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 .
Status of Application
Claims 1-10 are pending and presented for examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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1. Claims 1-3 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/693333 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of Application No. 18/693333 anticipates claims 1-3 and 8.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2. Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/693610 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of Application No. 18/693610 anticipates claims 1 and 2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
3. Claim(s) 1-3, 5, and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda (JP 2006-335791, of which reference is made to the English translation provided by Applicants).
I. Regarding claims 1-3, 5 and 9, Matsuda teaches a composite comprising: epoxy resin (abstract); a curing agent (abstract); a polyvinyl acetal resin (abstract); and a fiber reinforcement. Matsuda teaches the polyvinyl acetal having a hydroxy content content of 0.1-15 mol% (abstract, and note that overlapping ranges are prima facie evidence of obviousness), a glass transition temperature of preferably 80-100 ºC (page 6), and present in an amount of preferably 0.5-20 parts by weight with respect to 100 parts by weight of the epoxy resin (page 6). Matsuda teaches that the polyvinyl acetal has repeating structural units of formula (1) where R is H or a C1-3 alkyl (page 1), and that the fiber reinforcement is carbon fiber (bottom of page 6). Additionally, Matsuda teaches an exemplary embodiment including epoxy, a polyvinyl acetal resin where R is H, carbon fiber, and a curing agent (see the Examples on page 8). Matsuda fails to disclose an exemplary embodiment where the polyvinyl acetal has a repeating unit where R is a C1-3 alkyl.
However, as noted above, Matsuda clearly teaches that the polyvinyl acetal can be selected from a group including where R is either H or an alkyl having 1-3 carbon atoms (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Matsuda’s exemplary embodiments to substitute a polyvinyl acetal where R is an alkyl having from 1-3 carbon atoms for the one of the examples where R is a hydrogen. One would have been motivated to make this modification as one could have made this substitution with a reasonable expectation of success (particularly given that Matsuda teaches that both polyvinyl acetals where R is H or a C1-3 alkyl are preferred, see middle of page 5), and the predictable result of providing a carbon fiber composite material.
II. Regarding claim 8, Matsuda makes obvious the composite of claim 1 (see above), and wherein the polyvinyl acetal has a hydroxy content of 0.1-15 mol% (see above). Matsuda fails to teach a hydroxy content of 16-45 mol%. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.). Similarly, the claimed range and the range disclosed by Matsuda are close to overlapping. Furthermore, the difference between properties of the composite of the 15 mol% of the prior art and 16 mol% in the claimed range would not be expected to be materially different. Therefore, Matsuda’s range makes obvious the range of 16 mol% - 45 mol%.
III. Regarding claim 10, Matsuda makes obvious the composite material as claimed (see above). Additionally, Matsuda teaches forming the composite by forming a resin composition including all of the epoxy, curing agent and polyvinyl acetal and then forming a composite of the resin composition and carbon fibers (see Examples, page 8). Therefore, Matsuda also makes obvious claim 10.
4. Claim(s) 4, 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda as applied to claim 1 above, and further in view of Yamada et al. (CN 111801396, of which reference is made to the provided English translation).
Regarding claims 4, 6 and 7, Matsuda makes obvious claim 1, but fails to teach the polyvinyl acetal resin having a degree of polymerization as claimed or the inclusion of an acid-modified structural unit in an amount as claimed.
However, Yamada teaches a modified polyvinyl acetal resin with an acid-modified group (abstract) in an amount of 0.01-10 mol% (see top of page 6) and wherein the polyvinyl acetal has a degree of polymerization of 150-4500 (middle of page 7, and note that overlapping ranges are prima facie evidence of obviousness). Yamada teaches the use of the polyvinyl acetal resin with epoxy resin (abstract) similar to Matsuda. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Matsuda’s composite material by having the polyvinyl acetal resin including an acid-modified group in the amount as claimed and having a degree of polymerization in the range as claimed. One would have been motivated to make this modification as Yamada teaches that the inclusion of the acid-modified group in the amount as claimed improves curing and storage stability (see Yamada at page 6) and the selection of the degree of polymerization yields epoxy composites with improved viscosity performance and bonding force (see Yamada at page 7).
Conclusion
Claims 1-10 are pending.
Claims 1-10 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
July 8, 2026Primary Examiner, Art Unit 1717
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