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 .
Examiner Notes
Claims 1, 3, and 5-17 are currently pending of which claims 11 and 13 are withdrawn. No claims have been amended and claim 17 is newly added.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/06/2025 has been entered.
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 1, 3, 5-10, 12, 14, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (WO2018/124215) with citations from (US2021/0129488) and further in view of Deteresa et al. (US 2003/0062647).
Regarding claims 1, 6, and 16, Takahashi discloses a metal/fiber-reinforced resin material composite body for a vehicle (0002) comprising a metal member (101), a plurality of FRP layers (102) provided on at least a portion of one or both surfaces of the metal member and containing carbon fibers (105) and matrix resin (104) (Fig. 2, 0048, 0049 and 0060). Takahashi teaches the composite further including a second metal plate where the plurality of FRP layers and bonding resin are sandwiched between the metal plates (Fig. 11).
Takahashi teaches using a plurality of FRP prepregs (0053), however, Takahashi does not teach a resin layer located at between any layers of the carbon fiber reinforced plastic layers. The resin layer containing a resin having a Young’s modulus of less than 1.5 GPa and a loss coefficient of 0.01 or more, and different from the matrix resin.
Deteresa, in the analogous field of fiber reinforced plastic composites (0004), discloses a hybrid matrix fiber composite comprising a first matrix impregnated with fibers aligned into a ribbon and a different second matrix placed between the ribbons (0063).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the layers of FRP prepregs of Takahashi to include a second matrix resin as taught by Deteresa, to bind the layers together and provide toughness, durability, strength and stiffness to the composite (0065 and 0070).
Deteresa teaches that the second matrix material is any material that imparts toughness to the composite including both thermosetting and thermoplastic materials (0069) however does not expressly teach the second matrix containing a resin having a Young’s modulus of less than 1.5 GPa and loss coefficient of 0.01 or more.
Takahashi teaches a bonding resin being different from the matrix resin of the FRP (0083) including polyolefins, polyesters, or urethane resins (0066), applicant’s specification teaches that these are exemplary resins having a Young’s modulus of less than 1.5 GPa and a loss coefficient of 0.01 or more (see specification 0087).
It would have been obvious for the second matrix resin of Takahashi in view of Deteresa to include the thermoplastic and thermosetting resins within the second matrix resin, to improve adhesion of the matrix resin composition (0061).
Takahashi in view of Deteresa do not expressly teach the eccentricity ratio of the resin layer defined based on the distance from the neutral plane being 20% or more and 65% or less.
However, Deteresa teaches that the reinforcement ribbons have a packing fraction within the hybrid matrix composite of 90% by volume or greater and that higher surface area of the ribbons allows for enhanced bonding between the reinforcement ribbon and the second matrix material, thus providing better compressive strength and toughness (0081). Deteresa further teaches that the fiber and matrix combination should be selected to provide stiffness, toughness, tensile and compression strength to the composite (0082). It is clear from the teachings of Deteresa that there is a relationship between the number or volume percent of reinforcements and the second matrix material and that selection of each is optimizable to achieve a desired stiffness, toughness, and strength within the composite. As the eccentricity ratio is a ratio of a separation distance of the middle plane of the resin layer to the neutral plane (L1) to a separation distance from the end of the surface of the mixed resin layer to the neutral plane, optimization of the number of reinforcement/matrix material layers will necessarily affect the eccentricity ratio. Consequently, it would have been obvious to have optimized the eccentricity ratio, including within the claimed ranges, based upon the teachings of Deteresa. It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
Regarding claims 3, 5, and 17, Deteresa teaches that the reinforcement ribbons have a packing fraction within the hybrid matrix composite of 90% by volume or greater and that higher surface area of the ribbons allows for enhanced bonding between the reinforcement ribbon and the second matrix material, thus providing better compressive strength and toughness (0081), thus, there would be an area of resin of 10% or less, overlapping the claimed 5% or more and 60% or less in claim 3 and 10% or more and 60% or less in claim 17. Furthermore, as there is non-even combination of the resin and mixed resin, the resin layer would necessarily be unevenly distributed on the side close to the neutral plane as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 7, Takahashi teaches the matrix resin including epoxy or phenoxy (0083).
Regarding claim 8, Takahashi teaches pitch-based carbon reinforcing fibers (0060).
Regarding claim 9, modified Takahashi does not expressly teach a total thickness of the composite or a ratio of thickness of the metal member to the FRP/second matrix. However, Takahashi teaches that the thickness and number of FRP layers can be appropriately set according to the purpose of use (0049). Takahashi further teaches a bonding resin and that the thickness of the boding resin is adjustable to optimize bonding effect/reinforcing effect of the reinforced fibers in the composite (0055). Takahashi further teaches that the metal member thickness is not particularly limited so long that it can be molded and processed (0057). As the present specification is silent to unexpected results, it would have been an obvious modification to one having ordinary skill in the art at the time the invention was made to modify the thickness of the composite based on routine experimentation, for the purpose of optimizing operation of said composite. Said obvious modifications including, selecting a thickness required for a given end use including those thicknesses ranging from 0.4 mm or more and 3.00 mm or less. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2D 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is no patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Likewise, it would have been obvious to optimize the ratio of thickness of the metal plate to the thickness of the FRP and matrix resin, including with a range of 0.10 or more and 4.00 or less, based upon the teachings of Takahashi. It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
Regarding claim 10, Takahashi teaches that the thickness and number of FRP layers can be appropriately set according to the purpose of use (0049). Takahashi further teaches a bonding resin and that the thickness of the boding resin is adjustable to optimize bonding effect/reinforcing effect of the reinforced fibers in the composite (0055). It would have been obvious to optimize the ratio of thickness of projected area of the metal plate to projected area of the FRP/matrix, including within a range of 0.1.0 or more and 20.0 or less, based upon the teachings of Takahashi. It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
Regarding claim 12, modified Takahashi teaches the FRP/matrix resin formed on the metal member including in the center portion (Fig. 5-7).
Please note, claim 12 includes product by process language with regards to the recitation of “is formed”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 14, Takahashi teaches the metal member including zin-plated steel (0057-0058, 0185).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Takahashi in view of Deteresa as applied to claim 1 above, and further in view of Dauner et al. (US 2011/0274897).
Regarding claim 15, modified Takahashi teaches the limitation of claim 1 as discussed above. Takahashi does not expressly teach the composite used for a door outer panel, a roof panel, a hood, a fender, or a side outer panel of an automobile.
Dauner, in the analogous field of metal/fiber-reinforced plastic composites (0001), teaches component in a vehicle including automotive doors, roofs, and hoods (0005).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the composite of modified Takahashi to be used in an automotive door, roof, or hood, as taught by Dauner, to provide a cost-efficient lightweight composite component (0011).
Response to Arguments
Applicant’s arguments filed 10/06/2025 have been fully considered but they are not persuasive.
Applicant maintains the arguments that Takahashi in view of Deteresa do not teach the eccentricity ratio of the resin layer as claimed.
As discussed in the prior response, applicant appears to be arguing that because there is not an express teaching of eccentricity ratio, there are not values to optimize and thus the ratio is not obvious over the prior art. The examiner does not agree. The eccentricity ratio is a relationship between the distance to the middle of the resin layer from a neutral plane (L1) to the end surface of the mixed resin layer from the neutral plane (L2). It is well established that the number of layers will affect the neutral plane location i.e., a plane without compressive of tensile stress. The prior art teaches selection of the combination of fiber reinforced layers and matrix resin layers to affects the tensile and compression strength of the composite (e.g., Deteresa: 0082). Adjustment of the layers necessarily will change the eccentricity ratio, thus where one is taught as optimizable, the other is also optimizable based on the teachings of the prior art.
Applicant argues that new claim 17 is allowable due to it’s dependency on claim 1 and also because it teaches limitations which are not disclosed or made obvious by the applied prior art references.
It is maintained claim 1 is not allowable as discussed above. Further, claim 17 merely recites a narrower range for ratio of an area of the resin layer to the total area of the mixed resin layer from the range disclosed in claim 3. No arguments have been presented over claim 3, or the narrower range in claim 17, as to why the prior art does not obviate the claimed ranges.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781