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 21, 22, and 26-31 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 21 and 22, the originally filed disclosure does not teach or reasonably convey that applicant had possession of the concept of the planar surface being adapted to engage different material. Regarding claim 26, the originally filed disclosure does not teach or reasonably convey that applicant had possession of the concept of the insert being adapted to engage a faying surface. Regarding claims 29 and 30, the originally filed disclosure does not teach or reasonably convey that applicant had possession of the concept of the insert being adapted to engage a thermoplastic versus thermosetting stiffener. Regarding claim 31, the originally filed disclosure does not teach or reasonably convey that applicant had possession of the concept of the insert being adapted to engage a thermoplastic film. There is no suggestion in the originally filed disclosure that any adaption is needed to engage a consolidated surface or a faying surface activated for bonding.
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 21, 22, and 26-31 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 21 and 22, it is unclear what is required as the original disclosure does not teach any structural difference between the planar surface engaging a consolidated versus non-consolidated material. As the metes and bounds of these claims cannot be determined, no art rejection can be made.
Regarding claim 22, it is unclear how the panel component can be both consolidated(claim 21) and non-consolidated(claim 22).
Regarding claims 26-28 and 31, it is unclear what is required as the original disclosure does not teach any structural difference between the insert contacting a surface active for co-bonding versus one that is not or a film on that surface versus one without a film. As the metes and bounds of the claim cannot be determined, no art rejection can be made.
Regarding claims 29-31, it is unclear what is required as the original disclosure does not teach any structural difference between the insert contacting a thermoplastic and thermosetting stiffener. As the metes and bounds of the claim cannot be determined, no art rejection can be made.
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.
Claims 33-36 are 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. The claims require the specifics of the material worked upon which is not positively recited as part of the system. If claim 32 were amended to require the system include the panel and the reinforcement component, this would overcome this rejection. 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.
Claim(s) 19, 32-36, and 39 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Hessen et al.(DE 102017524A1)
Hessen et al. discloses an apparatus for forming a panel comprising a first planar platen(lower 12), a second planar platen(upper 12), and an intermediate insert adapted to engage a reinforcement component and bond it to a panel wherein the insert has a planar surface engageable with the first platen and a second surface engageable with a reinforcing component wherein the reinforcing component contacts the insert and the first platen and the panel contacts the second component.(Figure 2) The reference discloses heating to bond. Since the panel and reinforcements are located between the insert and the platen, heat reaching them must necessarily heat at least one of the insert and the platen.
Regarding claim 32, Hessen et al. discloses heating to a curing temperature(machine translation).
Regarding claims 33-36, the structure is capable of use with the claimed materials. It is noted the reference teaches the reinforcement element do not need to be compacted, i.e. consolidated prior placement in the mold.
Regarding claim 39, Hessen et al. discloses co-curing the components to form the panel.(machine translation)
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(s) 20, 23, 25, 37, and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hessen et al. in view of Petty-Galis et al.
Hessen et al. discloses that pressure and temperature are applied to cure the material between the insert and the platens but does not disclose how this heat is applied. Petty-Galis et al. is directed to a similar type apparatus which joins together a panel with a reinforcing sheet in a mold having two flat platens and teaches the panel can be heated by heating the platens and the insert internally.(Col. 5, ll. 38-42) It would have been obvious to one of ordinary skill at the time of filing to heat the platens and insets of Hessen et al. internally as suggested by Petty-Galis et al. since Hessen et al. I silent as to the specifics of how the apparatus is heated, leading one to look to similar structures like that of Petty-Galis et al. thus combining known prior art element according to known methods to yield predictable results.
Regarding claim 25, both platens can be heated which results in a heated press.(Col. 5, ll. 38-43) Whether the press is preheated prior to inserting the panel and to what temperature is a method limitation which does not affect the structure.
Regarding claims 37 and 38, while Hessen et al. does not disclose the temperature to which the apparatus is heated or the pressure applied, Petty-Galis et al. discloses that similar molds can be heated to 750F with a pressure of 50-200 psi.(Col. 5, ll. 55-60) It would have been obvious to one of ordinary skill at the time of filing to insure the plantes could be used to 650F and could be used at a pressure of 50-200 psi since Petty-Galis et al. discloses that similar articles, which are presumably made from similar materials require such temperatures and pressures.
Response to Arguments
Applicant’s arguments, see response, filed 4/7/26, with respect to the rejection(s) of claim(s) 19-38 under Hagstrom and Petty-Galis et al. have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hessen et al.
Regarding applicant’s argument as to the 112, 4th rejections, the amendments to claims 21, 22, 24, 26, and 29-31 are new matter as there is no suggestion that the apparatus is adapted, i.e. changed, depending on the material used. Perhaps the term “configured to” would overcome this. As to claims 33-36, in order to have the material worked upon be part of the apparatus, it must be positively recited as part of the system. I.e. the claim should include the system comprising a panel component, a reinforcement component, and a heated press…..
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 BARBARA J MUSSER whose telephone number is (571)272-1222. The examiner can normally be reached 7:30-4:30 M-Th; 7:30-3:30 second Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BARBARA J. MUSSER
Primary Examiner
Art Unit 1746
/BARBARA J MUSSER/ Primary Examiner, Art Unit 1746
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