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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 18, there is no teaching in the original disclosure or claims of removing a peel ply from the one face of the element of composite material. Rather the peel ply is disclosed as being on the repair patch, not the element of composite material. Accordingly, Applicant was not in possession of this limitation at the time the application was filed.
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 4-10, 12-13, 15 and 17 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 claim 4, this claim is dependent on canceled claim 3. Accordingly, the scope of claim 4 is unclear. For the purpose of examination, claim 4 has been taken to depend from claim 1, which has been amended to include a structural resin limitation.
Regarding claim 5, parent claim 1 has been amended to include a repair patch. It is unclear if “a repair patch” in claim 5 is referencing the repair patch of claim 1, or rather, if “a repair patch” in claim 5 is introducing a further repair patch.
Regarding claim 5, parent claim 1 recites positioning a repair patch on the one face of the element of composite material, i.e. the one face from which each of the non-through holes runs from. It is unclear how the “at least one face” of claim 5 is related to the “one face” of parent claim 1. It is unclear if the “at least one face” of claim 5 includes the “one face” of parent claim 1.
Regarding claims 5, parent claim 1 has been amended to include the limitation of the repair patch comprising at least one reinforcement precured ply of composite material. It is unclear if “at least one reinforcement precured ply of composite material” in claim 5 is refencing the corresponding limitation in claim 1, or rather, if “at least one reinforcement precured ply of composite material” in claim 5 is introducing a new such limitation.
Regarding claims 6-10, each of these claims is dependent on claim 5 and recites “the repair patch”. As noted above “a repair patch” is recited in both parent claim 1 and intervening claim 5. Accordingly, it is unclear which of these repair patch limitations if being referenced by instances of “the repair patch” in claims 6-10. Similarly, in claim 8, it is unclear if “the at least one reinforcement precured ply of composite material” is referencing the corresponding limitation in claim 1, or the one in claim 5.
Regarding claim 12, as noted above, parent claim 1 requires the at least one first and the at least one second non-through holes run from the same face (i.e. the one face on which the repair patch is positioned). In contrast, claim 12 indicates the at least one first and the at least one second non-through holes run from different first and second faces, respectively. These contrasting limitations in parent claim 1 and dependent claim 12 appear to be mutually exclusive. Accordingly, it is unclear how these limitations in claim 12 can be compatible with claim 1.
Regarding claim 15, there is insufficient antecedent basis for “the at least one adhesive layer”. This limitation is not found in parent claim 1 or intervening claim 2.
Regarding claim 17, it is unclear if “the non-through holes” is attempting to reference --each of the non-through holes-- as in claim 1. While “each of the non-through holes” in claim 1 clearly references each of the at least one first non-through holes and the at least one second non-through holes, this limitation in claim 17 leaves out “each”. Accordingly, it is unclear if this limitation in claim 17 is referencing the at least one first non-through hole or the at least one second non-through hole, or both.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11-13 and 17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 11, it is clear in claim 1 from “each of the non-through holes running from one face of the element of composite material up to, at least, the internal damaged area” and “a repair patch on the one face of the element of composite material” that the at least one first and at least one second non-through holes run from one and the same face (i.e. the one face on which the repair patch is positioned). Since all the limitations of claim 11 already appear to be provided in claim 1, claim 11 fails to add a limitation to the claim on which it depends. See MPEP 608.01(n)(III).
Regarding claim 12, as noted above, parent claim 1 requires the at least one first and the at least one second non-through holes run from the same face (i.e. the one face on which the repair patch is positioned). Accordingly, claim 12 improperly removes this claim 1 limitation in indicating the at least one first and the at least one second non-through holes run from different first and second faces, respectively.
Regarding claim 17, for the reasons detailed above with respect to claim 11, this claim also fails to add a limitation to claim 1, on which it depends.
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, 4-7, 9, 11 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (DK 2013 70559 A1) in view of Hanna (US 2019/0111637 A1), Bertrand (US 2019/0016107 A1) and Halcomb (US 4492607).
Regarding claim 1, Smith teaches a method for repairing an element of composite material (Abstract; page 1, lines 10-32; page 6, lines 29-37; Figure 2), the method comprising: upon detection of an internal damaged area within an element of composite material (page 7, lines 13-38), drilling the element of composite material to provide at least one first non-through hole and at least one second non-through hole, each of the non-through holes running from one face of the element of composite material up to, at least, the internal damaged area, and applying vacuum at the at least one second non-through hole and infusing the resin from the at least one first non-through hole until the resin fills at least part of the internal damaged area of the element of composite material (Abstract; page 7, lines 25-35; page 8, lines 24-34; page 9, lines 22-29; Figures 2-4).
Smith differs from claim 1 in that:
i. Smith does not recite the resin is a structural resin.
ii. Smith does not teach positioning a repair patch on the one face of the element of composite material, the repair patch comprising at least one reinforcement precured ply of composite material.
iii. Smith does not teach positioning the repair patch before curing the infused resin, wherein the infused resin and the repair patch are cured during a common curing cycle.
(i) In the related art of repairing composite material by infusing resin into voids, Hanna suggests the use of structural bicomponent epoxy resin (paragraph 122) for repairing high strength components such as aerospace fuselage, wing and spar components (paragraph 115). Smith is drawn to repairing high strength components such as wind turbine blades. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in the method of Smith because one having ordinary skill in the art would have been motivated to use a known suitable resin for repairs to high strength composite materials, as suggested by Hanna.
(ii) Bertrand teaches positioning a repair patch on a face of an element of composite material, the repair patch comprising at least one reinforcement precured ply of composite material (paragraphs 3-4, 6-7, 31, 59-60 and 70-71). Bertrand is directed to repairing composite material and teaches returning the composite material to its original strength (paragraph 29). It is readily seen from Figures 3-4 of Smith that in the area of the repair, the one face of the composite material has holes drilled through the fiber reinforcement. One having ordinary skill in the would have been motivated to repair the one face having drilled holes using the repair patch of Bertrand; and/or one having ordinary skill in the art would naturally have been motivated to combine two known repair methods, i.e. those of Smith and Bertrand, to obtain the expected result of ensuring a high quality repair; and/or one having ordinary skill in the art would have been motivated to enhance Smith with the further high strength repair suggested by Bertrand. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in the method of Smith because one having ordinary skill in the art would have been motivated to achieve any of the above noted benefits as suggested by the teachings of Bertrand.
(iii) Hanna was applied above for suggesting a structural resin. The resin of Hanna is cured according to known methods (paragraph 129). Bertrand was applied above for placing a repair patch on the one face of the element of composite material, the repair patch comprising at least one reinforcement precured ply of composite material. The patch of Bertrand is also subjected to curing as the plies may be precured, but not fully cured (paragraphs 32 and 58). As to positioning the repair patch before curing the infused resin, wherein the infused resin and the repair patch are cured during a common curing cycle, it is generally known in the art of composite materials to assemble uncured materials prior to curing and co-cure the materials, i.e. cure them during a common curing cycle. Halcomb is exemplary and teaches that such co-curing lowers manufacturing costs by employing fewer assembly tools and less assembly time (column 7, lines 19-22; Abstract). It is also readily apparent that such a single common curing cycle simplifies manufacturing as compared to providing separate curing steps. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in the modified method of Bertrand because one having ordinary skill in the art would have been motivated to provide the required curing of the resin and patch using the known technique of co-curing, or because one having ordinary skill in the art would have been motivated to motivated to achieve any of the above noted advantages of co-curing, as suggested by the teachings of Halcomb.
Regarding claim 4, Hanna was applied above for suggesting a structural resin. Hanna further teaches the resin may be a structural bicomponent epoxy resin (paragraph 122). The motivation for using such resin is the same as above.
Regarding claims 5-7 and 9, Bertrand was applied above for suggesting the placement of the repair patch to achieve various repair benefits. Bertrand clearly teaches the additional limitations of bonding the repair patch to the face, the plurality of reinforcement precured plies bonded to one another by adhesive layers, and the film of adhesive on one face of the repair patch configured to be adhered to a composite material, and the repair patch plies being made of the same composite material as that of the composite element being repaired (paragraphs 47, 58-60, 61, 68 and 70-71). The motivation for providing these additional limitations is the same as above, i.e. to achieve any of the above noted repair benefits.
Claim 11 is satisfied for the reasons provided above.
Claim 14 is satisfied for the reasons provided above.
Regarding claim 15, to the extent that Applicant intended to make claim 15 dependent on claim 14 (since claim 14 provides antecedent basis for the at least one adhesive layer), Bertrand was applied above for suggesting the placement of the repair patch to achieve various repair benefits. In one embodiment, Bertrand provides the repair patch as a preformed stack of combined alternating reinforcement plies and adhesive layers in the form of a single integrated multi-layered structure (paragraph 70). Bertrand also cures to bond the patch to the composite element (paragraph 47). Both the adhesive layers and plies of Bertrand’s patch may be cured (paragraph 32). Additionally, Halcomb was applied above for suggesting the benefits of co-curing, i.e. curing assembled materials in a common curing cycle to achieve manufacturing benefits. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified method of Smith because one having ordinary skill in the art would have been motivated to achieve any of the above noted advantages of co-curing, as suggested by the teachings of Halcomb.
Regarding claim 16, Bertrand was applied above for suggesting the placement of the repair patch to achieve various repair benefits. Bertrand further suggests placing the repair patch over a damaged area of the element of composite material (Abstract; Figure 3B). In Smith, this corresponds to an area over the drilled holes and damaged area (Figures 2-4). Such placement satisfies the claimed overlap. The motivation for providing this additional limitation is the same as above, i.e. to achieve any of the above noted repair benefits.
Claim 17 is satisfied for the reasons provided above.
Claims 2 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Hanna, Bertrand and Halcomb as applied to claims 1, 4-7, 9, 11 and 14-17 above, and further in view of either one of Palmer (US 4942013) or Hawkins (US 2007/0090562 A1).
Regarding claim 2, Smith and Hanna do not recite heating the resin prior to infusing the resin into the internal damaged area of the element of composite material. However, in the related art of resin infusion, it is known to provide such heating prior to infusion in order to provide the resin with desired viscosity for infusion. See Palmer (column 15, lines 40-48) or Hawkins (Figure 1; paragraph 26). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in the modified method of Smith because one having ordinary skill in the art would have been motivated to provide the resin with desired viscosity for infusion, as suggested by either one of Palmer or Hawkins.
Claim 15 is satisfied for the reasons provided above.
Claim 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Hanna, Bertrand and Halcomb as applied to claims 1, 4-7, 9, 11 and 14-17 above, and further in view of either one of Thornton (US 4783362) or Zhao (US 2013/0129957 A1).
Regarding claim 8, Bertrand was relied upon above for suggesting the claimed steps associated with bonding a repair patch. Smith and Bertrand do not teach prior to bonding the repair patch to at least one face of the element of composite material, removing at least one peel ply from one side of the repair patch, the at least one peel ply being configured to protect the at least one reinforcement precured ply. As noted above, the plies of Bertrand’s repair patch are precured. In the art of curing composite materials, it is known to provide a peel ply, which upon peeling, provides a rough or textured surface which promotes adhesion to further layers or materials. See Thornton (column 1, lines 30-47). See Zhao (paragraph 2). Since the peel ply naturally covers the bonding surface of an underlying precured ply, it is considered to be configured to protect the underlying precured ply. It is clear from both Thornton and Zhao that the peel ply is removed prior to bonding the cured composite material to further material. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified method of Smith because one having ordinary skill in the art would have been motivated to achieve improved bonding by the use of a peel ply, as suggested by either one of Thornton or Zhao.
Regarding claim 18, to the extent Applicant intended to indicate the peel ply is removed from the repair patch (because removing a peel ply from the element of composite material is new matter, as detailed above), claim 18 is satisfied for the reasons provided above. Alternatively, it is clear from Thornton and Zhao as applied above that in the art of curing composite materials, it is known to provide a peel ply, which upon peeling, provides a rough or textured surface which promotes adhesion to further layers or materials. Thus the composite element of Smith would naturally benefit from such a peel ply during its manufacture. It is clear from both Thornton and Zhao that the peel ply is removed prior to bonding the cured composite material to further material. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified method of Smith because one having ordinary skill in the art would have been motivated to achieve the above noted benefits by the use of a peel ply in manufacturing the element of composite material, as suggested by either one of Thornton or Zhao.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Hanna, Bertrand and Halcomb as applied to claims 1, 4-7, 9, 11 and 14-17 above, and further in view of Haag (US 2016/0046088 A1).
Regarding claim 10, Bertrand was relied upon above for suggesting the claimed steps associated with bonding a repair patch. Smith and Bertrand do not teach smoothing edges of the repair patch and a transition surface between the repair patch and the repaired element of composite material with an aerodynamic smoother material. Smith is drawn to repairing wind turbine blades, and the bonding of a repair patch suggested by Bertrand clearly provides a rough surface, particularly at the edges of the composite plies of the repair patch. Haag suggests repairing the surface of a composite wind turbine blade by smoothing a rough surface with an aerodynamic smoother material to provide desired aerodynamic and noise performance, as well as desired appearance (paragraphs 2, 7-12 and 23-24). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified method of Smith because one having ordinary skill in the art would have been motivated to achieve any of the above noted benefits in accordance with the teachings of Haag.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Hanna, Bertrand and Halcomb as applied to claims 1, 4-7, 9, 11 and 14-17 above, and further in view of Roberts (US 2019/0366656 A1).
Regarding claim 12-13, Smith teaches first and second non-through-holes on the same face as seen in Figures 3-4. Smith does not teach the at least one first non-through-hole runs from a first face of the element of composite material up to, at least, the internal damaged area and the at least one second non-through-hole runs from a second face of the element of composite material up to, at least, the internal damaged area. However, in related art of repairing a void in composite material by infiltrating resin into the void, Roberts suggests positioning the first and second non-through-holes on respective first and second faces, or alternatively, on the same face (Figures 3A-C and 6; paragraphs 1 and 48). Figures 3A-C of Roberts clearly illustrate the additional limitations of claim 13 of the recited projections not coinciding. In view of Roberts, it is clear that suitable flow paths for filling the voids in the composite material may be arranged as recited in claims 12-13 as an alternative to putting the first and second non-through-holes on the same face of the composite element. Moreover, the person having ordinary skill in the art would have readily understood that Smith only requires a suitable inlet and outlet with a flow path therebetween to allow for the desired infiltration of resin into the void. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in the modified method of Smith because one having ordinary skill in the art would have been motivated to provide a known suitable flow path for repairing the voids, as suggested by the teachings of Roberts for the reasons provided above.
Response to Arguments
Applicant's arguments filed 08 July 2026 have been fully considered but they are not persuasive.
The arguments are drawn to the newly claimed combination of limitations including a new limitation directed to curing during a common curing cycle. The arguments are moot in view of the new grounds of rejection applied above, which address the amended and new claims. As to the fact that Smith does not teach a repair patch, it is noted that Bertrand was relied upon for the repair patch. The rejection is based on a combination of references.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
Prosecution Insights