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 .
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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Claims 1, 5-7, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/699,197. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the ‘197 application recites an epoxy resin composition comprising an epoxy resin composition (A) and an epoxy resin curing agent (B), as recited in claim 1 of the current application, wherein the epoxy resin composition (A) comprises an epoxy resin (A1) having a glycidyloxy group derived from resorcinol, as in (A1) of claim 1 of the current application, and an epoxy resin (A2) other than (A1) and comprising an aromatic ring, wherein (A2) comprises an epoxy resin (a2-1) having a glycidyloxy group derived from bisphenol F, as recited in (A2) of claim 1 of the current application, as well as an epoxy resin (a2-2), wherein the total content of (a2-1) and (a2-2) in the epoxy resin (A2) of the ‘197 application is 50% by weight or more, implying a concentration range for (a2-1) encompassing the range recited for (A2) of claim 1 of the current application. Claim 3 of the ‘197 application recites that a cured product of the epoxy resin of claim 1 has a hydrogen gas permeability coefficient in a range encompassing the range recited in claim 1 of the current application.
Claim 5 of the ‘197 application is analogous to claim 5 of the current application. Claims 6 and 10 of the ‘197 application recite a fiber-reinforced composite material which is the cured product of a prepreg comprising a reinforcing fiber impregnated with the epoxy resin composition, meeting the limitations of the fiber-reinforced composite material of claim 6 of the current application. Claim 7 of the ‘197 application recites reinforcing fibers recited in claim 7 of the current application. Claim 11 of the ‘197 application recites a high-pressure gas container comprising the fiber-reinforced composite material, meeting the limitations of claim 9 of the current application.
The difference between the claims of the ‘197 application and the currently presented claims is that the concentration range of the epoxy resin having a glycidyloxy group derived from bisphenol F in the ‘197 application encompasses the range recited in claim 1 of the current application.
See MPEP 2144.05(I): “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Claims 1, 5-7, and 9 of the current application are therefore rendered obvious by the claims of the ‘197 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1 and 3-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Golden (U.S. PG Pub. No. 2011/0011533).
In paragraph 77 (example 1) Golden discloses combining 25 g of molten resorcinol diglycidyl ether with 75 g of bisphenol-F epoxy, meeting the limitations of the epoxy resin (A) of claim 1 where the resorcinol diglycidyl ether meets the limitations of epoxy resin (A1) and is present in an amount of 25% by weight of the epoxy resin (A) and the bisphenol F epoxy meets the limitations of epoxy resin (A2) when the bisphenol F-derived epoxy resin is present in an amount of 100% by weight of (A2) and where (A2) is present in an amount of 75% by right of the epoxy resin (A). Golden further combines dicyandiamide and 4,4' methylene bis(phenyl dimethyl urea), meeting the limitations of the epoxy resin curing agent (B) with the epoxy resin. While Golden does not specifically disclose the hydrogen gas permeability of a cured product of the epoxy resin composition, since the epoxy resin composition of Golden meets the compositional limitations of the claims, it will possess the hydrogen gas permeability recited in claim 1. Claim 1 is therefore anticipated by Golden.
In paragraph 43 Golden discloses that the curing agent can be meta-xylenediamine, as recited in claim 3.
While Golden does not specifically disclose the viscosity of the composition, since the composition of Golden meets the compositional limitations of the claims, it will have a viscosity at 80° C meeting the limitations of claim 4. It is noted that while Golden discloses in paragraphs 27-28 a viscosity range outside the range recited in claim 4, the viscosity at 80° C will be lower than the viscosity at room temperature.
In paragraphs 78-79 Golden discloses curing the epoxy resin composition, forming a cured product as recited in claim 5. In paragraph 8 Golden discloses that the composition can comprise glass fibers as reinforcing-type fillers, meeting the limitations of the fiber-reinforced composite of claims 6-7. In paragraph 68 Golden also discloses that the epoxy resin composition (oxygen barrier composition) can be applied to a fiberglass cloth followed by curing, also meeting the limitations of the fiber-reinforced composite of claims 6-7. Claims 3 and 5-7 are therefore also anticipated by Golden.
Claim Rejections - 35 USC § 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 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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Golden.
The discussion of Golden in paragraph 6 above is incorporated here by reference. Golden discloses a composition meeting the limitations of claim 1. Golden does not explicitly disclose the further inclusion of an epoxy resin having a glycidyloxy group derived from bisphenol A as part of the epoxy resin (A2) component.
In paragraph 32 Golden discloses that bisphenol-A diglycidyl ether, meeting the limitations of the epoxy resin having a glycidyloxy group derived from bisphenol A of claim 2, has equivalent use to the bisphenol-F diglycidyl ether used in the examples of Golden. “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). It therefore would have been obvious to one of ordinary skill in the art to combine the bisphenol-A diglycidyl ether and the bisphenol-F diglycidyl in the composition of Golden, meeting the limitations of claim 2. Claim 2 is therefore rendered obvious by Golden.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Golden in view of Aoki (JP 2007-154003 A).
The discussion of Golden in paragraph 6 above is incorporated here by reference. Golden discloses a composition meeting the limitations of claim 1 and a method meeting the limitations of claim 6. In paragraph 68 Golden discloses that a prepreg formed by soaking a fiberglass cloth in the epoxy resin composition and partially curing the fiberglass and resin composition to a B-stage, followed by molding the prepreg around an electrical device and fully curing to a C-stage. Golden does not disclose a specific method of molding.
An English-language machine translation of Aoki, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation.
In paragraph 1 Aoki discloses a method for manufacturing articles formed using epoxy resin compositions, including epoxy resin composite molded articles. In paragraph 15 Aoki discloses impregnating a fiber material with an epoxy resin, bringing the epoxy resin to a B-stage to form a prepreg, and laminating a plurality of the prepregs in the cavity of a mold. In paragraph 24 Aoki discloses that the mold is part of a molding apparatus, and in paragraph 29 Aoki discloses that the molding apparatus can be a transfer molding apparatus. While Aoki does not specifically disclose the pressure at which the resin transfer molding (RTM) process is performed, claim 8 recites all of the possibilities (vacuum RTM, low-pressure RTM, medium-pressure RTM, high-pressure RTM) and the process of Aoki will therefore fall within the scope of at least one of the claimed RTM methods, noting that Aoki discloses in paragraph 46 that the prepreg is pressurized after being placed in the mold.
Molding the composite material of Golden by the resin transfer molding process of Aoki therefore meets the limitations of claim 8. It would have been obvious to one of ordinary skill in the art to mold the composite material of Golden by the resin transfer molding process of Aoki since Aoki teaches that it is a suitable method for molding a prepreg formed by impregnating a fiber material with an epoxy resin.
Claims 1-2, 4-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 102211405 A).
An English-language machine translation of Wang, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation.
In paragraphs 8-13 Wang discloses a molding process for a lightweight high-pressure composite gas cylinder. In paragraph 10 Wang discloses a step of preparing an epoxy resin adhesive by mixing epoxy resin, diluent, amine curing agent, and accelerator. In paragraph 15 Wang discloses that the diluent can be resorcinol diglycidyl ether, meeting the limitations of epoxy resin (A1) of claim 1, and that the epoxy resin can be a bisphenol-F type epoxy resin, meeting the limitations of epoxy resin (A2) of claim 1. Wang discloses in paragraph 10 that the weight ratio of epoxy resin (which can be bisphenol F-type epoxy resin) to diluent (which can be resorcinol diglycidyl ether) is 1 to 0.2-0.6, which converts to an epoxy resin concentration of 62.5% (1/1.6) to about 83.3% (1/1.2) by weight, and a diluent concentration of about 16.7% to about 37.5% by weight, within the ranges recited for components (A2) and (A1) respectively. An amine curing agent meets the limitations of the epoxy resin curing agent (B) of claim 1.
In paragraphs 9 and 11-13 Wang discloses additional steps of impregnating a continuous fiber with the epoxy resin adhesive, winding the impregnated fibers on the metal liner of the gas cylinder, and curing the composite material, leading to a cured product as recited in claim 5, a fiber-reinforced composite material as recited in claim 6, and a high-pressure gas cylinder comprising the fiber-reinforced composite material as recited in claim 9. In paragraph 16 Wang discloses that the continuous fiber can be Toray T300, T700, T1000, or M40, all of which are carbon fibers, as recited in claim 7.
Wang does not specifically disclose an epoxy resin adhesive composition comprising both a resorcinol diglycidyl ether and a bisphenol F-type epoxy resin. However, it would have been obvious to one of ordinary skill in the art to formulate the epoxy resin adhesive composition of Wang to comprise both a resorcinol diglycidyl ether and a bisphenol F-type epoxy resin, since Wang, as discussed above, discloses that the resorcinol diglycidyl ether is a suitable diluent component and the bisphenol F-type epoxy resin is a suitable epoxy resin. Since the composition of Wang meets the compositional limitations of the claims, it will have a hydrogen gas permeability in a range within or overlapping the range recited in claim 1, and a viscosity at 80° C in a range within or overlapping the range recited in claim 4. Claims 1, 4-7, and 9 are therefore rendered obvious by Wang.
Additionally, Wang discloses in paragraph 15 that a bisphenol A-type epoxy resin is also a suitable epoxy resin for use in the epoxy resin adhesive composition, having equivalent use to the bisphenol F-type epoxy resin. “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). It therefore would have been obvious to one of ordinary skill in the art to combine the bisphenol A-type epoxy resin and the bisphenol F-type epoxy resin in the composition of Wang, meeting the limitations of claim 2. Claim 2 is therefore also rendered obvious by Wang.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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