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 amendment filed on 1/27/2026 has been entered.
Claim Rejections - 35 USC § 102/103
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 (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.
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 6-11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by USPAP 2020/0070998 to Ayyadurai or, in the alternative, under 35 U.S.C. 103 as obvious over USPAP 2020/0070998 to Ayyadurai in view of USPAP 2011/0009528 to Tomioka, USPAP 2011/0319525 to Maeda, and/or USPN 4,784,899 to Ono.
Claim 6, Ayyadurai discloses a method of manufacturing a fiber composite material including a base material (two lowermost layers 44) made from a carbon fiber reinforced resin, the method of manufacturing the fiber composite material comprising: acquiring the base material in which carbon fibers are impregnated with a first matrix resin; superimposing, as different layers, a fiber layer (uppermost layer 44) made from carbon fibers, and a conductive layer (24) made from a conductor to form a multilayer structure in which the conductive layer is arranged on one side of the fiber layer, and impregnating the fiber layer and the conductive layer in the multilayer structure with a second matrix resin to obtain a composite layer; laminating the composite layer on the base material in which the fist matrix resin is impregnated, in a manner so that the fiber layer is positioned between the conductive layer and the base material; and bonding the base material in which the first matrix resin is impregnated and the composite layer in which the second matrix resin is impregnated via the second matrix resin (see entire document including Figure 4 and [0019]-[0036]).
Plus, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). MPEP 2144.04.
Claim 7, obtaining of the composite layer includes: superimposing the fiber layer and the conductive layer, and thereby obtaining a preliminary laminated body having a layered structure; overlaying a binding resin on both end surfaces of the preliminary laminated body; and impregnating the fiber layer and the conductive layer with the binding resin to form the first matrix resin (Figure 5). Specifically, the fiber layer and conductive layer are together a laminated body (Figure 4). Both the fiber layer and the conductive layer are impregnated with binding resin ([0019] and [0035]) therefore binding resin is inherently on both end surfaces of the laminated body. Plus, Tomioka discloses that it is known in the art to impregnate carbon fibers by placing resin films on each side of the carbon fibers and applying heat and pressure such that the resin impregnates the carbon fibers (see entire document including [0001], [0002], [0189] and [0208]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to impregnate the composite layer by any suitable known method, such as claimed, because it is within the general skill of a worker in the art to select a known method on the basis of its suitability and desired characteristics.
Clam 8, Ayyadurai does not appear to mention the specific amount of the second matrix resin but Tomioka discloses that it is known to set the amount of matrix resin to be less than or equal to 275 g/m2 of the layer to provide a product with excellent strength [0129]. Therefore, it would have been obvious to one having ordinary skill in the art to set the amount of second matrix resin to be less than or equal to 275 g/m2 of the composite layer to provide a product with excellent strength.
Claim 9, Ayyadurai discloses that the base material may comprise three or more plies of carbon fiber-reinforced plastic [0035] but Ayyadurai does not appear to mention the specific structure of each ply. Maeda discloses that it is known in the art to construct a stack of carbon fiber layers such that at least two plies are aligned in different directions and one ply may be a fiber cloth (see entire document including [0001], [0002], [0088] and [0097]-[0100]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the base material plies with any suitable construction, such as claimed, because it is within the general skill of a worker in the art to select a known fabric stack construction on the basis of its suitability and desired characteristics.
Claim 10, the conductor is formed from a metal mesh (0022] and [0024]). Ayyadurai does not appear to mention the thickness of the fiber layer or conductive layer but Ono discloses that it is known in the FRP art to construct a conductive layer with a thickness of about 0.01 to 0.2 mm and an adjacent fiber layer with a thickness of about 0.01 to 2 mm (see entire document including column 5, line 34 through column 6, line 20). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the conductive layer and fiber layer with any suitable thicknesses, such as claimed, because it is within the general skill of a worker in the art to select layer thickness on the basis of its suitability and desired characteristics.
Claim 11, Ayyadurai does not appear to mention the conductor being formed from a non-woven fabric but Ono discloses that it is known in the FRP art to construct a conductive layer in non-woven fabric form and having a thickness of about 0.01 to 0.2 mm and an adjacent fiber layer with a thickness of about 0.01 to 2 mm (see entire document including column 5, line 34 through column 6, line 20). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the conductor in non-woven fabric form and the conductive layer and fiber layer with any suitable thicknesses, such as claimed, because it is within the general skill of a worker in the art to select layer structure and thickness on the basis of its suitability and desired characteristics.
Claim Rejections - 35 USC § 103
Claims 6-11 are rejected under 35 U.S.C. 103 as obvious over USPN 4,784,899 to Ono in view of USPAP 2011/0319525 to Maeda, USPAP 2020/0070998 to Ayyadurai, and/or USPAP 2011/0009528 to Tomioka.
Claim 6, Ono discloses a method of manufacturing a fiber composite material including a base material (1) made from a fiber reinforced resin, the method of manufacturing the fiber composite material comprising: acquiring the base material in which fibers are impregnated with a first matrix resin; superimposing, as different layers, a fiber layer (2) made from fibers, and a conductive layer (3) made from a conductor to form a multilayer structure in which the conductive layer is arranged on one side of the fiber layer, and impregnating the fiber layer and the conductive layer in the multilayer structure with a second matrix resin to obtain a composite layer; laminating the composite layer on the base material in which the fist matrix resin is impregnated, in a manner so that the fiber layer is positioned between the conductive layer and the base material; and bonding the base material in which the first matrix resin is impregnated and the composite layer in which the second matrix resin is impregnated via the second matrix resin (see entire document including Figure 2, column 2, line 51 though column 3, line 37 and column 5, line 12 through column 8, line 9).
Plus, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). MPEP 2144.04.
Ono does not appear to mention the use of carbon reinforcing fibers but Maeda discloses that it is known in the FRP art to use carbon fibers to provide enhanced fire retardance, strength, and impact resistance (see entire document including [00101], [0002] and [0088]). Therefore, it would have been obvious to one having ordinary skill in the art to construct the woven fabric and substrate layer of Ono from carbon fibers to provide enhanced fire retardance, strength, and/or impact resistance.
Claim 7, obtaining of the composite layer includes: superimposing the fiber layer (2) and the conductive layer (3), and thereby obtaining a preliminary laminated body having a layered structure; overlaying a binding resin (1 and 4) on both end surfaces of the preliminary laminated body; and impregnating the fiber layer and the conductive layer with the binding resin to form the first matrix resin (Figure 2 and column 2, line 51 through column 3, line 37).
Clam 8, Ono does not appear to mention the specific amount of the second matrix resin but Tomioka discloses that it is known to set the amount of matrix resin to be less than or equal to 275 g/m2 of the layer to provide a product with excellent strength [0129]. Therefore, it would have been obvious to one having ordinary skill in the art to set the amount of second matrix resin to be less than or equal to 275 g/m2 of the composite layer to provide a product with excellent strength.
Claim 9, Ono does not appear to mention the specific structure of the substrate layer but Maeda discloses that it is known in the art to construct a stack of carbon fiber layers such that at least two plies are aligned in different directions and one ply may be a fiber cloth (see entire document including [0001], [0002], [0088] and [0097]-[0100]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the substrate layer with any suitable construction, such as claimed, because it is within the general skill of a worker in the art to select a known fabric stack construction on the basis of its suitability and desired characteristics.
Claim 10, Ono discloses that conductive layer may have a thickness of about 0.01 to 0.2 mm and the woven fiber layer may have a thickness of about 0.01 to 2 mm (column 5, line 34 through column 6, line 20). Ono does not appear to mention the conductor being made of a metal mesh but Ayyadurai discloses that it is known in the FRP art to construct a conductive layer as a metal mesh (see entire document including [0022] and [0024]. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the conductor of Ono in metal mesh form, because it is within the general skill of a worker in the art to select layer structure on the basis of its suitability and desired characteristics.
Claim 11, the conductor is formed from a non-woven fabric (paragraph bridging columns 2 and 3) and Ono discloses that the non-woven fabric may have a thickness of about 0.01 to 0.2 mm and the woven fiber layer may have a thickness of about 0.01 to 2 mm (column 5, line 34 through column 6, line 20).
Response to Arguments
Applicant's arguments filed 1/27/2026 have been fully considered but they are not persuasive.
The applicant asserts that Ayyadurai fails to disclose first and second matrix resins. The examiner respectfully disagrees. Ayyadurai discloses that the base material (two lowermost layers 44) are made from a carbon fiber reinforced polymer ([0035] and Figure 4). Said polymer is considered the claimed first matrix resin. Ayyadurai further discloses a fiber layer (uppermost layer 44) made of carbon fiber reinforced polymer ([0035] and Figure 4) and a conductive layer (24) comprising a conductor and polymer ([0024] and Figure 4). The polymer impregnating the fiber layer (uppermost layer 44) and the polymer of the conductive layer (24) is considered the claimed second matrix resin.
The applicant also asserts that Ayyadurai fails to teach or suggest that the conductive layer (24) and the fiber layer (uppermost layer 44) are layered as different layers. The examiner respectfully disagrees. Figure 4 of Ayyadurai clearly shows the two layers as two different layers with the conductive layer arranged on one side of the fiber layer.
The applicant asserts that Ono fails to teach or suggest that the first matrix resin and the second matrix resin are “clearly distinguished.” Applicant’s argument is not persuasive because claim 6 does not require the first and second matrix resins be “clearly distinguished.” Plus, Ono does disclose that the layers are distinct layers (paragraph bridging columns 7 and 8).
The applicant also asserts that Ono fails to teach or suggest that the base material (1) is bonded to the composite layer (2 and 3) via the second matrix resin. The examiner respectfully disagrees. Ono discloses that via pressure, resin flows from the base material (1) and impregnates the woven fiber layer (2) and the conductive layer (3) (column 5, line 12 through column 6, line 39). The process results in the base layer being impregnated with resin and the fiber layer (2) and conductive layer (3) also being impregnated with resin. After applying said pressure, the resin of the base material is considered the claimed first matrix resin and the resin of the fiber layer (2) and the conductive layer (3) is considered the claimed second matrix resin. Ono discloses that all the resin is subject to curing (claims 1-3) which inherently results in the base material (1) being bonded to the fiber layer (2) via the first the second matrix resins.
Conclusion
Applicant's amendment necessitated any 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 ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
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