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 .
Response to Amendment
The preliminary amendment filed on July 06, 2023 has been entered. Claims 1-19 and 21 are pending.
Claim Rejections - 35 USC § 112
Claims 10, 16, and 17 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.
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 10 recites the broad recitation of “a vertical expansion percentage of at least 200%”, and the claim also recites “at least 300%, or even at least 400%” which is the narrower statement of the range/limitation. Likewise, claim 17 recites the broad recitation of “a melt temperature of less than 200 ᵒC”, and the claim also recites “or even less than 100 ᵒC” which is the narrower statement of the range/limitation. The presence of the terminology of “or even” is interpreted as being a preferred range as opposed to an alternative range. Thus, claims 10 and 17 are considered indefinite because there is a question or doubt as to whether the features 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.
The phrase “substantially free of porosity” in claim 16 is a relative term which renders the claim indefinite. The term “substantially free” 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.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 10-13, 18, and 21 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO2020/097050.
Regarding claim 1, WO ‘050 discloses a composition comprising a fiber component [0008] and a matrix material [0019]. With respect to the limitation that “the composition experiences a vertical rise of at least about 0.5 mm in the absence of any blowing agent when exposed to an elevated temperature of at least about 70°C”, this limitation does exclude the presence of a blowing agent and only requires the vertical rise property when measured in the absence of a blowing agent. WO ‘050 discloses that the composition exhibits an initial thickness to post cure thickness ratio of about 1:1 to 1:5 and has a vertical rise of about 110-400 % [0010]. WO ‘050 further discloses that the composition can have an initial thickness of from 0.1-5 mm and a post-cure thickness of about 0.5-7 mm. Thus, WO ‘050 discloses the claimed vertical rise limitation. Moreover, WO ‘050 discloses that a blowing agent “may” be present ([0008], [0032]) which would reasonably infer that it is an optional component of the composition of WO ‘050.
Regarding claim 2, WO ‘050 discloses that the fibers having a length of from about 1-30 mm [0029].
Regarding claim 3, WO ‘050 discloses that the fibers can be polymeric [0029].
Regarding claim 4, WO ‘050 discloses that the fibers are present in an amount of about 2-15 wt% [0031].
Regarding claims 5 and 6, WO ‘050 discloses that the matrix material can be an epoxy resin or ethylene-based polymer [0019].
Regarding claim 10, WO ‘050 discloses that the composition can have a vertical expansion of up to three times its initial height/thickness [0009].
Regarding claim 11, WO ‘050 discloses that the fibers can include polyethylene fibers [0029]
Regarding claims 12 and 13, WO ‘050 discloses that the fiber length are controlled such that the fibers are completely mixed during the manufacturing process [0031]. This would result in fibers being both substantially homogeneously present throughout the composition as well as on the surfaces of the matrix material.
Regarding claim 18, WO ‘050 discloses that the composition is tacky at room temperature [0018].
Regarding claim 21, see rationale for claims 1, 2, 5 and 6 above.
Claim Rejections - 35 USC § 102/103
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 7-9, 14, 15, and 17 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO2020/097050.
Regarding claims 7 and 8, WO ‘050 does not disclose a comparison of the lap shear and vertical expansion percentage of a composition having fibers versus a composition having a blowing agent. However, as noted above, a blowing agent is deemed to be an optional component in the composition of WO ‘050. Moreover, the phrase of “not more than 30% less than” reads on no change and; thus, since WO ‘050 discloses a composition that reads on claim 1, these claimed properties are deemed to be inherent to the composition of WO ‘050. As set forth in MPEP 2112, “Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. ‘There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.’ In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).”
Regarding claim 9, WO ‘050 discloses that the composition can include a rubber component ([0022], [0033], [0034]).
Regarding claims 14 and 15, WO ‘050 discloses that the composition can include one or more types of fibers [0029].
Regarding claim 17, WO ‘050 discloses that the composition can be tacky, i.e., soften or melt, at a temperature of up to 80 ᵒC [0018].
Claim Rejections - 35 USC § 103
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over WO2020/097050.
WO ‘050 does not specifically disclose the temperature in which the fiber component is combined or mixed with the matrix material. However, it would have been within the level of ordinary skill in the art to select a temperature such that the fibers remain intact and can be mixed with the matrix material. Moreover, WO ‘050 states that the fiber length is limited by the ability to completely mix with the matrix material during processing [0031]; thus, WO ‘050 appreciates the importance of maintaining the fibrous form of the fiber component in the composition.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over WO2020/097050 in view of Shaw et al. (US 4,643,940).
As noted above in the rejection under 35 U.S.C. 112(b), the scope of the relative phrase “substantial free of porosity” is indefinite. As best understood, this is believed to mean that there is no void formation step used in the manufacturing of the composition. Also, as noted above, WO ‘050 discloses that a blowing agent “may” be present ([0008], [0032]) which would reasonably infer that it is an optional component of the composition of WO ‘050. Shaw discloses a composition comprising a matrix material and fibrous materials, which optionally includes a blowing agent (col 4, lines 16-17). Shaw discloses that when the composition is heated the fibrous material creates a lofting or expansion (col 3, line 6+). Thus, it would have been obvious to one of ordinary skill in the art to have prepared the composition of WO ‘050 without any blowing agents which would result in lofting and expansion of the composition without the formation of any voids, as taught in Shaw, motivated by the desire to obtain a composition that was useful as a reinforcing patch material without the need of subjecting the composition to a foaming step.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781