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
Applicant’s amendment filed on March 5, 2026 has been entered. Claims 1-4, 7-14, 16-21, 25-27, 29, 30, 32, 33, 35, 37, and 38 have been amended. Claims 5, 6, 15, 22-24, 28, 31, 34, 36, and 39 have been cancelled. As such, Claims 1-4, 7-14, 16-21, 25-27, 29, 30, 32, 33, 35, 37, and 38 are currently pending in the application, with Claims 30, 32, 33, 35, 37, and 38 withdrawn from consideration.
Terminal Disclaimer
The terminal disclaimer filed on March 5, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent Nos. 12,350,915, 12,466,574, 12,350,892, 12,377,949, and 12,521,976, along with co-pending Application Serial Nos. 18/171,493 and 18/502,387, has been reviewed and is accepted. The terminal disclaimer has been recorded. The double patenting rejections set forth in the previous Office Action have been overcome.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 7-10, 18, 25, and 26 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 1 recites “the co-curable composite material substrate second side is in direct contact with the co-curable UV/visible light-resistant layer first side” in lines 16-17. However, it is unclear which layer the “co-curable UV/visible light-resistant layer” is referencing. Is it the lightning strike protection layer or the single ply layer? Both of those layers have the adjective of being co-curable UV/visible light-resistant. So, this Claim 1 limitation needs to be specific as to which layer is being referenced. The scope of Claim 1 and its dependent claims is unclear.
Claim 10 recites “the second co-curable UV/visible light-resistant layer” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. Is this layer supposed to be the second co-curable UV/visible light-resistant single ply layer? The scope of Claim 10 is unclear.
Claim 18 recites “both of said second co-cured UV/visible light-resistant layer and said co-cured UV/visible light-resistant lightning strike protection layer are co-cured” in lines 4-5. There is insufficient antecedent basis for this limitation in the claim. No prior limitation of a second co-cured UV/visible light-resistant layer is present in the claim(s). The scope of Claim 18 is unclear.
Claim 25 recites “the second co-cured UV/visible light-resistant single ply layer” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. No prior limitation of a second co-cured UV/visible light-resistant single ply layer is present in the claim(s). The scope of Claim 25 is unclear.
Claim 26 recites “the second co-cured UV/visible light-resistant single ply layer” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. No prior limitation of a second co-cured UV/visible light-resistant single ply layer is present in the claim(s). The scope of Claim 26 is unclear.
Claim Rejections - 35 USC § 103
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 11-14, 16-21, 25-27, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2021/0016553 to Brei et al. (“Brei”) in view of U.S. Patent Application Publication No. 2021/0031942 to Brei et al. (“Gordon”) (second named inventor).
With regard to Claims 11-14, 27, and 29, Brei discloses a co-curable composite material useful in aircrafts comprising a polyurethane-based layer and an epoxy-based layer, which can be cured with another material to form a co-cured composition. See, e.g., Abstract, paragraph [0053], entire document. Brei discloses the curing temperature of the composite is in the range of 250 degrees F. to 370 degrees F. Paragraph [0085]. The epoxy-based layer of Brei satisfies the limitation of the claimed co-curable/co-cured substrate because Brei discloses that said layer comprises epoxy reinforced with carbon fibers. Paragraph [0008]. The polyurethane-based layer of Brei is equated to the claimed co-curable/co-cured lightning strike protection layer because Brei discloses that the polyurethane-based layer possesses a light transmissivity value of 0% in a wavelength range of 200 nm to 800 nm with a thickness as low as 2 mils. Paragraphs [0016] and [0017]. Brei discloses that the polyurethane-based coating allows 0% transmittance of light in the wavelength range of 200 to 800 nm. As such, the person having ordinary skill in the art would recognize that additional layers that provide light protection are unnecessary and their addition would be superfluous. However, Brei does not specifically disclose that the polyurethane-based layer possesses lightning strike protection properties. Gordon is also related to co-curable composite materials formed from curable films, such as polyurethane and epoxy, useful in aircraft materials. See, e.g., Abstract, entire document. Gordon teaches that such resins can be provided with lightning strike protection features in a lightweight fashion by incorporating an electrically conductive layer within the film materials. Paragraph [0053]. Gordon teaches that the electrical conductivity of such materials can range from 105 S/cm (equal to 107 S/m) to 107 S/cm. Gordon discloses that the thickness values of the lightning strike protection materials can be as low as several millimeters. Paragraphs [0068] and [0069]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the polyurethane-based layer disclosed by Brei with lightning strike protection features in order to provide the composite material formed into aircraft parts with the ability to better withstand lightening during flight, as shown to be known in the art by Gordon. It would also have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the electrical conductivity of the strike protection layer at a range of 2 x 107 S/m to 6.4 x 107 S/m because Gordon generally teaches the electrical conductivity is provided at the 107 S/m, and “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). With regard to Claims 16, 17, 20, and 21, Brei discloses that, if desired, paint and primer layers, both detail and assembly, can be applied to the composite materials of their invention. Paragraphs [0059] to [0066]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to prime and paint the co-cured composite material disclosed by the combination of Brei with Gordon in order to provide the desired decorative effect, as shown to be known by Brei. With regard to Claim 18, Brei teaches that the polyurethane-based layer can include a second layer in addition to a first layer to provide the UV/visible light-resistant layer as a composite layered material. Paragraphs [0079] and [0080]. Moreover, Gordon teaches that a polyurethane resin layer can be provided as first and second curable films, paragraph [0005], with the electrically conductive material sandwiched between the first and second curable films. Paragraph [0046]. With regard to Claim 19, Gordon discloses that the second resin-based layer can be adjacent to a substrate material and between the substrate material and the conductive layer with the first resin-based layer on the opposite side of the conductive layer. Figure 2. With regard to Claims 25 and 26, Brei discloses that the polyurethane-based layer can be reinforced with glass fiber, carbon fiber, boron fiber, or aramid fiber. Paragraph [0077].
Response to Arguments
Applicant's arguments filed March 5, 2026 have been fully considered but they are not persuasive.
Applicant argues that the amendment to Claim 11, to recite that the co-cured composite has UV/visible light-resistant strike protection capability, is sufficient to overcome the combination of Brie with Gordon. The Examiner disagrees. “[S]tatements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference … between the claimed invention and the prior art.” M.P.E.P. 2111.02(II). In the instant case, there is no structural difference provided by the preamble recitation compared to the combination of prior art references. The co-cured composite of Brei contains a UV stabilizer agent, paragraph [0018], which would provide the polymeric materials with UV/visible light resistance. Moreover, Gordon teaches that the polyurethane layer of Brei can be modified to provide lightning strike protection. Paragraph [0053]. As such, the preamble recitation added to Claim 11 is satisfied by the structure taught by the combination of Brei with Gordon.
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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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789