applicant chooses to argue that the recited combination of physical properties for the composite part recited in claims 1, 11 (i.e., elastic modulus, flexural modulus, tensile modulus) at the recited FWF loading cannot be obtained by one of ordinary skill in the art using known improvement and/or modification techniques or methods (e.g., as discussed above in the rejections under 35 U.S.C. 103) using routine experimentation and routine optimization, this will raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement. Furthermore, Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a), in particular an insufficient scope of enablement.
(G) Applicant argues that “Neither LI ET AL '428 nor LI ET AL '194 recognizes the Al₂O₃/MgO ratio as a parameter that governs the relevant glass fiber or composite part properties, much less attributes any performance significance to maintaining Al₂O₃/MgO ≤ 2.0. Instead, those references disclose broad, independent ranges for Al2O₃ and MgO within large, multi-component compositional windows. Absent any teaching that the ratio itself affects the outcomes at issue, the cited art does not identify the claimed ratio as a result-effective variable.”
However, the rejections under 35 U.S.C. 103 do not rely on “result-effective variable” arguments with respect to the Al₂O₃/MgO ratio, but rather states that LI ET AL '428 nor LI ET AL '194 disclose or at least reasonably suggest glass fiber compositions containing SiO2 and Al2O3 and MgO and CaO in amounts which at least partially (and in some cases, significantly) overlap the ranges of the same components in the claimed glass fiber composition, wherein said glass fiber composition can also exhibit Al2O3 / MgO ratios which at least partially overlap the recited Al2O3 / MgO ratios of less than 2. Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited glass fiber composition in general or the Al2O3 / MgO ratios.
(H) Applicant argues that KUSY ET AL ‘178 “does not teach any glass fiber composition”. 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).
(I) Applicant argues that the Examiner “does not explain why using those broad LI's glass compositions in KUSY's process-subject to the present FWF ≤ 88 wt.% ceiling would predictably and concurrently deliver all three claimed composite property thresholds (elastic, flexural, and tensile modulus). Absent an articulated rationale and evidentiary support, the proposed combination does not establish the claimed result as a whole.
However, as discussed in detail above and the above rejections under 35 U.S.C. 103, KUSY ET AL ‘178 discloses glass fiber-reinforced composites capable of exhibiting modulus values in the tens of GPa range and further discloses that mechanical properties such as tensile strength, tensile elastic modulus, flexural modulus generally increase with increasing vol% (e.g., wt%) of reinforcing fiber, while BAKER ET AL ‘759 and YAMASAKI ET AL ‘787 and MOTOI ET AL ‘343 establishes that that it is well known in the art that mechanical properties (e.g., elastic, tensile, flexural, etc.) can be further modify or improved by using additional additives typically used in fiber-reinforced composite materials (e.g., additional stiffening and reinforcing particulate fillers, etc. as suggested in which do not contribute to the recited “fiber weight fraction (FWF)”). Therefore, it is the Examiner’s position that it is well within the skill of one of ordinary skill in the art to select the amount of known high modulus, high strength glass fiber (e.g., as disclosed in LI ET AL '428 nor LI ET AL '194) utilized as the reinforcing glass fiber in the composites of KUSY ET AL ‘178, optionally combined with effective additional known additives which modify or increase elastic modulus, flexural modulus, and/or tensile modulus, in order to produce composite materials with sufficiently high elastic modulus and flexural modulus and tensile modulus (claims 1, 11) for specific applications (e.g., but not limited to, aerospace; aviation; military; security or anti-ballistic; automotive; wind energy and/or alternative energy; pressure vessels; transportation; infrastructure; etc.) requiring high strength and/or high stiffness and/or resistance to bending or deformation (as represented by: an elastic modulus of 60 GPa or more; a flexural modulus of 50 GPa or more; a tensile modulus of 50 GPa or more). Applicant has not provided persuasive arguments or evidence to the contrary.
(J) Applicant argues that “None of the cited references discloses a composite that simultaneously meets the claimed elastic, flexural, and tensile modulus thresholds, and the Office has not shown that these properties are inherent. Inherency requires that the prior art necessarily and inevitably possesses the claimed feature. In this case, the broad glass composition disclosures in LI ET AL '428 and LI ET AL '194 could not invariably yield the claimed property. However, the rejections under 35 U.S.C. 103 are not based on inherency, but rather that it would have been obvious for one of ordinary skill in the art to use to adjust or modify the mechanical properties of the composites of KUSY ET AL ‘178 using known methods and techniques (e.g., using known high strength, high modulus glass fibers (as disclosed in LI ET AL '428 and LI ET AL '194) which provide superior performance compared to conventional glass fibers; selecting the glass fiber content (as suggested by KUSY ET AL ‘178); optionally incorporating effective amounts of known mechanical property-modifying additives typically used in fiber-reinforced composite materials (e.g., additional stiffening and reinforcing particulate fillers, etc. as suggested in BAKER ET AL ‘759 and YAMASAKI ET AL ‘787 and MOTOI ET AL ‘343, which do not contribute to the recited “fiber weight fraction (FWF)”)); in order to produce composite materials with sufficiently high elastic modulus and flexural modulus and tensile modulus for specific applications (e.g., but not limited to, aerospace; aviation; military; security or anti-ballistic; automotive; wind energy and/or alternative energy; pressure vessels; transportation; infrastructure; etc.) requiring high strength and/or high stiffness and/or resistance to bending or deformation (as represented by: an elastic modulus of 60 GPa or more; a flexural modulus of 50 GPa or more; a tensile modulus of 50 GPa or more). Applicant has not provided persuasive arguments or evidence to the contrary. Furthermore, Applicant has not provided evidence of criticality and/or unexpected results commensurate in scope with the present claims.
Again, if Applicant chooses to argue that the recited combination of physical properties for the composite part recited in claims 1, 11 (i.e., elastic modulus, flexural modulus, tensile modulus) at the recited FWF loading cannot be obtained by one of ordinary skill in the art using known improvement and/or modification techniques or methods (e.g., as discussed above in the rejections under 35 U.S.C. 103) using routine experimentation and routine optimization, this will raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement. Furthermore, Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a), in particular an insufficient scope of enablement.
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.
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May 13, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
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