Claims 1, 5, 8, 9, 11-21, and 28-32 are pending in the application. Claims 2-4, 6, 7, 10, and 22-27 have been cancelled. Claims 14-16 have been withdrawn from consideration as being directed to a non-elected invention. Claims 1, 5, 8, 9, 11-13, 17-21, and 28-32 are rejected.
The 112, second paragraph rejection has been withdrawn in view of the present amendment and response.
Other rejections have been maintained.
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.
Claims 1, 5, 6, 8, 9, 11-13, 17-21, and 28-32 are rejected under 35 U.S.C. 103 as being unpatentable over US 2003/0184121 to Czaplicki et al. (hereinafter “Czaplicki I”) further in view of US 2018/0037695 to Czaplicki et al. (hereinafter “Czaplicki II”) and US 2014/0113983 to Czaplicki et al. (hereinafter “Czaplicki III”).
As to claims 1, 8, 9, 11, 13, 17, 18, and 28-32, Czaplicki I discloses a system comprising:
a structural member 26 having a wall structure that defines a cavity,
a carrier 12 having an exterior shell 20 and a hollow cavity 22; and a foam material 14 disposed in the hollow cavity and monolithically formed with the exterior shell, and wherein the carrier/ the foam material is disposed within the cavity of the structural member (figure 1). The material 14 is filled, pumped or injected into the hollow cavity through an access hole. As the material is cured, it expands to fill the cavity, or at least a portion of the cavity to which it has been applied (paragraph 34). This is a clear indication that the foam material can occupy the entire the hollow cavity of the carrier which includes blocking the access hole. Hence, the carrier surrounds the foam material and substantially coextensive with the surface area of the foam material, except at the location of the access hole. Additionally, in most engineering and product design contexts, if the foam is meant to fill the entire interior volume of the cavity of the carrier, the carrier is considered coextensive with the surface area of the foam, even if there is one access hole. The hole is viewed as a functional necessity rather than a change to the overall extent of the layers.
Further, Czaplicki I discloses that the material 14 comprises acoustic damping properties which, when activated through application of heat, can assist in the reduction of vibration and noise in the overall automotive chassis, frame, rail and/or body of the vehicle (paragraph 28). Therefore, filling the entire volume of the hollow carrier with the foam material would increase the stiffness and rigidity of the frame or front rail, thereby the amplitude and frequency of the overall noise/vibration that occurs from the operation of the vehicle and is transmitted through the vehicle can be reduce effectively.
Accordingly, the carrier surrounds the foam material and is substantially coextensive with the surface area of the foam material, except at the location of the injection aperture.
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Czaplicki I does not explicitly disclose (i) at least a portion of the structural carrier including a foam material curable at a temperature of 0oC to 50oC, and (ii) both the foam material and the structural adhesive comprise one or more of phosphate esters.
Czaplicki II, however, discloses a foam-in-place material comprising a foamed polymeric epoxy formed from a reaction of an epoxy resin and one or more phosphate esters wherein the one or more phosphate esters is an esterified reaction product of a phosphoric acid and an epoxy-base material (paragraph 38). The foam is curable at room temperature (paragraph 37). The epoxy-based material includes urethane-modified epoxy resin (paragraph 31). That is, to say the foam-in-place material comprises polyurethane.
The polyurethane-epoxy foam is free of any blowing agents and curing agents (paragraphs 38). The one or more phosphate esters include a phosphate ester derived from cashew nutshell liquid (CNSL) (paragraph 26). The foam material is a flame- retardant foam material (paragraph 42).
The foam-in-place material is used for filling and/or structurally reinforcing a cavity of a vehicle body frame.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the foam-in-place material disclosed in Czaplicki II for the foam material disclosed in Czaplicki I motivated by the desire to obtain improved compressive strength, improved adhesion durability while enhancing flame resistance to the foam material.
Czaplicki III, however, discloses a structural adhesive material having an elongation at break at least 10% and glass transition temperature of 80oC or higher (abstract). The structural adhesive material is used in automobiles to reduce the deformation of bonds during accidents. The structural adhesive material is made of epoxy resin, polyurethane and phosphate ester derived from CNSL (paragraphs 23, 36, and 55). The structural adhesive material is a heat-activated adhesive curable above 50oC (paragraph 81).
The structural adhesive material is pressed between the surfaces to be bonded together and subsequently activated (paragraph 80). Prior to activation, the structural adhesive material should be tacky so that it can prevent the surfaces from shifting or sliding during pressing while the final curing process occurs. Alternatively, the structural adhesive material is compositionally the same as the adhesive material, the examiner takes the position that the tackiness before the curing would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a structural adhesive material disclosed in Czaplicki III for the exterior shell disclosed in Czaplicki I motivated by the desire to provide an adhesive having greater elongation to resist breakage on deformation. In addition, the adhesive can maintain its adhesive properties over a broad temperature range or interest.
As to claim 5, the combined teachings of the Czaplicki references result in a structural reinforcement part used in automobile assembly comprising a carrier having an exterior shell and a hollow cavity; and a foam material disposed in the hollow cavity and monolithically formed with exterior shell.
The resulting exterior shell is made of a structural adhesive material made of epoxy resin, polyurethane, and phosphate ester derived from CNSL. The structural adhesive material is a heat-activated adhesive curable above 50oC.
The resulting foam material is composed of urethane-epoxy resin and one or more phosphate esters derived from CNSL. The resulting foam material is free of any blowing agents and curing agents. The resulting foam material is curable at room temperature.
The structural reinforcement part of the Czaplicki references meets all structural limitations and chemistry required by the claims. Therefore, the examiner takes the position that the structural reinforcement part having a modulus of elasticity of about 20 to 8000 MPa would inherently be present as like material has like property.
As to claim 12, Czaplicki II discloses that the foam material is a flame-retardant foam (paragraph 42).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the foam-in-place material disclosed in Czaplicki II for the foam material disclosed in Czaplicki I motivated by the desire to obtain improved compressive strength, improved adhesion durability while enhancing flame resistance to the foam material.
As to claim 19, Czaplicki II discloses that a foam-in-place material is free of any glass-fiber reinforcing materials (table 1). The formulation contains 100 wt% component A, 100 wt% component B, 100 wt% epoxidized CNSL and 100 wt% of 2-thylhexyl Glycidyl Ether/pphosphoric acid. None of glass fiber reinforcing materials are added in either components A and B. Therefore, the formulation is free of glass fibers.
Czaplicki III discloses that a structural adhesive material is free of any glass-fiber reinforcing materials (paragraph 87).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the foam-in-place material disclosed in Czaplicki II for the foam material disclosed in Czaplicki I motivated by the desire to obtain improved compressive strength, improved adhesion durability while enhancing flame resistance to the foam material.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a structural adhesive material disclosed in Czaplicki III for the exterior shell disclosed in Czaplicki I motivated by the desire to provide an adhesive having greater elongation to resist breakage on deformation. In addition, the adhesive can maintain its adhesive properties over a broad temperature range or interest.
As to claim 20, Czaplicki I discloses that the structural carrier is directly adhered to a structural member through an adhesive material or mechanical retention means (paragraph 14). The alternative language indicates that the structural carrier can be affixed to the structural member through the adhesive material without the aid of the mechanical fasteners.
As to claim 21, Czaplicki I discloses that the structural carrier is a structural reinforcement in a transportation vehicle (paragraph 22).
Response to Arguments
Claims 1, 5, 8, 9, 11-13, 17-21, and 28-31: Applicant alleges that figure 2 is a cross-sectional view which does not show the exterior surface of the shell is coextensive with the surface area of the foam material. Applicant further adds that the outer layer cannot completely surround the foam core and being coextensive with the surface area of the foam core due the presence of the access hole or port 30.
The Examiner respectfully disagrees.
Czaplicki I discloses that the material 14 is filled, pumped or injected into the hollow cavity through an access hole. As the material is cured, it expands to fill the cavity, or at least a portion of the cavity to which it has been applied (paragraph 34). This is a clear indication that the foam material can occupy the entire the hollow cavity of the carrier which includes blocking the access hole. Hence, the carrier surrounds the foam material and substantially coextensive with the surface area of the foam material, except at the location of the access hole. Additionally, in most engineering and product design contexts, if the foam is meant to fill the entire interior volume of the cavity of the carrier, the carrier is considered coextensive with the surface area of the foam, even if there is one access hole. The hole is viewed as a functional necessity rather than a change to the overall extent of the layers.
Further, Czaplicki I discloses that the material 14 comprises acoustic damping properties which, when activated through application of heat, can assist in the reduction of vibration and noise in the overall automotive chassis, frame, rail and/or body of the vehicle (paragraph 28). Therefore, filling the entire volume of the hollow carrier with the foam material would increase the stiffness and rigidity of the frame or front rail, thereby the amplitude and frequency of the overall noise/vibration that occurs from the operation of the vehicle and is transmitted through the vehicle can be reduce effectively.
Further, Czaplicki I discloses that the material 14 comprise acoustic damping properties which, when activated through application of heat, can assist in the reduction of vibration and noise in the overall automotive chassis, frame, rail and/or body of the vehicle (paragraph 28). Therefore, filling the entire volume of the hollow carrier with the foam material would increase the stiffness and rigidity of the frame or front rail, thereby the amplitude and frequency of the overall noise/vibration that occurs from the operation of the vehicle and is transmitted through the vehicle can be reduce effectively.
Accordingly, the carrier surrounds the foam material and is substantially coextensive with the surface area of the foam material, except at the location of the injection aperture.
Claim 19: Applicant states none of the Czaplicki references disclose or suggest the structural carrier is free of glass fibers.
The examiner respectfully disagrees.
Czaplicki II’s formulation in table 1 contains 100 wt% component A, 100 wt% component B, 100 wt% epoxidized CNSL and 100 wt% of 2-thylhexyl Glycidyl Ether/pphosphoric acid. None of glass fiber reinforcing materials are added in either components A and B. Therefore, the formulation is free of glass fibers.
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.
Claims 1, 5, 8, 9, 11, 13, 17, 18, 21, 28, 29, 31 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No.12,043,021. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention are fully encompassed by the claims of the U.S. Patent No.12,043,021.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over 1-7 of U.S. Patent No.12,043,021 as applied to claim 1 above, further in view of Czaplicki II.
The claims of the U.S. Patent No.12,043,021 do not explicitly disclose the structural carrier which is flame retardant and includes one or more epoxy resins.
Czaplicki II, however, discloses that a foam material is flame retardant (paragraphs 43 and 44).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the structural carrier disclosed in the U.S. Patent No.12,043,021, which is flame-retardant as disclosed in Czaplicki II, motivated by the desire to enhance the flame resistance of the structural carrier.
Claims 19 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over 1-7 of U.S. Patent No.12,043,021 as applied to claims 1 and 28 above, further in view of Czaplicki II and Czaplicki III.
The claims of the U.S. Patent No.12,043,021 do not explicitly disclose the structural carrier which (i) is free of glass-fiber reinforcing materials and (ii) comprises one or more epoxy resins.
Czaplicki II, however, discloses a foam-in-place material comprising a foamed polymeric epoxy formed from a reaction of an epoxy resin and one or more phosphate esters wherein the one or more phosphate esters is an esterified reaction product of a phosphoric acid and an epoxy-base material (paragraph 38). The foam is curable at room temperature (paragraph 37). The epoxy-based material includes urethane-modified epoxy resin (paragraph 31). As shown in table 1 of Czaplicki II, the formulation contains 100 wt% component A, 100 wt% component B, 100 wt% epoxidized CNSL and 100 wt% of 2-thylhexyl Glycidyl Ether/pphosphoric acid. None of glass fiber reinforcing materials are added in either components A and B. Therefore, the formulation is free of glass fibers.
Czaplicki III, however, discloses a structural adhesive material having an elongation at break at least 10% and glass transition temperature of 80oC or higher (abstract). The structural adhesive material is used in automobiles to reduce the deformation of bonds during accidents. The structural adhesive material is made of epoxy resin, polyurethane and phosphate ester derived from CNSL (paragraphs 23, 36, and 55). The structural adhesive material is a heat-activated adhesive curable above 50oC (paragraph 81). The structural adhesive material is free of any glass-fiber reinforcing materials (paragraph 87).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the structural carrier disclosed in the U.S. Patent No.12,043,021, which is free of any glass-fiber reinforcing materials as disclosed in Czaplicki II and III, because exclusion of the glass-fiber reinforcement material from the structural carrier is acceptable and Czaplicki II and III provides necessary details to practice the invention of the U.S. Patent No.12,043,021.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the structural carrier disclosed in the U.S. Patent No.12,043,021, which is comprised of one or more epoxy resins as disclosed in Czaplicki II and III, motivated by the desire to provide a structural carrier having improved compressive strength and adhesion durability while obtaining greater elongation to resist breakage on deformation.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over 1-7 of U.S. Patent No.12,043,021 as applied to claim 1 above, further in view of Czaplicki I.
The claims of the U.S. Patent No.12,043,021 do not explicitly disclose the structural carrier which is free of any mechanical fasteners.
Czaplicki I, however, discloses a structural carrier used in automobile assembly comprising a carrier 12 having an exterior shell 20 and a hollow cavity 22; and a foam material 14 disposed in the hollow cavity and monolithically formed with exterior shell (figure 1). The exterior shell 20 is made of a structural adhesive that is completely surrounds and in direct contact with foam core (paragraph 19). The structural carrier is directly adhered to a structural member through an adhesive material or mechanical retention means (paragraph 14). The alternative language indicates that the structural carrier can be affixed to the structural member through the adhesive material without the aid of the mechanical fasteners.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the structural carrier disclosed in the U.S. Patent No.12,043,021, which is free of any mechanical fasteners as disclosed in Czaplicki I, because the structural carrier can be affixed to the structural member through the adhesive material without the aid of the mechanical fasteners. Czaplicki I provides an alternative mechanism for the attachment of the structural carrier to the structural member.
Response to Arguments
Claims 1 and 28: Applicant alleges that the amended claim 1 is sufficient to obviate the double patenting rejection over US Patent No. 11,776,138. The Examiner wishes to confirm that US Patent No. 11,776,138 is not a correct patent number. The correct number is US 12,043,021.
The outer layer completely surrounds the foam core wherein they are monolithically formed and integrally formed with each other. The foam core and the outer layer are made of the same material composition. They share the same boundaries and coextensive with each other. In particular, the outer layer is coextensive with the surface area of the foam core.
Claim 19: Applicant states that the claim is not rendered obvious in view of the combined disclosures of US Patent No, 12,043,021 and Czaplicki II and III because none of the references disclose or teach the structural carrier is free of glass fibers.
The examiner respectfully disagrees.
As shown in table 1 of Czaplicki II, the formulation contains 100 wt% component A, 100 wt% component B, 100 wt% epoxidized CNSL and 100 wt% of 2-thylhexyl Glycidyl Ether/pphosphoric acid. None of glass fiber reinforcing materials are added in either components A and B. Therefore, the formulation is free of glass fibers.
Conclusion
THIS ACTION IS MADE FINAL. 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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights