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 .
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.
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) 1-2 and 4-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer et al. (US 4,764,397).
Regarding claims 1-2, 7-8 and 13-14: Fischer et al. (US ‘397) discloses fiber-reinforced materials produced by a process in which a heat-stable thermoplastic aromatic polyether A containing reactive groups together with a heat-stable thermoplastic polymer B which does not contain reactive groups is applied onto reinforcing fibers [abstract]. Fischer et al. (US ‘397) discloses polyether A has a glass transition temperature (Tg) above 80 oC and is amorphous [7:56-60]. Fischer et al. (US ‘397) discloses thermoplastic polymer B has a glass transition temperature (Tg) above 80 oC [7:60-66], and can be a polyethersulfone [7:68-8:23] or partially crystalline nylons [10:25-37]. Fischer et al. (US ‘397) discloses polyether A4 was prepared from 4,4’-thiodiphenol and dichlorophenyl sulfone to afford a polyether thioether sulfone having a Tg 165 oC [11:65-12:17]). Fischer et al. (US ‘397) discloses Example 3 [Ex. 3; 13:34-56] impregnates glass fibers (1200 tex) with a solution containing equal amounts (50/50) of polyether A4 (note: polyether A4 exchanged for polyether A3 in Ex. 3 as the reactive polyether [7:56-60; 8:30-40]; see MPEP 2131.02) and a polyethersulfone to afford a prepeg [Ex. 3; 13:34-56]. Fischer et al. (US ‘397) discloses crosslinkable thermoplastic aromatic polyether A [2:22-43], wherein crosslinking is carried out by heating the molding at above 200 oC [2:12-13].
Fischer et al. (US ‘397) does not disclose Ex. 3 containing a partially crystalline nylon {polyamide} as the thermoplastic polymer B. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted a partially crystalline nylon for the polyethersulfone in Ex. 3 based on the invention of Fischer et al. (US ‘397), and would have been motivated to do so since Fischer et al. (US ‘397) discloses thermoplastic polymer B has a glass transition temperature (Tg) above 80 oC [7:60-66], and can be a polyethersulfone [7:68-8:23] or partially crystalline nylons [10:25-37]. Additionally, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
The claimed effects and physical properties, i.e. the composition having an initial melt viscosity during the impregnation, as measured in plate-plate rheology under 1 Hz and 2% strain, at a temperature of 300 oC, of less than the viscosity of the same composition devoid of reactive prepolymer, measured under the same conditions, and/or a ductility, after in situ polymerization of said reactive thermoplastic prepolymer in said composition during the impregnation and after the impregnation, that is at least equivalent to-and in particular greater than, the ductility of the same composition devoid of non-reactive thermoplastic polymer, and of which said reactive thermoplastic prepolymer is polymerized to the same number-average molecular mass (Mn), would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 4: Fischer et al. (US ‘397) discloses the reactive polymer can be partially crystalline and the thermoplastic polymer B can be an amorphous polycarbonate [7:54-8:22].
Regarding claim 5: Fischer et al. (US ‘397) discloses a degree of polymerization of not less than 5 [2:44-47].
Fischer et al. (US ‘397) does not specifically disclose a Mn of 10,000 to 40,000. However, 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claim 6: Fischer et al. (US ‘397) discloses a degree of polymerization of not less than 5 [2:44-47].
Fischer et al. (US ‘397) does not specifically disclose a Mn of 500 to less than 10,000. However, 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claim 9: Fischer et al. (US ‘397) discloses Ex. 3 has a fiber content of 65% by volume [Ex. 3; 13:34-56]. Fischer et al. (US ‘397) discloses 30 to 80% by volume of fibers [11:1-11].
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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claims 10 and 12: Fischer et al. (US ‘397) discloses the basic claimed material [as set forth above with respect to claim 7].
The claimed effects and physical properties, i.e. a degree of porosity in the impregnated fibrous material is less than 10% [instant claim 10]; the impregnated fibrous material is non-flexible [instant claim 12], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 11: Fischer et al. (US ‘397) discloses sheet-like prepegs [9:31-37; 13:40-45].
Regarding claims 15-16: Fischer et al. (US ‘397) discloses impregnating fibers with a melt of the thermoplastic polymers [10:19-23].
Regarding claims 17-24: Fischer et al. (US ‘397) discloses plastic powder, consisting of polyether A and polymer B, is applied onto reinforcing fibers. The powder preferably has a mean particle size of from 5 to 15 µm. The rovings, which are very well spread out by blowing with a jet of air or by means of other known apparatuses, are pre-heated and drawn through a fluidized bed containing the plastic powder. In this procedure, the plastic powder is at a temperature just below the glass transition temperature or melting point. The plastic powder adhering to the reinforcing fibers is then melted, the fibers being impregnated [10:38-50]. Fischer et al. (US ‘397) discloses pre-heated fibers [10:41-45], wherein heating can be by infrared treatment [10:8-15]. Fischer et al. (US ‘397) discloses the impregnated prepeg rovings are wound onto mandrels after passing through a preheating zone and can be bonded by heating on the mandrels [9:16-27]
Regarding claim 25: Fischer et al. (US ‘397) discloses the basic claimed process [as set forth above with respect to claim 17].
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer et al. (US 4,764,397) as applied to claim 1 above, and further in view of Capelot et al. (US 2018/0251601).
Regarding claim 5: Fischer et al. (US ‘397) discloses the basic claimed process [as set forth above with respect to claim 1], wherein Fischer et al. (US ‘397) discloses partially crystalline nylons as the non-reactive polymer [10:25-37].
Fischer et al. (US ‘397) does not specifically disclose the Mn of the partially crystalline nylon. However, Capelot et al. (US ‘601) discloses fiber reinforced composites containing semi-crystalline polyamides [abstract] having a Mn of 8000 to 40,000 g/mol [0092-0094]. Fischer et al. (US ‘397) and Capelot et al. (US ‘601) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of fiber reinforced composites. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined semi-crystalline polyamides having a Mn of 8000 to 40,000 g/mol, as taught by Capelot et al. (US ‘601) in the invention of Fischer et al. (US ‘397), and would have been motivated to do so since Capelot et al. (US ‘601) suggests semi-crystalline polyamides having a Mn of 8000 to 40,000 g/mol afford good impregnation of the reinforcing fibers and a more effective response of transmitting mechanical stresses to the fibers [0090-0094].
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: While Fischer et al. (US 4,764,397) discloses fiber-reinforced materials produced by a process in which a heat-stable thermoplastic aromatic polyether A containing reactive groups together with a heat-stable thermoplastic polymer B which does not contain reactive groups is applied onto reinforcing fibers [abstract], Fischer et al. (US ‘397) does not disclose PBT or a semiaromatic polyamide as the heat-stable thermoplastic aromatic polyether A containing reactive groups.
Response to Arguments
Applicant's arguments filed 12/12/25 have been fully considered but they are not persuasive. Fischer et al. (US 4,764,397) was relied on for disclosing fiber-reinforced materials produced by a process in which a heat-stable thermoplastic aromatic polyether A containing reactive groups together with a heat-stable thermoplastic polymer B which does not contain reactive groups is applied onto reinforcing fibers [abstract]. Fischer et al. (US ‘397) discloses polyether A has a glass transition temperature (Tg) above 80 oC and is amorphous [7:56-60]. Fischer et al. (US ‘397) discloses thermoplastic polymer B has a glass transition temperature (Tg) above 80 oC [7:60-66], and can be a polyethersulfone [7:68-8:23] or partially crystalline nylons [10:25-37]. Fischer et al. (US ‘397) discloses polyether A4 was prepared from 4,4’-thiodiphenol and dichlorophenyl sulfone to afford a polyether thioether sulfone having a Tg 165 oC [11:65-12:17]). Fischer et al. (US ‘397) discloses Example 3 [Ex. 3; 13:34-56] impregnates glass fibers (1200 tex) with a solution containing equal amounts (50/50) of polyether A4 (note: polyether A4 exchanged for polyether A3 in Ex. 3 as the reactive polyether [7:56-60; 8:30-40]; see MPEP 2131.02) and a polyethersulfone to afford a prepeg [Ex. 3; 13:34-56].
Fischer et al. (US ‘397) discloses crosslinkable thermoplastic aromatic polyether A [2:22-43]. Fischer et al. (US ‘397) discloses the crosslinking is carried out by heating the molding at above 200 oC [2:12-13]; i.e. the reactive polyether A4 is crosslinkable (not crosslinked) in the composition of Ex. 3 during application to fibers [2:12-43].
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767