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, 5, 6, 8, 9, 11-13, 17-21 and 28-31, drawn to a structural carrier, in the reply filed on 11/05/2025 is acknowledged.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 29 and 30 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.
As to claim 29, the phrase “wherein at the foam core foams at room temperature” is grammatically incorrect. Appropriate correction is required.
As to claim 30, from parent claim 28, the structural carrier comprises a foam core and an outer layer wherein the foam core is curable at a temperature of 0 to 50oC while the outer layer is curable at temperatures greater than 50oC. The term “at least” from the phrase “at least the foam core of the structural carrier foams and cures at room temperature” renders the claim indefinite because it is unclear which component other than the foam core could be curable at room temperature.
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 28-31 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 28-31, Czaplicki I 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 has neither ribs nor open pockets (figures 1 and 2).
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Czaplicki I does not explicitly disclose (i) at least a portion of the structural carrier 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).
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 6, Czaplicki I discloses that the foam core and the outer layer are coextensive to each other (figure 2).
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).
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).
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, 6, 8, 9, 11, 13, 17, 18, 21, 28, 29, and 31 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). The foam material is free of any glass-fiber reinforcing materials (table 1).
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.
Conclusion
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