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 .
This communication responds to the application and amended claim set filed June 15, 2023. Claims 1-20 are currently pending.
Priority
This application is the national stage entry of PCT/EP2021/085686, filed December 14,2021, which claims priority to EP20214723.7, filed December 16,2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
This application does not contain an abstract of the disclosure as required by 37 CFR 1.72(b). An abstract on a separate sheet is required.
Claim Objections
Claims 1, 3, 7, 8, 10, 11, 12 and 20 are objected to because of the following informalities:
Claim 1, step a) recites "at least one particulate inorganic filler C". Subsequently, claim 1, line 19 and dependent claims 3, 11 and 12 use inconsistent language to refer to the "at least one particulate inorganic filler". For example, see claim 1, line 19: "the particulate inorganic filler C". The applicant should use consistent language throughout the claims to refer to this limitation. Appropriate correction is required.
In claims 8, step d) is suggested that “of the at least one further additive D” be replaced with “of the at least one additive D” to ensure consistency. Appropriate correction is required.
In claims 7, 10 and 20, it is suggested that “of the thermoplastic molding compound A” be replaced with “ of the at least one thermoplastic molding compound A” to ensure consistency.
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 7 and 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 pre-AIA the applicant regards as the invention.
Claims 7 and 20 recite “of the at least one particulate organic filler C”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination ”the at least one particulate organic filler C” is interpreted as ”the at least one particulate inorganic filler C”.
Claim Analysis
Summary of Claim 1:
A process for producing a fiber-reinforced thermoplastic composite material V comprising:
a)
a thermoplastic matrix composition M comprising at least one thermoplastic molding compound A, at least one particulate inorganic filler C, and optionally at least one additive D; and
b)
at least one continuous reinforcing fiber B;
wherein the process comprises at least the following process steps:
i)
providing the at least one continuous reinforcing fiber B;
ii)
providing at least one thermoplastic matrix composition M obtained by mixing the at least one thermoplastic molding compound A, the at least one particulate inorganic filler C and optionally the at least one additive D;
iii)
combining the thermoplastic matrix composition M with the at least one continuous reinforcing fiber B;
iv)
impregnating the at least one continuous reinforcing fiber B with the thermoplastic matrix composition M in order to obtain a composite material V;
v)
consolidating the resultant composite material V; and
vi)
optionally solidifying and/or optionally further process steps;
wherein, in process step iii), the thermoplastic matrix composition M comprising the particulate inorganic filler C, in the form of a thermoplastic film, is combined with the at least one continuous reinforcing fiber B,
wherein the thermoplastic matrix composition M consists of the at least one particulate inorganic filler C to an extent of 20% to 80% by volume.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schroer et al. (KR 2020-0034712 A, US PG Pub 2021/0363814 A1 is being used as English translation) in view of Niessner ( WO2020/221764 as listed on the IDS dated 06/15/2023; US 2022/0195163 A1 as listed on the IDS dated 8/11/2022).
Regarding claims 1 and 15, Schroer et al. teach a process for producing a continuous fiber-reinforced thermoplastic product ( which corresponds to the thermoplastic composite material V) for vehicles door modules having high mechanical properties, improved surface uniformity and appearance and stability (abstract, [0002]- [0008]), wherein the process comprises:
a) providing at least one thermoplastic or a thermoplastic matrix composition (which correspond to the thermoplastic molding compound A) [0043] including mixtures of the thermoplastic with at least one particulate inorganic filler [0020] such as glass beads, chalk (calcium carbonate), mica, among others and additives ([0069],[0070]), thereby reading on the particulate inorganic filler C, the additive D and the thermoplastic composition M.
b) providing semifinished fiber product plies made of continuous fibers ([0045],[0072]) as reinforcement [0040], thereby reading on the step i).
wherein the process comprises the following process steps:
- providing the fillers or additives dispersed or compounded in the thermoplastic by any melt-mixing method, before application to the continuous fibers (fiber plies) [0070], thereby reading on the step ii);
- applying the thermoplastic composition to the continuous reinforcing fiber, wherein the compounded thermoplastic composition is applied in the form of a film [0093], thereby reading on the step iii);
- impregnating the continuous reinforcing fibers with at least one thermoplastic or with the thermoplastic composition, [0046] , thereby reading on the step vi);
- removing air from the entirety of all semifinished fiber product plies impregnated with at least one thermoplastic or thermoplastic composition and removing the excess thermoplastic resin (consolidating) [0047] , thereby reading step v;
- molding the impregnated fiber matrix into a door module shape, [0049] and curing the door module ([0048]-[0050]), thereby reading on the optional step vi).
Schroer et al. are silent on the content by volume of the inorganic filler as recited by the instant claim.
However, Niessner teaches polymer compositions that contain a thermoplastic molding compound A, at least one reinforcing fiber B and at least one inorganic filler material C, the polymer composition having excellent aesthetic quality after thermoplastic processing (abstract). Niessner further teaches the surface of fiber filled material is improved by adding components having isotropic shrinkage such as inorganic fillers, wherein this is achieved when the thermoplastic matrix consist of 40-50% by volume of the at least one particulate inorganic filler [0136]. Niessner offers the motivation of using the amount of filler to reduce the shrinkage and improve the surface of the final product [0018]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the amount of filler on the composite of Schroer et al., thereby arriving at the claimed invention.
Regarding claim 2, Schroer et al. are silent on the average thickness of the thermoplastic film as recited in the instant claim.
Schroer et al. teach fillers or additives are dispersed or compounded in the thermoplastic polymer by any melt-mixing method to form the thermoplastic composition, which is applied to continuous fiber plies in the form of a film ([0070], [0093]). Schroer et al. further teach the thermoplastic composition is applied to the continuous fiber plies in amounts that result in a proportion by volume of fiber materials, in the semifinished fiber matrix product in the range from 5 to 90%, preferably from 30 to 60% by volume [0094]. Furthermore, Schroer et al. teach the thickness of a single-layer semifinished fiber matrix product to be used in door modules is in the range from 0.05 mm to 6 mm, preferably 0.1-2 mm, most preferable from 0.3 to 1 mm [0017]. The thickness of the thermoplastic film (thermoplastic polymer + filler + additives) directly determines the amount of the thermoplastic composition applied to the continuous reinforcement fibers [0094]. As such, the thickness of the thermoplastic film would directly control the fiber/thermoplastic composition ratio after impregnation and consolidation. Therefore, the thickness of the thermoplastic film can be optimized to reach the desired fiber/thermoplastic composition ratio after impregnation and the composite thickness, via routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. Inre Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the thickness of the thermoplastic film for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding claim 3, Schroer et al. are silent on the coefficient of thermal expansion of the particulate inorganic filler.
However, Niessner teaches the inorganic filler is selected from selected from glass powder, calcium carbonate, , talc, silicates, phosphates, sulfates, carbonates and borates ([0094], [0096]) and during the production of the of the polymeric composition, the inorganic filler C is added to the thermoplastic molding compound A. Niessner further teaches the inorganic filler has a coefficient of thermal expansion in the range of 1*10 -6 to 20 *10-6 K-1 [0099]. It would have been obvious to one of ordinary skill in the art at the time of the invention to form a fiber-reinforced composite according to Schroer et al. having a particulate inorganic filler’s coefficient thermal expansion of 1*10 -6 to 20 *10-6 K-1, as Niessner demonstrates this range as being suitable for similar composites to reduce shrinkage differences between fibers and polymer resulting in improved surface quality [0019]. This represents the use of a suitable range of coefficient of thermal expansion of a particulate inorganic filler in a similar fiber reinforced thermoplastic composite application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding claims 4 and 18, Schroer et al. teach the thermoplastic molding compound is selected from polyolefins including polypropylene and polyethylene, polyamides, polyacrylates, among others( [0054],[0056], [0062], claims and 20). Schroer et al. further teach the compounded thermoplastic matrix film is applied to the continuous fiber plies (step iii) [0093]. Subsequently, heat and pressure are applied, wherein the continuous fiber plies that has been contacted with the thermoplastic composition are heated up to initiate the impregnation and consolidation of the fiber material (step iv) [0097].
Schroer et al. are silent on the temperature of process step iii).
Niessner teaches the temperature for combining the thermoplastic matrix with continuous reinforcing fibers is at least 200°C [0128]. Considering Niessner teaches polypropylene and polyamides, as the thermoplastic molding compound, this temperature is above the melting point, ensuring proper wetting and dispersion. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to perform the step of combining the thermoplastic matrix composition with the continuous reinforcing fibers of Schroer et al. at a temperature of at least 200°C to achieve homogeneous fiber impregnation.
Regarding claims 5-6, Schroer et al. teach the impregnation step is performed at 10-20°C greater than the melting temperature of the thermoplastic to be used [0098] and the pressure in the range from 10 to 40 bar. Schroer et al further teach in the examples that thermoplastic matrix 1 was applied and distributed over the continuous fiber plies and the temperature of the impregnation step is 300°C and the pressure of 24 bar (2.4 MPa) [0155], as required by the instant claims.
Regarding claims 7 and 20, Schroer et al. are silent on the composition of the thermoplastic matrix M, as recited in the instant claim.
However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of inorganic filler and thermoplastic molding compound to produce a thermoplastic composition that reduce the shrinkage and improve the dimensional stability and mechanical properties of the composite.
Regarding claim 8, Schroer et al. are silent on the composition of the fiber-reinforced thermoplastic composite, as recited in the instant claim.
However, Schroer et al. teach a process for producing single-layer semifinished fiber matrix products based on continuous fiber plies impregnated with a thermoplastic composition, as discussed in the rejection of claim 1. Schroer et al. further teach the thermoplastic composition is applied to the continuous fiber plies in amounts that result in a proportion by volume of fiber materials, in the semifinished fiber matrix product (fiber- reinforced thermoplastic composite) in the range from 5 to 90% [0094]. Schroer et al. further teach the fiber- reinforced thermoplastic composite has a proportion by volume of air or gas of less than 5% by volume [0010] achieved through the removal of excess resin during consolidation ([0034], [0036], [0042]). As such, Schroer et al. teach that the composition of the composite would have been considered an result effective variable that can be adjusted by optimizing the content of continuous fibers, the content of thermoplastic molding compound and the inorganic filler, the proportion by volume of fibers and the proportion of air. Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would be motivated to improve mechanical properties, reduce shrinkage and surface appearance of the final product by optimizing the composition of the reinforced- continuous fiber composite through routine experimentation, thereby arriving to the claimed invention.
Regarding claims 9-10 and 14, Schroer et al. teach the thermoplastic molding compound is selected from semicrystalline polymer such as polyolefins including polypropylene and polyethylene, polyamides, etc. and mixtures thereof ([0010], [0020], [0054], [0056], [0062], claims 17 and 20).
Schroer et al. are silent on thermoplastic molding compound comprises a thermoplastic polymer A1 and at optionally at least one polar functionalized polymer A2. Schroer et al are further silent on the content of A1 and A2 as recited by the instant claim.
Niessner teaches the thermoplastic molding compound comprises at least one semicrystalline polymer A1, preferably at least one semicrystalline polyolefin polymer A1, and optionally comprises at least one polymer A2 comprising at least one functional monomer A2-1 ([0021],[0055]); in particular A2 is a polar-functionalized polymer such as propylene-maleic anhydride graft copolymer [0020], as required by the instant claim 9. Niessner further teaches the thermoplastic molding compound comprises 0 to 99% by weight of the at least one polymer A2 and/or A3, respectively based on the entire thermoplastic molding compound [0055]. In a preferred embodiment, the thermoplastic molding compound comprises 60 to 99.9% by weight of the at least one semicrystalline polymer A1, in particular of the semicrystalline polyolefin polymer A1 such as homo or copolymer of ethylene and propylene [0065], and 0.1 to 20% by weight, preferably 3 to 5 wt.% of the at least one polymer A2, respectively based on the entire thermoplastic molding composition A, ([0072] , claim 19) as required by instant claims 10 and 14. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the polyolefin of Schroer et al. in place of semicrystalline polyolefin polymer A1 and the polar-functionalized polyolefin A2, in amounts within the range disclosed by Niessner et al., with the expected result of improved mechanical properties due to the enhancement of the compatibility with the reinforcing continuous fibers [0073], thereby arriving to the claimed invention.
Regarding claims 11 and 12, Schroer et al. teach particulate inorganic filler [0020] such as glass beads, chalk (calcium carbonate), mica, among others [0069]-[0070], as required by the instant claim 12.
Schroer et al. are silent on the density and the median particle size of the inorganic filler.
Given that calcium carbonate is used in the instant specification as the inorganic filler having a density of 2.3-2.8 g/ml [see paragraph [0257] of the specification), therefore the calcium carbonate of Schroer et al. is considered to read on the claimed density.
Referring to the median particle size of the inorganic filler, Niessner teaches an inorganic particulate filler having an average particle size D50 in the range of up to 100 µm, preferably up to 10 µm [0097]. It would have been obvious to one of ordinary skill in the art at the time of the invention to form a fiber-reinforced composite according to Schroer et al. having a particulate inorganic filler’s median particle size of up to 100 µm, preferably up to 10 µm, as Niessner demonstrates this range as being suitable for similar reinforced-continuous fiber composites to reduce shrinkage differences between fibers and polymer resulting in improved surface quality [0019]. This represents the use of a suitable range of average particle size D50 of the particulate inorganic filler in a similar fiber reinforced thermoplastic composite application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding claims 16 and 17, Schroer et al. in view of Niessner teach the limitation of the 20-70% by volume and 30-60 % by volume of the at least one inorganic particulate filler as discussed in the rejection of instant claim 1.
Regarding claim 19, Schroer et al. teach the impregnation step is performed 10-20°C greater than the melting temperature of the thermoplastic to be used [0098], which implies the step of impregnation (step iv)) can be 200 °C or less than 300 °C, if the thermoplastic used has a melting point in that range, like semicrystalline polyamides (claim 17) which are exemplified as the thermoplastic molding compound, thereby reading on the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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, JOSEPH DEL SOLE can be reached at 571-272-1130. 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.
/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763