DETAILED ACTION
Response to Amendment
The amendment and response filed on April 23, 2026 has been entered. Claims 1-19 and 21 are pending.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102/103
Claims 1, 3, 5-8, 10, and 12-18 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 Lucas et al. (US Pub 2011/0247958).
Regarding claims 1, 3, 5, 6, and 16, Lucas discloses a polymer composite material comprising a polymer matrix which can include polyethylene or epoxy [0030] and polyethylene fibers [0030]. The fibers are oriented in a predetermined configuration [0023]. The composite material does not contain a blowing agent and is free of porosity. Lucas does not disclose that the composition that forms the polymer composite material exhibits a vertical rise of at least about 0.5 mm caused by an entropic state change of the oriented fibers when exposed to an elevated temperature of at least about 70ᵒC. However, this limitation does not require that the composition actually is exposed to an elevated temperature of at least about 70ᵒC such that there is a vertical rise. As set forth in the present specification in paragraph [0017], this claimed property is a function of the heating of the polymeric fibers which causes the fibers to go to a higher entropic state. Since Lucas uses the same fibers and polymeric matrix materials as the presently claimed invention, it is reasonable to conclude that the fiber-reinforced composite of Lucas would exhibit the same or similar vertical rise properties. See MPEP 2112.01, which states “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” Also, see MPEP 2112, which states “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).” Accordingly, it is held that the claimed vertical rise property is either inherent or would have been obvious based on the selection of specific matrix and fiber materials that are disclosed in Lucas absent some evidence to the contrary.
Regarding claims 7, 8, and 10, Lucas does not disclose the lap shear and vertical expansion percentage of the composition used to form the polymer composite material. However, as set forth in the above paragraph, Lucas same fibers and polymeric matrix materials as the presently claimed invention. Thus, it is reasonable to conclude that the fiber-reinforced composite of Lucas would exhibit the same or similar lap shear and vertical expansion properties. See MPEP 2112.01 and MPEP 2112.
Regarding claims 12 and 13, Lucas discloses that the fiber material can be embedded in the polymer matrix at different locations or regions [0006] and can be immobilized in the polymer matrix or on the surface layer ([0029], [0030])
Regarding claims 14 and 15, Lucas discloses that the fiber component can include a single type of fiber or combinations of different types of fibers [0030].
Regarding claims 17 and 18, Lucas uses the same materials as the presently claimed composition for the composition that forms the polymer composite material. Thus, it is reasonable to conclude that the composition of Lucas would exhibit the same melt temperature and tackiness properties as the present claims.
Claim Rejections - 35 USC § 103
Claims 2, 4, 11, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Lucas et al. (US Pub 2011/0247958).
Regarding claims 2, 11, and 21, Lucas does not specifically disclose that the fiber component includes fibers having a length from about 0.05 mm to about 50 mm. However, Lucas discloses that the fiber component can have different forms including continuous fibers and chopped fibers [0006]. As the length of the fibers used as the fiber component would be a result effective variable based on the tensile strength, stiffness and flexural modulus properties of the fiber-reinforced polymer composite, it would have been obvious to one of ordinary skill in the art to have selected a used fibers having a length within the presently claimed range, through routine experimentation motivated by the desire to optimize or discover workable ranges depending on the desired properties, such a tensile strength and flexibility.
Regarding claim 19, Lucas does not specifically disclose the claimed method of combining the fiber component to the matrix material at a temperature above the softening temperature of the matrix material but below the softening temperature of the fiber component. However, this would have been an obvious process to one of ordinary skill in the art where the fibrous material is embedded in the polymer matrix [0030].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lucas et al. (US Pub 2011/0247958) in view of Gurijala et al. (US Pub 2020/0024795).
Lucas does not disclose including a rubber component in the composition. Gurijala, which is also directed to fiber-reinforced composites, discloses that it is known in the art to include rubber components the binder matrix material ([0060], [0063]). It would have been obvious to one of ordinary skill in the art to have included an elastomer/rubber material in the matrix material of Lucas, as taught in Gurijala, motivated by the desire to impart enhanced flexibility to the composite material.
Claims 1-15, 17-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over WO2020/097050 in view of Kennedy et al. (Encyclopedia of Materials) and Folgar et al. (Journal of Reinforced Plastics and Composites).
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 caused be an entropic state change of the oriented fibers when exposed to an elevated temperature of at least about 70°C”, 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. The limitation that the vertical rise is “caused by an entropic state change of the oriented fibers” does not appear to define any structure of the claimed composition (emphasis added). Moreover, since WO ‘050 uses the same materials for the fiber and matrix materials, it would be reasonable to conclude that the properties of the composition of WO ‘050 would be the same or similar as the claimed properties. See above discussion of MPEP 2112.01 and MPEP 2112.
Regarding the newly added limitation that the composition does not contain a blowing agent, 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 the newly added limitation that the fiber component comprises oriented fibers, WO ‘050 does not specifically disclose that the fibers are oriented but does disclose that the fiber containing self-adhering patch material can be formed into a batch or continuous mixing process or formed into a sheet through an extrusion process [0037]. Kennedy discloses that the fibers become aligned, i.e., oriented, in the flow direction during an extrusion process (pg 2, Fiber Orientation Analysis, Figure 1). Additionally, Folgar discloses that fiber orientation affects the mechanical properties of the formed final article. For example, Folgar discloses that in a typical glass fiber reinforced polymer one can increase the elastic modulus four times be changing from a random array of fibers to aligned fibers (pg 99, lines 7-18). Thus, it would have been obvious to one of ordinary skill in the art to have extruded the composition of WO ‘050, as suggested in WO ‘050, to form a sheet material inherently having aligned fibers, as taught by Kennedy, motivated by desire to enhance the mechanical properties of the article formed from the composition, as taught by Folgar.
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 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 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 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].
Regarding claim 18, WO ‘050 discloses that the composition is tacky at room temperature [0018].
Regarding claim 19, 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.
Regarding claim 21, see rationale for claims 1, 2, 5 and 6 above.
Response to Arguments
Applicant's arguments filed April 23, 2026 have been fully considered but they are not persuasive.
The previous rejections under 35 U.S.C. 112(b), 35 U.S.C. 102, and 35 U.S.C. 102/103 have been overcome by the present amendment.
With respect to arguments over the prior art rejection of WO ‘050, Applicant argues that a reference that merely describes an optional component does not disclose, either expressly or inherently, a composition in which that component is affirmatively absent. The examiner disagrees because, by common definition, an optional component means that the component is not required to be present.
The arguments directed to the vertical expansion and rise properties are addressed in the above modified rejections.
Regarding claim 17, the argument that one skilled in the art would recognize that the presence of tackiness at room temperature does not inherently provide for a melting temperature of the composition is not persuasive. The tackiness of a polymer composition is directly related to the softening and melting temperature of the polymer. Further, WO ‘050 uses the same matrix materials, i.e., polyethylene and epoxy, as the present claims; thus, it would be expected that these materials would have the same softening and melting point properties.
Regarding claim 19, Applicant’s arguments fail to address the obviousness position set forth in the rejection. Namely, that 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.
Regarding claim 16, the argument that WO ‘050 in view of Shaw does not suggest a composition that is free of porosity after exposure to the claimed elevated temperature is persuasive.
Conclusion
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 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
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