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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 4,2026 has been entered.
Claims 1-4, 6-16 and 18-20 are currently pending in the above identified application.
Claims 9-12 and 18-20 have been withdrawn from consideration as being directed towards a non-elected invention.
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 1-4 and 6-8 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.
Specifically, the limitation “the fiber reinforced thermoplastic material forming a single layer having by weight 35 percent to 50 percent reinforcing fibers.” The originally field disclosure teaches “[a] nonlimiting example of a cover made with long fiber thermoplastic composite structures of the present disclosure, for example, covers 10, 100, 300, 500, 700, can be made of materials that include 35 percent to 50 percent fiberglass reinforcing fibers and 50 percent to 65 percent PP polymer” (see para 0096 of the published application). The originally filed disclosure also teaches “”[a] nonlimiting example is shown in FIG. 15A, cover 700 can be made with long fiber thermoplastic composite structures made of a material that has 35 percent to 50 percent fiberglass reinforcing fibers and 50 percent to 65 percent PP polymer” (see para 0098) and “[a] nonlimiting example is shown in FIG. 16A, cover 700 can be made with long fiber thermoplastic composite structures made of a material that has 35 percent to 50 percent fiberglass reinforcing fibers and 50 percent to 65 percent PP polymer” (see para 0100). The only time the amount of fiber is discussed in the originally field disclosure is with regards to fiberglass reinforcing fibers in conjunction with polypropylene in an amount range that is also specified. The current scope of the claim encompass any type of fiber and any type of thermoplastic. The originally field disclosure also does not teach the percent being weight percent. Applicant point to para 0099 as teach by weight. However, this proportion teaches “[a]nother non-limiting example includes a cover made with long fiber thermoplastic composite structure of, for example, cover 700 of FIG. 15A, that has Fiberglass and Polypropylene with (by weight) 45% Fiberglass, 2% bonding agent, 2% UV additive, 2% thermal stabilizer, and 49% Polypropylene.” This is a specific embodiment that includes additional components and a polypropylene amount that is outside the previously discussed range taught in conjunction with the fiber range. This portion supports the specific composition recited but it is not clear that the previous recitations of the reinforcing fiber and polymer amounts are also weight. Therefore, the amendment introduces new matter.
To overcome this rejection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended claim, remove the limitation, or modify this limitation to align with the originally filed disclosure.
Claim Rejections - 35 USC § 102 / 103
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.
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 13-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over USPN 6,613,423 to Sakai.
Regarding claims 13-16, Sakai teaches a mold article of fiber-reinforced plastic formed form a plate material consisting essentially of a fibrous reinforcement, specifically glass, carbon, basalt, and aramid (claim 14), and thermoplastic resin, including polypropylene, polyethylene, polyethylene terephthalate, nylon, polyphenylene sulfide, and poly ether ether ketone (claim 15) (Sakai, abstract, col. 1 line 60- col.3 line 35), reading on a fiber reinforced thermoplastic material having a matrix material that is combined with a plurality of reinforcing fibers. Sakai teaches the molded article being a molded box formed form a sheet prepreg (charge) (Id., col. 7 line 15- col. 9 line 15, Fig. 1-3), reading on a fiber reinforced thermoplastic material forming a first side wall, a second side wall, a third side wall, a fourth side wall, and a lower wall having a shape with a rectangular cross-section and the shape being formed by shaping a charge, specifically the prepreg, in a mold to shape the charge into the first side wall, the second side wall, the third side wall, the fourth sidewall, and the lower wall to form a single, one-piece molded layer. Sakai teaches the fiber in the sheet prepreg being unidirectionally arranged roving (Id., col. 3 lines 44-51), reading on a plurality of reinforcing fibers from fiber rovings to produce the charge.
Regarding the “underground enclosure” preamble recited in claims 13-16, 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 underground enclosure does not impute a specific structure absent from the prior art, the invention of Sakai appears to be capable of the claimed intended use recited. The molded box is capable of being place underground and enclosing material inside the box.
Examiner would like to note that the limitations “plurality of reinforcing fibers from fiber rovings” and “shape being formed by shaping a charge in a mold to shape the charge into the first side wall, the second side wall, the third side wall, the fourth sidewall, and the lower wall to form a single, one-piece molded layer” are 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). 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). As the plurality of reinforcing fibers from roving is open to additional processing such as cutting and dispersion, there necessarily present structure appears to the presence of reinforcing fibers. The resultant structure formed by shaping a charge is the formation of the four sidewalls and lower wall as a single, cohesive structure. 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.
Claim Rejections - 35 USC § 103
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2020/0378084 to Wang in view of “A review of Long fiber thermoplastic (LFT) composites” to Ning.
Regarding claims 1-4 and 6-8, Wang teaches a cover for an underground enclosure being molded from a material, such as including glass fiber (claim 2), shown as forming an upper surface of the cover and a side surface of the utility cover that extends from the upper surface of the cover to a lower surface of the cover that is opposite the upper surface of the cover (Wang, abstract, para 0021-0045, Fig. 3, 5, 6, 11). Wang teaches a mold being created in the shape of the cover and a mixture ported into the mold and being formed as a unitary piece (Id., para 0044), reading on cover being a single layer formed by shaping a charge in a mold to shape the charge into the upper surface of the cover and the side surface of the cover that extends from the upper surface to the lower surface of the cover. Wang teaches the cover comprising an upper surface having a pattern of bosses or ribs to provide structural integrity and prevent slippage (reinforcing ribs, claim 4) (Wang, abstract, Fig. 1, 3, para 0020-0031), reading on an upper surface being formed by a first face sheet and further comprising reinforcing rubs connected to the first face sheet and are shown as being flat planar shape having a first length, first width and a first thickness (Id.). Wang teaches the cover comprising a second rib or reinforcement member coupled to the lower surface and aligned with the first rib or reinforcement member (Id., abstract, Fig. 1, 3, para 0020-0031), reading on the utility cover having a lower surface that is disposed generally opposite of the upper surface and further comprising one or more reinforcement members coupled to the lower surface (claim 6). Wang teaches the cover comprising a lower surface opposite the upper surface with a first rib reinforcement member coupled to the lower surface with the first slot extending into the first rib or reinforcement member (first reinforcement member of the one or more reinforcement members) and a second slot extending into a second rib or reinforcement member (second reinforcement member of the one or more reinforcement members) coupled to the lower surface and aligned with the first rib or reinforcement member(claim 8) (Wang, abstract, Fig. 1, 3, para 0020-0031) and teaches the cover being configured to be lifted by the first slot and the second slot (claim 8) (Id., abstract). Wang teaches the cover being by molding to create the shape of the cover (Id., para 0029). Wang teaches the cover being lighted but similarly size to polymer concrete covers (Id., para 0038). Wang teaches the material may be at least 15% glass fibers reinforcing polyester (Id., para 0037).
Wang does not teaches the fiber reinforced material being a fiber reinforced thermoplastic and is silent with regards to the amount of reinforcing fibers by weight.
However, Ning teaches long fiber-reinforced thermoplastic (LFT) are composite material comprised of thermoplastic polymer matrix and reinforcement fiber that are widely used in various applications as a result of their superior mechanical properties, excellent processability, low density, recyclability, low cost, excellent corrosion resistance, good vibration damping, and infinite shelf life (Ning, abstract, p. 164). Ning teaches the use of glass fiber as the reinforcement material (Id., p. 165) and a thermoplastic matrix of polyethylene terephthalate (claim 3) (polyester) (Id., p. 164). Ning teaches the use of LFT in automotive, oil and gas drilling component, and dumpster cover applications (Id., p. 166). Ning teaches using compression molding and injection molding and sourcing the fibers from fiber rovings (Id., p. 169-170, Figure 7). Ning teaches the fiber content has a direct effect on the mechanical properties of LFT (Id., p. 170). Ning teaches the strength and impact performance peak in the 40-50 wt% fiber range and then decrease at higher fiber content for a polypropylene and glass fiber composite (Id. p. 170, 173, Table 1). Ning teaches LFT composites consisting of fibers and thermoplastics matrix can be recycled and reused which is an advantage compared to thermoset or thermoset composites (Id., p. 176-177). Ning teaches LFT composite material have establishes a strong presence in various applications due to their good mechanical properties, low density, good processability, and recyclability (Id., p. 177). Ning teaches the
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the glass fiber reinforced cover of Wang, wherein the polyester matrix the thermoplastic polyethylene terephthalate matrix of Ning and has a glass fiber content such as about 40-50% by weight as taught by Ning, motivated by the desire of using conventionally known matrix materials predictably suitable for use in glass fiber reinforced composite use in strength application such as cover and by the desire to allow the cover to be recycled and reused while ensuring good mechanical properties and maintaining low density and therefore lightweight.
Examiner would like to note that the limitation “the single layer being formed by shaping a charge in a mold to shape the charge into the upper surface of the utility cover and the side surface of the utility cover that extends from the upper surface to the lower surface of the utility cover” and “the fiber reinforced thermoplastic material having a matrix material that is combined with the reinforcing fibers from fiber rovings to produce the charge” are 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). 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). As the plurality of reinforcing fibers from roving is open to additional processing such as cutting and dispersion, there necessarily present structure appears to the presence of reinforcing fibers. The resultant of the molding process is the cover having fiber reinforced thermoplastic having a shape that extends from the upper surface of the utility cover to the lower surface of the utility cover and into the side surface of the utility cover. 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.
Regarding claim 7, the prior art combination teaches using unidirectional fiber co-molded to improve mechanical properties (Ning, p. 174-175, Fing. 12), reading on further comprising unidirectional polymer composite tape. It would have been obvious to one of ordinary skill in the art before the effective filing date to form the cover of the prior art combination, wherein the cover further comprises the unidirectional fiber co-molded as taught by Ning connected to the reinforcement member, motivated by the desire of further improving the mechanical properties and provided additional reinforcement to the reinforcement members.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot based on the prior art rejection.
Regarding the new matter rejection, as detailed above, while the percentages are discussed in para 0096, the percent is not defined and limited to the combination of fiberglass reinforcing fiber and polypropylene polymer of a specified amount. Para 0099 detailed a very specific composition that is Fiberglass and Polypropylene with (by weight) 45% Fiberglass, 2% bonding agent, 2% UV additive, 2% thermal stabilizer, and 49% Polypropylene. The amount of polypropylene is below the range discussed in para 0096 specified with the fiber amounts.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPN 5,660,770 to Wernicke teaches thermoplastic material, such as polypropylene, reinforced with glass fibers formed into a mixture that is injected molded to form stacking boxes and teaches the long glass fiber reinforced thermoplastic material containing from 30 to 60% by weight of the glass fibers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A GILLETT/Examiner, Art Unit 1789
Prosecution Insights