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
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 1-5 are 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.
Regarding claims 1-5, claim 1 recites dot-shaped resin parts provided on at least one surface of the fibrous base, wherein the resin part contains a thermoplastic resin. It is unclear if the recitation of “the resin part” is referring to the dot-shaped resin parts collectively or singularly.
Additionally, the claim recites a ratio A2/A1 of a mass A2 per unit area of the resin parts with respect to a mass A1 per unit area of the fibrous bas is as claimed. It is unclear if the recitation of the ratio is directed to each “resin part” collectively or singularly.
Additionally, the claim recites a ratio B2/B1 of an average diameter B2 of the resin parts with respect to an average constituent-unit width B1 of the fibrous base is 0.06 to 0.96. It is unclear if the recitation of the ratio is directed to each “resin part” collectively or singularly.
Regarding claim 4, the claim recites a method comprising a step of heating and pressurizing the resin-equipped fibrous base according to claim 1. It is unclear if the structure of claim 1 is still present once the method is performed.
Claim Rejections - 35 USC § 102/103
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.
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.
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Pub. No. 2004/0241415 to Wadahara.
Regarding claims 1-5, Wadahara teaches a reinforcing fiber substrate formed by at least a reinforcing fiber yarn group, wherein a resin material whose main constituent is a thermoplastic resin is provided at 2 to 15% by weight at least on one surface of the reinforcing fiber substrate (Wadahara, Abstract). Wadahara teaches that the resin material is studded on a surface of the reinforcing fiber substrate (Id., paragraph 0038), wherein the mean diameter of the dots is 1 mm or less, further more preferably in a range of 50 to 250 µm (Id., paragraph 0107). Wadahara teaches that reinforcing fiber substrate includes a woven structure (Id., paragraph 0109), wherein the reinforcing fiber may be carbon fibers, glass fibers, or organic fibers having a linear density in the range of 350 to 2500 tex and the number of filaments is preferably in a range of 6,000 to 50,000 (Id., paragraphs 0120-0121). Note that the reinforcing fibers of Wadahara are similarly taught in Applicants’ specification at paragraphs 0019 and 0028, including overlapping finenesses.
Regarding the claimed ratios, Wadahara appears to teach overlapping ratios as claimed. Note that in the case where the claimed ranges 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the substrate of Wadahara, and adjusting and varying the ratios, such as within the claimed ranges, motivated by the desire of forming a conventional substrate based on the totality of the teachings of Wadahara.
Regarding claims 3 and 5, Wadahara teaches that the thermoplastic resin is preferably at least one selected from the group consisting of polyamide, polyetheretherketone, polyphenylether and others, having a glass transition temperature preferably in a range of 30 to 100ºC based on the adhesive property and compatibility (Wadahara, paragraph 0108). Note that Applicants’ specification teaches similar thermoplastic resins at paragraph 0031. Therefore, it is reasonable for one of ordinary skill to expect that based on the thermoplastic resins disclosed in Wadahara and the desired glass transition temperature set forth in Wadahara, that the melting point of the thermoplastic resin would be within the claimed range.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the substrate of Wadahara, and adjusting and varying the melting point of the thermoplastic resin, such as within the claimed ranges, motivated by the desire of forming a conventional substrate having desirable properties such as an adhesive property, suitable for the intended application.
Regarding claim 4, Wadahara teaches that the substrate is pressed while heating the substrate (Wadahara, paragraph 0142-0159).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786
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