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
Amendments to the claims, filed on 3/10/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-29 are rejected under 35 U.S.C. 103 as being unpatentable over Arai et al US 2020/0056005 A1).
Regarding claims 1, 2, 5, 8, 10, 16, and 18-22, Arai teaches
Arai teaches prepreg comprising a thermoplastic resin layer (e.g., resin cured product) containing reinforcing fibers and a thermoplastic resin, wherein the thermoplastic resin layer is present on at least one surface of the prepreg, and the thermoplastic resin layer contains thermoplastic resin (e.g., polyamide, polyetherimides, polysulfones, and/or polyethersulfones), thermosetting resin (e.g., bifunctional epoxy resin), and a curing agent (e.g., . diaminodiphenyl sulfone or a bifunctional aromatic polyamine) (para 1, 15, 77, 102, 112, 120).
With regard to the ranges of the thermoplastic resin, thermosetting resin and a curing agent, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of thermoplastic resin, thermosetting resin and a curing agent in the thermoplastic resin layer to optimize its final physical and/or mechanical properties. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Arai teaches a molecular weight of 250 to 3500 (i.e.,units of g/mol) (para 72). This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Arai, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
The limitation “calculated from a structural formula of the bifunctional or higher functional thermosetting resin monomer or prepolymer and/or the bifunctional or higher functional curing agent, or a weight average molecular weight measured by gel permeation chromatography” is a test procedure that does not appear to add any structure to the instant claim.
Arai teaches the composition of the instant claims so it is deemed to meet the limitations of the thermoplastic resin layer contains the constituting unit of the thermosetting resin and/or the constituting unit of the curing agent in the form of a reaction product [A] of a bifunctional or higher functional thermosetting resin monomer or prepolymer and a bifunctional or higher functional curing agent; the thermoplastic resin layer contains the constituting unit of the thermosetting resin and/or the constituting unit of the curing agent in the form of a reaction product [B] obtained by reacting the thermoplastic resin with a bifunctional or higher functional thermosetting resin monomer or prepolymer and/or a bifunctional or higher functional curing agent; the thermoplastic resin layer contains the constituting unit of the thermosetting resin and/or the constituting unit of the curing agent in the form of a bifunctional or higher functional thermosetting resin monomer or prepolymer and/or a bifunctional or higher functional curing agent.
Claims 3, 4, 6, 7, 9, 11-15, and 18 are limited to properties of the constituents or final composition of the instant claims or how the constituents or final composition of the instant claims function(s). Arai teaches both the constituents or final composition as well how the composition (e.g., thermoplastic resin) is made (e.g., mixed and kneaded at elevated temperature) (para 110-112) (see also para 89-91 of instant specification); so these limitations are deemed to be inherently met. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Regarding claim 17, Arai teaches the resin is impregnated into the carbon fibers (para 124-126) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention wherein the entire region in the thickness direction of the prepreg is composed of the thermoplastic resin layer.
Regarding claim 26, Arai teaches a fiber-reinforced resin molded article obtained by molding a preform containing the prepreg (para 58, 75, 112-113, 129-134)
Regarding claims 23-25, 27, and 29, Arai teaches laminating multiple layers of the prepreg together which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention the thermoplastic resin layer; and a thermosetting resin layer containing reinforcing fibers and at least one type of thermosetting resin and/or a curing agent (e.g., a duplicate layer), which are joined to the thermoplastic resin layer by forming an interface with the thermoplastic resin layer; wherein the thermosetting resin layer is a layer containing the bifunctional or higher functional epoxy resin monomer or prepolymer and the bifunctional or higher functional amine compound as main components; and a fiber-reinforced resin molded article obtained by molding a preform containing the prepreg of claim 23; and integrated product wherein the fiber-reinforced resin molded article according to claim 26 is welded (e.g.,. laminated through heat and pressure) to another member (e.g., another layer) via the thermoplastic resin layer.
The limitation welded of the instant claim is a product by process limitation and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 29 and the product of Arai.
Arai teaches the composition and method of making (e.g., laminating) the prepreg of the instant claims (see also para 72-73 of instant specification), so it is deemed to meet the limitation wherein in a cross section in the thickness direction, a cross section curve formed by the interface has a roughness average length RSm of 100 pm or less, and a roughness average height Rc of 3.5 pm or more, defined in JIS B0601 (2001). As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Claim 28 appears to be a property linked to the future use of the fiber-reinforced resin molded article of claim 27 and therein does not provide any structure and need not be taught by prior art.
Response to Arguments
Applicant's arguments filed 3/10/26 have been fully considered but they are not persuasive.
Applicant contends that the resin layer of Arai appears to be a thermosetting resin layer, not a thermoplastic resin layer as recited in instant Claim 1; wherein the thermoplastic resin present is only as a minor component; and such a resin layer, which is essentially a thermosetting resin layer, cannot be thermally welded to another member.
This is not persuasive. Arai teaches a thermoplastic resin can be mixed or melted for use in the resin composition to control the tackiness of the resulting prepreg and control the fluidity (i.e. flowability, and flexibility) of the resin composition (para 112).The Examiner contends that one of ordinary skill in the art at the time of invention would have known to adjust the amount of the thermoplastic in the composition, particularly in greater amounts, to optimize the properties of tack and fluidity (i.e. flowability, and flexibility); and that tack and flowability are important characters when it comes to joining members through welding.
In response to applicant's argument that prepeg of the instant claims provides a prepeg that can be subjected to welding, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further contends that the thermoplastic resin component plays a fundamentally different role in Arai vs. the claimed invention, i.e., does not relate to the welding or joining characteristics; and the Examiner has not met the standard for a result-effective variable or inherency.
This is not persuasive, Arai teaches a thermoplastic resin can be mixed or melted for use in the resin composition to control the tackiness of the resulting prepreg and control the fluidity (i.e. flowability, and flexibility) of the resin composition (para 112).The Examiner contends that one of ordinary skill in the art at the time of invention would have known to adjust the amount of the thermoplastic in the composition, particularly in greater amounts, to optimize the properties of tack and fluidity (i.e. flowability, and flexibility); and that tack and flowability are important characters when it comes to joining members through welding. Therefore, Arai directly teaches the amount of thermoplastic added is a result-effective variable and does relate to welding or joining characteristics.
With regard to inherency, Arai teaches or would have rendered obvious to one of ordinary skill in the art at the time of invention both the constituents or final composition as well how the composition (e.g., thermoplastic resin) is made (e.g., mixed and kneaded at elevated temperature) (para 110-112) (see also para 89-91 of instant specification); so it is deemed to have the same properties and/or structure of that of the instant claims. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Conclusion
THIS ACTION IS MADE FINAL. 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 NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783
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