DETAILED ACTION
Pending Claims
Claims 1-14 are pending.
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 .
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 Objections
Claims 1-14 are objected to because of the following informalities:
For improved clarity, claim 1 should state:
(1) from about 2 wt% to about 10 wt%, of at least one thermoplastic additive selected from the group consisting of polyvinylformal resins[[,]] and polyarylethersulfone resins
The “and mixtures thereof” is redundant when it follows the language of “at least one”. Appropriate correction is required. Claims 2-14 are objected to because they are dependent from claim 1.
For improved clarity, the second “between” should be removed from “(iii)” in claim 1.
For improved clarity, claim 4 should state:
(4) wherein the difunctional and multifunctional epoxy resins are selected from the group consisting of glycidyl ethers of phenol, and N,N,N',N'- tetraglycidyl-m-xylenediamine
For improved clarity, claim 5 should state:
(5) wherein the at least one thermosetting resin is selected from the group consisting of diglycidyl ether of bisphenol F (DGEBF), diglycidyl ether of bisphenol A (DGEBA), and diglycidyl ether of dihydroxy naphthalene.
For improved clarity, claim 6 should state:
(6) wherein the substituted imidazole curative is selected from the group consisting of 6-(2-(2-methyl-1H-imidazol-1-yl)ethyl)-1,3,5-triazine-2,4-diamine, 1-((2-methyl-1H-imidazol-1-yl)methyl)naphthalen-2-ol, 3-(2-phenyl-1H-imidazol-1-yl)propanenitrile, (2- phenyl-1H-imidazole-4,5-diyl)dimethanol, bis(2-ethyl-5-methyl-1H-imidazol-4-yl)methane, 1-(cyanoethyl)-2-ethyl-4-methylimidazole, and 6-[2-(2-ethyl-4-methylimidazol-1-yl)ethyl]-1,3,5-triazine-2,4-diamine[[,]]; and the diamine curative is selected from the group consisting of 1,3-diaminobenzene, 4,4'-diaminodiphenylmethane, 4,4'-diaminodiphenyl sulphone (4,4' DDS), 3,3'-diaminodiphenyl sulphone (3,3' DDS), bis(4-amino-3,5-dimethylphenyl)-1,4-diisopropylbenzene, bis(4-aminophenyl)-1,4-diisopropylbenzene, 4-chlorophenyl-N,N-dimethyl-urea, 3,4-dichlorophenyl-N,N-dimethyl-urea, 2,6-toluene bis dimethyl urea,
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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 1-14 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 1-14, the claims fail to disclose a basis for the weight percentages of the curative mixture and the thermoplastic additive. Accordingly, it is unclear if these percentages are based on the overall weight of the composition; or if these percentages are based on the combined weight of the recited components. Claims 2-14 are rejected because they are dependent from claim 1. For the purpose of the prior art search, the claimed amounts have been interpreted as weight percentages based on the overall weight of the composition.
Further regarding claims 1-14, 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, claim 1 recites the broad recitation “a phase angle of between 50o and 87o”, and the claim also recites “preferably between 70o and 85o” which is the narrower statement of the range/limitation. 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. Claims 2-14 are rejected because they are dependent from claim 1.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Takaiwa et al. (US 2017/0291985 A1).
Regarding claims 1-5, 7, and 9-14, Takaiwa et al. disclose: (1) a curable resin (Abstract; paragraph 0026; Examples 12 and 13 in Table 1) comprising:
at least one thermosetting resin selected from difunctional and multifunctional epoxy resin (Examples 12 and 13 in Table 1; paragraph 0089; see also paragraphs 0027-0028);
from about 1 wt% to about 15 wt % of a curative mixture (Examples 12 and 13 in Table 1: approximately 5.2-5.3%) comprising a solid substituted imidazole curative (Table 1: “not dissolved”; paragraph 0091; see also paragraphs 0033-0056) and a diamine curative (paragraph 0090; see also paragraphs 0029-0032); and
at least one thermoplastic additive selected from the group consisting of polyvinylformal resins and polyarylethersulfone resins (Examples 12 and 13 in Table 1; paragraph 0094; see also paragraphs 0073-0078),
(2) wherein the curable resin exhibits an epoxy equivalent weight of at least about 150g/mol (Examples 12 and 13 in Table 1: 333 g/eq and 330 g/eq);
(4) wherein the difunctional and multifunctional epoxy resins are selected from the group consisting of glycidyl ethers of phenol, cresol epoxy novolacs, glycidyl ethers of phenol-aldehyde adducts, aromatic epoxy resins, aliphatic triglycidyl ethers, dialiphatic triglycidyl ethers, aliphatic polyglycidyl ethers, epoxidised olefins, triglycidyl aminophenols, aromatic glycidyl amines, heterocyclic glycidyl imidines and amides, glycidyl ethers, fluorinated epoxy resins, N,N,N',N'-tetraglycidyl diamino diphenylmethane (TGDDM), and N,N,N',N'- tetraglycidyl-m-xylenediamine (Examples 12 and 13 in Table 1; paragraph 0089; see also paragraphs 0027-0028);
(5) wherein the at least one thermosetting resin is selected from the group consisting of diglycidyl ether of bisphenol F (DGEBF), diglycidyl ether of bisphenol A (DGEBA), and diglycidyl ether of dihydroxy naphthalene (Examples 12 and 13 in Table 1; paragraph 0089; see also paragraphs 0027-0028);
(7) a pre-preg of fiber-reinforced curable composite material, wherein said pre-preg comprises at least one layer of reinforcing fibers impregnated with a curable resin (paragraphs 0106-0112; see also paragraphs 0083-0086); (9) wherein said reinforcing fibers exhibit a tow size of at least 12,000 filaments per tow and/or said at least one layer of reinforcing fibers is a fabric which exhibits an areal weight of at least about 150 g/m2 (paragraph 0107: “Metsuke 150 g/m2”); (10) wherein said reinforcing fibers are continuous filaments (paragraph 0107); (11) wherein the thickness of the pre-preg is from about 150 mm to about 1500 mm (paragraph 0108: 150 microns);
(12) a process for the production of a molded article from a plurality of pre-pregs (paragraphs 0083-0086), the process comprising: (a) disposing the pre-preg according into or onto a mold (paragraph 0085; see also paragraphs 0106-0107 & 0113); (b) optionally repeating step (a) at least once to dispose one or more additional pre-pregs into or onto said mold (paragraph 0085; see also paragraphs 0106-0107 & 0113); and (c) thermally curing the one or more pre-pregs (paragraphs 0085-0086; see also paragraphs 0108-0111 & 0113); (13) wherein said thermal curing is effected while the pre-pregs are compressed in a mold cavity (paragraphs 0085-0086; see also paragraphs 0108-0111 & 0113); and (14) wherein thermal curing is conducted at a cure temperature in the range of from about 120°C to about 175 oC (paragraphs 0108-0111 & 0113), and wherein the plurality of pre-pregs is held at said cure temperature for a duration of no more 10 minutes (paragraphs 0108-0111).
The exemplary embodiments of Takaiwa et al. fail to explicitly disclose: (1) from about 2 wt% to about 10 wt%, of at least one thermoplastic additive. Rather, they disclose approximately 1.8 wt% of polyvinylformal (see Examples 12 and 13 in Table 1: 2 parts per 100 parts epoxy resin and 2 parts per approximately 109-111 total parts; paragraph 0094). However, it has been found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close – see MPEP 2144.05. Furthermore, the general teachings of Takaiwa et al. contemplate providing the thermoplastic in amounts of from 1 to 60 parts per 100 parts of epoxy resin (see paragraph 0078). In light of this, it has been found 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 – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the composition of Takaiwa et al. with the instantly claimed amount of thermoplastic additive (from about 2 wt% to about 10 wt%) because: (a) the exemplary embodiments of Takaiwa et al. feature approximately 1.8 wt% of polyvinylformal; and (b) it has been found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Furthermore: (c) the general teachings of Takaiwa et al. contemplate providing the thermoplastic in amounts of from 1 to 60 parts per 100 parts of epoxy resin; and (d) it has been found 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.
Lastly, Takaiwa et al. fail to explicitly disclose the following set of claimed properties:
(1) wherein the curable resin exhibits: (i) a glass transition temperature (Tg) from about 130°C to about 200°C when cured;
(1) wherein the curable resin exhibits: (ii) a cure conversion of at least 95% when cured for a duration of no more than 10 minutes at a temperature of no more than 10°C above the Tg of the curable resin when cured; (3) wherein the curable resin exhibits a cure conversion of at least 95% when cured for a duration of no more than 10 minutes at a temperature between about 120 °C and about 175 °C;
(1) wherein the curable resin exhibits:(iii) a phase angle of between 50o and 87o, when heated from 20°C to 60°C; and
(1) wherein the curable resin exhibits: (iv) a complex modulus of between about 100 Pa.s and about 10,000,000 Pa.s between 20 and 60°C.
However, the skilled artisan would have expected the teachings of Takaiwa et al. to obviously embrace embodiments capable of satisfying this set of properties because the “fast curing” composition of Takaiwa et al. obviously satisfies all of the material/chemical limitations of the claimed invention.
Therefore, the skilled artisan would have expected the teachings of Takaiwa et al. to obviously embrace embodiments capable of satisfying the instantly claimed set of properties because: the “fast curing” composition of Takaiwa et al. obviously satisfies all of the material/chemical limitations of the claimed invention.
Regarding claim 6, the teachings of Takaiwa et al. are as set forth above and incorporated herein. The exemplary embodiments are formulated with dicyandiamide and 2-phenylimidazle (see Examples 12 and 13 in Table 1; paragraphs 0090-0091). Accordingly, they fail to disclose: (6) wherein the substituted imidazole curative is selected from the group consisting of 6-(2-(2-methyl-1H-imidazol-1-yl)ethyl)-1,3,5-triazine-2,4-diamine, 1-((2-methyl-1H-imidazol-1-yl)methyl)naphthalen-2-ol, 3-(2-phenyl-1H-imidazol-1-yl)propanenitrile, (2- phenyl-1H-imidazole-4,5-diyl)dimethanol, bis(2-ethyl-5-methyl-1H-imidazol-4-yl)methane, 1-(cyanoethyl)-2-ethyl-4-methylimidazole, and 6-[2-(2-ethyl-4-methylimidazol-1-yl)ethyl]-1,3,5-triazine-2,4-diamine. However, the general teachings of Takaiwa et al. contemplate the use of other imidazoles, including 1-(cyanoethyl)-2-ethyl-4-methylimidazole (see paragraph 0034).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition of Takaiwa et al. with the instantly claimed substituted imidazole because: (a) the exemplary embodiments of Takaiwa et al. are formulated with dicyandiamide and 2-phenylimidazle; and (b) the general teachings of Takaiwa et al. contemplate the use of other imidazoles, including 1-(cyanoethyl)-2-ethyl-4-methylimidazole.
Regarding claim 8, the teachings of Takaiwa et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (8) wherein the pre-preg comprises reinforcing fibers in an amount of from about 20% to about 70% reinforcing fibers wherein the percentages refer to the volume percent of the fiber by total volume of the pre-preg. Rather, they disclose materials, weight percentages, and weight per area values (see paragraph 0107) that appear to obviously embrace or overlap the instantly claimed volume percentage range. In light of this, it has been found 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 – see MPEP 2144.05.
Therefore, the skilled artisan would have expected the teachings of Takaiwa et al. to obviously embrace or overlap the instantly claimed volume percentage range because: (a) Takaiwa et al. disclose materials, weight percentages, and weight per area values that appear to obviously embrace or overlap the instantly claimed volume percentage range; and (b) it has been found 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.
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, 3-5, and 7-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,139,575.
Claims 2 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,139,575 in view of Takaiwa et al. (US 2017/0291985 A1).
Regarding claims 1, 3-5, and 7-14,
Claims 1, 4, and 5 are anticipated by patented claims 1, 2, 11, and 12.
Claim 3 is anticipated by patented claims 2 and 12.
Claim 7 is anticipated by patented claims 3-7 and 13-17.
Claim 8 is anticipated by patented claims 4 and 14.
Claim 9 is anticipated by patented claims 5 and 15.
Claim 10 is anticipated by patented claims 6 and 16.
Claim 11 is anticipated by patented claims 7 and 17.
Claim 12 is anticipated by patented claims 8-10 and 18-20.
Claim 13 is anticipated by patented claims 9 and 19.
Claim 14 is anticipated by patented claims 10 and 20.
Regarding claim 2, the teachings of Takaiwa et al. demonstrate that the instantly claimed epoxy equivalent weight is recognized in the art as a suitable epoxy equivalent weight for this type of fast cure composition (see paragraph 0044). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Regarding claim 6, the teachings of Takaiwa et al. demonstrate that 1-(cyanoethyl)-2-ethyl-4-methylimidazole is recognized in the art as a suitable substituted imidazole for this type of fast cure composition (see paragraph 0034). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
November 29, 2025