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 Interpretation
It is noted that the most recently filed claims appear to be the submission filed 18 October 2024. However, the claims are being examined in view of the preliminary amendment filed 30 May 2024.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 2 and 3 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 recites the limitation "the n glass fibers" in line 1. There is insufficient antecedent basis for this limitation in the claim because n glass fibers has not been previously introduced in the claim. In the interest of advancing prosecution, the disputed limited will be considered to refer to wherein the plurality of glass fibers is a number n of (individual) glass fibers that a disposed as recited in the claim. Support for n being a number of glass fibers is found in paragraph 0054 of the instant specification.
Claim 3 recites a value of 0.8(√3Π/6). However, this value can be evaluated as 0.8((√3)Π/6) (i.e. about 0.72) or as 0.8(√(3Π/6)) (i.e. about 1.0), which are substantially different values. Therefore, the value recited in claim 3 is not clear. Furthermore, the ratio is of the area of the glass fiber strand over the total area of individual glass fibers. It is not clear how the area of the strand can be less than the total area of the individual fibers making up the strand.
Claim Rejections - 35 USC § 102
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.
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.
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 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura et al. (US 2020/0140320, previously cited).
Claim 1: Nakamura teaches a glass composition for glass fibers such as a rubber-reinforcing cord (paragraph 0001), wherein the rubber-reinforcing cord contains strands made of a bundle of long glass fibers (paragraph 0081) (i.e. considered to teach a glass fiber strand being a bundle of a plurality of glass fibers). The glass composition (i.e. of each of the glass fibers) contains 50-65 mol% SiO2,7.5-26% Al2O3, 15-30% MgO, etc. (paragraph 0015). Nakamura teaches that SiO2 forms the glass network (i.e. the glass backbone) (paragraph 0021), having 15-26% Al2O3 increases crack initiation load (paragraph 0026), and MgO contributes to an increase in Young’s modulus (i.e. is an elastic modulus adjustment component for improving an elastic modulus of the glass fiber) (paragraph 0028). Each strand (i.e. of the rubber-reinforcing cord) is made of a bundle of 100 to 2000 glass filaments (i.e. glass fibers) and is often covered by a coating layer in order to improve adhesion to rubber (paragraph 0081). Nakamura does not specifically teach the glass fiber strand as having an impact-resistant structure. However, the structure of a bundle as disclosed by Nakamura is substantially identical to the instantly claimed glass fiber strand and therefore the glass fiber strand of Nakamura is considered to have an impact-resistant structure.
Claim 5: Nakamura teaches the glass composition contains 50-65 mol% SiO2, and may be 56% or more (paragraph 0015). The suggested range (i.e. 56% or more) lies within the instantly claimed range. See MPEP § 2131.03.
Claim 6: Nakamura teaches the content of MgO is 15-30% (paragraph 0028), which lies within the instantly claimed range. See MPEP § 2131.03.
Claim 7: Nakamura teaches the glass composition may include oxide of transition elements such as Y2O3, La2O3, CeO2, etc. (i.e. these specifically listed oxides are rare earth compounds) (paragraph 0057).
Claim 8: Nakamura teaches the Young’s modulus (i.e. elastic modulus) is 98 GPa or more (paragraph 0071), which lies within the instantly claimed range. See MPEP § 2131.03.
Claim 9: Nakamura teaches the crack initiation load is 300 g or more (paragraph 0073), which lies within the instantly claimed range. See MPEP § 2131.03.
Claims 1-2, 5-8, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (US 2019/0276349).
Claim 1: Li teaches fiber glass strands of a plurality of glass fibers formed from a glass composition having about 60-63 wt% SiO2, 14-16% Al2O3, 14-16% CaO, 6-8.5% MgO, etc., and having a Young’s modulus greater than 85 GPa (paragraph 0014). Since SiO2 is a main component (i.e. a majority content) the glass fibers are considered to have SiO2 as a glass backbone (i.e. compared to the instant disclosure of a glass backbone; paragraph 0022 of the instant specification). Li teaches that the glass composition can have improved Young’s modulus (paragraph 0021), and contains MgO, CaO, and may include rare earth oxides (paragraphs 0028, 0029, and 0033). These compounds (i.e. MgO, CaO, and rare earth oxides) are considered to be elastic adjustment components for improving an elastic modulus of the glass fiber (see paragraph 0025 of the instant specification) because substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01(II). Li teaches that a primary sizing composition can be applied to the glass fibers and a composite can be prepared by pultrusion, passing fiber glass through a resin batch, etc. (paragraphs 0087-0088) which is considered to coat the glass fiber and therefore the glass fiber strand is considered to have an impact-resistant structure (see paragraph 0053 of the instant specification for comparison). Furthermore, Li teaches that a composite may include a polymeric resin and at least one fiber glass strand disposed in the polymeric resin (paragraph 0075) and examples of components in which such composites might be used include components that are potentially prone to impact (paragraph 0080).
Claim 2: Li teaches that a primary sizing composition can be applied to the glass fibers and a composite can be prepared by pultrusion, passing fiber glass through a resin batch, etc. (paragraphs 0087-0088) which is considered to coat the glass fiber and therefore the glass fiber strand is considered to have a spacing between adjacent fibers which would have a lower density than glass fibers that are perfectly closely packed.
Claim 5: Li teaches that the glass composition has about 60-63 wt% SiO2 (paragraph 0014), which lies within the instantly claimed range. See MPEP § 2131.03.
Claim 6: Li teaches that the glass composition has about 6-8.5 wt% MgO (paragraph 0014), which lies within the instantly claimed range. See MPEP § 2131.03.
Claim 7: Li teaches that the glass composition may include rare earth oxides (paragraph 0033).
Claim 8: Li teaches that the Young’s modulus (i.e. elastic modulus) may be greater than about 90 GPa (paragraph 0060), which lies within the instantly claimed range. See MPEP § 2131.03.
Claims 11-13: Li teaches a composite may include a polymeric resin and at least one fiber glass strand disposed in the polymeric resin (paragraph 0075). Examples of components in which such composites might be used include high pressure vessels and/or tanks (i.e. being a gas tank would be understood in order to obtain high pressure), wind energy components such as wind turbine blades, helicopter rotor blades, automotives parts such as bodies and bumpers (i.e. housing of a transportation vehicle), etc. (paragraph 0080).
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.
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.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2019/0276349) as applied to claim 1 above, and further in view of Nakamura et al. (US 2020/0140320, previously cited).
Claim 4: The teachings of Li regarding claim 1 are outlined above. Li teaches that a fiber glass strand comprises glass fiber(s) having a diameter of about 5-18 µm (paragraph 0062). However, Li does not teach the number of individual glass fibers in a strand.
In a related field of endeavor (i.e. related to glass fiber strands), Nakamura teaches bundles of long glass fibers (“filaments”), where each strand has, for example 100-2000 glass filaments, and typically 200 to 600 glass filaments (paragraph 0081). The number of glass filaments overlaps the instantly claimed range, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
As Li and Nakamura both teach glass fiber strands, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the fiber glass strand of Li to include where the number of glass fibers in a strand is about 100-2000, or 200 to 600, as this is a conventionally known number of filaments in glass fiber strand as taught by Nakamura, and one would have had a reasonable expectation of success.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2019/0276349) as applied to claim 1 above, and further in view of Spears (US 2007/0014980).
Claim 10: The teachings of Li regarding claim 1 are outlined above. Li teaches that a composite may include a polymeric resin and at least one fiber glass strand disposed in the polymeric resin (paragraph 0075). However, Li does not teach the composite used together with a resin-impregnated carbon fiber sheet.
In a related field of endeavor (i.e. related to fiber and polymer composites), Spears teaches a composite having a plurality of commingled fiber layers used in an environment in which stresses and strains are encountered (paragraph 0016). The composite has multiple layers in each of which the mixture ratio of high strength/stiffness carbon fibers versus low strength/stiffness glass fibers is constant/uniform in each layer and incrementally increases layer by layer (paragraph 0027). Each layer is impregnated with resin (paragraph 0031), and is generally comprised of a different combination of fibers than the other layers such that the rim exhibits increased strength and/or stiffness as well as density in each of its successive layers (paragraph 0045). This gradient reduces stress and strain in all of the layers (paragraphs 0023 and 0067) and inhibits crack propagation in the unlikely event that a crack does form (paragraph 0025).
As Li and Spears both teach a composite of a resin and fiber glass, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the composite of Li to include carbon fibers in such a way as to form a gradient between layers as taught by Spears because this will reduce stress and strain and will inhibit crack propagation, and one would have a reasonable expectation of success. The resulting structure is a layer having glass fibers (i.e. glass fiber strand as taught by Li) impregnated with resin (as well as having carbon fibers) used together with a layer having carbon fibers (as well as glass fibers/strands) impregnated with resin.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
The following patents and applications are noted as reciting a glass fiber strand of glass fibers having a glass composition that overlaps the instantly disclosed and claimed glass composition. They differ insofar as not reciting the packing closeness of the fibers (i.e. pertaining to having an impact resistant structure).
US Pat. No. 12,421,158 (claim 5)
US Pat. No. 11,760,684 (claim 16)
US Application No. 18/553,812 (claim 54)
US Application No. 18/715,359 (claim 12)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Priest et al. (WO 2021/173776, attached) teaches fiber-reinforced composites that include fibrous reinforcing material such as glass, polymeric, or carbon fibers embedded in a resin matrix and can include large number of fibers or filaments (paragraph 0005). The high-performance unidirectional glass fibers have an elastic modulus of at least 89 GPa and the composite part has a fiber weight fraction of no more than 88% (paragraph 00013). The fibers may have a diameter of 13-35 µm (paragraph 0050). The glass composition may include about 55-65 wt% SiO2, 17-27% Al2O3, 8-15% MgO, 7-12% CaO, etc. (paragraph 0052), and may include rare earth oxides (paragraph 0076).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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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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/KIM S. HORGER/Examiner, Art Unit 1784