DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 1, 6-9 and 17 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to add the term “and” after the claimed phrase “to define an initial viscosity for a mixture;”.
As to Claim 6: The applicants are advised to add a comma (,) after the claimed phrase “the novolac-phenolic resin and the resol-phenolic resin”. The applicants are also advised to replace the claimed “the resol phenolic resin” with “the resol-phenolic resin”.
As to Claim 7: The applicants are advised to replace the claimed “novolac resin” and “resol phenolic resin” with “novolac-phenolic resin” and “resol-phenolic resin”, respectively, to be consistent with the languages used in claims 5 and 6.
As to Claim 8: The applicants are advised to replace the claimed “novolac phenolic resin” with “novolac-phenolic resin”.
As to Claim 9: The applicants are advised to replace the claimed “resol phenolic resin” with “resol-phenolic resin”.
As to Claim 17: The applicants are advised to replace the claimed “a bumper beams” with the new phrase “a bumper beam”. The applicants are also advised to replace the semicolons after “a pick-up box” and “a railcar component” with a comma (,).
Appropriate corrections are required.
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.
3. Claims 1-17 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.
As to Claim 1: It recites, among other things, “the terminal viscosity thereafter is between 10 million and 200 million cP” (Emphasis added). However, it is unclear whether the second instance of “the terminal viscosity” is the same as the earlier recited “a terminal viscosity measured at 176 hours” due to the “OR” conjunction.
It is further noted that since claims 2-17 are dependent on claim 1, they are rejected along with claim 1 because they incorporate all the limitations of claim 1 including those are indefinite for the reasons set forth above.
Accordingly, the scope of these claims is deemed indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
4. Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites “wherein said phenolic resin is at least two resins of novolac-phenolic resin, resol-phenolic resin, benzyl ether resin, urea-formaldehyde, or melamine resin.”
However, the scope of claim 5 fails to properly further limit claim 1, on which claim 5 depends from because it appears from claim 5 that “novolac-phenolic resin” is optional and includes embodiments that are outside of the scope of claim 1 (e.g., resol-phenolic resin and benzyl ether resin). Thus, claim 5 fails to properly further limit the scope of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
5. Claims 1-3, 5-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of CN 1088411351 (hereinafter referred to as “CN ‘135”) in view of KANEIWA et al. (US 2015/0191623)2.
The claims are directed to a method of building viscosity in a sheet molding composition comprising (1) mixing into a phenolic resin liquid or solution, a thickening agent of at least one, among other things, magnesium oxide, magnesium hydroxide, calcium oxide and zinc oxide, with the proviso that novolac resin is present in the phenolic resin liquid or solution, to define an initial viscosity for a mixture and (2) allowing viscosity of said mixture to build from the initial viscosity such that: the initial viscosity being between 50-50,000 centiPoise (cP) and at 24 hours thereafter builds to between 1 million to 50 million cP, and the terminal viscosity thereafter is between 10 million and 200 million cP.
By virtue of using the term “or” in claim 1, the claimed “said viscosity from the mixing to 36 hours, from 36 to 142 hours, and from 142 hours to 176 hours define a slope ratio of 1.5-8:1:-0.4- with a terminal viscosity measured at 176 hours” is interpreted as optional language and therefore, not required by the claimed method.
As to Claims 1-3, 5-6, 8-14 and 17: CN ‘135 discloses a method of building viscosity in a sheet molding composition (SMC), comprising the step of mixing into a resin selected from, among other things, a phenolic resin, a thickener selected from magnesium oxide, zinc oxide, magnesium hydroxide, and calcium oxide (corresponding to the claimed thickening agent), to define an initial viscosity for a mixture (Paragraphs [0014]-[0016], [0022], [0027]-[0028], and [0032]-[0034]). CN ‘135 also discloses that the calcium oxide thickener is used in an amount of, for example, 6 parts by mass (Paragraphs [0034] and [0071]), i.e., encompassed by the claimed 0.5-10 percent of the thickening agent, and the mixing occurs through mechanical mixing with concurrent heating (Paragraphs [0042]-[0048]). CN ‘135 further discloses dispersing the above mixture reinforcing material including reinforcing fibers (Paragraphs [0039] and [0046]). Moreover, CN ‘135 discloses the step of curing the phenolic resin into a shape in a mold, and the shape defines parts of rail transit and airplanes, and an electronic device (Paragraphs [0047]-[0049] and [0051]).
However, CN ‘135 does not mention allowing viscosity of its mixture to build from the initial viscosity such that the initial viscosity is between 50-50,000 centiPoise (cP) and at 24 hours thereafter builds to between 1 million to 50 million cP, and the terminal viscosity thereafter is between 10 million and 200 million cP with sufficient specificity to constitute anticipation within the meaning of 35 USC 102. Nevertheless, CN ‘135 does disclose allowing viscosity of the mixture to build from the initial viscosity such that the initial viscosity is 5000-10,000 mPa∙s (equivalent to 5,000-10,000 cP), which overlaps with claimed initial viscosity of 500-50,000 cP, and after >30 minutes, the viscosity of the mixture is built to 300,000 mPa∙s or higher (equivalent to 300,000 cP or higher), which overlaps with the viscosity at 24 hours thereafter, i.e., 1 million to 50 million cP, and the terminal viscosity between 10 million to 200 million cP (and between 10 million to 1000 million cP) (Paragraphs [0015]-[0023]). CN ‘135 further discloses controlling the viscosity of the mixture to obtain a composite material that meets the molding requirements as soon as possible and is easy to shape and produce product having good mechanical properties with relatively stable viscosity in the later stage which can make the material have a good storage stability and prolong the storage life (Paragraphs [0022]-[0027]). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the viscosities, including the claimed initial viscosity, viscosity after 24 hours, and terminal viscosity, of the mixture for the purposes of obtaining composite material that meets the molding requirements as soon as possible and is easy to shape and produce product having good mechanical properties with relatively stable viscosity in the later stage which can make the material have a good storage stability and prolong the storage life as suggested by CN ‘135. See also MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
Additionally, CN ‘135 does not specify their phenolic resin in liquid or solution that includes novolac resin as required by the claims. They also do not specify using a phenolic resin that includes a novolac-phenolic resin and resol-phenolic resin in alcoholic solution having particular molecular weights as required by claims 5-6 and 8-9. Nevertheless, KANEIWA et al. disclose the use of phenol material including novolac phenolic resin and resol-phenolic resin in alcoholic solution form for preparing sheet molding compositions that exhibit high degrees of flexural strength useful for structural members of an aircraft or railway car (Paragraphs [0019]-[0022], [0025]-[0028], and [0043]-[0044]). KANEIWA et al. also disclose using a resol phenolic resin having a number average molecular weight of 300-800 (overlaps with the claimed average molecular weight of 200-750) and a novolac phenolic resin having a number average molecular weight of 800-1500 (overlaps with the claimed average molecular weight of 250-1200) to obtain composite materials with improved mechanical strength (Paragraph [0029]).
Thus, it would have been obvious to one of ordinary skill in the art to use the claimed phenolic resin in alcohol solution including novolac-phenolic and resol-phenolic resins having particular molecular weights taught by KANEIWA et al. in the method discussed in CN ‘135, with a reasonable expectation of successfully preparing sheet molding compositions exhibiting improved mechanical strength such as high degrees of flexural strength useful for structural members of an aircraft or railway car.
As to Claim 7: CN ‘135 does not mention the claimed specific weight ratio of novolac resin and resol phenolic resin. However, KANIEWA et al. disclose employing the resol-phenolic resin in amount of 95% by mass or more and novolac phenolic resin in an amount of less than 5% by mass to achieve composite materials with advantages including excellent mechanical properties (Paragraphs [0033] and [0034]). Thus, it would have been obvious to one of ordinary skill in the art to employ optimum amounts of novolac phenolic resin and resol phenolic resin, corresponding to the claimed weight ratio, as suggested by KANIEWA et al., in the method of CN ‘135, with a reasonable expectation of successfully obtaining composite materials with advantages including excellent mechanical properties.
6. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over English Translation of CN 108841135 (hereinafter referred to as “CN ‘135”) in view of KANEIWA et al. (US 2015/0191623) as applied to claims 1-3, 5-14 and 17 above, and further in view of Suzuki (US 2015/0065756).
The disclosures with respect to CN ‘135 and KANEIWA et al. in paragraph 5 are incorporated here by reference. However, they do not specify their phenolic resin as liquid at 20°C and standard atmospheric pressure as required by claim 4.
Nevertheless, Suzuki disclose the use of phenolic resin in liquid form at room temperature (20°C) and standard atmospheric pressure which is excellent from the viewpoint of hardenability and improvement in flexibility (Paragraphs [0002], [0006]-[0014] and [0052]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the phenolic resin in liquid form at 20°C and standard atmospheric pressure taught by Suzuki in the method suggested by CN ‘135 and KANIEWA et al., with a reasonable expectation of achieving excellent hardenability and improved flexibility.
7. Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over English Translation of CN 108841135 (hereinafter referred to as “CN ‘135”) in view of KANEIWA et al. (US 2015/0191623) as applied to claims 1-3, 5-14 and 17 above and further in view of Bristow et al. (US 2007/0160822).
The disclosures with respect to CN ‘135 and KANEIWA et al. in paragraph 5 are incorporated here by reference. However, they do not specifically mention that their mold has a particular cycle time to form an article as required by claim 15.
Nevertheless, Bristow et al. disclose employing a mold having varying cycle time, including any time period between 0-45 minutes (inclusive of the claimed cycle time of 45-180 seconds), to prepare structural articles having advantageous mechanical properties (Paragraphs [0036], [0061], [0082] and [0085]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use a mold having the claimed cycle time taught by Bristow et al. in the method suggested by CN ‘135 and KANEIWA et al., with a reasonable expectation of successfully preparing structural articles having advantageous mechanical properties.
8. Claims 16 is rejected under 35 U.S.C. 103 as being unpatentable over English Translation of CN 108841135 (hereinafter referred to as “CN ‘135”) in view of KANEIWA et al. (US 2015/0191623) as applied to claims 1-3, 5-14 and 17 above and further in view of Hofmann et al. (US 2005/0281999).
The disclosures with respect to CN ‘135 and KANEIWA et al. in paragraph 5 are incorporated here by reference. However, they also do not specifically mention a shape that defines a vehicle battery box of portion thereof as required by claim 16.
Nevertheless, Hofmann et al. disclose curing phenolics into a shape in a mold to prepare structural and other composite materials used in a vehicle battery box to obtain superior performance properties (Paragraphs [0027] and [0162], and see also abstract).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to cure phenolics in a shape in a mold taught by Hofmann et al. in the method suggested by CN ‘135 and KANEIWA et al., with a reasonable expectation of successfully preparing structural and other composite materials used in a vehicle battery box to obtain superior performance properties.
Correspondence
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 05/09/2023.
2 Cited in the IDS submitted by applicants on 05/09/2023.