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 § 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, 3-5, 8-12, 14, 16-18, and 20-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims, for the reasons set forth below.
Note that paragraph sections from Applicants’ PG Pub. No. 2023/0286247 will be recited below when referencing Applicants’ specification.
Regarding claims 1, 3-5, 8-12, 14, 16-18, and 20-23, claims 1 and 14 recite the adhesive layer comprising a destruction preventing member, and the destruction preventing member is made of an organic material. Applicants’ specification references the destruction preventing members in the Figures as 19 and 39. Applicants’ specification teaches forming the fiber-reinforced resin laminate at Figures 7 and 8, wherein Fig. 7 illustrates a manufacturing process of the second member, by placing into molding dies, and heating and pressurizing (see additionally Applicants’ specification at paragraphs 0039-0046). Applicants’ specification teaches that a groove 53b is provided in the molding surface corresponding to a position wherein the destruction preventing member is disposed, wherein when pressurized, the groove is filled with resins that constitute the fiber-reinforced resin sheet (Id., paragraphs 0046-0047). Applicants’ specification provides various thermoplastic and thermosetting resins used as the matrix resins (Id., paragraph 0042). Applicants’ specification teaches that cracks can be limited from occurring in the adhesive layer in a region including the second region surrounded by the destruction preventing members, and reduction in a bonding strength between the first member and the second member can be limited (Id., paragraph 0038).
Absent from Applicants’ specification is an express recitation of an organic material from which the destruction preventing member is made. For example, although Applicants’ specification recites thermoplastic resins or thermosetting resins which may comprise organic material (e.g. polypropylene), which form the destruction preventing member as shown in Fig. 7, the scope of the claim is not limited to those thermoplastic resins or thermosetting resins, nor is the scope of the claim limited to the destruction preventing member being formed from the second member as shown in Applicants’ specification. The scope of the claim encompasses any organic material and any destruction prevention member made of the organic material, independent of being formed according to Applicants’ specification. Additionally, although Applicants’ specification teaches that the destruction preventing member is an organic material, that the member performs a purpose, and that the member can be made in a particular manner (e.g., directly from the fiber-reinforced resin sheet as recited in claims 7 and 19), Applicants’ specification does not recite suitable organic materials generally suitable for the destruction preventing member defining the scope of the claim, as Applicants’ specification only appears to teach a specific destruction preventing member which is necessarily formed from the fiber-reinforced resin laminate such that the destruction preventing member comprises the matrix material set forth in Applicants’ specification.
Therefore, while being enabling for a destruction preventing member comprising an organic material which is the resin of the fiber-reinforced resin laminate formed using a groove in the molding material, does not reasonably provide enablement for any other organic materials.
Claims 8, 11, 12, 18, and 19 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.
Regarding claims 8, 11, and 12, the claims recite that the spacer represents one of a plurality of spacers, with each spacer being a glass bead. Applicants’ specification does not recite the claimed limitations. Therefore, the claimed limitations constitute new matter.
Additionally, regarding claim 12, the claim recites that the destruction preventing member is elongated and extends in a common direction of extension as a boundary formed between the different thickness first and second regions of the adhesive layer such that the destruction preventing member surrounds the second region of the adhesive layer, and a sub-region of the adhesive layer formed between the boundary and the surrounding destruction preventing member is free of any glass beads in the adhesive layer. Although Applicants’ submissions of January 22, 2026, recite support at paragraphs 0029 and 0035, the paragraphs do not recite the claimed limitations, including a common direction of extension, a second region surrounded by the destruction preventing member, and a sub-region of the adhesive layer. Therefore, the claimed limitations constitute new matter.
Regarding claim 18, the claim recites that each of the first member and the second member have an intermediate bend section and the relatively small layer thickness in the adhesive layer extends uninterrupted for a full length of that intermediate bend section. Although Applicants’ submissions of January 22, 2026, recite support at paragraphs 0023, 0035, and 0036, the paragraphs do not recite the claimed limitations. Therefore, the claimed limitations constitute new matter.
Regarding claim 19, the claim recites that the destruction preventing member is defined by an extension of resin material derived from the resin of the fiber-reinforced resin composite of the second member following a molding process. Although Applicants’ submissions of January 22, 2026, recite support at paragraph 0047 and Fig. 7, neither the paragraph nor the Figure recites or shows resin material derived from the resin of the fiber-reinforced resin composite, as the resin material is the resin of the fiber-reinforced resin composite. Therefore, the claimed limitations constitute new matter.
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 7, 8, 11, 12, 14, and 16-20 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.
Regarding claim 7, the claim recites that the second member is formed of the fiber-reinforced resin composite, and the destruction preventing member is formed of the same resin material as the resin of the second member. It is unclear what the scope of a “same resin” necessarily entails. For example, it unclear if the “same resin” is literally the same resin of the second member, or use of the same resin polymer used in the second member.
Regarding claims 8, 11, and 12, the claims recite that the spacer represents one of a plurality of spacers, with each spacer being a glass bead. The claims are dependent from claim 1, which recites a singular spacer (“the at least one first region of the adhesive layer comprises a spacer in contact with the first member and the second member”). It is unclear if the limitations directed to the glass beads, is directed only to the glass beads or the claimed spacer, as the recitation of “the spacer represents one of a plurality of spacers provided in the at least one first region” renders the claims indefinite.
Regarding claim 11, the claim recites that the first regions include a plurality of glass beads as the spacer, and the second region of the adhesive layer, that is disposed between the first regions, is free of any of said glass beads. The claim is dependent from claim 1, which recites a singular spacer (“the at least one first region of the adhesive layer comprises a spacer in contact with the first member and the second member”). It is unclear how claim 11 (requiring a plurality of glass beads) is consistent with claim 1, which requires a singular spacer.
Additionally, it is unclear if each region comprises a plurality of glass beads, or if the totality of the regions collectively comprises a plurality of glass beads. Note that it is unclear if either of the interpretations is supported by the specification as originally filed.
Additionally, regarding claim 12, the claim recites that the destruction preventing member is elongated and extends in a common direction of extension as a boundary formed between the different thickness first and second regions of the adhesive layer such that the destruction preventing member surrounds the second region of the adhesive layer, and a sub-region of the adhesive layer formed between the boundary and the surrounding destruction preventing member is free of any glass beads in the adhesive layer. The claim is dependent from claim 1, which recites the adhesive layer comprising a destruction preventing member that is located within the at least one first region. However, claim 12 requires the destruction preventing member located as a boundary between the first and second regions of the adhesive layer. It is unclear how claim 12 is consistent with claim 1.
Additionally, it is unclear how a singular destruction preventing member surrounds a second region as such a feature is not described in the specification as originally filed.
Regarding claims 14 and 16-18, claim 14 recites that one or both of the first member and the second member are made of a fiber-reinforced resin composite, and that the second member is made of the fiber-reinforced resin composite. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitation that one or both of the first member and the second member are made of a fiber-reinforced resin composite, and the claim also recites that the second member is made of the fiber-reinforced resin composite which is the narrower statement of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 16, the claim recites that the second member is comprised of a plurality of stacked plies. The claim is dependent from claim 14, which recites that the second member is made of the fiber-reinforced composite. It is unclear if the plurality of stacked plies are further limiting the fiber-reinforced composite of claim 14, or if the plurality of stacked plies are structurally in addition to the fiber reinforced composite of claim 14.
Regarding claim 19, the claim recites that the organic material of the destruction preventing member is defined by an extension of resin material derived from the resin of the fiber-reinforced resin composite. It is unclear if the recitation of “derived” entails that the resin material is structurally derived from the resin of the fiber-reinforced resin composite (e.g., the organic material and the fiber-reinforced resin composite are structurally the same collectively), or if derived entails that the resin material is compositionally derived from the resin of the fiber-reinforced resin composite. Note that Applicants’ specification does not recite the resin material “derived” as claimed.
Regarding claim 20, the claim recites that the destruction preventing member surrounds the second region of the adhesive layer. The claim is dependent from claim 1, which recites a singular destruction preventing member. It is unclear how a singular destruction preventing member, which is merely in contact with or coupled to the first and second member, can surround a second region of the adhesive layer, based on the claimed structure.
Response to Arguments
Applicants’ arguments filed January 22, 2026, have been fully considered but they are not persuasive. Regarding the remaining 35 U.S.C 112 (a) rejections for claims 8, 11, 12, 18, and 19, Applicants argue that paragraphs 0034 and 0035 and 0050 fully satisfy the claim language. Examiner respectfully disagrees. As set forth above, the claims recite that the spacer represents one of a plurality of spacers, with each spacer being a glass bead. Applicants’ specification does not recite the claimed limitations. Therefore, the claimed limitations constitute new matter. Applicants’ arguments do not address the lack of support in the specification as originally filed.
Regarding claims 12, although Applicants recite support at paragraphs 0029 and 0035, the paragraphs do not recite the claimed limitations, including a common direction of extension, a second region surrounded by the destruction preventing member, and a sub-region of the adhesive layer. Therefore, the claimed limitations constitute new matter.
Regarding claim 18, although Applicants recite support at paragraphs 0023, 0035, and 0036, the paragraphs do not recite the claimed limitations. Therefore, the claimed limitations constitute new matter.
Regarding claim 19, although Applicants recite support at paragraph 0047 and Fig. 7, neither the paragraph nor the Figure recites or shows resin material derived from the resin of the fiber-reinforced resin composite, as the resin material is the resin of the fiber-reinforced resin composite. Therefore, the claimed limitations constitute new matter.
Regarding the 35 U.S.C. 112 (b) rejection for claim 20, Applicants argue that an example is one where the destruction prevention member extends along a boundary that is continuous. Examiner respectfully disagrees. Neither the claims require such a structure, nor does the specification contemplate such a structure, and it would not appear that one of ordinary skill would have contemplated such a structure based on the claims and the specification.
Applicants’ remaining arguments are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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, Jennifer Boyd can be reached at 571-272-7783. 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.
/PETER Y CHOI/ Primary Examiner, Art Unit 1786
Prosecution Insights