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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 4-6, claim 4 recites a carbon piece adhering to an exterior surface of the metal body, and a bonding portion interposed between the exterior surface of the metal body and the carbon fiber piece. Applicants’ specification as originally filed does not appear to recite the claimed limitation. Therefore, the limitations constitute new matter.
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 4-6 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.
Regarding claims 4-6, claim 4 recites a carbon piece adhering to an exterior surface of the metal body, and a bonding portion interposed between the exterior surface of the metal body and the carbon fiber piece. It is unclear how the carbon piece can simultaneously adhere to an exterior surface of the metal body while a bonding portion is interposed between the exterior surface of the metal body and the carbon fiber piece.
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 1-6 are is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 90/09461 to Corbett.
Regarding claims 1-6, Corbett teaches a fiber-organic composition including from about 5% to 50% by volume of uniformly dispersed, non-planar or three-dimensionally random oriented inorganic fiber or whiskers and dispersion of the inorganic fibers or whiskers, molding the mixture leaving a shaped body or preform, and then infiltrating with molten metal to form a metal matrix composite (Corbett, Abstract), wherein the metal is magnesium and magnesium alloys (Id., claims 31-39). Corbett teaches that an organic thermoplastic molding compound such as a wax is added to aid in wetting and dispersion of the fibers (Id., page 10 lines 24-31, page 14 line 12 to page 14 line 22, page 23 lines 11-21). Corbett teaches that the short inorganic fibers may be silicon carbide whiskers or carbon fibers (Id., page 11 lines 9-19). Corbett teaches that the whiskers have lengths of between about 5 and more than 1,000 microns, and diameters of about 0.05 to 5 microns or 0.01 to 25 microns (Id., page 23 line 22 to page 24 line 18), and average aspect ratios of from about 20 to about 100 (Id., page 27 line 32 to page 28 line 8). Corbett teaches removing a majority but not all of the thermoplastic material, wherein bonding between the fibers is accomplished with silica (Id., page 7 lines 4-30, page 29 line 2 to page 30 line 20). Corbett teaches that low percentages of fibers in the order of 20% by volume or less could be subsequently molded if a fugitive material such as a polymeric organic material is added (Id., page 30 lines 21-30). Corbett teaches that the fibers amount to at least about 10% to about 40% by volume of the metal matrix composite (Id., claim 32).
Regarding the claimed area fraction, since the carbon fiber is present in a fiber volume fraction of at least about 10% to about 40%, it is reasonable for one of ordinary skill to expect that such a fraction reasonably corresponds to the claimed area fraction. Alternatively, it is reasonable for one of ordinary skill to expect that an area fraction of the uniformly dispersed carbon fibers may be within the claimed range, when a cross section is measured. Note that the cross section itself is not identified.
Regarding the preamble, Corbett teaches forming a molded product. Additionally, the claimed thixotropically molded product and thixotropic molding material are interpreted as product by process limitations. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicants to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicants intend to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicants should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claims 2, 3, and 5 Corbett teaches that the carbon fiber has lengths between about 5 and more than 1,000 microns, diameters of about 0.05 to 5 microns or 0.01 to 25 microns, and an aspect ratio overlapping with the claimed range. Note that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the metal matrix composite of Corbett, and adjusting and varying the fiber lengths and aspect ratios, such as within the claimed range, motivated by the desire of forming a conventional metal matrix composite based on the totality of the teachings of Corbett.
Regarding claims 4-6, since Corbett teaches bonding between the fibers with silica or adding a fugitive material such as a polymeric organic material, or infiltrating the body with colloidal silica (Corbett, page 31 lines 21-34). Since the fibers are bonded with silica or polymeric organic material or colloidal silica to form a shaped body or preform and infiltrating with the molten metal, the silica or polymeric organic material would necessarily be interposed between the carbon fiber and metal, wherein the carbon fiber is adhered to an exterior surface of the metal with the bonding material therebetween.
Additionally, regarding the content of the carbon fiber, since the carbon fiber is present in a fiber volume fraction of at least about 10% to about 40%, and since the carbon fibers comprise overlapping fiber lengths and aspect ratios as claimed, it is reasonable for one of ordinary skill to expect that the content of carbon fiber is within the claimed range.
Claims 2, 3, and 5 are rejected under 35 U.S.C. 103 as obvious over Corbett, as applied to claims 1-6 above, in view of USPN 5,041,340 to Ushio.
Regarding claims 2, 3, and 5, Corbett appears to teach overlapping fiber lengths and aspect ratio as claimed. Alternatively, Ushio teaches a fiber-reinforced light alloy member excellent in heat conductivity and sliding properties which contains a mixed fiber uniformly dispersed in a light alloy matrix (Ushio, Abstract). Ushio teaches that a magnesium alloy can be used as a light alloy (Id., column 8 lines 20-35). Ushio teaches that the aspect ratio of the carbon fiber may be set in a range of 10 to 150 (Id., column 5 lines 54-59), having an average length of 100 to 200 µm (Id., column 6 line 65 to column 7 line 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the metal matrix composite of Corbett, and adjusting and varying the fiber lengths and aspect ratios, such as within the claimed ranges, as taught by Ushio, motivated by the desire of forming a conventional metal matrix composite comprising carbon fiber properties known in the art as being predictably suitable for forming a fiber-reinforced light alloy member excellent in heat conductivity and sliding properties.
Claims 4-6 are rejected under 35 U.S.C. 103 as obvious over Corbett, as applied to claims 1-6 above, in view of USPN 6,652,621 to Oishibashi.
Regarding claims 4-6, the content of carbon fiber would appear to be present in the invention of Corbett. Alternatively, Oishibashi teaches a similar magnesium alloy member which is a thixotropic material in which a solid material coexists with a liquid material, comprising carbon fibers homogeneously dispersed in a magnesium alloy (Oishibashi, Abstract, column 1 lines 6-9). Oishibashi teaches that carbon fibers are present in the range of from 1 to 20% by weight (Id., column 4 lines 30-34). Oishibashi teaches that the strength of the carbon fiber is maintained and the strength of the magnesium alloy is drastically increased (Id., column 4 lines 39-48). Oishibashi teaches forming a thin molded product (Id., column 11 line 46 to column 12 line 21).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the metal matrix composite of Corbett, and adjusting and varying the amount of carbon fiber, such as within the claimed range, as taught by Oishibashi, motivated by the desire of forming a conventional metal matrix composite comprising an amount of carbon fiber known in the art as being predictably suitable for forming fiber-reinforced magnesium members having increased strength.
Claim 5 is rejected under 35 U.S.C. 103 as obvious over Corbett in view of Oishibashi, as applied to claims 4-6 above, and further in view of Ushio.
Regarding claim 5, Corbett appears to teach overlapping fiber lengths and aspect ratio as claimed. Alternatively, Ushio teaches a fiber-reinforced light alloy member excellent in heat conductivity and sliding properties which contains a mixed fiber uniformly dispersed in a light alloy matrix (Ushio, Abstract). Ushio teaches that a magnesium alloy can be used as a light alloy (Id., column 8 lines 20-35). Ushio teaches that the aspect ratio of the carbon fiber may be set in a range of 10 to 150 (Id., column 5 lines 54-59), having an average length of 100 to 200 µm (Id., column 6 line 65 to column 7 line 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the metal matrix composite of the prior art combination, and adjusting and varying the fiber lengths, such as within the claimed range, as taught by Ushio, motivated by the desire of forming a conventional metal matrix composite comprising carbon fiber properties known in the art as being predictably suitable for forming a fiber-reinforced light alloy member excellent in heat conductivity and sliding properties.
Response to Arguments
Applicants’ arguments have been considered but are moot based on the new ground of rejection.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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, Jennifer Boyd can be reached at 571-272-7783. 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.
/PETER Y CHOI/ Primary Examiner, Art Unit 1786