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 .
Claim Rejections - 35 USC § 112
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites first a narrow limitation regarding the polyamide resin wherein “70% by mol or more of the constitutional unit originated from dicarboxylic acids is originated from adipic acid” and then also recites “70% by mol or more of the constitutional unit originated from dicarboxylic acids is originated from α,ω-straight chain aliphatic dicarboxylic acids having 4 to 20 carbon atoms.” A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. In view of the features otherwise added to claim 20, the examiner believes Applicant likely intended to delete the last stanza of the claim, but inadvertently omitted indicating such deletion. For examination purposes, the claim has been interpreted as encompassing the narrower limitation with respect to the constitution of the polyamide resin.
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 7, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kleinschmidt (US 2014/0178633) in view of Mitadera (US 2013/0062806) or Matsumoto (US 2015/0322206).
Regarding claims 1-2 and 5:
Kleinschmidt discloses a composite material comprising at least one metal layer and at least one fiber-reinforced plastic layer [abstract; 0001]. The fiber-reinforced plastic layer comprises polyamide matrix [0005; 0014-0015]. The fiber-reinforced plastic layer comprises up to 65 vol% of fiber to provide good strength, rigidity and/or processability [0018-0019]. The fiber is provided as a unidirectional layer (i.e., continuous reinforcing fibers arranged parallelly in one direction) [0020]. The metal layer has a tensile strength of 700 MPa or less [0022]. Specific metals have tensile strengths equal to 320, 410, and 600 MPa [0030].
Although Kleinschmidt is silent with regard to the relative mass of continuous reinforcing fibers to polyamide, the reference discloses a range of volume percentage that overlaps with the presently claimed content (claim 5) and so is expected to overlap the claimed range of relative mass. 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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the content of the fibers, including over amounts resulting in a relative mass falling within the claimed range, to provide the desired strength, rigidity, and other properties for a given end use.
Kleinschmidt is silent with regard to a polyamide comprising constitutional units as presently claimed.
Such polymers were known in the art to have utility. For example, Mitadera discloses a composite comprising fibrous material impregnated with a xylylene-based polyamide resin [abstract; 0001; 0014-0017]. The polyamide comprises diamine units and dicarboxylic acid units, wherein at least 70 mol% of the diamine units comprise xylylenediamine and at least 70 mol% of the dicarboxylic acid units comprise straight chain aliphatic dicarboxylic acid having 4 to 20 carbon atoms, including adipic acid [0051-0052; 0056; 0298-0299]. The resin has numerous desirable properties, including high elastic modulus, minimal deterioration at high temperatures and high humidities, low warpage, etc. [0046].
Alternatively, Matsumoto discloses a fiber-reinforced polyamide resin material [abstract; 0001; 0006-0007]. The polyamide comprises diamine units and dicarboxylic acid units, wherein at least 70 mol% of the diamine units comprise xylylenediamine and at least 70 mol% of the dicarboxylic acid units comprise straight chain aliphatic dicarboxylic acid having 4 to 20 carbon atoms, including adipic acid [0007; 0014-00017; 0020-0021]. The resin has numerous desirable properties, including low water absorbency, high moldability, high adhesion to metal surfaces, etc. [0009; 0058-0063].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a polyamide according to either Mitadera or Matsumoto to provide the improved properties taught by the references, and thereby arrive at the claimed invention.
Regarding claim 3:
Kleinschmidt teaches carbon or glass fibers [0019].
Regarding claim 4:
Kleinschmidt teaches a thickness of 0.1-1 mm [0023].
Regarding claim 7:
As discussed above, Kleinschmidt teaches: carbon or glass fibers [0019]; the use of up to 65 vol% of fiber to provide good strength, rigidity and/or processability [0018]; and a metal thickness of 0.1-1 mm [0023].
Regarding claim 20:
Kleinschmidt discloses a composite material comprising at least one metal layer and at least one fiber-reinforced plastic layer as explained above. The description of “at least” one fiber-reinforced plastic layer suggests the presence of more than one such layer, and examples use two such layers [0029]. Additionally, the reference teaches the presence of additional layers of polyamide [0014]. Specific embodiments have a structure comprising metal layer 2, additional polyamide layer 5, and fiber-reinforced polyamide layer 4, 7 in order [0035-0036; Figs. 1-2].
Kleinschmidt is silent with regard to a polyamide comprising constitutional units as presently claimed. Mitadera and Matsumoto each disclose a fiber-reinforced polyamide as explained above. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a polyamide according to either Mitadera or Matsumoto to provide the improved properties taught by the references, and thereby arrive at the claimed invention.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kleinschmidt (US 2014/0178633) in view of Mitadera (US 2013/0062806) or Matsumoto (US 2015/0322206) as applied above, and further in view of Furukawa et al. (US 2020/0001546).
Regarding claims 8-9:
Kleinschmidt discloses a composite material as previously explained.
Kleinschmidt is silent with regard to welding the polyamide layer and the metal layer.
Such methods of joining the layers were known in the art. For example, Furukawa discloses a composite comprising a fiber-reinforced thermoplastic material and a metal member, wherein conventional methods of joining the layers including heat pressure bonding, induction heating welding, vibration welding, ultrasonic welding, and laser welding [abstract; 0001; 0096].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use known techniques of joining the layers, including heat pressure bonding, induction heating welding, vibration welding, ultrasonic welding, and laser welding as taught by Furukawa, to provide the composite material.
Response to Arguments
Applicant's arguments filed 4/8/2026 have been fully considered but they are not persuasive.
Applicant’s amendments to claims 1 and 20 to require a polyamide resin wherein “70% by mol or more of the constitutional unit originated from dicarboxylic acids is originated from adipic acid” overcome previous rejections based on Matsumoto (JP 2016-043526). The reference discloses at least 70 mol% of the dicarboxylic acid units comprise sebacic acid, rather than adipic acid [0008]. (For clarity, the examiner notes this reference differs from Matsumoto (US 2015/0322206) cited in the new rejections above.) Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kleinschmidt (US 2014/0178633) in view of Mitadera (US 2013/0062806) or Matsumoto (US 2015/0322206) as set forth above.
Additionally, Applicant compares Examples 1-5 and 1-6 in the specification as a representation of the comparison of the claimed invention using adipic acid and Matsumoto’s use of sebacic acid (10).
In the interest of compact prosecution, insofar as such arguments may be applied to the outstanding rejections even though Matsumoto JP ‘526 is no longer applied, the examiner does not find the comparison to be commensurate in scope with the claimed invention and does not provide a side-by-side comparison to demonstrate the effects are solely due to the presence of sebacic acid in Example 1-6. First, the examiner notes present claim 1 is drawn to a multilayer bodying comprising a metal plate and a prepreg as layers, and claim 20 is drawn to a multilayer comprising a metal plate, a polyamide resin film, and a prepreg as layers. The scope of the claims is broader than the noted examples which comprise a steel plate and 5 plies of prepreg (Table 1). There is insufficient information for one of ordinary skill in the art to extrapolate that any difference shown between the examples would also occur for number of plies less than 5 (e.g., a single ply). Additionally, although Example 1-5 uses adipic acid and Example 1-6 uses sebacic acid, the former also uses a different xylylenediamine component (100 mol% m-xylylenediamine) than the latter (70 mol% m-xylylenediamine and 30% p-xylylenediamine), making it unclear if any difference between the examples is the result of the sebacic acid rather than the change in xylylenediamine component.
In view of the above, the examiner maintains the rejections of record.
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
Prosecution Insights