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 .
Response to Amendment
This office action is responsive to the amendment filed on 20 March 2026. As directed by the amendment: claims 9-11, 13, 16 & 18 have been amended, claims 1-8, 17 & 19 have been cancelled, and claim 21 has been added. Thus, claims 9-16, 18, 20 & 21 are presently pending in this application. Claim 18 remains withdrawn as directed to a nonelected invention.
Drawings
The drawings are objected to because, in the replacement of FIG. 3B, the leader line from “20” overlaps with and is at substantially the same angle as one of the hatching lines, whereby it is difficult to determine which element the leader line is indicating.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 10 & 11 are objected to because of the following informalities:
Claim 10: “wherein said continuous reinforcement fibers consists only of” appears it should read “wherein said continuous reinforcement fibers consist only of” (i.e., consists vs consist);
Claim 11: “by said a plurality of cords” should read “by said plurality of cords”.
Further regarding claim 11, it is noted that “wherein said thermoplastic overcoating is applied by said… plurality of cords passing through an aqueous polymeric dispersion” may be confusing as it implies that the plurality of cords apply the coating. Consider instead “wherein said thermoplastic overcoating is applied by passing said plurality of cords through an aqueous polymeric dispersion” or similar.
Appropriate correction is required.
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.
Claim 21 is 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.
Claim 21 recites “[t]he extruded tape of claim 9 having a tenacity of between 1.66 and 2.00 Newtons/tex (N/Tex), however, the specification as originally filed does not appear to provide sufficient support for this limitation.
Applicant’s remarks filed 20 March 2026 point to paragraphs “[0026]” and “[0030]” as providing support for the claim amendments.
Examination Note; as understood, these paragraph numbers are likely referring to the paragraphs numbers as found in the published application US 2023/0194038 A1, which appear to correspond to paragraphs 25 & 29, respectively, of the specification as filed. Otherwise, paragraph 26 (as filed) describes the non-elected invention of FIG. 1, while paragraph 30 (as filed) introduces a composition table, neither of which make sense in this context.
Paragraph 26 (i.e., para. 25 as-filed) makes no mention of a tenacity value.
Paragraph 30 (i.e., para. 29 as-filed) provides one tenacity value, and several other tensile strength values in the same units of N/Tex. In particular, this paragraph establishes:
“…in some inventive implementations of flat carbon fiber tow with a thermoplastic-based coating formulation, a tenacity of between 1.66 and 2.00 Newtons/tex (N/Tex) is noted, while the tensile strength of a conventional virgin carbon fiber tow is between 1.3 and 1.5 Newtons/tex (N/Tex)…”;
“In implementations of the inventive thermoplastic-based coating applied to two ends assembled and twisted yarns, the twisted yarns exhibited a tensile strength between 1.45 and 1.65 Newtons/tex…”.
The first instance (I) recites the same tenacity range as the claim (between 1.66 and 2.00), but the specification describes this value in connection to a “flat carbon fiber tow with a thermoplastic-based coating formulation”, not an extruded unidirectional tape as in claim 9, comprising a plurality of cords of twisted fiber yarns, a thermoplastic overcoating, and a HDPE that encases the thermoplastic overcoating.
While the second instance (II) does recite a “tensile strength” value for a thermoplastic-coated twisted yarn, the cited range does not correspond to the claimed range and, moreover, this is a strength value for the coated twisted yarns themselves, not for an extruded uni-directional tape comprising a plurality of cords of such twisted fiber yarns, coated in a thermoplastic coating, which is then encased in HDPE, as in claim 9.
As a result, claim 21 includes 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, at the time the application was filed, had possession of the claimed invention.
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.
Claims 16 & 21 are 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 16 recites “wherein said thermoplastic overcoating further comprises a fiber sizing composition component therein”, however, the term “fiber sizing composition component” is ambiguous or vague, causing the scope of the claim to take on an unreasonable degree of uncertainty.
As a preliminary matter, the term “fiber sizing” or “fiber sizing composition” is a term of art used to describe a coating composition applied to fibers and filaments after forming, usually intended to provide protection to the fiber / filament and/or to provide compatibility between the fiber and a matrix material (e.g., see US 2007/0286999 A1 to Dijt et al; para. 2 & 3). As such, it appears that virtually any thermoplastic overcoating applied to the cords in claim 9 might reasonably be considered a “fiber sizing composition”. It is not clear if applicant intended “fiber sizing composition” to have some narrower meaning (e.g., having some additional characteristics or properties, etc.).
With respect to the term “fiber sizing composition component”, it is unclear if the term was intended to mean that a “component” of the thermoplastic overcoating is a fiber sizing composition, or if this was intended to mean that the thermoplastic overcoating comprises a “component” of such a fiber sizing composition (i.e., the overcoating comprises a constituent component which could be used to form a fiber sizing composition, but the overcoating is not necessarily required to comprise a complete fiber sizing composition).
Since virtually any thermoplastic overcoating applied to the cords in claim 9 might reasonably be considered a “fiber sizing composition”, any component of such a thermoplastic overcoating composition (e.g., the base thermoplastic, or any additives, fillers, or processing aids which may be present) might be seen to read on “a fiber sizing composition component”.
Similarly, any component of the thermoplastic overcoating composition which can also be separately usable in a fiber sizing composition might also be seen to be a “fiber sizing composition component”.
Claim 21 recites “[t]he extruded tape of claim 9 having a tenacity of between 1.66 and 2.00 Newtons/tex (N/Tex)”. However, as explained in the grounds of rejection under 35 U.S.C. 112(a) above, the specification as originally filed does not appear to provide support for such a limitation. Rather, the specification recites the claimed tenacity range with respect to an unrelated coated flat carbon fiber tow and, while the specification recites a tensile strength range for coated twisted yarns, the range recited is different and is only disclosed for the coated yarns themselves, not for the extruded tape as a whole.
As set forth in MPEP § 2173.03, a claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty.
In the instant case, as the claimed range appears only in the specification in conjunction with a different arrangement of reinforcement fibers, a different tensile strength range recited in conjunction with the twisted yarns of the claimed invention, it is unclear if claim 21 was intending to recite a tenacity / tensile strength value of the reinforcement fibers used in the tape (rather than the tenacity of the tape as a whole) and, even so, it remains unclear whether the claimed invention is required to have the coated twisted yarns (as in claim 9, but with a different tensile strength range than that recited in claim 21) or the coated flat tows (not recited in claim 9, and not necessarily forming part of an extruded tape; but having the tenacity range recited in claim 21), causing the claim to take on an unreasonable degree of uncertainty.
It is also noted that “tenacity” is a measurement which is used with fibers / yarns, and “tex” is a measurement of linear fiber density (i.e., grams per 1000m of fiber). It is not clear how the “tex” value and resulting “tenacity” value would be determined for a complete extruded tape, which would more likely be rated by its tensile strength.
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.
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.
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.
Claims 9-13 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Duncan et al. (US 2013/0133775 A1; hereafter Duncan) in view of Chung et al. (US 4,588,538; hereafter Chung) and Kazama et al. (US 2017/0159212 A1; hereafter Kazama).
Regarding claim 9, Duncan discloses (figs. 1-3) a uni-directional tape (see fig. 2 & para. 39; pipe in fig. 1 having plies 16, 18, 22 & 24 formed from such tapes) comprising:
a plurality of continuous reinforcement fibers (101), said continuous reinforcement fibers having continuous filaments aligned lengthwise along a length (see paras. 38 & 39: “the reinforcing tape has a length much greater than its width and the reinforcing fibers extend along the length of the tape to react [to] loads along the length of the tape…”), said continuous reinforcement fibers comprise carbon fibers alone or in combination with at least one of glass fiber, basalt fiber, aramid fiber, or a combination thereof (para. 39: “suitable fibers include, for example, glass, carbon, nylon, polyester or aramid”); and
a high density polyethylene (HDPE) (matrix 102; see para. 41: “the reinforcing tape includes a thermoplastic matrix….the thermoplastic matrix in one embodiment is HDPE”; see also paras. 42 & 43, describing details of the HDPE composition) that encases on all sides said plurality of continuous reinforcement fibers (see fig. 2).
Regarding the limitation wherein the tape is an “extruded” tape, as set forth in MPEP § 2113, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
In the instant case, while Duncan is silent as to the particular method used to make the composite tape, the structure shown in at least fig. 2 of Duncan appears to be consistent with a structure which would be produced by an extrusion process (i.e., a tape formed from an HDPE matrix having therein an arrangement of unidirectional fibers arranged along the length of the tape). In other words, to the extent that the process of “extrusion” would be expected to impart distinctive structural features to the resulting product (e.g., as compared to a tape formed by simply laminating two films over the reinforcement fibers, etc.), the tape of Duncan reasonably appears to possess a structure consistent with an extruded (rather than laminated) tape. However, to promote compact prosecution, the following additional teaching is provided.
Chung teaches (figs. 1-5) a method for manufacturing composite uni-directional tapes by extrusion, comprising feeding bundles or tows (1) of reinforcement fibers (i.e., carbon fibers) into a crosshead extrusion die (6) which extrudes a thermoplastic polymer over the reinforcement fibers to form the resulting tape (8)(col. 2, line 60 – col. 3, line 4). Chung further teaches that the thermoplastic polymer may be polyethylene (col. 3, line 9).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the fiber-reinforced HDPE tape of Duncan as an extruded uni-directional tape, in view of the teachings of Chung, to enable the manufacture of the tape in a substantially continuous (rather than batch-wise) process, thus enabling the economical manufacture of substantial lengths of such tape without requiring molds or presses of corresponding length.
Duncan does not explicitly disclose the additional limitations wherein the plurality of continuous reinforcement fibers are provided as a plurality of cords of twisted fiber yarns each composed of said continuous reinforcement fibers, said continuous reinforcement fibers having continuous filaments aligned lengthwise along a length of each of the cords; or a thermoplastic overcoating applied to each of said plurality of cords, wherein the high density polyethylene (HDPE) encases on all sides said thermoplastic overcoating.
Kazama is generally directed to systems and method for producing fiber-reinforced composite materials, including “articles obtained by aligning single yarns or yarn bundles unidirectionally” (paras. 42 & 43), wherein the fibers may be, for example, carbon fibers, aramid fibers or glass fibers (among others), used alone or in combination (see, e.g., para. 45).
Kazama teaches that fibers in a fiber-reinforced composite material may be provided in various forms, including as yarn bundles which can contain “thousands or tens of thousands of single yarns” (para. 41; see also para. 45) and include “yarn bundles obtained by bundling a plurality of single yarns and yarn bundles obtained by a plurality of the yarn bundles” (para. 44).
Examination Note: while not explicitly stated by Kazama, the term “yarn” is conventionally used in the art to designate twisted bundles of filaments, and would have been understood as such by a person having ordinary skill in the art. The term “yarn” is used to designate such twisted filament bundles in contrast to “strands” (untwisted filament bundles). Similarly, twisted bundles of yarns may be considered “secondary yarns” or “cords”, terms used in contrast to “rovings” (untwisted bundles of strands or yarns). However, these terms are not entirely mutually exclusive: one could have a roving of yarns (i.e., an untwisted / parallel bundle of yarns; the yarns containing twisted filaments but the yarns not twisted relative to the other yarns in the bundle). See, e.g., US 2014/0124078 A1 to Glejbol et al. [paras. 75-79].
Kazama further teaches that thermoplastic resins often have poor affinity to reinforcement fibers so when thermoplastic resins are used as a matrix resin of a fiber-reinforced composite material, it is known to treat the fiber surfaces with a binder or “sizing agent” to improve affinity with the thermoplastic resin (para. 5). While other formulations are known, Kazama proposes the use of a thermoplastic polyurethane as the sizing agent / fiber coating, which may be applied to the fibers as an aqueous polymeric dispersion prior to encasing the fibers in the thermoplastic matrix (e.g., paras. 22-24). Kazama suggests that this technique can prevent void formations and improves the mechanical properties (e.g., strength and modulus of elasticity) of the resulting composite (paras. 17 & 95).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tape of Duncan to include a plurality of cords of twisted fiber yarns (i.e., a unidirectional arrangement of parallel yarn bundles / cords) each composed of continuous reinforcement fibers (i.e., the yarns forming the yarn bundles / cords), said continuous reinforcement fibers having continuous filaments aligned lengthwise along a length each of the cords (i.e., the continuous filaments forming the yarns), in view of the teachings of Kazama, as the use of a known technique (i.e., providing continuous reinforcement fibers of a fiber-reinforced composite as unidirectional parallel yarn bundles, as in Kazama) to improve a similar device (i.e., the fiber-reinforced composite tape of Duncan) in the same way (e.g., enabling a large number of reinforcement filaments to be provided to the composite, with simpler handling than would be required to handle a corresponding number a filaments individually, etc.).
Examination Note: to promote compact prosecution, it is noted that providing reinforcement filaments in a fiber-reinforced composite as a plurality of cords of twisted fiber yarns, each composed of continuous reinforcement fibers having continuous filaments aligned lengthwise along a length each of the cords, in general, is well-known in the art. See, e.g., US 2014/0124078 A1 to Glejbol et al. (paras. 76, 78, 80) and US 2011/0174410 A1 to Li et al. (abstract; para. 46). See also CN 1844722 A to Yuan et al.
It would have been further obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tape of Duncan to include a thermoplastic overcoating applied to each of said plurality of cords, in view of the teachings of Kazama, as the use of a known technique (i.e., coating cords/bundles of reinforcement fibers with a thermoplastic polyurethane overcoating / binder / sizing agent via aqueous polymeric dispersion, as in Kazama) to improve a similar device (i.e., the reinforcement fibers of the composite tape of Duncan) in the same way (i.e. to improve the bonding affinity between the reinforcement fibers and the thermoplastic matrix material, preventing void formation and improving mechanical properties of the composite tape).
Examination note: to promote compact prosecution, it is noted that the use of thermoplastic fiber coatings / sizing agents to improve fiber properties such as matrix bonding compatibility, in general, is otherwise well-known in the art. See, e.g., US 5,236,982 to Cossement et al., US 5,376,701 to Chow et al., US 5,455,113 to Girgis et al., US 2014/0175696 to Foor et al., US 2015/0174885 A1 to Khan, US 2018/0094105 A1 to Defoort et al., US 2018/0186951 A1 to Kalyanaraman et al., US 2019/0390022 A1 to Yomo et al., and US 2020/0240075 A1 to Datta et al.
When modified as above such that the reinforcement fibers are provided as a plurality of cords, and such that a thermoplastic overcoating is applied to each of said plurality of cords (i.e., a binder/sizing agent applied via aqueous polymeric dispersion), the structure of the resulting composite tape would read on the additional limitation wherein the high density polyethylene (HDPE) encases the said thermoplastic overcoating on all sides.
As a result, all of the limitations of claim 9 are met or are otherwise rendered obvious.
Regarding claim 10, the tape of Duncan, as modified above, reads on or otherwise renders obvious the additional limitation wherein said continuous reinforcement fibers consist only of the carbon fiber.
As noted for claim 9 above, Duncan explains that ““Suitable fibers include, for example, glass, carbon…or aramid” (para. 39).
Kazama similarly explains that “The fiber as the reinforcing material for the thermoplastic resin is not particularly limited, but carbon fibers, aramid fibers, glass fibers…can be used. The fiber can be used alone, or in combination with two or more.” (para. 45). Several examples in Kazama also recite only the use of carbon fibers (e.g., para. 55).
The continuous reinforcement fibers in Chung are also described as “carbon fibers” (see abstract), reasonably understood to mean that the fibers consist only of carbon fibers.
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the tape of Duncan (as otherwise modified above) such that the continuous reinforcement fibers consist only of the carbon fiber (e.g., considering that Duncan discloses carbon fibers to be among the suitable fiber materials, Kazama teaches that such carbon fibers may be used alone, and Chung similarly demonstrates the use of carbon fibers alone, etc.), especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 11, the tape of Duncan, as modified in view of Kazama above, reads on or otherwise renders obvious the additional limitation wherein said thermoplastic overcoating is applied by said a plurality of cords passing through an aqueous polymeric dispersion.
As noted in the grounds of rejection for claim 9 above, Kazama teaches that the thermoplastic polyurethane overcoating / sizing agent can be applied to the reinforcement fibers as an aqueous polymeric dispersion. See Kazama, para 48: “the form of the thermoplastic resin filler is preferable an aqueous resin dispersion obtained by dispersing thermoplastic resin particles in an aqueous medium…”.
With respect to the limitation wherein the thermoplastic overcoating is “applied by said… plurality of cords passing through” said aqueous polymeric dispersion, Kazama explains that the application method is not particularly limited but “methods such as spraying, dipping, and immersion by using rollers, which are capable of homogeneously adding the required amount using the aqueous resin dispersion obtained by dispersing thermoplastic polyurethane filler particles in the aqueous medium, can be used” (para. 56). See also paras. 24, 57, 95.
It is noted that the technique of “immersion by using rollers” appears to substantially correspond to applicant’s disclosed method of passing the fibers through the aqueous dispersion (see, e.g., applicant’s as-filed paragraphs 10 & 38). In any case, at least the methods of “dipping” and “immersion by rollers” would reasonably read on the limitation wherein the thermoplastic overcoating is applied by a plurality of cords passing through an aqueous polymeric dispersion as claimed.
Kazama explains (para. 57) that the immersion process, in particular, prevents void formation between the fibers of the yarns.
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tape of Duncan (as otherwise modified above) such that the thermoplastic overcoating is applied by said plurality of cords passing through an aqueous polymeric dispersion, in view of the teachings of Kazama, to enable the fibers to be coated in a continuous process (i.e., by passing the fibers through the aqueous polymeric dispersion rather than applying the coating statically in a batch-wise process) and, when using an immersion-via-rollers technique (as suggested by Kazama), preventing the formation of voids between the fibers.
Regarding claim 12, the tape of Duncan, as modified above, reads on the additional limitation wherein the extruded tape further comprises at least one of a wetting agent, and an adhesion promoter.
In particular, Duncan discloses that the HDPE matrix of the tape may comprise an adhesion promoter. More specifically, Duncan discloses that, in order to enhance the bonding of the matrix to the reinforcement fibers (i.e., to promote adhesion), the matrix (HDPE) may further include a “coupling agent” (i.e., an adhesion promoter) such as a maleic anhydride grafted polyethylene (para. 42).
Examination Note: to promote compact prosecution, it is noted that providing thermoplastic coating resins with wetting agents (i.e., to lower surface tension / enable spreading) and adhesion promoters is otherwise well-known in the art. See, e.g., US 5,236,982 to Cossement et al., which teaches the addition of acrylic acid and silane adhesion promoters, and teaches the addition of various “surfactants to help PU dispersion” including “ethoxylated fatty acids or di-acids, an ethoxylated nonylphenol, and an ethoxylated octylphenol”, which are known in the art for use as wetting agents.
Regarding claim 13, the tape of Duncan, as modified above, reads on the additional limitation wherein said thermoplastic overcoating is derived from an aqueous dispersion.
In particular, Kazama teaches that the thermoplastic polyurethane overcoating / sizing agent can be obtained by applying an aqueous polymeric dispersion to the reinforcement fibers and then drying to remove the aqueous medium, thus forming a thermoplastic coating.
See Kazama, para. 56: “After adding the filling polyurethane to fibers of the fiber substrate, [a] drying process is performed for removing the aqueous medium and other ingredients other than the thermoplastic resin filler in the aqueous resin dispersion…. By this process, the thermoplastic polyurethane is applied to the surface of the fiber substrate”.
See also Kazama, paras. 24, 46, 48, 57 & 95.
Regarding claim 20, Duncan further discloses an oil and gas exploration pipe (fig. 1; see para. 2: “flexible pipes…for conveying fluids such as water, sour gas, carbon dioxide and hydrocarbons…”; para. 21: “the thermoplastic has excelled chemical resistance, which makes the pipe suitable for conveyance of water, CO2, and gaseous and liquid hydrocarbons”; para. 32: “For petroleum operations, HDPE is particularly useful as it provides good chemical compatibility with many oilfield chemicals at a reasonable cost”) comprising:
a steel tube or a composite tube (i.e., a composite tube 10; see below); and
a tape (as in fig. 2) spiral wound therearound (see tape plies 16, 18, 22 & 24 spiral wound about composite tube 10 in fig. 1; see para. 24: “a first ply 16 of reinforcing tape helically wrapped about the inner liner and a second ply 18 of reinforcing tape helically wrapped about the first ply of reinforcing tape…”).
Regarding the limitation of “a steel tube or a composite tube”, it is noted that one common and accepted definition of “composite” is “made up of multiple components; compound or complex”. Duncan discloses that the pipe comprises an inner liner tube (10), which may be a tube formed by a chopped glass or carbon fiber filled thermoplastic polymer (paras. 32-33) and/or may be a tube formed by a plurality of tubular layers (para. 34). Whether made from a fiber-filled polymer material or formed from a plurality of layers, such a tube (10) is reasonably interpreted as a “composite tube”.
Regarding the remaining limitation wherein the tape spiral wound upon the tube is “an extruded tape of claim 9”, when the tape of Duncan is modified in view of Chung and Kazama as set forth in the grounds of rejection of claim 9 above, the resulting composite pipe of Duncan, which incorporates such a modified tape, would read on or otherwise render obvious an oil and gas exploration pipe comprising: a steel tube or a composite tube; and an extruded tape of claim 9 spiral wound therearound.
Claims 14-16 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Duncan in view of Chung & Kazama as applied to claim 9 above, and further in view of Cossement et al. (US 5,236,982; hereafter Cossement).
Regarding claim 14, with respect to the limitation wherein said thermoplastic overcoating further comprises at least one of antioxidants, ultraviolet (UV) stabilizers, plasticizers, or fillers, Kazama refers to the thermoplastic polyurethane material in the aqueous polymeric solution used to form the thermoplastic overcoating as a “thermoplastic polyurethane filler”, however, it is not clear that this would be considered a “filler” in the final thermoplastic overcoating (i.e., once the aqueous medium is removed by drying, the thermoplastic polyurethane then constituting a main component of the thermoplastic overcoating rather than a filler). Kazama does not otherwise explicitly teach the addition of at least one of antioxidants, ultraviolet (UV) stabilizers, plasticizers, or fillers.
Cossement generally teaches an aqueous polymeric solution for forming a polyurethane- based overcoating / sizing agent for reinforcing fibers intended for use in a thermoplastic matrix. In at least one aspect, Cossement suggests that suitable polyurethanes may include thermoplastic polyurethanes (col. 1, line 60 – col. 2, line 5).
With respect to the limitation wherein said thermoplastic overcoating further comprises at least one of antioxidants, ultraviolet (UV) stabilizers, plasticizers, or fillers, Cossement teaches that “classical additives of the sizing art may be added to the formulation when necessary” (col. 5, lines 50-62) including an antioxidant (“antioxydant"), as well as “processing aids” and “stabilizers”.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the thermoplastic overcoating of Kazama (i.e., as used in combination with the tape of Duncan) to further include any “classical additives” as may be needed, including at least an antioxidant, in view of the teachings of Cossement, as the use of a known technique (i.e., providing known / conventional additives to sizing compositions, including at least antioxidants, as in Cossement) to improve a similar composition (i.e., the thermoplastic polyurethane coating / sizing composition of Kazama) in the same way (i.e., to improve the processibility of the composition and/or to modify properties of the final product in the conventional manner as would be expected by use of such “classical additives”, as a matter of routine engineering design; e.g., the addition of an antioxidant is intended to prevent or slow down oxidation of the polymer composition, etc.).
Examination note: to promote compact prosecution, it is noted that adding conventional polymer additives, including antioxidants, ultraviolet (UV) stabilizers, plasticizers, and fillers, to an aqueous polymeric dispersion is otherwise known in the art. See, e.g., US 7,947,776 to Moncla et al. (e.g., col. 27, lines 1-21: additives may include “anti-rust agent”, “UV absorber”, and “fillers such as calcium carbonate, magnesium carbonate,… kaolin, mica,… and calcium silicate”); and US 2020/0240075 A1 to Datta et al. (para. 202: “the aqueous dispersion…further comprising an additive comprising a particulate filler, antioxidant,… ultraviolet light stabilizer,… plasticizer, …or a mixture thereof”).
Regarding claim 15, with respect to the limitation wherein said thermoplastic overcoating further comprises a cross-linker, as set forth in the grounds of rejection for at least claim 9 above, Kazama teaches that the thermoplastic overcoating may comprise a thermoplastic polyurethane. As would be understood by a person having ordinary skill in the art, such thermoplastic polyurethanes are generally formed by cross-linking of polyols (i.e., conventionally by crosslinking polyols with diisocyanates). While Kazama mentions the polyols (para. 51), Kazama does not explicitly reference any cross-linker (likely due to the well-known and conventional nature of their use in polyurethane manufacture). However, a person having ordinary skill in the art would have understood or otherwise reasonably inferred that the thermoplastic polyurethane overcoating of Kazama would likely comprise a cross-linker (i.e., as would be required to form the thermoplastic polyurethane from the constituent polyols).
To promote compact prosecution, the following additional teaching is provided:
Cossement generally teaches an aqueous polymeric solution for forming a polyurethane- based overcoating / sizing agent for reinforcing fibers intended for use in a thermoplastic matrix. In at least one aspect, Cossement suggests that suitable polyurethanes may include thermoplastic polyurethanes (col. 1, line 60 – col. 2, line 5).
Cossement explains that “the polyurethane dispersion may contain a crosslinking group” (col. 1, lines 58-59), and suggests a number of suitable polyurethane crosslinking agent dispersions comprising, e.g., “blocked isocyanate groups” (col. 2, lines 21-46).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the thermoplastic polyurethane overcoating of Kazama (i.e., as used in combination with the tape of Duncan) to further include a cross-linker (e.g., an isocyanate compound), in view of the teachings of Cossement, in order to cross-link the disclosed polyols so as to form the intended thermoplastic polyurethane polymer (i.e., in a manner as is otherwise well-known in the art of polyurethanes).
Regarding claim 16, with respect to the limitation wherein said thermoplastic overcoating further comprises “a fiber sizing composition component” therein, as set forth in the grounds of rejection under 35 U.S.C. 112(b) in this action, it is not clear if this limitation is intended to mean that the thermoplastic overcoating comprises a component that is itself a fiber sizing composition or that the overcoating merely comprises at least one component which may also be suitable as a component of a fiber sizing composition.
In the event that the claim is seen as merely requiring the thermoplastic overcoating to further comprise a fiber sizing composition as a component thereof, the tape of Duncan, as modified in view of Chung and Kazama in the grounds of rejection for claim 9, is reasonably seen as reading on such an additional limitation.
In particular, the thermoplastic coating composition taught by Kazama is reasonably seen to be a fiber sizing composition (i.e., a composition for coating fibers). In fact, when discussing known prior art compositions upon which Kazama seeks to improve, Kazama explicitly refers to such compositions as “a fiber binder or a sizing agent” (para. 5; see also paras. 9 & 15).
In the event that the claim is instead seen as requiring the thermoplastic overcoating to comprise some other constituent component of a fiber sizing composition then, in at least one interpretation, the thermoplastic coating composition taught by Kazama (i.e., as used in the modified tape of Duncan) may still be seen as reading on such a limitation, as the thermoplastic polyurethane material may be seen as a component of such a fiber sizing composition.
However, to further promote compact prosecution, the following additional teaching is provided.
Cossement generally teaches an aqueous polymeric solution for forming a polyurethane- based overcoating / sizing agent for reinforcing fibers intended for use in a thermoplastic matrix. In at least one aspect, Cossement suggests that suitable polyurethanes may include thermoplastic polyurethanes (col. 1, line 60 – col. 2, line 5).
Cossement further teaches that the overcoating may comprise an acrylic acid monomer (i.e., a bonding agent; col. 1, line 28; col. 2, line 50 – col. 3, line 14), a silane coupling agent (col. 1, line 29; col. 3, line 62 – col. 4, line 2), and may further comprise “classical additives of the sizing art”, including antioxidants, processing aids, surfactants, stabilizers, and lubricants (col. 5, lines 50-62).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the thermoplastic overcoating of Kazama (i.e., as used in combination with the tape of Duncan) to further include other fiber sizing composition components therein, including coupling agents such as acrylic acid and/or silane compounds, and any “classical additives” as may be needed, in view of the teachings of Cossement, as a combination of known prior art elements (i.e., the base thermoplastic polyurethane coating composition of Kazama; with the coupling agents and/or classical additives of Cossement) according to known methods (i.e., as taught by Cossement, the coupling agents and classical additives may be combined with a base polyurethane sizing composition, which may be a thermoplastic polyurethane composition) to obtain predictable results (e.g. the use of the acrylic acid and/or silane compounds providing increased bonding / coupling properties; the use of other classical additives providing their respective conventional effects as a matter of routine engineering design: e.g., the addition of an antioxidant is intended to prevent or slow down oxidation of the polymer composition, etc.).
Response to Arguments
Applicant's arguments filed 20 March 2026 have been fully considered but they are not persuasive.
As a preliminary matter, in response to applicant's arguments against the references individually (e.g., that Duncan discloses a plurality of fibers in a matrix, but does not disclose a three-component arrangement), 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 “per new claim 21, the resulting tape has a tenacity of between 1.66 and 2.00 Newtons/tex… that exceeds that of virgin carbon fiber per paragraph [0030]”, and argues that the prior art “fails to predict the enhanced tenacity that results from the inventive changes”. This argument is not found to be persuasive for several reasons.
First, as detailed in the grounds of rejection under 35 U.S.C. 112(a) and (b) in this action, the specification as-filed does not provide support for a “tenacity” in the claimed range for the extruded tape as a whole, as is now being claimed. Rather, the specification sets forth one example of an increased tenacity in the cited range for a flat carbon fiber tow, which is not the coated twisted fiber yarns used in the claimed extruded tape. While the specification does set forth a “tensile strength” range of between 1.45 and 1.65 Newtons/tex “that also exceeds that of conventional materials”, this is a different range than that claimed, and is a tensile strength value for the coated twisted yarns, not the entire extruded tape as claimed.
With respect to applicant’s argument that the prior art “fails to predict the enhanced tenacity that results from the inventive changes”, this argument is not supported by the evidence of record. Indeed, Kazama explicitly teaches that providing a thermoplastic overcoating to the reinforcement fibers improves the bonding affinity between the matrix and the fibers, and can prevent void formations between the fibers, thereby improving “the mechanical properties such as the strength and stiffness of the fiber-reinforced composite material” (e.g., para. 26; see also paras. 5, 17, 43 & 95, etc.).
As such, an increase in tenacity (tensile strength) would be an expected result of applying a thermoplastic overcoating to a plurality of cords of twisted fiber yarns.
See MPEP § 716.02(C)(II): "Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
Applicant argues that “Duncan lacks a teaching as to an outermost HDPE encasement [of] the other components. To the extent that claim 9 is interpreted as equating the matrix (102) as BOTH the thermoplastic overcoating and the HDPE, such an interpretation lacks the distinctive structural interface therebetween”. This argument is not found to be persuasive and appears to be a misinterpretation of the grounds of rejection actually applied to the claim.
As clarified in the amended grounds of rejection for claim 9 (reflecting applicant’s amendments to claim 9), the HDPE matrix (102) of Duncan is interpreted as corresponding to the HDPE that encases the cords / fibers. While Duncan lacks a thermoplastic overcoating applied to the cords / fibers, such a thermoplastic overcoating, for improving a bonding affinity between reinforcement fibers and a surrounding matrix, is otherwise taught by Kazama.
As best understood, the thermoplastic overcoating serves to fill the voids between the fibers and serve as a sort of “primer” layer to improve bonding between the fibers and the surrounding matrix.
Applicant’s remarks that “the HDPE functions to tack the extruded tape around a cylinder to form a tube without implicating the thermoplastic overcoating…” is confusing, and might suggest a misunderstanding of applicant’s own invention as disclosed. This description appears to suggest that the HDPE is merely an overcoating on the outside of the extruded tape, rather than the primary matrix material constituting the extruded tape as disclosed. As can be seen from applicant’s own figs. 3A & 3B, the extruded tape (30) is constituted by the HDPE matrix having embedded therein a plurality of cords (20). The “thermoplastic overcoating” is a coating on the plurality of cords (20) and is not necessarily visible in figs. 3A & 3B.
When the tape of Duncan (having fibers in an HDPE matrix) is modified to include a thermoplastic overcoating as taught by Kazama, the resulting tape would comprise a plurality of reinforcing fibers, a thermoplastic overcoating applied to the fibers, and an HDPE matrix that encases on all sides said thermoplastic overcoating, as claimed.
Applicant argues that “the outer jacket (20) of Duncan is not integral with the tape plies (16, 18) as shown in fig. 2 and, instead, Duncan teaches the forming of a sheath with the outer jacket 20….and thus lacks the overlap [seams] of the wrap as shown, for example in FIG. 3E. It is respectfully submitted that Duncan teaches away from not having a seamless outer jacket 20 on only the outer side of the tape, as is formed by the claimed invention…”. This argument is not found to be persuasive, and appears to misinterpret the prior art and the grounds of rejection.
With respect to the extruded unidirectional tape of claim 9, it is not clear what relevance the outer jacket (20) of the pipe has, as it was not relied upon for any aspect of the claimed tape. While the outer jacket (20) may form part of the oil and gas exploration pipe of claim 20, applicant’s claim neither requires nor excludes an outer sheath. The tape of Duncan (as shown in fig. 2) is the material used to form the plies / layers (16, 18, 22, 24) of the reinforcement layer (15) of the pipe and comprises fibers embedded in an HDPE matrix. It is not clear what point applicant was intending to make with regard to “overlap seams”, or “a seamless outer jacket”, or with respect to any purported teaching away of such an outer jacket, as no outer jacket is claimed or prohibited by the claims.
With respect to applicant’s own figure 3E, this depicts an extruded tape 30 wrapped around an outer perimeter of a pipe. Such an arrangement substantially corresponds to the helical wrapping of the tape of Duncan around the liner tube (10) to form the reinforcement layer plies (16, 18, 22, 24), and is otherwise conventional in the art. With respect to applicant’s argument that Duncan appears to teach away from “not having a seamless outer jacket”, beyond an unclear relevance to the claimed inventions, this position is also contradicted by the reference itself: while Duncan depicts an extruded / seamless outer layer (20), Duncan also discloses that the outer layer can be formed instead by winding a tape (see para. 53).
Applicant argues that a “PHOSITA is further disincentivized to modify the teaching of Duncan as a result of the teaching found in paragraph [0033] that state[s]:… “In some embodiments, the liner or a ply thereof is filled, for example, with amorphous clays, chopped glass or carbon fibers…”. Applicant continues: “Thus, one must conclude that the strength imparted by chopped fiber meets the requirements of [Duncan]; to what end would a PHOSITA be motivated to resort to ‘continuous reinforcement fibers….’ in view of this teaching?” These arguments are not found to be persuasive for several reasons and appear to be based upon an incorrect or at least incomplete reading of the reference.
First, the cited portion of Duncan [para. 33] suggesting the use of “chopped glass or carbon fibers” is clearly describing possible compositions of the liner layer (10), not the composition of the fiber-reinforced tape used to form the surrounding reinforcement layer (15). Duncan already discloses that the reinforcing tape includes continuous fibers (para. 39: “the reinforcing fibers extend along the length of the tape to react loads along the length of the tape regardless of its orientation). It is noted that the use of continuous reinforcement fibers is also taught by Kazama and Chung, and is otherwise well-known in the art. Indeed, applicant’s own background section admits that continuous fiber-reinforced unidirectional tapes are known (see para. 6)
Applicant has also not presented any evidence of record to support the conclusion that the use of chopped fibers in the liner layer would necessarily meet the requirements of the reinforcement layer, especially to such an extent as to amount to a teaching away from the use of continuous fibers (which, as mentioned, is already disclosed or otherwise suggested by the cited references). Even if Duncan also disclosed the use of chopped fibers in the reinforcement layer, as set forth in MPEP § 2123(II), "[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).
As further noted in MPEP § 2123(II): 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), and "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).
Applicant argues that “Duncan at paragraph [0016] includes specific properties for the thermoplastic used to wet fibers; these properties are devoid of teachings as to viscosity or wettability as to the fibers. In contrast, the critical thermoplastic “sizing” of Kazama… is able to fill the voids between separate single yarns…. The compatibility of this critical objective of Kazama associated with the thermoplastic polyurethane filler with the requirements of the thermoplastic…of Duncan per [0016] is unknown to a PHOSITA and at best represents an invitation to experiment without any expectation of success… It [is noted] that numerous grades of polyurethane are clearly outside of the range required by Duncan”.
This argument is not found to be persuasive for several reasons, and appears to be based upon an inaccurate interpretation of both the grounds of rejection and the prior art.
With respect to Duncan, the HDPE matrix is interpreted as corresponding to the HDPE of the extruded tape of claim 9; Duncan does not explicitly disclose a thermoplastic overcoating layer in this interpretation. With respect to the material properties listed in para. 16 of Duncan, it is noted that these are optional, rather than required properties (“The thermoplastic may have one or more of the follow characteristics…”) and, in any case, Duncan discloses that such suitable thermoplastics may include polyethylene (para. 22) and, in particular, HDPE (para. 41).
With respect to Kazama, applicant appears to be conflating the thermoplastic polyurethane sizing/coating (corresponding to the thermoplastic overcoating of claim 9) which coats the reinforcement fibers to improve bonding affinity to the thermoplastic resin matrix material, with the thermoplastic resin matrix material itself (i.e., the HDPE layer of claim 9).
Kazama explicitly teaches that, when the fiber yarns are coated with the thermoplastic polyurethane overcoating (i.e., a thermoplastic overcoating), the thermoplastic resin matrix material may be a thermoplastic which has a high adhesiveness to the overcoating and preferably one which has a melting temperature equal to or lower than the decomposition temperature of the thermoplastic overcoating (i.e., so the overcoating is not damaged when applying the thermoplastic matrix around the coated fibers)(see paras. 58-59). Among the examples of suitable thermoplastic resin matrix materials, Kazama explicitly lists “polyethylenes” (para. 59).
As a result, a person having ordinary skill in the art would have reasonably expected the thermoplastic polyurethane overcoating of Kazama to be compatible with a polyethylene (HDPE) matrix material as used in Duncan.
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated any new or amended grounds 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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/Richard K. Durden/Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753
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