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 .
Amendments to claims 1 and 6 and 13 and the cancellation of claim 17, in the response filed November 12, 2025, have been entered.
Claims 1-16 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Claims 9-12 and 18-20 have been withdrawn from consideration as being directed towards a non-elected invention.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 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.
Claims 1-8 and 13-16 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.
The term “long fiber” in claims 1-3 and 13-15 is a relative term which renders the claim indefinite. The term “long fiber” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how long the fiber needs to be in order to be considered a “long fiber.” Additionally, the instant disclosure states “the term ‘long fiber’ could mean fiber with different lengths” (see para 0114 of originally filed disclosure). Additionally, claim 1 recites the limitation “the long fiber reinforced thermoplastic material forming a single layer having 35 percent to 50 percent reinforcing fibers.” The basis for the percent has not been specified, such as weight percent or volume percent. Furthermore, claim 1 recites the elicitation “a long fiber reinforced thermoplastic material forming an upper surface…and a lower surface that is opposite the upper surface of the utility cover.” It is unclear if the initial upper surface and the second upper surface are the same. If the same, it is unclear if the initial upper surface is intended to reference an upper surface of the utility cover. As currently recited, a long fiber reinforced thermoplastic material forms an upper surface, but not necessarily an upper surface of the utility cover. For the purpose of compact prosecution and prior art application. Examiner will interpret long fiber to encompass any fiber, the percentages to encompass weigh percent, and reference to an upper surface generally and the same.
Claim 13 recites the limitation “a long fiber reinforced thermoplastic material forming a first side wall, a second side wall, a third side wall, a forth sidewall, and a lower wall having a shape with a rectangular cross-section, the 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 forth sidewall and the lower wall.” It is unclear if the rectangular cross-section is with regards to only the lower wall or the first side wall, the second side wall, the third sidewall, and fourth side wall as well. Examiner would also like to note that “forth” should be “fourth.” For the purpose of compact prosecution and prior art application, Examiner will interpret claim 13 as encompassing limiting only the lower wall to having a rectangular cross-section.
Claim 16 recites the limitation “wherein the side wall is molded through a process.” It is unclear which side wall is being reference as a first side wall, a second side wall, a third side wall, and a forth sidewall are positively recited. It is unclear if one, at least one, all the side walls, or a difference side wall is being referenced.
The remaining claims are rejected based on their dependency on rejected claims.
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 EP 2940221 to Graf.
NOTE: The English Machine translation is being used for prior art mapping.
Regarding claims 13-16, Graf teaches a plastic shaft (underground enclosure) comprising side panels (side wall) formed of glass fiber (claim 14) reinforced polypropylene (claim 15) such as using injection molding (claim 16), casting, or blow molding (Graf, abstract, p. 3).
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 Graf appears to be capable of the claimed intended use recited.
The limitation “the 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 forth sidewall, and the lower wall” 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). 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 necessarily resultant structure appear to be a lower wall having a rectangular shape. 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.
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 US Pub. No. 2019/0059535 to Vannier.
Regarding claims 13-16, Vannier teaches a shell structure (underground enclosure) comprising a plastic, including thermoplastic such as polypropylene (claim 15), with filler in the form of fiber, including glass fiber or carbon fibers (claim 14), incorporated into the plastic (long fiber reinforced thermoplastic material) with a substantially rectangular main face (lower wall having a shape with a rectangular cross-section) with a first side face (first side wall), a second side face (second side wall), a third side face (third side wall), and a fourth side face (forth sidewall) (Vannier, abstract, Fig. 5, para 0075-0078). Vannier teaches molding the structure having a general shell shape formed of a material comprising plastic (Id., para 0034, 0076), reading on the shape being formed by molding.
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 Vannier appears to be capable of the claimed intended use recited, such as being buried.
The limitation “the 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 forth sidewall, and the lower wall” 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). 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 necessarily resultant structure appear to be a lower wall having a rectangular shape. Vannier teaches a molded structure formed into a shell shape, including a rectangular lower main face, or lower wall. 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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2020/0081077 to Seong in view of US Pub. No. 2005/0014906 to Niino.
NOTE: The English Machine translation is being used for prior art mapping
Regarding claims 1-3, Seong teaches a manhole cover (lightweight utility cover) formed of a first skin layer, a reinforcing layer, and a second skin layer formed by allowing a reinforcing fiber (long fiber) to be impregnated with a resin, such as high density polyethylene (thermoplastic, claim 3) in stacked order (Seong, abstract, p. 4), reading on a long fiber reinforced thermoplastic material forming an upper surface, a side surface that extending from the upper surface, and a lower surface that is opposite the upper surface of the utility cover and the long fiber reinforced thermoplastic material forming a single layer. Seong teaches the first skin layer (first face sheet) containing reinforcing fibers that are long fibers, such as carbon fibers, glass fibers, and aramid fibers (claim 2) (Id., p. 4), reading on an upper surface formed of a long fiber reinforced thermoplastic material.
Seong is silent with regards to the layer having 35 percent to 50 percent reinforcing fibers.
However, Niino teaches a fiber reinforced molding, specifically an olefin resin reinforced with long glass fibers (Niino, abstract, para 0001, 0008, 0012, 0035-0042, 0092). Niino teaches the long-fiber-reinforced olefin resin composition having a reinforcing fiber content ranging from 5 to 80 wt%, particularly preferred being 30 to 65 wt% (Id., para 0041). Niino teaches a content lower than 5 wt% cannot exhibit the reinforcing effect of the fibers to a sufficient extent and a content higher than 80 wt% leads to a substantial deterioration in the processability upon preparing or molding the resin composition with no further improvement in strength (Id.). Niino teaches there being a balance between the reinforcing effect and processibility (Id.). Niino teaches the fiber having a length of 2 to 50 mm (Id., para 0042, 0049). Niino teaches the molded material containing the weight-average fiber length of 1 mm or greater in order to provide the molding with a high degree of mechanical strength (Id., para 0049), indicating that the longer fiber length is linked with mechanical strength.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the cover of Seong, wherein the fiber content is 30 to 65% by weight as taught by Niino, motivated by the desire of using conventionally known fiber content amount predictably suitable for use in fiber reinforced polyolefin material and by the desire to improve strength while balancing processibility.
While the reference does not specifically teach the claimed range of 35 percent to 50 percent, 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 percent of fiber, 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 and based on the desired strength and processibility.
Claims 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2020/0081077 to Seong in view of Niino as applied to claims 1-3, further in view of US Pub. No. 2020/0378084 to Wang.
NOTE: The English Machine translation is being used for prior art mapping
Regarding claims 4-8, the prior art combination teaches the first skin layer (first face sheet) containing reinforcing fibers that are long fibers, such as carbon fibers, glass fibers, and aramid fibers (Seong, p. 4). The prior art combination teaches the manhole cover not being limited to a specific shape and shown as flat planar (Id., p. 4, Fig. 1&2).
The prior art combination does not teach the cover further comprising reinforcing ribs connected to the first skin layer or 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.
However, Wang teaches a cover for an underground enclosure being molded from a material, such as including glass fiber (Wang, abstract, para 0029-0031). Wang teaches the cover comprising an upper surface having a pattern of bosses or ribs to provide structural integrity and prevent slippage (reinforcing ribs) (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).
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 has the shape of Wang including the upper surface of bosses or ribs, slots, and second ribs or reinforcement member coupled to the lower surface, motivated by the desire of using conventionally known shape of covers predictably suitable formed of fiber reinforced plastic and to impart structural integrity, ability to lift the cover, and reduce slipping.
Regarding claim 7, the prior art combination teaches the use of reinforcing tape as a means for reinforcing rigidity comprising a plurality of continuous fiber-shaped reinforcing fiber (unidirectional polymer composite tape) (Seong, p. 3). While Seong does not explicitly teach the manhole cover comprising the reinforcing 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 reinforcing tape motivated by the desire of imparting additional rigidity to portions of the cover. As the reinforcing tape is attached to the cover, it would be necessarily connected to the one or more reinforcement members coupled to the lower surface.
Claims 14 and 17 is rejected under 35 U.S.C. 103 as being unpatentable over EP 2940221 to Graf, as applied to claims 13-16, in view of US Pub. No. 2008/0193757 to Barnaud.
NOTE: The English Machine translation is being used for prior art mapping.
Regarding claims 14 and 17, Graf does not explicitly teach the glass fiber being chopped fibers.
However, Barnaud teaches a composite part formed from a thermoplastic matrix, such as polypropylene, which is reinforced with glass fiber that have been chopped using an injection molding or injection-compression process that results in homogeneous surface and enhanced mechanical properties (Barnaud, abstract, para 0025-0032, 0058, 0076-0079).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the side panel of Graf, wherein the side wall is formed form the long fibers chopped and combined with the thermoplastic matrix that is molded as taught by Graf, motivated by the desire of using conventionally known reinforcing fiber predictably suitable for use in thermoplastic matrix, such as polypropylene, and injection process and by the desire to result in enhanced mechanical properties and homogenous surface.
Examiner would also like to note that the limitation “wherein the long fiber reinforced thermoplastic material combines chopped fibers with a resin melt to form a compounded mixture to inject the compounded mixture into a closed mold” 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). 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).
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are not persuasive with regards to Seong in view of the teachings of Niino and with regards to Graf.
Applicant argues that the instant invention is a single layer rather than the 3 layer structure of Seong and the long fiber reinforced thermoplastic material forming the single layer of the present application has 35 percent to 50 percent reinforcing fibers. The claimed invention does not limit the cover or wall to being a single, homogeneous layer of a long fiber reinforced thermoplastic material having 35 percent to 50 percent reinforcing fibers as Applicant appears to be arguing. Seong teaches impregnating reinforcing fiber (Seong, abstract), which would result in a single layer of fiber reinforced plastic. The claim recites the limitation “the long fiber reinforced thermoplastic material forming a single layer having 35 percent to 50 percent reinforcing fibers.” As the thermoplastic is injected into the reinforcing fiber to form the cover, the cover would be a single layer. This interpretation is constant with the claims as claim 4 recites the limitation of an Upper surface being formed by a first face sheet with ribs attached to the first face sheet. Niino is relied upon for teaching conventionally known fiber contents and their predictable effect on strength and processibility.
Applicant argues that the shape of claim 13 is formed by having a charge in a mold to shape the charge into the first side wall, the second side wall, the third side all, the forth sidewall, and the lower wall thus the rectangular underground enclosure of claim 13 is a single, one-piece molded layer versus the four identical and separately manufactured side part of Graf. However, Applicant’s argument is not commensurate in scope with the current claim limitations. A single, one-piece molded layer is not claimed. Long fiber thermoplastic material forming a first side wall, a second side wall, a third side wall, a forth sidewall, and a lower wall having a shape with a rectangular cross-section and the 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 forth sidewall, and the lower wall is claimed. Examiner would also like to note that the claim is a product-by-process claim. 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). Additionally, dependent claim 16 recites the limitation “wherein the side wall is molded through a process selected from the group consisting of injection molding, compression, and fiber-direct compounding and molding process,” which appears to imply or is open to the formation of the side wall separately from the lower wall.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPN 4,776,138 to Sumner teaches a buried vault comprising walls constructed of glass fiber matting and woven roving with polymeric resin and a polyester resin comingle with chopped reinforcing fibers of random length randomly distributed and teaches the vault being generally rectangular shown with a first sidewall, a second side wall, a third side wall, a fourth side wall, and a lower wall, which would have a shape with a rectangular cross-section.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789