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
Amendments to the claims, filed on 8/4/25, have been entered in the above-identified application.
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1, 3-6, 11-16, 19-22, 27, 29-31, and 42 in the reply filed on 8/4/25 is acknowledged. The Examiner acknowledges the addition of claim 42.
Information Disclosure Statement
The information disclosure statement filed 9/21/23 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 states “wherein the inner core is integrally bonded to the outer shell,” but claim 1 from which it depends states “an outer shell surrounding the inner core… and an interior surface integrally bonded to the inner core” which appears to be the same structurally or have the same meaning; so, claim 11 is rejected for failing to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 3, 4, 11, 13-16, 19, 21, 29 and 30 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Roth (US 2008/0098935 A1).
Regarding claim 1 and 11, Roth teaches a composite structure comprising an inner core (4) comprising foam (e.g. foamed synthetic resin); and an outer shell (12, 14) surrounding the inner core, having an exterior surface and an interior surface integrally bonded to the inner core, and comprising a mixture of fiber reinforcement (e.g., reinforcing layer (12) such as a fibrous mat and a web (14) such as a fabric) and a resin, wherein the resin is resistant to ultraviolet (UV) radiation, and wherein the resin extends from the exterior surface of the outer shell to the interior surface of the outer shell such that UV-resistance provided by the resin extends from the exterior surface of the outer shell to the interior surface of the outer shell (e.g., 100% permeation); wherein the inner core is integrally bonded to the outer shell (para 19, 21-22, 83, 84, 94, 137-140; fig 1).
Regarding claim 3, Roth teaches wherein the fiber reinforcement is impregnated by the resin (para 137-140).
Regarding claim 4, the limitation of the instant claim is a product by process limitation and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 4 and the product of Roth.
Regarding claim 13, Roth teaches a specific embodiment wherein the composite structure does not comprise a UV-resistant coating provided on the outer shell (para 16, 84-85; fig 1).
Regarding claims 14 and 15, Roth teaches a closed-cell polyurethane foam (para 23).
Regarding claims 16 and 19, Roth suggests embodiments wherein the foam is a high-density foam, and wherein a density of the foam is at least about 5 pounds per cubic foot; and wherein the inner core has a compression strength of at least 300 pounds per square inch (para 28-30, 237, 246, 249).
Furthermore, Roth suggests the polyurethane foam core of instant claimed so it is deemed to possess a compression strength of at least 300 pounds per square inch. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Regarding claim 21, Roth suggests species wherein the resin is fire-resistant (para 104, 149).
Regarding claims 29 and 30, Roth teaches wherein the elongate member is rectangular; and wherein at least one corner of a cross-section of the inner core comprises a straight portion, wherein the cross-section is taken perpendicularly to a longitudinal axis defined by the elongate member (fig 1).
Claim Rejections - 35 USC § 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.
Claim 20 and 42 is 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 Roth.
Regarding claim 20, Roth teaches the outer shell is made from fiberglass and impregnated with polyurethane resin and the core is made from polyurethane foam (para 21-23, 95, 112, 125, 137). Polyurethane and fiberglass are naturally non-conductive; so Roth would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention wherein the composite structure is non-conductive.
Regarding claim 42, Roth teaches its composite structural material as a replacement for synthetic wood in posts, joists, and beams, and gives a specific application of a telephone pole (para 1, 254) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention wherein the composite structure is comprised in a crossarm or a brace for a utility pole or the structural equivalent.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Roth as applied to claim 1 above, and further in view of Chen et al (US 2022/0153911 A1).
Roth teaches the composite structure of claim 1. Roth further teaches the resin is a polyurethane resin (para 137); and its composite structural material as a replacement for synthetic wood in posts, joists, and beams, and gives a specific application of a telephone pole (para 1, 254).
Roth fails to suggest wherein the resin comprises an aliphatic polyurethane resin; and wherein the aliphatic polyurethane resin is a dicyclohexylmethane diisocyanate (HMIND)-terminated polyether prepolymer or an aliphatic isocyanate resin.
Chen teaches a polyurethane-polyisocyanurate composition for use in telegraph pole cross arms and telegraph poles (abstract); wherein its polyurethane-polyisocyanurate composition comprises an aliphatic polyurethane resin, e.g., an aliphatic polyisocyanate (para 13); and has a fast curing speed and exhibits superior mechanical properties (para 5).
Therefore, it would have been obvious to one of ordinary skill in the art at the time to substitute the polyurethane-polyisocyanurate composition of Chen for the polyurethane resin of Roth, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). Additional motivation is provided by using a polyurethane-polyisocyanurate composition that has a fast curing speed and exhibits superior mechanical properties.
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Roth as applied to claim 1 above, and further in view of Limerkens et al (US 8,067,476 B2).
Roth teaches the composite structure of claim 1. Roth further teaches the impregnating resin is UV resistant (para 139), so its outer shell would be UV resistant; and its core is made from a thermoplastic or polyurethane foam (para 22-23).
Roth fails to suggest wherein the composite structure is UV-resistant throughout the entire composite structure.
Limerkens teaches foamed thermoplastic polyurethanes that have very high tensile and tear strength, high flexibility at low temperatures, extremely good abrasion and scratch resistance, and stability against UV radiation (col 1, lines 23-31).
Therefore, it would have been obvious to one of ordinary skill in the art at the time to substitute the foamed thermoplastic polyurethanes of Limerkens for the polyurethane foams or thermoplastic foams of Roth, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). Additional motivation is provided by using foamed thermoplastic polyurethanes that have very high tensile and tear strength, high flexibility at low temperatures, extremely good abrasion and scratch resistance, and stability against UV radiation.
The combined structure and composition of Roth as modified by Limerkens would have an outer shell and core that is UV resistant, i.e., wherein the composite structure is UV-resistant throughout the entire composite structure.
Claims 22, 27, and 31 is rejected under 35 U.S.C. 103 as being unpatentable over Roth as applied to claims 1 and 29 above, and further in view of Britt, Jr. (US 2016/0208510 A).
Roth teaches the composite structure of claims 1 and 29. Roth teaches its composite structural material as a replacement for synthetic wood in posts, joists, and beams, and gives a specific application of a telephone pole (para 1, 254) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention wherein the composite structure is comprised in a crossarm or a brace for a utility pole or the structural equivalent.
Roth fails to suggest wherein the composite structure forms an elongate member, and wherein endcaps are secured to ends of the elongate member; wherein at least one of the endcaps comprises one or more retention features for securing the at least one of the endcaps to one of the ends of the elongate member; and wherein at least one corner of a cross-section of the outer shell is curved, wherein the cross-section is taken perpendicularly to a longitudinal axis defined by the elongate member.
Britt, Jr. teaches a fiber-reinforced composite structure, such as a cross arm for use in the power industry; wherein the composite structure forms an elongate member, and wherein endcaps are secured to ends of the elongate member; wherein at least one of the endcaps comprises one or more retention features (e.g., screws or adhesives) for securing the at least one of the endcaps to one of the ends of the elongate member; and wherein at least one corner of a cross-section of the outer shell is curved, wherein the cross-section is taken perpendicularly to a longitudinal axis defined by the elongate member (abstract, para 55, 68; figs 2a-6, 7b).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the structural features of the composite materials of Britt, Jr., with the composite materials of Roth for a cross arm that is used in the power industry, i.e., combining prior art elements (composite material designs of Britt, Jr. and Roth) according to known methods (e.g, combination or incorporation of structures of similar composite materials) to yield predictable results (e.g., a cross arm that is used in the power industry).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/ Primary Examiner, Art Unit 1783