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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, in the reply filed on 08 May 2026 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08 May 2026.
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:
Fig. 2A includes reference character 300A, which is not mentioned in the specification as originally filed.
Fig. 2A includes reference character 302, which is not mentioned in the specification as originally filed
Fig. 2B includes reference character 300B, which is not mentioned in the specification as originally filed.
Fig. 2B includes reference character 304, which is not mentioned in the specification as originally filed.
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 Objections
Claims 6 and 9 are objected to because of the following informalities:
Claim 6, line 2: “hydronated butadiene rubber (HNBR)” should most likely read “hydrogenated acrylonitrile butadiene rubber (HNBR)”.
Claim 9, line 2: “one or more of a brake system a vehicle sound mitigation system, a construction sound” should most likely read “one or more of a brake system, a vehicle sound mitigation system, a construction sound”. Currently, there is no comma (“,”) between “a brake system” and “a vehicle sound mitigation system”.
Appropriate correction is required.
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.
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.
Claims 1-4, 6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Oyaizu et al. (WO 2016/132655 A1, “Oyaizu”) in view of Yoon et al. (US 2023/0264410 A1, “Yoon”). The disclosure of Oyaizu is based off a machine translation of the reference included with this action.
With respect to claims 1-4 and 6, Oyaizu discloses a vibration-damping fiber-reinforced resin body used with automobiles ([0001], [0007]). The body has a fiber-reinforced resin layer made by impregnating a woven fabric, and a vibration-damping layer made of synthetic resin ([0007], [0020]). The fiber-reinforced resin layer is made by impregnating a woven fabric with a resin ([0025]) where the resin includes epoxy ([0028]); the fiber is carbon fiber ([0025]). Thus, the fiber-reinforced resin layer corresponds to the non-metallic woven fabric substrate impregnated with a resin. The resin further includes inorganic materials including titanium oxide and alumina (i.e., aluminum oxide) ([0029]). The vibration-damping layer is made from a thermoplastic or thermosetting resin ([0031]).
However, Oyaizu does not disclose wherein the vibration-damping layer is an elastomeric layer, nor wherein the elastomeric layers comprise acrylonitrile butadiene rubber, hydrogenated acrylonitrile butadiene rubber, fluorinated rubber, acrylic rubber, ethylene propylene diene monomer rubber, silicone, fluorinated silicone, polyurethane, or a combination thereof.
Yoon teaches a laminate having a vibration-damping layer ([0002]) used with vehicles ([0007]). The laminate has the structure 300/200/100/200/300, where 100 is a hybrid layer ([0039], Fig. 1); the hybrid layer 100 includes a vibration damping layer 110 and intermediate layer 120 ([0040]). The vibration damping layer 110 is made from a synthetic rubber including ethylene propylene diene monomer (EPDM) rubber and has excellent sound absorption and insulation performance ([0042]). The layer 120 is made from fibers mixed with resin ([0043]) where the fibers include carbon fiber and glass fiber (i.e., fiberglass) and the resin includes epoxy ([0044]).
Oyaizu and Yoon are analogous inventions in the field of laminates used for vehicles having vibration-damping layers and a resin-impregnated fiber layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the vibration-damping layer of Oyaizu to be made from EPDM rubber as taught by Yoon in order to provide a vibration damping layer having excellent sound absorption and insulation performance (Yoon, [0042]).
With respect to claim 9, Oyaizu in view of Yoon discloses the use of the vibration-damping fiber-reinforced resin body used with automobiles (Oyaizu, [0001], [0007]), and discloses the use of a vibration damping layer having excellent sound absorption and insulation performance (Yoon, [0042]). Therefore, it would have been obvious to one of ordinary skill in the art to use the vibration-damping fiber-reinforced resin body in a vehicle sound mitigation system. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Alternatively, with respect to claim 9, there is no disclosure from Oyaizu in view of Yoon of the noise, vibration, harshness mitigation material being applied in one or more of a brake system, a vehicle sound mitigation system, a construction sound mitigation system, a sealing gasket, or combinations thereof. However, these recitation in the claims that the noise, vibration, harshness mitigation material is for a brake system, a vehicle sound mitigation system, a construction sound mitigation system, a sealing gasket, or combinations thereof is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Oyaizu in view of Yoon discloses a noise, vibration, harshness mitigation material as presently claimed, it is clear that the noise, vibration, harshness mitigation material of Oyaizu in view of Yoon would be capable of performing the intended use (i.e., be used in a brake system, a vehicle sound mitigation system, a construction sound mitigation system, a sealing gasket, or combinations thereof) presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Oyaizu et al. (WO 2016/132655 A1, “Oyaizu”) in view of Yoon et al. (US 2023/0264410 A1, “Yoon”) as applied to claims 1 and 3 above, and further in view of Chaut et al. (US 2020/0005755 A1, “Chaut”). The disclosure of Oyaizu is based off a machine translation of the reference included with this action.
With respect to claim 5, Oyaizu in view of Yoon does not disclose wherein the resin further includes a toughening agent comprising carboxylate acrylonitrile butadiene rubber, polysulfone, polyether sulfone, polyester, polyphenylene ether, or combinations thereof.
Chaut teaches a sound absorbing panel (Abstract, [0001]), where toughening agents are included in the damping material ([0093]). The toughening agent includes polysulfones ([0096]) and carboxy-terminated acrylonitrile-butadiene copolymer (i.e., carboxylate acrylonitrile butadiene rubber) ([0100]). The damping material has fiberglass or other fabric material integrated within the material ([0082]).
Oyaizu in view of Yoon and Chaut are analogous inventions in the field of fiber-containing panels.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fiber-containing layer of Oyaizu in view of Yoon to contain a toughening agent that is polysulfone or carboxy-terminated acrylonitrile butadiene copolymer (i.e., carboxylate acrylonitrile butadiene rubber) as taught by Chaut. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Oyaizu et al. (WO 2016/132655 A1, “Oyaizu”) in view of Yoon et al. (US 2023/0264410 A1, “Yoon”) as applied to claims 1 and 3 above, and further in view of Li et an (CN 113265140 A, “Li”). The disclosures of Oyaizu and Li are based off machine translations of the references included with this action.
With respect to claim 5, Oyaizu in view of Yoon does not disclose wherein the resin further includes a toughening agent comprising carboxylate acrylonitrile butadiene rubber, polysulfone, polyether sulfone, polyester, polyphenylene ether, or combinations thereof.
Li teaches a material made from polyamide and chopped glass fiber ([0010]). The material includes a toughening and noise-reducing agent ([n0017]) in order to absorb engine compartment noise and improve driving and riding comfort ([n0018]). The toughening and noise-reducing agent is made from polyphenylene ether ([n0019]).
Oyaizu in view of Yoon and Li are analogous inventions in the field of materials used with automobiles having a resin-impregnated fiber-containing layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fiber-containing layer of Oyaizu in view of Yoon to contain a toughening and noise-reducing agent that is made from polyphenylene ether as taught by Li in order to provide a material that absorbs engine compartment noise and having improved driving and riding comfort (Li, [n0018]).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Oyaizu et al. (WO 2016/132655 A1, “Oyaizu”) in view of Yoon et al. (US 2023/0264410 A1, “Yoon”) as applied to claim 1 above, and further in view of Clapper et al. (US 2015/0183975 A1, “Clapper”). The disclosure of Oyaizu is based off a machine translation of the reference included with this action.
With respect to claims 7-8, Oyaizu in view of Yoon discloses the woven fabric is impregnated by immersing the woven fabric in the resin solution (Oyaizu, [0030]), which would necessarily result in a coating of the resin solution on the surface of the woven fabric. Such a coating corresponds to the claimed primer. The subsequent vibration-damping layer is therefore applied onto the primer layer.
However, Oyaizu in view of Yoon does not disclose an adhesive layer applied to a second surface opposite the first surface of the non-metallic woven fabric substrate impregnated with the resin, nor wherein the adhesive layer comprises silicone, fluorosilicone, acrylic, phenolic, or combinations thereof.
Clapper teaches a vibration damping composite ([0001]) comprising a damping material adhered to a substrate using an acrylic adhesive ([0005-0006], [0016]). The adhesive provides vibration damping performance as well as substantial adhesive performance and durability ([0008]).
Oyaizu in view of Yoon and Clapper are analogous inventions in the field of vibration damping composites.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the vibration-damping fiber-reinforced resin body of Oyaizu in view of Yoon to contain the acrylic adhesive as taught by Clapper on a second surface of the fiber-reinforced resin layer opposite to the vibration-damping layer in order to adhere the vibration-damping fiber-reinforced resin body to automobile components where the adhesive provides vibration damping performance as well as substantial adhesive performance and durability (Clapper, [0008]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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