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 Objections
Claim 1 objected to because of the following informalities: “extrusuion” appears to be a typo (line 2). Appropriate correction is required.
Claim 9 is objected to because of the following informalities: “dimenstionl” appears to be a typo (line 1). Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 6-11 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Pathak et al (US 2016/0257819 A1).
Regarding claims 1 and 2, Pathak teaches a multilayer system comprising a sealant layer (e.g., primer, coating, or first sealant that adheres to, i.e., seals the surface), the sealant layer comprising a first coreactive sealant composition; and an overlaying layer comprising a third coreactive composition different from the first coreactive sealant composition, and overlaying the deposited sealant layer; wherein adjoining layers are chemically and/or physically bound, e.g., reactions between the primer and sealant. (para 9-10, 50, 51, 76, 136, 309-312).
Regarding the limitation “a first coreactive sealant composition;” the instant specification broadly defines “coreactive composition” as meaning “refers to a composition comprising at least two reactive compounds capable of reacting with each other” (instant spec, para 31); Pathak teaches, in regards to the primer composition, partially reacted epoxy-functional alkoxysilane-containing compositions can be prepared by combining an epoxy-functional alkoxysilane, water, and alcohol, and an optional organo-functional alkoxysilane, and allowing the mixture to react, i.e., a first coreactive sealant composition (para 133).
Regarding the limitation “a third coreactive sealant composition;” the instant specification broadly defines “coreactive composition” as meaning “refers to a composition comprising at least two reactive compounds capable of reacting with each other” (instant spec, para 31); Pathak teaches, in regards to the sealant composition, a thiol-terminated polythioether prepolymer can be prepared by reacting a polythiol and a diene such as a divinyl ether, and the respective amounts of the reactants used to prepare the polythioethers are chosen to yield terminal thiol groups, i.e., a third coreactive sealant composition (para 182).
The limitation “an underlaying layer comprising a second coreactive composition different from the first coreactive sealant composition, and underlying the deposited sealant layer” is optional and need not be taught by the prior art of record.
The limitations “formed by co-extrusion 3D printing” and “deposited by extrusuion” of the instant claim are product by process limitations and do not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 1 and the product of Pathak. However, Pathak teaches its sealants may be applied by an extruder (para 314).
Regarding claim 6, Pathak teaches the multilayer system meets or exceeds the requirements for aerospace sealants as set forth in AMS 3277 (para 322).
Regarding claims 7 and 8, Marks teaches its compositions contain microspheres or foam which would exist as a solid particle in a surrounding matrix of the primer or sealant composition (para 262), i.e., wherein one or more of the layers of the multilayer sealant has an inhomogeneous composition cross-sectional profile; and, wherein one or more of the layers of the multilayer sealant has an inhomogeneous composition in the longitudinal dimension.
Regarding claims 9-12, Pathak teaches a three dimensional part comprising the multilayer system; wherein the part comprises an aerospace vehicle part (e.g., gas tank); and a vehicle comprising the multilayer system; wherein the vehicle comprises an aerospace vehicle or an automotive vehicle.
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.
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.
Claim 3 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Pathak.
With regards to “wherein a fracture energy of the fully cured multilayer sealant is substantially the same as the fracture energy of an individual layer, wherein the fracture energy is determined according to ASTM D7313;” the multi-layered sealant of Pathak suggests or would have otherwise rendered obvious to one of ordinary skill in the art at the time of invention the multilayer system of the instant claims, so it is deemed to possess this property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
In addition, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the fracture energy of the fully cured multilayer sealant in relationship to the fracture energy of an individual layer to optimize the homogeneity to prevent crack propagation and possible delamination.
Claims 1-2, 4, 5, 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Marks et al (US 2010/0144965 A1).
Regarding claims 1, 2, 4, and 5, Marks teaches co-reactive epoxy thermoset coatings or encapsulants that can be used to form multi-layer laminates or composites (para 2, 28, 30, 80, 99) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention a multilayer system comprising a sealant layer the sealant layer comprising a first coreactive sealant composition; and an underlaying layer comprising a second coreactive composition, and underlying the deposited sealant layer; wherein adjoining layers are chemically and/or physically bound.
Regarding the limitations “a second coreactive composition different from the first coreactive sealant composition” and “a different thermoset material;” Marks teaches various epoxies, curing agents, and chain extenders could be used in arriving at its composition (para 32-67); which would have allowed one of ordinary skill in the art at the time of invention to at once envisage the use of a second coreactive composition different from the first coreactive sealant composition and that of a different thermoset material for that of the underlayer or would have rendered obvious to one of ordinary skill in the art at the time of invention the use of a second coreactive composition different from the first coreactive sealant composition and that of a different thermoset material as a matter of design choice as suggested by Marks. In addition, it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
The limitation “and/or an overlaying layer comprising a third coreactive composition different from the first coreactive sealant composition, and overlaying the deposited sealant layer” is optional and need not be taught by the prior art of record.
The limitations “formed by co-extrusion 3D printing” and “deposited by extrusuion” of the instant claim are product by process limitations and do not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 1 and the product of Marks.
Regarding claims 7 and 8, Marks teaches its compositions contain aggregates such as glass beads which would exist as a solid particle in a surrounding matrix of the epoxy thermoset composition (para 78), i.e., wherein one or more of the layers of the multilayer sealant has an inhomogeneous composition cross-sectional profile; and, wherein one or more of the layers of the multilayer sealant has an inhomogeneous composition in the longitudinal dimension.
Regarding claims 9-12, Marks teaches its compositions and composites may be useful as adhesives, structural and electrical laminates, coatings, castings, structures for the aerospace industry (para 99) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention a three dimensional part comprising the multilayer system of claim 1, wherein the part comprises an aerospace vehicle part; and a vehicle wherein the vehicle comprises an aerospace vehicle.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Marks as applied to claim 1 above, and further in view of Cai et al (US 2014/0272287 A1).
Marks teaches the multilayer system of claim 1.
Marks fails to suggest wherein a fracture energy of the fully cured multilayer sealant is substantially the same as the fracture energy of an individual layer, wherein the fracture energy is determined according to ASTM D7313; and wherein the multilayer system meets or exceeds the requirements for aerospace sealants as set forth in AMS 3277. However, Marks teaches its coating may be used as encapsulants (i.e., sealants) and coatings in the aerospace industry.
Cai teaches curable compositions for use as sealants and coatings useful in aerospace applications with improved toughness and/or higher heat resistance; wherein the sealants comprise thiol-terminated polythioether and epoxy curing agents (para 2, 25, 27, 147); wherein the cured sealant comprising a composition that meets or exceeds the requirements for aerospace sealants as set forth in AMS 3277 (para 161).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the curable composition of Cai with the coating composition used in the multilayer sealant of Marks, since it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (MPEP § 2144.06 I). This combination comes with the additional motivation of a coating or sealant with improved toughness and/or higher heat resistance.
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to formulate the coating or sealant of Marks as modified by Cai to meet or exceed the requirements for aerospace sealants as set forth in AMS 3277, since the coating or sealant is used in aerospace applications.
With regards to “wherein a fracture energy of the fully cured multilayer sealant is substantially the same as the fracture energy of an individual layer, wherein the fracture energy is determined according to ASTM D7313;” the multi-layered sealant of the Mark as modified by Cai suggests or would have otherwise rendered obvious to one of ordinary skill in the art at the time of invention the multilayer system of the instant claims, so it is deemed to possess this property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
In addition, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the fracture energy of the fully cured multilayer sealant in relationship to the fracture energy of an individual layer to optimize the homogeneity to prevent crack propagation and possible delamination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/ Primary Examiner, Art Unit 1783
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