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’s election without traverse of Group I, claims 1-7, in the reply filed on 01/05/2026 is acknowledged.
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/05/2026.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 102/103
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 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.
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 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Usui et al. (WO 2019/202975) (Usui).
It is noted that when utilizing WO 2019/202975, the disclosures of the reference are based on US 2021/0039356 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2019/202975 are found in US 2021/0039356.
In reference to claims 1, 4 and 6, Usui teaches a composite of metal and carbon-fiber-reinforced plastic (CFRP) ([0001]) (corresponding to a structure). The composite is a sandwich structure where resin layers are positioned on both surfaces of the CFRP layer and metal members are positioned on the surface of the respective resin layers at opposite sides to the CFRP layer ([0040]). The CFRP layer is a CFRP prepreg including 10 layers ([0219]) (corresponding to a laminate body having a primary component of carbon fibers; and metallic foils; the metallic foils being integrated with the laminated by on a pair of surfaces of the laminated body opposite to each other in a direction of lamination of the laminated body, respectively; the laminated body is composed of a carbon fiber reinforced plastic (CFRP) member).
The material of the metal member includes stainless steel, titanium, aluminum, Ti-based alloys and Al-based alloys ([0046]) (corresponding to the metallic foils having a primary component of metal; the metallic foils are composed of any of copper, aluminum, titanium, and stainless steel, respectively). The working examples show a thickness of each of the metal member are thinner than the thickness of the CFRP layer (Table 1-1; Table 1-2) (corresponding each of the metallic foils having a thickness thinner than a thickness of the laminated body).
Usui further the metal members are bonded to the CFRP layer, by a two-stage hot pressing process ([0010]; [0037]; [0042]) (corresponding to the metallic foils being integrated with the laminated body by thermal compression bonding). While Usui teaches the metal members are integrated with the CFRP prepreg by thermal compression bonding (i.e., hot pressing), 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 Usui does not explicitly teach thermal compression bonding, absent evidence of criticality regarding the presently claimed process and given that Usui meets the requirements of the claimed product, Usui clearly meets the requirements of the present claim and any differences are expected to be obvious.
In reference to claims 2 and 3, Usui teaches the limitations of claim 1, as discussed above. Usui teaches the CFRP layer is formed from a CFRP prepreg ([0190]). The CFRP prepreg comprises carbon fibers impregnated with resin suitable for hot pressing for bulk molding ([0190]-[0195]) (corresponding to the pair of surfaces of the laminated body is formed by a prepreg made of carbon fibers impregnated with resin).
Usui teaches the metal members are disposed over opposing surfaces of the CFRP prepreg ([0040]; [0219]). FIG. 1B further shows the opposing surfaces are covered by the metal members (corresponding to the metallic foils are bonded to the resin over an entire surface of the pair of surfaces of the laminated body, respectively).
Alternatively, Usui teaches the CFRP prepreg includes resin layers between each metal member and the CFRP prepreg, wherein the resin layer acts as a bonding layer ([0041]). The carbon fibers penetrate into the resin layer ([0059]) (corresponding to the pair of surfaces of the laminated body is formed by a prepreg made of carbon fibers impregnated with resin; the metallic foils are bonded to the resin over an entire surface of the pair of surfaces of the laminated body, respectively).
In reference to claim 5, Usui teaches the limitations of claim 1, as discussed above. Usui further the metal members are bonded to the CFRP layer, by a two-stage hot pressing process ([0010]; [0037]; [0042]).
Although Usui does not explicitly teach the metal members integrated with the CFRP prepreg 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 that Usui meets the requirements of the claimed product, Usui clearly meets the requirements of the present claim and any differences are expected to be obvious.
In reference to claim 7, Usui teaches the limitations of claim 1, as discussed above. Usui teaches a thickness of the metal member is 0.18 mm or 0.50 mm (i.e., 180 µm or 50 µm) ([0204]) (corresponding to each of the metallic foils has a thickness in a range of micrometers).
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tominaga et al. (JP 2000-317965) (Tominaga).
The examiner has provided a machine translation of JP 2000-317965 with the Office Action mailed 11/13/2025. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claims 1 and 5-7, Tominaga teaches a laminate, which comprises laminating one or more sheets of prepreg, which is a sheet-like substrate with resin powder attached, with a metal foil on both side of the prepreg ([0006]; Figure) (corresponding to a structure comprising: a laminate body; metallic foils having a primary component of metal). The laminate is passed between heated belts to form the laminate ([0006]) (corresponding to the metal foils integrated with the laminated 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, respectively).
The prepreg comprises a sheet-like substrate ([0008]). The sheet-like substrates are made of fibrous materials ([0009]). The fibrous materials includes carbon fibers ([0009]) (corresponding to a laminated body having a primary component of carbon fibers). Given that Tominaga discloses the prepreg includes fibrous materials that overlaps the presently claimed laminated body including a primary component of carbon fibers, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the carbon fibers as the fibrous material, which is both disclosed by Tominaga and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Tominaga further teaches copper foils of 18 µm in thickness are placed on the top and bottom surfaces of a prepreg and passed through a pair of heated belts to form a laminate of 0.1 mm in thickness ([0027]) (corresponding to the metallic foils are composed of copper; each of the metallic foils has a thickness in a range of micrometers). Thus, it is clear the thickness of the metal foils is thinner than a thickness of the prepreg (i.e., thickness of metal foil + prepreg + metal foil = 100 µm; thickness of metal foils = 0.18 µm + 0.18 µm = 0.36 µm; thickness of prepreg = 100 µm - 0.36 µm = 99.64 µm; 0.18 µm < 99.64 µm) (corresponding to each of the metallic foils having a thickness thinner than a thickness of the laminated body).
Tominaga teaches passing the laminate between heated belts, and molding is carried out at a lower pressure than conventional methods ([0006]; [0007]; [0023]; [0027]) (corresponding to the metallic foils are intergrade with the laminated body by thermal compression bonding under reduced pressure on the pair of surfaces of the laminated body, respectively). However, it is noted the claims are drawn to a product and not drawn to a method of making. Given that claims 1 and 5 define the product by how the product is made, claims 1 and 5 are product-by-process claims. For the purpose of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a laminated body having a primary component of carbon fibers and metallic foils integrated on a pair of opposing surfaces of the laminated body. As discussed above, Tominaga suggests such a product.
In reference to claim 2, Tominaga teaches the limitations of claim 1, as discussed above. Tominaga teaches molding prepregs made from resin powder and carbon fiber sheet-like substrates, wherein the sheet-like substrate is impregnated with the resin powder ([0007]-[0009]) (corresponding to the pair of surfaces of the laminate body is formed by molding a prepreg made of carbon fibers impregnated by resin).
In reference to claim 3, Tominaga teaches the limitations of claim 2, as discussed above. Tominaga teaches the top and bottom surfaces of the prepreg are covered with metal foils ([0023]; [0027]; Figure) (corresponding to the metallic foils are bonded to the resin over an entire surface of the pair of surfaces of the laminated body, respectively).
In reference to claim 4, Tominaga teaches the limitations of claim 1, as discussed above. Tominaga teaches the prepreg includes polymer resin powder impregnating sheets of carbon fibers ([0008]-[0009]) (corresponding the laminated body is composed of a carbon fiber reinforced plastic (CFRP) member).
Conclusion
The prior art made of record and not relied upon, namely Tsai et al. (US 2006/0093802), Lee et al. (US 2012/0118615), Mizo (JP 2015-025158) and Lim et al. (US 2018/0065335), is considered pertinent to applicant's disclosure. However, the rejections using these references would be cumulative to the rejections of record set forth above.
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.
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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