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(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 1-10 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 1, The term “similar” in claim 1 is a relative term which renders the claim indefinite. The term “similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The scope of this claim becomes even more unclear when considering claim 2, which requires that the plant fibers cross each other, which would seem to contradict the “similar” orientation of the fibers.
Claims 2-10 are also rejected at least due to their dependence upon claim 1.
Claim Rejections - 35 USC § 112(d)
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 2 and 8 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.
Regarding claims 2 and 8, claim 1 requires that “plant fibers of the plant fiber tow have similar orientations” and claims 2 and 8 seem to contradict this limitation, requiring that some of the fibers cross each other.
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.
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.
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.
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(s) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (US 2007/0126142), hereinafter Zhou, in view of Richardson et al. (US 2019/0077095), hereinafter Richardson.
Regarding claims 1 and 3, Zhou discloses a method of producing a board comprising: (a) spreading of a tow (par. 0023 – “filaments 1” can refer to a roving or tow) of fibers (Fig. 1, 2A, par. 0023) in a planar shape such that the fibers have a similar orientation and obtaining a fiber base member (as shown entering at die 18), where the fiber can also be a kenaf fiber (par. 0076);
(b) impregnating the fiber base member with a thermoplastic resin film (par. 0023);
(c) curing the fiber base member (par. 0061, 0067) impregnated with the thermoplastic resin and binding the fibers with the resin to obtain a resin sheet including fibers;
(d) cutting the resin sheet including fibers (at 31, Fig. 8B) into pieces (33) (par. 0069 – “resulting cut pieces 33”);
(e) arranging the resin pieces including fibers in a planar shape (Fig. 8B) as shown in the drawing, and
(f) heating and pressing the member and binding the resin pieces together as one component (par. 0069-0070) and molding into a predefined shape (“the shape of the compression mold may be selected, as desired, to produce products for specific applications”).
Zhou does not explicitly disclose that the fibrous members (“resin pieces”) are arranged overlapping as required in the claims.
However, like Zhou, Richardson discloses a similar process where a fibrous tow material is impregnated at a die with a resin material, and then cut into pieces (Richardson, Fig. 10; par. 0119). The pieces can be used with a series of fibrous inserts (114) (Richardson, par. 0111-0114; Fig. 5) that can be sequentially layered in different fiber orientations (as shown in Fig. 5) such that they are arranged as overlapping.
Zhou describes a “base” process where the fibrous member is produced, and then placed into a mold and pressed. Richardson discloses an “improvement” to the base process of Zhou in that Richardson stacks together layers of material as to produce a specific product for a specific application, in accordance with Zhou above. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention to have specified that the produced layers are stacked together with one another before pressing, as to produce an item of a desired configuration, as is claimed.
Regarding claims 2 and 8, Zhou/Richardson discloses the subject matter of claim 1, and these limitations are read as the result of performing the step in claim 1.
Regarding claims 4-6, Zhou/Richardson discloses the subject matter of claim 1, and further: (a) it is inherent that the orientations of the plant fibers would be oriented in an orientation direction, (b) in the cutting step, the resin sheet including fibers is cut into pieces that can be along or against the orientation direction of the fibers (see Richardson, Fig. 5), and (c) in the arranging, the resin pieces are arranged to overlap each other with either the same (Zhou, Fig. 8B), or different (Richardson, Fig. 5) orientations.
Regarding claims 7 and 9-10, Zhou/Richardson discloses the subject matter of claims 4/6, and further discloses that they would have a strip or square shape (Zhou, Fig. 8B). It has been held that changes in size/shape support a case of prima facie obviousness. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the above to have specified that the size of the resin pieces is as claimed as to have produced an item of a desired shape/size.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
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