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 .
Election/Restrictions
Applicant has amended claim 8 to depend from claim 1, therefore the previous restriction between Group I and II as set forth in the restriction requirement mailed 11/13/2025 is withdrawn. Therefore, claim 8 is being examined with claims 1-7.
Claim Objections
Claims 7 and 8 are objected to because of the following informalities:
In reference to claim 7, in line 2 amend “a thickness” to “the thickness”. Appropriate correction is required.
In reference to claim 8, in line 7 amend “a direction” to “the direction”. Appropriate correction is required.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Fujioka et al. (US 2013/0242487) (Fujioka).
In reference to claims 1-4, Fujioka teaches a metal composite ([0002]) (corresponding to a structure). The composite is a sandwich structure configured by laminating the metal materials onto both sides of a sheet substrate or a laminate of such substrates ([0044]) (corresponding to a laminated body; metallic foils having a primary component of metal).
The sheet substrate is a prepreg obtained by impregnating a fiber base with a thermosetting resin ([0047]). The carbon fibers are used in the fiber base ([0102]; [0105]-[0108]) (corresponding to a laminated body having a primary component of carbon fibers; the pair of surfaces of the laminated body is formed by molding a prepreg made of carbon fibers impregnated with resin). The metal material is placed on and in contact with both sides of the sheet substrate to form a sandwich structure ([0123]; [0126]) (corresponding to the metallic foils being integrated with the laminated body on a pair of surfaces of the laminate body opposite to each other in a direction of lamination of the laminated body, respectively).
Fujioka further teaches a preform is formed by sandwiching the sheet substrate with the metal materials, the preform is heated in step 1 and is molded into the desired shape by compression ([0139]). The metal material is bonded with the cured resin in the sheet substrate ([0119]) (corresponding to the metallic foils being integrated with the laminate body by thermal compression bonding on a pair of surfaces of the laminated body opposite to each other in a direction of lamination of the laminated body; the metallic foils are bonded to the resin over an entire surface of the pair of surfaces of the laminated body, respectively).
The metal material is a plate body having a thickness of 0.1 to 1 mm ([0048]). The preform (i.e., metal material/sheet substrate/metal material) has a thickness of 0.5 to 5 mm ([0128]). It is clear a ratio of the thickness of each metal material to the thickness of the sheet substrate is at least 0.02 (i.e., preform = 5 mm; metal material = 0.1 mm; sheet substrate = 5-0.1-0.1 = 4.8 mm; 0.1/4.8 = 0.02083), which is within the presently claimed range (corresponding to each of the metallic foils having a thickness equal to or thinner than one twentieth of a thickness of the laminated body).
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
While Fujioka teaches bonding the metal material to the sheet substrate by a thermal compression bonding ([0026]-[0028]), it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, even if Fujioka does not explicitly teach thermal compression bonding, absent evidence of criticality regarding the presently claimed process and given that Fujioka meets the requirements of the claimed product, Fujioka clearly meets the requirements of the present claim.
Further, the recitation in the claim that the structure is “for constituting a frame of a processing apparatus” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for constituting a frame of a processing apparatus, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
In reference to claim 5, Fujioka teaches the limitations of claim 1, as discussed above. Although Fujioka does not explicitly teach the metal material is bonded with the sheet substrate by thermal compression bonding under reduced pressure as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given Fujioka meets the requirements of the claimed product, Fujioka clearly meets the requirements of the present claim.
In reference to claim 6, Fujioka teaches the limitations of claim 1, as discussed above. Fujioka further teaches the metal constituting the metal material is at least one consisting of an aluminum alloy, such as an Al-Cu combination, and a titanium alloy ([0051]; [0112]-[0115]) (corresponding to the metallic foils are composed of any of copper, aluminum, titanium, and stainless steel, respectively).
In reference to claim 7, Fujioka teaches the limitations of claim 1, as discussed above. Fujioka teaches the metal material has a thickness of 0.1 to 1 mm (i.e., 100 to 1000 µm) ([0118]) (corresponding to each of the metallic foils has a thickness in a range of micrometers).
In reference to claim 8, Fujioka teaches the limitations of claim 1, as discussed above. Fujioka teaches the sheet substrate is a prepreg obtained by impregnating a fiber base with a thermosetting resin ([0047]). The carbon fibers are used in the fiber base ([0100-0108]) (corresponding to a carbon fiber reinforced plastic member formed by laminating and molding prepregs each made of carbon fibers impregnated with resin). The metal material is laminated onto both sides of the sheet substrate, wherein the thermosetting resin of the prepreg cures and bonds the metal material to the sheet substrate ([0126]; [0132-0142]; [0179]) (corresponding to the metallic foils are bonded to the resin over an entire surface of the carbon fiber reinforced plastic member on the pair of surfaces of the carbon fiber reinforced plastic member opposite to each other in a direction of lamination of the prepregs, respectively).
Response to Arguments
In response to amended claim 1, which now requires the structure to have each of the metallic foils having a thickness equal to or thinner than one twentieth of a thickness of the laminate body, it is noted that Usui et al. (WO 2019/202975) (Usui) and Tominaga et al. (JP 2000-317965) (Tominaga) no longer meet the presently claimed limitations. Therefore, the previous 35 USC 102(a)(1)/103 rejections over Usui and 35 USC 103 rejections over Tominaga are withdrawn. However, the amendments necessitate a new set of rejections as discussed above.
Applicant primarily argues:
“Applicant submits the claimed thinness is crucial for maintaining the properties of the CFRP while providing a moisture barrier. Applicant submits that if the metallic foils were thicker than the claimed ratio, the much higher thermal expansion coefficient of the metal would become dominant, causing dimensional deformation of the precision frame and potentially leading to peeling at the interface.”
“Applicant submits, as demonstrated in FIG. 6 of Applicant’s specification, by integrating extremely thin metallic foils (within the 1/20 ratio) directly onto the resin of the laminated body on both surfaces, the hygroscopic expansion strain is effectively reduced to zero (see curves a to d).”
Remarks, p. 5
The examiner respectfully traverses as follows:
The data to establish unexpected results is not persuasive for the reasons set forth below.
First, the data is not commensurate in scope with the scope of the claims. Specifically, the data only shows using a structure consisting of a laminated body having a specific thickness and specific composition (i.e., 10 layers of carbon fiber prepregs each having a thickness of 200 µm) and metallic foils having a specific thickness and composition (i.e., a - 20 µm thick copper foil, b - 11 µm thick aluminum foil, c - 5 µm thick titanium foil and d - 10 µm thick SUS foil). While the present claims only require a structure comprising a laminate body having any thickness and including carbon fibers as a primary component and metallic foils having any composition and any thickness equal to or thinner than one twentieth of a thickness of the laminated body.
Second, the Applicant has not provided sufficient evidence (i.e., data) to support that if the metallic foils were thicker than the claimed ratio, the much higher thermal expansion coefficient of the metal would become dominant, causing dimensional deformation of the precision frame and potentially leading to peeling at the interface.
Third, there is no data for the upper and lower limit of the thickness of each metallic foil. Further, it is not clear what the thickness of the laminated body is for working examples graphed in FIG. 6 only the laminated body includes 10 layers of prepregs ([0044]-[0045]). As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of the ratio of thickness of the metallic foil to laminated body.
Lastly, there is no proper side-by-side comparison between the working examples and the comparative examples. While the closest side-by-side comparison is example a and comparative example form FIG. 6. However, the comparative example has no metallic foils, therefore, it is not clear that the thickness ratio of the metallic foils to the thickness of the laminate body is providing the low changes in hydroscopic expansion strain.
Even if there were proper side-by-side comparisons, the data to establish unexpected results remains unpersuasive for the reasons set forth above, i.e., the data is not commensurate in scope with the scope of the present claims.
Applicant further argues:
“Applicant’s Claim 8 specifically requires the foils to be bonded directly to the resin of the prepreg over the entire surface. The direct integration by thermal compression bonding is essential to prevent moisture penetration through an adhesive interface.”
Remarks, p. 6
The examiner respectfully traverses as follows:
Claim 8 only requires the metallic foils be bonded to the resin over an entire surface of the carbon fiber reinforced plastic member. The claims do not require the metallic foils be directly bonded to the resin of the prepreg as the Applicant argues. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
However, even if the claim required the resin of the prepreg be directly bonded to the metallic foils, Fujioka would meet such a limitation (Fujioka, [0126]; [0132-0142]; [0179]).
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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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