DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 19th, 2025, has been entered.
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.
Claims 1-3, 5-11, and 13-14 are 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.
With regards to claim 1, phrase “the other surface of the unidirectional fiber-reinforced thermoplastic resin sheet is a smooth flat surface” is not supported by the present specification. The present specification does not include the language “smooth flat surface,” nor does the present specification include any additional language implicitly suggesting such a feature (i.e., there is no mention of, for example, surface roughness, or surface texture). In the interest of compact prosecution, the claim will be interpreted as directed to a surface.
Claims 2-3, 5-11, and 13-14 are rejected as containing new matter due to dependence on unsupported claim 1.
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 1-3, 5-11, and 13-14 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regards to claim 1, the claim includes the phrase “the other surface,” which lacks antecedent basis. It is noted that the scope of the claim is not limited to two surfaces or opposing surfaces (i.e., or any other language which would clearly direct a person of ordinary skill to the surface implied by the phrase “the other surface”). Technically, the claimed invention is depicted in the present specification as including internal fiber surfaces (i.e., it is clear that there are multiple surfaces which could be implied by the phrase “the other surface”). In the interest of compact prosecution, the phrase “the other surface” will be interpreted as “an other surface.”
Claims 2-3, 5-11, and 13-14 are rejected as indefinite due to dependence on indefinite claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5-11, and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koshi (WO2020040121A1). Koshi is read from its English equivalent US2021/0253813A1.
With regards to claim 1, Koshi discloses a unidirectional fiber-reinforced thermoplastic resin sheet including a thermoplastic resin and a reinforcement fiber, the reinforcement fiber being aligned in a longitudinal direction, the unidirectional fiber-reinforced thermoplastic resin sheet comprising: a fiber-reinforced layer having a fiber volume fraction of the reinforcement fiber of 100% (i.e., within the claimed range of 40% or more, and the fiber volume fraction is 100%, as the fiber-reinforced layer consists of the reinforcement fibers themselves within the sheet) ,a surface resin layer 5 having a fiber volume fraction of the reinforcement fiber of 0% (i.e., within the claimed range of 0% or more and less than 5%) as evidenced by the Figure (i.e., the Figure depicts a section, or layer, having no fibers, and therefore, it has a fiber volume fraction of 0%), wherein the surface resin layer has a thickness of, for example, 15 microns (i.e., within the claimed range of 10 microns or more and 40 microns or less), wherein the fiber-reinforced layer and the surface resin layer 5 are integrally formed as a result of a single impregnation step (Koshi: abstract; para. [0008], [0020], and [0047]; Table 1). Koshi more specifically discloses the presence of resin layers on both surfaces of the product (Koshi: para. [0054]-[0055]; FIGURE). Note that the claimed phrase “the resin layer formed on only one surface of the fiber-reinforced layer” can be construed as referring to only the surface resin layer 5 of Koshi (i.e., the claim language does not preclude the existence of two separate resin layers located on opposite surfaces of the fiber-reinforced layer, as the claim only requires “the resin layer” to be formed on only one surface of the fiber-reinforced layer). It is further noted that the structure of Koshi includes two surfaces (i.e., satisfying the claim requirement for a surface and “an other surface” (Koshi: FIGURE).
With regards to claim 2, the Figure in Koshi shows the resin layer 5 forming a surface of the resin sheet 1 (Koshi).
With regards to claim 3, Table 1 of Koshi discloses various surface resin layer thicknesses and overall thicknesses of the fiber-reinforced layer (Koshi: Table 1). 15 microns is representative of the surface resin layer 5 thickness and 60 microns is representative of the overall thickness of the impregnated portion of the sheet (Koshi: Table 1). Subtracting 15 microns from 60 microns yields 45 microns, which is the thickness of the fiber-reinforced layer without the surface resin layer. The gives a ratio (t2/tl) of 0.375 which falls within the instantly claimed range.
With regards to claim 5. Table 1 of Koshi shows a fiber-reinforced layer thickness of 66 microns, which falls within the instantly claimed range (Koshi: Table 1).
With regards to claim 6, Koshi discloses carbon fiber for its reinforcement fiber (Koshi: [0021]).
With regards to claim 7, Koshi discloses its resin (inclusive of the thermoplastic resin in the fiber-reinforced layer) as formed of, for example, polyethylene (i.e., a polyolefin) (Koshi: [0029]).
With regards to claim 8, Koshi discloses its resin (inclusive of the thermoplastic resin in the resin layer) as formed of, for example, polyethylene (i.e., a polyolefin) (Koshi: [0029]).
With regards to claim 9, Koshi discloses an overall volume content (i.e., fiber volume fraction for the entire unidirectional fiber-reinforced thermoplastic resin sheet) of, for example 60% (Koshi: Table 1)
With regards to claim 10, Koshi discloses that the fiber-reinforced layer and the resin in the surface layer as the same resins (i.e., and therefore, such resins are compatible with one another) (Koshi: para. [0008]).
With regards to claim 11, Koshi discloses that the fiber-reinforced layer and the resin in the surface layer as the same resins Koshi: para. [0008]).
With regards to claim 13, Koshi discloses its composite as laminated together using two or more layers of the continuous fiber base material (i.e., results in a stacked panel comprising a plurality of the unidirectional fiber-reinforced thermoplastic resin sheets according to the present claims (Koshi: [0009]).
With regards to claim 14, Koshi’s product, as best understood, is a structure material (see above discussion). It is noted that the phrase “structure material” is rather broad, and the present specification does not provide any limiting definition for “structure material.” As best understood, the product of Koshi is a “structure material” in that it has a structure.
Response to Arguments
Upon further review, it was found that Koshi anticipates the present claims. Therefore, new grounds of rejection are made over Koshi alone (i.e., without the Tingley reference)
Applicant’s arguments with respect to the Koshi reference have been fully considered and they are not found persuasive.
Applicant argues that Kochi teaches its thermoplastic resin as solidified to coat a whole of the surface of the continuous fiber base material, resulting in a material having high handling ability and high formativeness achieved by uniformly coating its reinforcing base material with thermoplastic resin. Applicant argues that Koshi fails to disclose only one surface being a smooth surface. Although this argued limitation is directed to new matter, this argument is not found persuasive as it is not commensurate in scope with the claims. The claims require the claimed “other surface” to be a smooth flat surface. The claims do not actually state that only one surface is a smooth surface (only that a smooth surface is present).
Applicant argues that Kochi teaches away from the formation of a smooth flat surface, as Koshi desires a material having a high formativeness and a high handling ability achieved by uniform coating. Applicant argues that the thermoplastic resin coats the entire surface of the continuous fiber base of Koshi due to Koshi’s method of formation. Applicant concludes that Koshi teaches away from removing thermoplastic resin from one of the surfaces. This argument is not found persuasive as it is not commensurate in scope with the claims. The present claims only require “the resin layer” to be formed “on only one surface of the fiber-reinforced layer.” Koshi discloses two resin layers, one of which is formed “on only one surface of the fiber-reinforced layer,” the other being formed on an opposite surface of the fiber-reinforced layer. The claims do not require the existence of only a single resin layer formed on the fiber-reinforced layer.
Applicant’s arguments with respect to Tingley are considered moot, as the Tingley reference is no longer relied upon in the present grounds of rejection.
Applicant’s arguments with respect to the rejection over Yagi have been acknowledged. However, the rejection over Yagi has been withdrawn, due to the finding that Yagi fails to disclose or teach Applicant’s claimed thickness of 10 microns or more and 40 microns or less. Yagi does not provide thickness ranges, and further, Yagi gives a thickness of, for example, 1 mm. Yagi does not appear to describe a thickness relationship between its resin layer and fiber-reinforced layer, or a thickness of its resin layer alone. Therefore, Yagi is not considered to teach optimization of the claimed resin layer thickness.
Conclusion
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783