DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
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 13, 14, 16, 20, 21, 23-25, 28, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Kazuyuki (JP 07-100943) in view of Oosedo et al. (US Pat. 5,543,212). Note: The machine translation provided by the applicant is being used for citation purposes.
Considering Claims 13, 16, and 20: Kazuyuki teaches fiber reinforced plastic comprising a reinforcing fiber group comprising reinforcing fibers (¶0007); a thermosetting resin layer comprising a first thermosetting resin (¶0006; Fig. 2); and thermoplastic resin layer (¶0008; Fig. 2). Kazuyuki teaches that the thermoplastic resin layer is disposed on the surface of the thermosetting resin layer, the interface is present in the reinforcing fibers (¶0014), and the thermoplastic layer comprises portions of the thermosetting layer as a sea-island formation/dispersed in the thermoplastic layer (¶0015).
Kazuyuki teaches incorporating the thermosetting resin into the thermoplastic layer at a temperature below the curing temperature of the thermosetting resin (¶0018), and thus the resin would uncured in the laminate prior to the curing step.
Kazuyuki does not teach an isolated prepreg, but rather an intermediate during the curing process. However, Oosedo et al. teaches forming a prepreg laminate of a fiber reinforced thermosetting layer and a thermoplastic layer, where the thermosetting layer impregnates into the thermoplastic layer (2:53-58; 3:43-4:18; 5:23-35). Kazuyuki and Oosedo et al. are analogous art as they are concerned with the same field of endeavor, namely reinforced thermoset-thermoplastic laminates. It would have been obvious to a person of ordinary skill in the art to have isolated the intermediate of Kazuyuki, where the thermoplastic layer is impregnated with a portion of the thermosetting resin, as in Oosedo et al., and the motivation to do so would have been, as Oosedo et al. suggests, to provide a commercial product that can be shaped into the desired shape by the user (1:20-35).
Considering Claim 14: Kazuyuki teaches the domains as being microphasic/greater than 1 micron (¶0015).
Considering Claim 21: Kazuyuki teaches the domains as being microphasic/greater than 1 micron (¶0015).
Considering Claim 23: Kazuyuki teaches the thermoplastic resin as being a polyamide, polyether ketone, polyether ether ketone, or polyphenylene sulfide (¶0008).
Considering Claim 24: Kazuyuki teaches the thermosetting resin as being an epoxy (¶0006).
Considering Claim 25: Kazuyuki teaches the fibers as being carbon fibers (¶0007).
Considering Claim 28: Kazuyuki is silent towards the thickness of the thermosetting layer and the entire prepreg. However, changes in size have been found to be obvious. See MPEP § 2144.04. It would have been obvious to a person of ordinary skill in the art to have selected the desired thickness for the thermosetting layer and entire prepreg, and the motivation to do so would have been, to produce a pipe capable of holding the required amount of fluid.
Considering Claim 29: Kazuyuki teaches the laminate as being in the form of a composite sheet (¶0012).
Claims 15 and 27 is rejected under 35 U.S.C. 103 as being unpatentable over Kazuyuki (JP 07-100943) in view of Oosedo et al. (US Pat. 5,543,212) as applied to claim 13 above, and further in view of Tsuchiya et al. (US 2009/0208721).
Considering Claims 15 and 27: Kazuyuki teaches the product of claim 13 as shown above.
Kazuyuki is silent towards the amount of reinforcing fiber in the thermoplastic layer. However, Tsuchiya et al. teaches a welded thermoplastic and thermosetting layer, where the reinforcing fibers in the thermoplastic layer are 5 to 60% by weight (¶0089). Kazuyuki and Tsuchiya et al. are analogous art as they are concerned with the same field of endeavor, namely thermoplastic and thermosetting resin layers. It would have been obvious to a person of ordinary skill in the art to have used the reinforcing fiber in the amount of Tsuchiya et al., in the thermoplastic layer of Kazuyuki, and the motivation to do so would have been, as Tsuchiya et al. suggests, to improve the strength of the composite (¶0089).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kazuyuki (JP 07-100943) in view of Oosedo et al. (US Pat. 5,543,212) as applied to claim 13 above, and further in view of Arai et al. (US 2015/0210813).
Considering Claim 19: Kazuyuki teaches the product of claim 13 as shown above.
Kazuyuki is silent towards the surface free energy of the reinforcing fibers. However, Arai et al. teaches a reinforcing fiber with a surface free energy of 8 to 50 mJ/m2 (¶0182). Kazuyuki and Arai et al. are analogous art as they are concerned with the same field of endeavor, reinforced thermosetting layers. It would have been obvious to a person of ordinary skill in the art to have used the reinforcing fibers of Arai et al. in the thermosetting layer of Kazuyuki, and the motivation to do so would have been, as Arai et al. suggests, to increase the impregnation of the matrix resin into the reinforcing fibers.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Kazuyuki (JP 07-100943) in view of Oosedo et al. (US Pat. 5,543,212) as applied to claim 13 above, and further in view of Wadahara et al. (JP 2002-088259). Note: The machine translation provided by the applicant is being used for citation purposes.
Considering Claim 22: Kazuyuki teaches the product of claim 13 as shown above.
Kazuyuki is silent on the amount of second thermoset dispersed within the thermoplastic layer. However, Wadahara et al. teaches a thermoplatstic layer comprising reinforcing fibers and a thermosetting resin dispersed within the thermoplastic in a sea island structure (¶0008; 0041-43; 0098). Wadahara et al. teaches the amount of thermosetting resin as being 0.5 to 50 weight percent of the thermoplastic resin layer (¶0038). Kazuyuki and Wadahara et al. are analogous art as they are concerned with the same field of endeavor, namely reinforced resin layers. It would have been obvious to a person of ordinary skill in the art to have used the thermosetting resin in the amount of Wadahara et al. in the layer of Kazuyuki, and the motivation to do so would have been, as Wadahara et al. suggests, to improve the impact strength and rigidity (¶0001).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Kazuyuki (JP 07-100943) in view of Oosedo et al. (US Pat. 5,543,212) as applied to claim 13 above, and further in view of Tsuchiya et al. (US 2011/0143110). Note: The machine translation provided by the applicant is being used for citation purposes.
Considering Claim 26: Kazuyuki teaches the product of claim 13 as shown above.
Kazuyuki is silent towards the impregnation ratio of the resins into the reinforcing layer. However, Tsuchiya et al. teaches a reinforced fiber resin having an impregnation ratio of 50 to 100% (¶0077). Kazuyuki and Tsuchiya et al. are analogous art as they are concerned with the same field of endeavor, namely reinforced resin layers. It would have been obvious to a person of ordinary skill in the art to have used the impregnation ratio of Tsuchiya et al. in the layers of Kazuyuki, and the motivation to do so would have been, as Tsuchiya et al. suggests, to maintain the form of the fibers and provide moldability to the prepreg (¶0077; 0211).
Response to Arguments
Applicant's arguments filed June 18, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that the section relied upon in the motivation statement of the rejection is from the background of Oosedo et al. is not persuasive. The section of Oosedo et al. cited is a general teaching of the utility of prepegs, and is part of the reference. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP § 2123.
B) In response to applicant's arguments against the references individually, 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). While Oosedo et al. does not teach all the claimed structural layers of the prepreg, these features are taught in Kazuyui, as discussed above.
C) The applicant’s argument that Kazuyuki only teaches the interface as being formed in the cured product is not persuasive. Kazuyuki teaches incorporating the thermosetting resin into the thermoplastic layer at a temperature below the curing temperature of the thermosetting resin (¶0018), and thus the resin would uncured in the prepreg. As the thermosetting resin would need to be fluid during the impregnation in order to be incorporated into the thermoplastic layer, the impregnation would necessarily occurring prior to curing.
The teaching of Oosedo et al. shows that a person of ordinary skill in the art would find it obvious to isolate this intermediate form as a prepreg.
D) The applicant’s argument that Tsuchiya ‘110 teaches a different means of measuring the impregnation ratio than the current claims is not persuasive. The feature discussed in Tsuchiya ‘110 is the area of the voids in the reinforced layer that is filled with the resin, which is the same feature claimed in claim 26. The applicant has not provided any evidence that the means of measuring the feature would alter the structure of the product or result in a substantially different value for the impregnation ratio.
E) The applicant’s argument that Kazuyuki does not teach the thickness ratio of the thermoplastic resin layer to the whole thickness is a result effective variable is not persuasive. Kazuyuki is silent towards the thickness of the thermosetting layer and the entire prepreg. However, changes in size have been found to be obvious. See MPEP § 2144.04. It would have been obvious to a person of ordinary skill in the art to have selected the desired thickness for the thermosetting layer and entire prepreg, and the motivation to do so would have been, to produce a pipe capable of holding the required amount of fluid. The size of each component would be considered to be obvious, and thus the ratio would implicitly be considered to be obvious.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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