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 .
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 15/944,249, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. This application and previous parent applications do not provide support for the claimed lightweight filler. Priority date is given to Application No. 16/172,153 for claims 1-24, specifically October 26, 2018.
Information Disclosure Statement
The information disclosure statement filed October 13, 2023 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. For example, there is no translation or explanation for JP 59-199863 or JP S 60226510.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) (“RC” herewithin) not mentioned in the description: RC 70 in Figure 14. Additionally, RC 60 in Figure 13 does not appear to be the “filler material application mechanism” defined in the specification and shown in Fig. 9. No other definition has been provided. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The term “lightweight filler material” is interpreted as a material having a density of between 0.1 and 1.0 g/cm3.
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 1-4, 6-9, 11-16, 18-21, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2010/0021718 to Vos in view of US Pub. No. 2008/0070019 to Good.
Regarding claims 1-4, 6-9, 11-16, 18-21, and 23-24, Vos teaches a fiber-reinforced thermoplastic composite (thermoplastic prepreg) comprising a first skin having a prepreg structure of aligned fibers such as a non-woven scrim or a veil (first layer composed of a fiber mat, web or fabric), a second skin having a prepreg structure of aligned fibers such as a non-woven scrim or a veil (second layer composed of a fiber mat, web or fabric), a core (third layer), including a fully consolidated web (prepreg), containing discontinuous reinforcing fiber (third layer includes fiber, claim 4, 16) bonded together with thermoplastic resin positioned between the first skin and the second skin (third layer positioned between the first layer and the second layer) (Vos, abstract, para 0015-0028, 0040-0048). Vos teaches the first skin and the second skin having the same thermoplastic as the core layer (Id., para 0040-0048), reading on a thermoplastic polymer that is fully impregnated through the fiber mat, web or fabric of the first layer, the fiber mar, web, or fabric of the second layer, and the third layer (claim 1) and the first layer, the second layer, and a third layer comprising a thermoplastic (claim 13). Vos also teaches the skin layers being a non-woven scrim or a veil (Id., para 0022). Vos teaches the composition may further comprising microspheres, such as are described in copending application US 11/893,613, which is incorporated by reference (Vos, para 0021, 0052). US 11/893,613 corresponds to US Pub. No. 2008/0070019 to Good. Good teaches the use of glass hollow microspheres (claim 2, 14) that provide a means for uniformly and homogenously increasing product bulk or loft while simultaneously decreasing the overall density without sacrificing or enhancing performance and added in an amount from greater than 0 wt% to about 10 wt% in the composite sheet comprising skin layers with a core of fiber-containing thermoplastic resin (Good, para 0022-0033), reading on the thermoplastic prepreg further comprising hollow glass microsphere dispersed within the web or mesh of fibers and the thermoplastic composite (prepreg) including greater than 0% to about 10 % by weight of the microsphere (lightweight) filler. Good teaches the microsphere being low bulk density with a density from about 0.1 to about 0.5 g/cc (Id., para 0025), reading on a lightweight filler material having a density between 0.1 and 0.5 g/cm3. Vos teaches the core including about 20% to about 65% by weight fibers (Vos, para 0019, 0029) and does not require additional components other than the fibers and the thermoplastic (Id., all). Including the microspheres, the core composite comprises about 25% to about 80% by weight thermoplastic. Vos teaches the composite material having a basis weight from about 500 gsm to about 5000 gsm (Id., para 0022). Good teaches the use of surface layers, including nonwoven scrim and veil (Good, para 0033, 0055), and teaches specific embodiments having a basis weight of 40 to 76 gsm of the skin layers with a core having a basis weight of 900 gsm and combined surface layer basis weights of 102 to 122 gsm (Id., Table 4), equating to a weight of the skin layers being about 10.2 wt% to 11.9 wt% of the overall composite weight. Even if skins layers were 100% thermoplastic or 0% thermoplastic, the composite (prepreg) comprises the thermoplastic within the claimed range of 5 to 95 weight percent. It would have been obvious to one of ordinary skill in the art before the effective filing date to form the composite of Vos, wherein the first skin layer and second skin layer have a basis weight of as taught by Good, motivated by the desire of using conventionally known skin layer basis weights predictably suitable for use in composite containing outer surface layers having a scrim or nonwoven structure and a thermoplastic core in a reference explicitly cited to by Vos.
While the reference does not specifically teach the claimed range of the lightweight filler being 1 to 30 weight percent, specifically between 3 and 10 weight percent (claim 7, 19), of the thermoplastic prepreg, the disclosed range of the prior art combination overlaps with the instant claimed range. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust, vary, and optimize the weight percent of the microsphere filler, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art.
The limitation “the thermoplastic polymer being formed via in situ polymerization of monomers and oligomers in which greater than 90% of the monomers or oligomers react to form the thermoplastic” is interpreted as a product-by-process limitation. Absent a showing to the contrary, it is Examiner's position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even 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 (Fed. Cir. 1985). As the thermoplastic is used in its polymerized polymer formed, absent evidence to the contrary, the thermoplastic polymer would have been polymerized monomers and oligomers in which greater than 90% of the monomers or oligomers react to form the thermoplastic polymer. The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Examiner would also like to note regarding the “prepreg” preamble recited in claims 1-24, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since the prior art teaches a substantially similar structure and composition as claimed, and since a prepreg does not impute a specific structure absent from the prior art, the invention of Vos appears to be capable of the claimed intended use recited. As the material contains a thermoplastic matrix impregnating fiber, the material is pre-impregnated and is capable of being formed or molded into parts or additional composites.
Regarding claims 3 and 15, the prior art combination teaches the first skin and the second skin having the same thermoplastic as the core layer (Vos, para 0040-0048), reading on the first layer and/or the second layer including the light weight filler material dispersed within the respective fiber mat, web, or fabric.
Regarding claims 6 and 18, the prior art combination teaches the composite being a low density glass mat composite and teaches the core having a density more particularly of about 0.1 gm/cc to about 1.8 gm.cc, still more particularly of about 0.3 gm/cc to about 1.0 gm/cc (Vos, para 0025, 0028), reading on the composite (prepreg) having a density less than 1.8 g/cm3. As the skin layers of the composite having a weight percentage of about 10-12wt% based on the composite, the overall density of the composite (prepreg) would still be within the claimed range.
Regarding claim 8-9 and 20-21, the prior art combination teaches the fibers of skin 18 being different from the fibers in skin 20 (Vos, para 0046-0047), reading on the fiber mat, web, or fabric of the first layer being different than the fiber mat, web, or fabric of the second layer. The prior art combination teaches the surface layers having different basis weight (Good, Table 4), which encompasses the thicknesses of the first layer being different than a thickness of the second layer.
Regarding claims 11 and 23, the prior art combination teaches the thermoplastic being polyurethane (TPU) (claim 11, 20) or polybutylene terephthalate (Vos, para 0018, 0026).
Regarding claims 12 and 24, the prior art combination teaches the web being a fully consolidated web that has a void content less than about 5% (Vos, para 0031), reading on web comprising a thermoplastic polymer that is fully impregnated through the web or mesh of fibers such that the thermoplastic prepreg has a void content of less than 5%.
Claims 5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2010/0021718 to Vos in view of US Pub. No. 2008/0070019 to Good, as applied to claims 1-4, 6-9, 11-16, 18-21, and 23-24 above, further in view of USPN 6, 171,651 to Brown.
Regarding claims 5 and 17, the prior art combination does not teach the microsphere filler including a coating that increases an interfacial strength between the lightweight filler material and the thermoplastic polymer.
However, Brown teaches a coating of glass microspheres used in light weight glass-reinforced plastic material that incorporates the associated fire retardant properties as well as increases compatibility and strengthens the bond between the inorganic and organic phases (Brown, abstract, col. 1 lines 10-24, col. 2 lines 8-20), reading on a coating that increases an interfacial strength between the lightweight filler material and the thermoplastic polymer.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the composite of the prior art combination, wherein the glass microspheres are coated as taught by Brown, motivated by the desire of using conventionally known glass microsphere additives predictably suitable for use in light weight glass-reinforced plastic material and by the desire to impart flame retardant properties as well as compatibility and strengthen bonding between the inorganic and organic phases.
Claims 10 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2010/0021718 to Vos in view of US Pub. No. 2008/0070019 to Good, as applied to claims 1-4, 6-9, 11-16, 18-21, and 23-24 above, further in view of US Pub. No. 2005/0215698 to Raghavendran.
Regarding claims 10 and 22, the prior art combination teaches composite comprising a porous composite core having a density of about 0.1 gm/cc to about 1.8 gm/cc and between about 20% and about 80% by weight fibers, useful in the manufacture of aircraft, automotive, rail, bus, marine, and aerospace articles (Vos, abstract, para 0001, 0027-0028).
The prior art combination does not explicitly teach the composite including multiple layers of the lightweight filler material, and wherein the multiple layers of lightweight filler material are separated by a layer of the fiber mat, web, or fabric.
Raghavendran teaches a composite material comprising multiple porous core layers including a thermoplastic material having a core density of about 0.1 gm/cc to about 2.25 gm/cc and 20 weight percent to about 80 weight percent fibers based on the weight of the core layer with skin layers, including fiber based scrim or nonwoven fabric, wherein skin layers are laminated between multiple core layers to affect performance characteristics, useful in the manufacture of automotive, rail, bus, marine, and aerospace articles (Raghavendran, abstract, Fig. 2, 3, para 0002, 0010, 0022-0028), reading on the composite including multiple layers of the core (lightweight filler material), and wherein the multiple layers of core (lightweight filler material) are separated by a layer of the fiber mat, web, or fabric.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the composite of the prior art combination, wherein the composite comprises multiple cores, and therefore layers of lightweight filler, with skin layers between as taught by Raghavendran, motivated by the desire of using conventionally known composite configuration predictably suitable for use with porous core having skin layers of fibrous scrims or nonwoven useful in the manufacture of automotive, rail, bus, marine, and aerospace articles and by the desire to influence performance characteristics.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 96/30088 to Rabe teaches a moldable composite sheet of preform layers of high modulus fiber reinforced composite comprising long discrete reinforcing fiber and hollow microspheres dispersed in a thermoplastic resin matrix and teaches the preform being formed from an intimate mixture of reinforcing fibers, hollow microspheres and thermoplastic resin. US Pub. No. 2013/0052897 to Rogers teaches a thermoplastic composite comprising at least one structural layer of fiber-reinforced thermoplastic resin and at least one toughening layer adjacent to the surface of the structural layer in the form of a nonwoven veil with toughening particles, including glass microbeads, dispersed therein.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789