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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12, in the reply filed on 7 July 2026 is acknowledged.
On p.2-3 of applicant’s remarks, applicant argues that examiner’s determination of lack of unity of invention relied only on a partial recitation of the features of independent claim 1 while examiner should have also considered claims 2-12. Examiner disagrees, noting that the requirement for determining lack unity is whether the commonly shared technical features between groups of inventions are special and make a contribution over the prior art.
On p.3 of applicant’s remarks, applicant argues that the examiner “performed improper picking and choosing from the multiple lists of options contained in Faidi” to determine that the prior art teaches the use of a silane coupling agent. Examiner disagrees, noting that Faidi explicitly discloses that silane is a coupling agent that can be used to “enhance the bonding of the particles to the curable resin” ([0025]).
On p. 3-4 of applicant’s remarks, applicant argues that the method of creation of the wind turbine blade shell member in claim 13 is distinct because it results in improved bonding with high resistance to unstable crack propagation and the unexpected stability of the primer-treated wind turbine blade component as demonstrated in Fig 7. Examiner disagrees, noting that the determination of lack of unity is not based on distinction of groups of inventions but rather whether the shared technical feature makes a contribution over the prior art. Furthermore, examiner notes that as currently submitted, the data set in Fig 7 (and disclosed in p.20 L9-21) is limited to three data points (A, B, C) of the wind turbine blade shell member created using the primer at different curing conditions (A: 16 hours at 40oC, B: 4 days at room temperature, C: 3 hours at 90oC) and one data point (D) where no primer was used and no clear indication about which curing condition of the three curing conditions (A, B or C) the “same curing” was performed at and to establish unexpected results, applicants should compare a sufficient number of tests both inside and outside the claimed range (in this case, using the primer versus not using the primer at comparable curing conditions) to show the criticality of the claimed range (see MPEP 716.02(d)(II)).
Regarding p.4 of applicant’s remarks, applicant argues that the data in Fig 8 shows the improvement of the product of claim 13 and is considered non-obvious. Examiner disagrees, noting that considerations of the claimed invention being “non-obvious” are not considered in the determination of whether the groups of invention have a lack unity. Additionally, examiner notes that Fig 8 is only disclosed in p.20 L-25-32 to show the bonding strength of one wind turbine blade component over time, as there is only one set of data points shown on Fig 8 with what appears to be a trendline for said set of data points.
Regarding p.4-6 of applicant’s remarks, applicant argues that the prior art of Faidi is not applicable as it’s not for directly treating a bonding surface, is focused on scarf joints and that the silane is being used for a different purpose. Examiner disagrees, noting that as Faidi is concerned with the joining of two structures, including blades of a wind turbine ([0002]) and the enhancing of bonding between the components through the use of silane ([0021], [0025], [0067], [0050]), Faidi is considered applicable.
Regarding p.6-7 of applicant’s remarks, applicant argues that there would not be a serious burden in the examination of Groups I-III. Examiner notes that arguments towards burdens of examination are not germane to determinations of lack of unity requirements.
The lack of unity requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Figure 1: 2; Figure 2: 17, 24, 26 and 28. Additionally, Fig 8 is objected to because it is missing a label for the horizontal axis, which should be “days” passed on p.20 L28 of applicant’s specification and the data point at 0 days and ~150 Gic is not labeled nor is it clear as to how it relates to p.20 L25-32 describing the graph. Additionally, reference character “R” representing the rotor radius as disclosed in p.16 L33 is not found in the figures.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 3 and 6-11 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the following claims comprise of a broad recitation (bolded) followed by a narrower statement of the range/limitation (underlined).
Claim 3: wherein X is an organic group, preferably a non-hydrolyzable organic group, preferably selected from amino, vinyl, epoxy, (meth)acrylate, sulfur, alkyl, alkenyl, alkynyl, most preferably methacrylate, wherein R is a spacer such as -(CH2)n-, wherein n is 0 to 1000, preferably 1-5, most preferably 3.
Claim 6: heating said primer-treated surface to a temperature of 80-130°C, preferably 90-120 °C.
Claim 7: heating said primer-treated surface to a temperature of 80-130°C, preferably 90-120 °C, for a time period of 3-60 minutes, preferably 5-30 minutes.
Claim 8: the moulding cavity is infused with a polyester resin, preferably an unsaturated polyester resin
Claim 9: a free-radical crosslinking reaction between the silane compound, or a polymer thereof, and the unsaturated polyester resin, preferably between the (meth)acrylate groups of the silane compound of the primer composition, or a polymer thereof, and the unsaturated polyester resin.
Claim 10: an ester of a dicarboxylic acid, such as dimethyl glutarate, dimethyl succinate and dimethyl adipate or mixtures thereof, such as a mixture containing 57-67 wt% dimethyl glutarate, 18-28 wt% dimethyl succinate, and 8-22 wt% dimethyl adipate.
Claim 11: the weight ratio of 1-methoxy-2- propanol to the ester of a dicarboxylic acid is between 1:2 to 2:1, preferably from 1:1.2 to 1.2:1.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For purposes of examination, the claims will be interpreted based on their broad recitations (all sections in bold as set forth above).
Claim Rejections - 35 USC § 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.
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.
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.
Claim(s) 1 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Dahl et al. (US20150308404) in view of Faidi et al. (EP2192602) (of record).
Regarding claim 1, Dahl discloses a method of manufacturing a wind turbine blade shell member, the method comprising the steps of
providing a blade mould for the blade shell member ("first mold part" (150)) the blade mould comprising a moulding cavity (Fig 3),
arranging one or more layers of fibre material in the moulding cavity to provide a fibre layup ([0104]-[0105]),
providing a pre-manufactured spar cap member ([0106] via "pre-manufactured first spar cap " (160)),
treating a surface of the spar cap member with a primer composition to provide a primer-treated surface ([0128]),
applying heat to the primer-treated surface of the spar cap member to provide an activated surface ([0035], [0105]),
placing the spar cap member into the moulding cavity on top of at least part of the fibre layup, such that at least part of said activated surface of the spar cap member contacts the fibre layup ([0106]),
infusing the moulding cavity with resin ([0105]), and
curing the resin to form the blade shell member ([0105]).
While Dahl does not explicitly disclose that the primer composition comprises of a silane compound, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Faidi, which is within the wind turbine manufacturing art, teaches that a composition used in curing resins for wind turbine manufacture ([0006], [0002]) can comprise of a primer or coupling agent, including silane, for the benefit of enhanced bonding to curable resins ([0025]).
Regarding claim 6, modified Dahl teaches all limitations of claim 1 as set forth above. Additionally, given that:
a) Dahl teaches that prepreg moulding requires the step of heating the resin to a temperature to enable reflow and curing ([0011], [0036]);
b) it has been' held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05(II));
it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application for the step of applying heat to the primer-treated surface comprises heating said primer-treated surface to a temperature of 80-130°C for the predictable result of optimizing the curing time.
While not relied upon as a basis of the rejection as set forth above, examiner notes that, outside of a general statement on p.10 L1-14, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range as to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716.02(d)(II)).
Regarding claim 7, modified Dahl teaches all limitations of claim 1 as set forth above. Additionally, given that:
a) Dahl teaches that prepreg moulding requires the step of heating the resin to a temperature to enable reflow and curing isn’t instantaneous and would require some amount of time ([0011], [0036]);
b) it has been' held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05(II));
it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application for the step of applying heat to the primer-treated surface comprises heating said primer-treated surface to a temperature of 80-130°C for a time period of 3-60 minutes for the predictable result of optimizing the curing time.
While not relied upon as a basis of the rejection as set forth above, examiner notes that, outside of a general statement on p.10 L1-14, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range as to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716.02(d)(II)).
Regarding claim 8, modified Dahl teaches all limitations of claim 1 as set forth above. Additionally, Dahl teaches that in the step of infusing the moulding cavity with resin, the moulding cavity is infused with a polyester resin to co-infuse the fibre layup and the spar cap member (0105], [0111]).
Regarding claim 9, modified Dahl teaches all limitations of claim 1 as set forth above. Additionally, Dahl teaches that the resin used in the step of infusing the moulding cavity with resin is an unsaturated polyester resin ([0105], [0111]), and Faidi teaches that the step of curing the resin to form the blade shell member comprises a free-radical crosslinking reaction between the silane compound, or a polymer thereof, and the unsaturated polyester resin ([0013], [0014]).
Claim(s) 2, 3 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Dahl et al. (US20150308404) and Faidi et al. (EP2192602) (of record) as set forth above in the rejection of claim 1 and in further view of Schwartz et al. (US20160288473).
Regarding claim 2, modified Dahl teaches all limitations of claim 1 as set forth above. While modified Dahl does not explicitly teach that the silane compound comprises a hydroxysilylalkyl methacrylate or a (poly)condensation product of a hydroxysilylalkyl methacrylate, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that
a) Faidi teaches that a silane composition can be used as a primer for enhanced bonding ([0025]);
b) Schwartz, which is similarly concerned with promoting adhesion between components, teaches that such promotion can be done using silane coupling agents, in particular SILQUEST A174 ([0090]);
c) applicant’s own specification uses SILQUEST A174 in an embodiment of the claimed invention in Example 3 on p.21, meaning SILQUEST A174 is considered to have the claimed property of the silane compound comprises a hydroxysilylalkyl methacrylate or a (poly)condensation product of a hydroxysilylalkyl methacrylate; and
d) case holds that the selection of a known material based on its suitability for its intended use is prima facie obvious (see MPEP 2144.07).
One would have been motivated to use the claimed composition for the predictable result of improving adhesion between components.
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Regarding claim 3, modified Dahl teaches all limitations of claim 1 as set forth above. While modified Dahl does not explicitly teach that the silane compound is a polymer comprising a repeating unit of formula,
wherein X is an organic group, and wherein R is a spacer, wherein n is 0 to 1000, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that
a) Faidi teaches that a silane composition can be used as a primer for enhanced bonding ([0025]);
b) Schwartz, which is similarly concerned with promoting adhesion between components, teaches that such promotion can be done using silane coupling agents, in particular SILQUEST A174 ([0090]);
c) applicant’s own specification uses SILQUEST A174 in an embodiment of the claimed invention in Example 3 on p.21, meaning SILQUEST A174 is considered to have all of the property limitations in claim 3; and
d) case holds that the selection of a known material based on its suitability for its intended use is prima facie obvious (see MPEP 2144.07)
One would have been motivated to use the claimed composition for the predictable result of improving adhesion between components.
While not relied upon as a basis of the rejection as set forth above, examiner notes that, outside of a general statement on p.11 L28-p.12 L24, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range as to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716.02(d)(II)).
Regarding claim 12, modified Dahl teaches all limitations of claim 1 as set forth above. While Dahl does not explicitly teach that the primer composition has a flash point of at least 39oC, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a) Faidi teaches that a silane composition can be used as a primer for enhanced bonding ([0025]);
b) Schwartz, which is similarly concerned with promoting adhesion between components, teaches that such promotion can be done using silane coupling agents, in particular SILQUEST A174 ([0090]);
c) applicant’s own specification uses SILQUEST A174 in an embodiment of the claimed invention in Example 3 on p.21, meaning SILQUEST A174 is considered to have all of the property limitations in claim 12; and
d) case holds that the selection of a known material based on its suitability for its intended use is prima facie obvious (see MPEP 2144.07)
One would have been motivated to use the claimed composition for the predictable result of improving adhesion between components.
While not relied upon as a basis of the rejection as set forth above, examiner notes that, outside of a general statement on p.13 L16-17, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range as to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716.02(d)(II)).
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Dahl et al. (US20150308404) and Faidi et al. (EP2192602) (of record) as set forth above in the rejection of claim 1 and in further view of Hayden (US20220364542).
Regarding claim 4, modified Dahl teaches all limitations of claim 1 as set forth above. While Dahl does not explicitly teach that the pre-manufactured spar cap member comprises a vinyl ester resin, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Hayden, which is within the wind turbine art, teaches that it is known to use vinyl-ester resins for the preformed spar cap ([0082]).
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dahl et al. (US20150308404) and Faidi et al. (EP2192602) (of record) as set forth above in the rejection of claim 1 and in further view of Hayden (US20220364542) and Smith (US20160263844).
Regarding claim 5, modified Dahl teaches all limitations of claim 1 as set forth above. Additionally, Dahl teaches that the pre-manufactured spar cap member comprising carbon fibres ([0037]) and is cured to provide the pre-manufactured spar cap member ([0065]). While Dahl does not explicitly teach that providing the pre-manufactured spar cap member further comprises pultruding a vinyl ester resin-impregnated fibre material and curing the vinyl ester resin to provide the pre-manufactured spar cap member, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a) Hayden, which is within the wind turbine art, teaches that it is known to use vinyl-ester resins for the preformed spar cap ([0082]);
b) Smith, which is within the wind turbine art, teaches that wind turbine components comprising of fibre material ([0078]) can be formed by pultruding a resin-impregnated fiber material for the benefit of reducing the possibility of crack imitator creation ([0016]).
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dahl et al. (US20150308404) and Faidi et al. (EP2192602) (of record) as set forth above in the rejection of claim 1 and in further view of Ben-Asher et al. (US20170349782).
Regarding claim 10, modified Dahl teaches all limitations of claim 1 as set forth above. While Dahl does not explicitly teach that the primer composition comprises a carrier solvent, wherein the carrier solvent comprises 1-methoxy-2-propanol, and an ester of a dicarboxylic acid, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that
a) Ben-Asher, which is within the coating art, teaches that the ability to adequately coat a solution on a material is impacted by its viscosity, which is in turn adjusted by the selection of solvents ([0022]),
b) that the selection of combinable solvents for the coating solution include 1-methoxy-2-propanol/propylene glycol methyl ether/PGME ([0032]) and, for the benefit of reduced toxicity ([0005]), Rhodiasolv RPDE-K ([0056]);
c) applicant’s own specification uses 1-methoxy-2-propanol and Rhodiasolv RPDE in an embodiment of the claimed invention in Example 3 on p.21; and
d) case holds that the selection of a known material based on its suitability for its intended use is prima facie obvious (see MPEP 2144.07).
One would have been motivated to use the claimed composition for the benefit of modifying the composition’s viscosity and reducing its toxicity.
Regarding claim 11, modified Dahl teaches all limitations of claim 10 as set forth above. Additionally, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application for the weight ratio of 1-methoxy-2- propanol to the ester of a dicarboxylic acid to be between 1:2 to 2:1, given that
a) Ben-Asher teaches that the weight ratio between cosolvents in a composition can be from 99:1 or 1:99 ([0056], which overlaps with the claimed range of 1:2 to 2:1);
b) Ben-Asher also teaches that the solvent selection for the composition is a result effective variable impacting the composition’s viscosity ([0022]) and
c) since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05(II));
One would have been motivated to determine the optimum solvent mixture amount for the purpose of modifying a composition’s viscosity.
While not relied upon as a basis of the rejection as set forth above, examiner notes that, outside of a general statement on p.11 L13-16, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range as to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716.02(d)(II)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Momentive (NPL) teaches that Silquest A-174 silane is “methacryloxy functional trimethoxy silane that finds utility in coating, composite and adhesive and sealant systems that cure via a free radical mechanism” for the benefit of strength performance with a boiling point of 255oC (p.1-2). Gummersheimer et al. (WO2016144756) teaches that Rodiasolv RPDE is a known solvent of low vapour pressure in the primer composition art (p.4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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