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 § 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.
Claim(s) 1 and 3-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fang et al. (US20120157358, hereinafter referred to as Fang).
Regarding claim 1, Fang discloses a composite member (see Fang at the Abstract, disclosing composites), comprising: an inorganic matrix part that is made from an inorganic substance including a metal oxide hydroxide (see Fang at [0048], disclosing the material can include ... aluminum hydroxide); and a metal fiber that is present in a dispersed state inside the inorganic matrix part (see Fang at [0003], disclosing inorganic whiskers and fibers to reinforce glasses. See also Fang at [0084] disclosing the proppant may contain filler in addition to whiskers.... Examples of fillers include ... metals.) and has an aspect ratio of 100 or more (see Fang at [0062], disclosing the whiskers can have an aspect ratio of from 10 to about 100, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05), wherein a porosity in a cross section of the inorganic matrix part is 20% or less (see Fang at [0121] disclosing a near zero porosity containing proppant can be produced).
Regarding claim 3, Fang discloses the metal fiber is includes in an amount of 10% by volume or more (see Fang at [0063], disclosing the concentration of the in-situ whiskers can be present in an amount of from 0.1 wt % to 99.9 wt % based on the weight of the material, which overlaps with the claimed range.).
Regarding claim 4, Fang discloses the metal oxide hydroxide and the metal fiber include a same metallic element (see Fang at [0048], disclosing the material can include ... aluminum hydroxide. see also Fang at [0006], disclosing alumina ... whiskers).
Regarding claim 5, Fang discloses at least one of the metal oxide hydroxide or the metal fiber includes aluminum (see Fang at [0048], disclosing the material can include ... aluminum hydroxide. see also Fang at [0006], disclosing alumina ... whiskers).
Regarding claim 6, Fang discloses the metal oxide hydroxide is boehmite (see Fang at [0153], disclosing boehmite).
Regarding claim 7, while Fang does not explicitly disclose the inorganic matrix part and the metal fiber bond with each other via a boehmite layer that is formed on a surface of the metal fiber and is different from the inorganic matrix part, this is an inherent property which depends upon the composition. Because Fang makes the claimed composition obvious, Fang would inherently possess the claimed property.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fang as evidenced by Milewski et al. (Milewski, John V. "Whiskers." Concise Encyclopedia of Advanced Ceramic Materials. Pergamon, 1991. 516-519, hereinafter referred to as Milewski).
Regarding claim 2, Fang makes obvious the metal fiber has malleability (see Fang at [0144], disclosing whiskers ... can be ... metal oxide or precursor. Examiner notes a metal is a metal oxide precursor. Examiner notes metals are inherently malleable.) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph). (see Milewski at page 516, the last paragraph of the first column, evidencing that among oxides prepared as whiskers are Al2O3, MgO, MgO–Al2O3, Fe2O3, BeO, MoO3, NiO, Cr2O3 and ZnO. A simple vapor-transport method of growth consists of heating the metal in a suitable atmosphere (e.g., wet hydrogen, a moist inert gas or air).)
and is oriented mainly in a predetermined direction inside the inorganic matrix part (see Fang at [0004], disclosing fibers are more commonly used in an oriented or interlocking alignment).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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