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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
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 2, 6-7, 11 and 20 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 2, 6-7, and 11, the use of the word “preferably" in front of limitations renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention and because the use of the word “preferably” is considered a type of exemplary language.
Regarding claim 20, the use of the phrase “may be” in front of “a polyethylene film or a polypropylene film” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-6, 8, 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nabeshima et al WO2019176568A1 (using US20200407886A1 for translation and paragraph numbers).
Regarding claims 1, 3-4, 14, 16, and 18-19, Nabeshima teaches a method of forming a sheet molding compound (SMC) prepreg (reads on claim 19) of carbon fibers (reads on claim 18) by impregnating the carbon fiber substrate with a thermosetting resin (reads on matrix), abstract and ¶[0003-0004]. The thermosetting resin composition contains an epoxy resin and is exemplified as liquid bisphenol A epoxy resin, ¶¶[0025, 0061, 0118, 0119] which reads on claim 14; the composition further comprises epoxy curing agents, ¶[0065, 0069], at least one thickener ¶¶[0070,0081], and radically polymerizable monomers as reactive diluents ¶[0073] such as methyl (meth)acrylate and styrene ¶[0074-0075], which reads on claims 3-4.
Nabeshima further teaches the method of making the SMC comprises, after impregnating the carbon fibers, allowing the SMC precursor to stand at room temperature for an amount of time to thicken, ¶¶[0082, 0135-0137] which reads on the thickening of the epoxy resin composition in the fiber reinforcement so that the curing agent and radically polymerizable monomer are in the matrix.
Nabeshima exemplifies compositions Example 1 and Example 2, see table 1 page 8 and ingredients ¶¶[0117-0129]. Example 1 comprises vinyl ester resin a-1 which contains styrene (vinyl monomer), polyester, and epoxy methacrylate; resin a-1 is blended with a polyfunctional (meth)acrylate shrinkage reducing agent c-1, diisocyanate thickener d-1, peroxide curing agent e-1. Example 2 comprises BPA epoxy resin with a diamine (a-2), acid anhydride thickener d-2 (which reads on claim 16), and curing agent e-2. Nabeshima further teaches that there can be more than one thermosetting resin, reactive diluent, thickener and curing agent in the composition, ¶¶[0059, 0066, 0073, 0081].
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Nabeshima but combining the compositions of examples 1 and 2 with the motivation to form a third composition because it would produce the predictable result of another composition for impregnating carbon fibers to form a SMC that thickens at room temperature as taught by Nabeshima.
Regarding claims 5-6, Nabeshima teaches the composition of example 1 has a polyfunctional (meth)acrylate of polybutylene glycol di(meth)acrylate (n=8,9), ¶0121]. Which has a molecular weight greater than 150 g/mol and reads on claim 6.
Regarding claim 8 and 12, Nabeshima teaches the composition for example 1 comprises the curing agent e-1, which contains 1,1-di(t-butylperoxy)cyclohexane and t-butylperoxyisopropyl carbonate ¶[0125], which are radical polymerization initiators and reads on claim 8. These are not the diacyl peroxide of claim 12, but in the broader disclosure, Nabeshima teaches that diacyl peroxides are examples of the organic peroxides to use in the composition, ¶[0068].
It is prima facie obvious to substitute one material for another to obtain predictable results when the materials are recognized as functional equivalents in the art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Nabeshima but substituting the exemplified peroxides in e-1 for diacyl peroxides with the motivation of obtaining the predictable result of a composition for impregnating carbon fibers because it is a simple substitution of peroxide curing agents that have the same use and purpose.
Regarding claim 13, Nabeshima teaches that an inhibitor may be added to the composition, ¶[0081], and exemplifies 1,4-benzoquinone as a stabilizer in example 1, ¶[0129], which is a known polymerization inhibitor.
Regarding claim 15, Nabeshima does not explicitly teach that the thickeners react with epoxy groups to produce a compound with a larger molecular weight, but Nabeshima teaches the same classes of thickeners as applicant, which include polyisocyanates and acid anhydrides. Nabeshima exemplifies a modified diphenylmethane diisocyanate as thickener d-1 and a mixture of 3-methyl-1,2,3,6-tetrahydrophthalic anhydride and 4-methyl-1,2,3,6-tetrahydrophthalic anhydride as thickener d-2, ¶¶[0122-0123].
Applicant discloses the same thickening agent of methyltetrahydrophthalic anhydride ¶[0112] of the as-filed specification, and states that the thickening occurs when the carboxylic acid anhydride forms a bond with the epoxy compound, ¶[0114]; and thickening with the polyisocyanate occurs when the polyisocyanate forms a bond with the epoxy compound, ¶[0119] of the as-filed specification. Therefore, one of ordinary skill in the art is reasonably suggested that because Nabeshima uses the same thickeners for epoxy compositions as applicant, that they will perform in the same manner and must react with an epoxy group to produce a compound having a larger molecular weight.
Regarding claim 17, Nabeshima teaches tertiary amines can be added to the epoxy curing agent, ¶[0069].
Regarding claim 20, Nabeshima teaches the SMC prepreg is a sheet prepreg and uses carrier films on the outside of the prepreg, ¶[0137], and the carrier film is made of polyethylene, ¶¶[0135-0136].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nabeshima et al WO2019176568A1 (use US20200407886A1 for translation and paragraph numbers) as evidenced by the Product Technical Specifications page for 1,1-Di(tert-butylperoxy)cyclohexane by Shandong Do sender Chemicals Co., Ltd.
The disclosure of Nabeshima is disclosed above and applied here as such.
Regarding claim 11, Nabeshima teaches the SMC prepreg stands at room temperature (23°C) to thicken ¶¶[0082, 0137]. The ten-hour half-life of 1,1-di(t-butylperoxy)cyclohexane, which is one of the peroxides in curing agent e-1, is 115°C as evidenced by the Shandong Do Sender Chemical Co., Ltd. Product technical specifications. Therefore, letting the prepreg thicken at room temperature satisfies the conditions of claim 11.
Claims 2, 7, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nabeshima et al WO2019176568A1 (use US20200407886A1 for translation and paragraph numbers) in view of Ota et al US20200032047.
Regarding claim 2, Nabeshima teaches the method according to claim 1 as explained above. Nabeshima teaches the impregnated carbon fibers are kept at room temperature for a period of time to thicken, ¶¶[0082, 0137], and states that the viscosity needs to be that which allows the resin composition to not drip from the carrier film and it is preferable that it is increased so that the carrier film can be easily removed, ¶[0100]. But Nabeshima is silent as to what the suitable viscosity is for the SMC composition.
Ota discloses a sheet molding compound comprising a thickened material of an epoxy resin composition comprising a liquid epoxy resin, curing agent, and an acid anhydride, abstract. Ota discloses impregnating carbon fibers for a B stage sheet, ¶¶[0005-0006]. Ota also discloses letting the composition sit at room temperature to thicken, ¶¶[0050, 0092]. Ota further discloses that the viscosity range of the composition after it has sat to thicken is preferably 4,000-20,000 Pa.s ¶[0093], measured by rheometer ¶[0082]. This viscosity range reduces the surface tackiness of the SMC, the draping properties (flexibility) of the SMC are in an appropriate range, and it has excellent handleability, ¶[0093]. It is further disclosed that when the viscosity is within this range, the B stage stability is excellent and can maintain the B stage for a long period of time, ¶[0096].
Ota and Nabashima are analogous to the claimed invention because both are in the field of epoxy resin compositions for sheet molding compound prepregs.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Nabeshima wherein the sheet molding compound thickens after sitting for a time at room temperature to a viscosity of 4,000-20,000 Pa.s with the motivation of producing an SMC with reduced tackiness, appropriate draping properties, excellent handleability, and excellent storage stability as disclosed by Ota.
Regarding claims 7 and 10, Nabeshima teaches the method according to claim 1 as explained above. Nabeshima teaches that the impregnated carbon fibers are kept at room temperature for a period of time to thicken, ¶¶[0082, 0137]. Ota discloses the preferred viscosity range of 4,000-20,000 Pa.s ¶[0093] for the thickened composition as explained for claim 2 and applied here.
Nabeshima and Ota are silent to the viscosity of the compositions while heating, specifically if the viscosity of the composition is from 10-1000 Pa.s at 70°C (claim 7) and if the viscosity at 70°C is higher than the viscosity at 90°C (claim 10).
Although Nabeshima does not specify the viscosity of the composition at 70°C and 90°C, Nabeshima teaches using the same thermosetting resins (BPA epoxy), curing agents, radically polymerizable monomers, and thickening agents (acid anhydride and polyisocyanates) as applicant, utilized in similar amounts for the same purpose (SMC with carbon fibers), therefore one of ordinary skill in the art is reasonably suggested, when tested appropriately, the compositions of Nabeshima must have the claimed viscosity at 70°C and is higher than the viscosity at 90°C because applicant’s compositions have these properties.
Regarding claim 9, Nabeshima teaches the method according to claims 1 and 8 as explained above. Nabeshima teaches that the impregnated carbon fibers are kept at room temperature for a period of time to thicken, ¶¶[0082, 0137]. Ota discloses the preferred viscosity range of 4,000-20,000 Pa.s ¶[0093] for the thickened composition as explained for claim 2 and applied here.
Nabeshima and Ota are silent to the viscosity of the compositions while heating, specifically if the temperature at which the viscosity of the composition with a peroxide curing agent (radical initiator) turns from decreasing to increasing is lower than the temperature at which the viscosity of the same composition without the radical initiator turns from decreasing to increasing.
Although Nabeshima does not disclose the viscosity versus temperature behavior, Nabeshima teaches using the same thermosetting resins (BPA epoxy), curing agents, radically polymerizable monomers, and thickening agents (acid anhydride and polyisocyanates) as applicant, utilized in similar amounts for the same purpose (SMC with carbon fibers), therefore one of ordinary skill in the art is reasonably suggested, when tested appropriately, the compositions of Nabeshima must have the claimed viscosity versus temperature behavior because applicant’s compositions have these properties.
Additionally, the language of the claim appears to state that the curing reaction kicks off (i.e. the turn from decreasing to increasing viscosity) at a lower temperature for the composition with the radical initiator versus the composition without the radical initiator, which would be obvious to the skilled artisan that this behavior would inherently occur because the radical initiator is an additional curing agent which will cause the composition to begin crosslinking at a lower temperature (i.e. sooner in the heating ramp up) than the composition without this initiator.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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