www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/970,372
`
`08/16/2020
`
`Tomokazu KUSUNOKI
`
`AOYA28PUSO01
`
`6940
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`
`CLEVELAND, OH 44115
`
`MILLER, BETHANY MACKENZIE
`
`1787
`
`08/03/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`46/970,372
`KUSUNOK etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BETHANY M MILLER
`1787
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 27 June 2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-5 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-5 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 06/27/2022.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220726b
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 2
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`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 § 103
`
`2.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections 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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`3.
`
`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 contentsof 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 pertinentart.
`
`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
`
`4.
`
`Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Imao et al. (US 4,704,328) in view of Tani et al. (JP 2001-240953A) and in view of
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 3
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`the evidence of Motocross (Motocross Action Magazine, “Ten Things You Need
`
`to Know about Carbon Fiber”), Passive Components (Passive Components,
`
`“Coefficients of Linear Thermal Expansion on Polymers Explained”) and Kajihara
`
`et al. (US 2015/0337106 A1).
`
`5.
`
`Regarding Claim 1, Imao (Abstract) teaches a composite molded article
`
`comprising, in order, a substrate, an intermediate layer and a ceramic flame
`
`(thermal) sprayed coating. The substrate can be formed from resin such as
`
`polyester, polymethyl methacrylate, or epoxy resin (Column 3, lines 37-61). The
`
`intermediate undercoat composition comprises inorganic filler having complex
`
`irregularities in the surface thereof and an inorganic binder (Column 2, lines 10-
`
`47). As used in the instant application, the terminology “amorphous” means non-
`
`spherical. Given the irregularities in the surface of the particles, the inorganic
`
`particles would be amorphous as used in the instant application. The content of
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`the inorganic filler in the undercoat layer is preferably from 15 to 80 vol%
`
`(Column 3, lines 25-36). The thickness of the undercoat layer is preferably at least
`
`10 microns (Column 4,lines 8-12).
`
`6.
`
`Imao does not explicitly teach the size of the inorganic particles or a specific
`
`narrower rangefor the thickness of the intermediate layer.
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 4
`
`7.
`
`Tani (Paragraph 9) teachesa resin base coated with an intermediate layer
`
`composed of a resin and ceramic particles that is further coated with a ceramic
`
`top coat. The intermediate layer provides good adhesion between the base and
`
`the top coat and includesparticles having a size of from 5 to 50 microns
`
`(Paragraph 16). The intermediate layer has a thickness of from 0.02 to 0.3 mm (20
`
`to 300 microns) in order to ensure the continuity of the layer is maintained while
`
`maintaining the shear strength of the layer (Paragraph 20).
`
`8.
`
`It would have been obvious to one of ordinaryskill in the art before the
`
`effective filing date of the claimed invention to use the particle size of Tani for the
`
`particles of Imao, in order to have a specific particles size that has been shown to
`
`be effective for such an intermediate layer by Tani. It further would have been
`
`obvious to use the thickness values of Tani, for the intermediate layer thickness of
`
`lmao, in order to ensure the continuity of the layer is maintained while
`
`maintaining the shear strength of the layer.
`
`9.
`
`While Imao in view of Tani does not explicitly teach limiting the size of the
`
`particles and the thickness of the intermediate layer to meet the relationship set
`
`forth in claim 1, given the above ranges, the teachings of Imao in view of Tani
`
`would encompassparticle sizes and thickness values that would meet the
`
`relationship.
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 5
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`10.
`
` Imao further discloses the resin substrate comprises fiber reinforcement
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`such as glass, carbon, boron, and silicon carbide (Col 3, lines 54-57)(i.e. inorganic
`
`filler).
`
`11.
`
`According to the evidence of Motocross, carbon fibers have a negative CTE,
`
`and when putinto a resin matrix can tailor the composite to lower the CTE (para
`
`2).
`
`12.
`
`According to the evidence of Passive Components, fibers and other fillers
`
`significantly reduce thermal expansion (page 4, para 5). The data provided in the
`
`table showsthat glass fibers reduce the CTE of polyamide 66 (page6) and that
`
`carbon fibers and glass fibers each reduce the CTE of PEEK (page7).
`
`13.
`
`According to the evidence of Kajihara, inorganic fillers such as silicon
`
`carbide, boron nitride, and glass fibers reduce the coefficient of thermal
`
`expansion when contained within epoxy resin cured products (para 0030).
`
`14.‘
`
`Inlight of the evidence of Motocross, Passive Components, and Kajihara,
`
`the inorganic filler or fiber of Imao would necessarily enable a coefficient of
`
`thermal expansion of the resin structure and a coefficient of thermal expansion of
`
`the thermal sprayed ceramic coating to be made closer to each other as
`
`compared to a closeness of the coefficient of thermal expansion of the resin
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 6
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`structure without the inorganic filler and the coefficient of thermal expansion of
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`the thermal sprayed ceramic coating, absent evidence to the contrary.
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`15.
`
`Regarding Claims 2 and 3, Imao (Paragraph bridging Columns 4 and 5)
`
`teaches that the binder can be the same material as the substrate. The substrate
`
`can be formed from an epoxy resin (Column 3, lines 47-53). Imao uses a bisphenol
`
`A-type epoxy resin in the Examples. This is a biphenyl type epoxy resin.
`
`16.
`
`Regarding Claims 4 and 5, Imao (Column 2, lines 27-47) teaches that the
`
`inorganic filler in the intermediate layer can be one or more elements, alloys or
`
`oxides of aluminum and other metals.
`
`Response to Arguments
`
`17. Applicant's argumentsfiled 06/10/2022 have been fully considered but
`
`they are not persuasive.
`
`18.
`
`Applicant argues that the base material of Imao is a “fiber-reinforced
`
`substrate”, not a resin material having inorganic filler as claimed.
`
`19.
`
`However, since the claims broadly recite “a resin structure comprising an
`
`inorganic filler” and there is nothing in the claims or the specification that would
`
`exclude fiber reinforcement such as glass, carbon, boron, and silicon carbide as
`
`disclosed in Imao, the examiner maintains that the fiber reinforcementin the
`
`resin substrate of Imao would constitute an “inorganic filler”.
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 7
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`20.
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`Applicant argues that there is no motivation to modify Imao and Tani to
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`modify the coefficient of thermal expansion.
`
`21.
`
`However, Kajihara, Motocross, and Passive Componentsare each cited as
`
`evidentiary references to showthat the inorganic fibers in the resin structure of
`
`Imao would inherently have an effect on the coefficient of thermal expansion of
`
`the resin structure.
`
`22.
`
`Applicant argues that Kajihara fails to provide any specific disclosure that
`
`the fibers themselves would specifically provide an effect on the coefficient of
`
`thermal expansion.
`
`23.
`
`However, paragraph 0030 of Kajihara discloses that “[I]t is possible with the
`
`inorganic filler to .....reduce the coefficient of thermal expansion for the products”
`
`wherethe inorganic filers include glass fiber, silicon nitride, and boron nitride
`
`which are identical to the fillers disclosed by Imao. Therefore, Kajihara does
`
`provide a specific disclosure that it is the fillers themselves that effect the
`
`coefficient of thermal expansion.
`
`24.
`
`Applicant argues thatin light of the technical idea of Kajihara, one would
`
`not have a motivation that only a filler is selected without the low-melting point
`
`glass composition disclosed by Kajihara.
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 8
`
`25.
`
`However, Kajihara is only used as an evidence reference for the specific
`
`teaching that inorganic fillers including those disclosed by Imao would reduce the
`
`coefficient of thermal expansion when contained within epoxy resin cured
`
`products.
`
`26.
`
`Applicant argues that Motocross and Passive Components are understood
`
`to disclose polyamide 66 or PEEK resin withfillers or glass fibers where Passive
`
`Componentsonly generally states that fibers and other fillers reduce thermal
`
`expansion, but has not been found to specifically disclose the type of fibers and
`
`other fillers. Furthermore, each of polyamide 66 and PEEK is a thermoplastic resin
`
`different from the thermosetting resin as claimed, there is no disclosure or
`
`suggestion that the same would translate to the resin material as claimed, and
`
`there would have been no motivation to have selected the thermosetting resin
`
`from the disclosure of the use of the thermoplastic resin in Motocross and Passive
`
`Components. Applicant also argues that Motocross and Passive Components do
`
`not disclose that a resin body is used as a housing equipment for water used area,
`
`which requires a high durability.
`
`27.
`
`However, Motocross and Passive Componentsare only used as evidence
`
`referencesfor their specific teachings that carbon fibers when put in a resin
`
`matrix can tailor the composite to lower coefficient of thermal expansion and
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 9
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`fibers and other fillers significantly reduce the thermal expansion, respectively.
`
`Further, Passive Components showsin the table (page 7) that glass fibers (as
`
`disclosed by Imao) reducethe coefficient of thermal expansion of PET (a polyester
`
`as disclosed by Imao and presently claimed). Each of the evidence references are
`
`only used to provide evidenceto supportthe position that the fillers disclosed by
`
`Imao would necessarily enable a coefficient of thermal expansion of the resin
`
`structure and a coefficient of thermal expansion of the thermal sprayed ceramic
`
`coating to be made closer to each other as compared to a closeness of the
`
`coefficient of thermal expansion of the resin structure without the inorganic filler
`
`and the coefficient of thermal expansion of the thermal sprayed ceramic coating,
`
`absent evidenceto the contrary.
`
`28.
`
`Applicant argues that the inorganic fibers in the resin structure of Imao
`
`would not affect the coefficient of thermal expansion of the resin structure.
`
`29.
`
`However, Applicant provides no evidence to support this argument, while
`
`evidence references have been cited to show the inorganic fibers, i.e. inorganic
`
`fillers, of Imao would affect the coefficient of thermal expansion. It is noted that
`
`“the arguments of counsel cannot take the place of evidencein the record”, /n re
`
`Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
`
`It is the examiner’s
`
`position that the arguments provided by the applicant regarding the effect of
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 10
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`inorganic filler on the coefficient of thermal expansion must be supported by a
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`declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring
`
`evidencein a declaration or affidavit form is to obtain the assurances that any
`
`statements or representations made are correct, as provided by 35 U.S.C. 24 and
`
`18 U.S.C. 1001”.
`
`Conclusion
`
`30. 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).
`
`31. Ashortened statutory period for reply to this final action is set to expire
`
`
`
`THREE MONTHS fromthe mailing date of this action. In the eventafirst 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 extension fee 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 dateofthis
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`final action.
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 11
`
`32.
`
`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to BETHANY M MILLER whose telephone number
`
`is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
`
`33.
`
`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 {yk
`
`34.
`
`If attempts to reach the examiner by telephone are unsuccessful, the
`
`examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax
`
`phone number for the organization wherethis application or proceeding is
`
`assigned is 571-273-8300.
`
`35.
`
`Information regarding the status of published or unpublished applications
`
`maybe 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
`
`

`

`Application/Control Number: 16/970,372
`Art Unit: 1787
`
`Page 12
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`USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)
`
`or 571-272-1000.
`
`/BETHANY M MILLER/
`Examiner, Art Unit 1787
`
`/CALLIE E SHOSHO/
`Supervisory Patent Examiner, Art Unit 1787
`
`