DETAILED CORRESPONDENCE
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 .
Examiner’s interpretation of the claimed invention:
Claimed subject matter: The claim requires (1) a mold with a cavity and (2) a controller that has three “operable to” limitations.
Intended use: The intended use of the claimed apparatus is understood to be for thermally de-sizing a preform and resin injection molding, as illustrated in the Examiner annotated copy Fig. 1, below (duplicated from Examiners answer filed on 11/07/2023).
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The apparatus heats the fiber reinforcement to remove a sizing (protective coating on the fibers) before combining the fiber reinforcement with liquid resin to form a composite part. As claimed, the apparatus does not positively recite, as part of the claimed structure, a heat source, a vacuum pump, an injector, or materials worked upon. References to these elements are only within the description of the operability of the controller. Rather, the claimed apparatus comprises a mold and a controller.
The controller has three “operable to” limitations. It is operable to control a heat source, a vacuum pump, and an injector.
The word “operable” means “able to be treated by an operation” (Definition of operable from the Cambridge Advanced Learner's Dictionary & Thesaurus© Cambridge University Press; https://dictionary.cambridge.org/us/dictionary/english/operable July 2026).
Therefore, when analyzing the claim, the recitation of
“the controller operable to control [an element] …”
is read as
--the controller is able to control [an element] …”
Response to Arguments
Written Description Rejection (App Br Pg. 6-7)
Context: Examiner rejected claim 1 and argued that "Generally directing an artisan to configure a controller is not sufficient to describe the structure of the controller” in reference to paragraph 41, which states "the controller 38 is appropriately configured and programmed as known in the art to perform the necessary steps of the subject method.”
Applicant argues “Really, this is not a written description, but more an enablement rejection.” (App Br Pg. 7)
Examiner disagrees. The question is whether paragraph 41 constitutes disclosure sufficient to satisfy the patent bargain requirements of 35 USC 112(a) regarding written description support for a controller having the claimed structure.
The written description rejection is appropriate because Applicant is only entitled to claim that which is disclosed. Applicant is not entitled to subject matter, which is not disclosed, but would be obvious1.
To possess a programmed controller, Applicant must have been in possession of the appropriate programming (the algorithms) that make up the program of the controller. The written description must contain the algorithm.
An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.”
A rather straight forward example demonstrates that generic statements are not sufficient for possession: “a controller that is appropriately configured and programmed to command a robot to build a house according to known methods” (hypothetical example). This is an idea to automate a method using a controller, not a disclosure of a programmed controller. This is an obvious idea, but it is only an idea. It is not a written description of a controller with appropriate programming to build a house.
The statement that “the controller 38 is appropriately configured and programmed” demonstrates that Applicant envisioned the idea that the method could be implemented by programming a controller, but this does not demonstrate possession of a controller with appropriate programming. Rather, this is pure functional claiming.
Applicant argues “Examiner is mistaken about the requirement for meeting the written description requirement. A worker of skill in this art would recognize how to provide an appropriate control given the method steps of the method. A patent application need not be a detailed blueprint that includes every step for forming or programming a controller. A worker of skill in this art would recognize how to provide a controller that is operable to achieve the claimed method, as explained in Appellant's paragraph 41.” (App Br Pg. 6)
Examiner disagrees with this because the quid pro quo of the patent bargain is that applicant is obligated to provide a specification to include “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 make and use the same.” (35 U.S. Code § 112)
The generic statement that a method can be accomplished by a computer is insufficient to satisfy the written description requirement necessary to describe the structure (i.e., programming) of said computer.
Obviousness Rejections (App Br Pg. 7)
Context: Graff (US 5518385 A); claim-prior art mapping shown below,
Claim limitation
Reference element
mold
“mold” (C2L51-53)
controller
“controller” (C2L51-53)
the controller operable to control a heat source…
“the mold 80 also includes heating elements 98 for heating the walls of the mold… set, for example by the controller 31” (C6L29-31)
the controller operable to control a vacuum pump…
“the vacuum pump 94 is started by the controller” (C7L55)
the controller operable to control an injector…
“A controller controls the movement of the mold sections, the operation of the vacuum pump and the resin injector,” (C2L51-53)
Applicant argues “The apparatus 20 also includes a heat source 32 to heat the mold, a vacuum pump 34, and an injector…”
Examiner agrees with the general description of the invention, but it is pointed out that that the claimed apparatus does not include these elements of a heat source, vacuum pump, and injector. The claimed subject matter only requires the presence of a mold and controller that is capable of controlling these elements. Graff teaches all of the claimed structures (see rejection or element mapping table above).
Applicant argues “A claim for a controller that is operable can only be met if the prior art is actually programmed to provide the functions”
Examiner disagrees with the implication that claims involving controllers are subject to special rules that are different than any other claim term, but agrees that any “[element X] configured to [perform function Y]” (i.e., a structure structurally limited to performing function Y) is understood to refer to a narrower meaning than the term “[element X] used to [perform function Y]” (i.e., a structure capable of performing function X) if and only if the narrower meaning is supported by the specification.
Whether the narrow interpretation of “configured to” (or equivalent) is proper depends on whether it would be supported by the instant application. That is, whether the term “configured to” is properly interpreted as a structural limitation depends on the application as a whole.
This has been agreed on by the courts. See: Ex Parte Edgar (Appeal 2016-002223): The subject matter at issue in Edgar was the use of the phrase “configured to” in regards to a reflector component and cited to Giannelli (In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014)). Although the term “configured to” was held to be narrowing, the failure to disclose sufficient structure defined by the term resulted in rejection under 35 USC 112.
In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014)): The subject matter at issue in Giannelli was the use of the phrase “adapted to” in regards to a handle for a rowing machine. The Giannelli decision was supported by the fact that “the written description makes clear that “adapted to,”… has a narrower meaning” and cited to Aspex (Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)).
Aspex (Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)): The subject matter at issue in Aspex was the use of the phrase “adapted to” in regards to a hinge. Again, the Aspex decision was support by the fact that “intrinsic evidence … supports that narrower interpretation of the phrase” and citing to Sta-Rite (Sta-Rite Indus., LLC v. ITT Corp., 682 F. Supp. 2d 738, 753 (E.D. Tex. 2010)) & Boston Scientific (Boston Scientific Corp. v. Cordis Corp., 2006 WL 3782840 (N.D. Cal. Dec. 20, 2006)).
Sta-Rite Indus., LLC v. ITT Corp., 682 F. Supp. 2d 738, 753 (E.D. Tex. 2010): In Star-Rite the subject matter as issue was the use of the phrase “adapted to” with regards to elements of a pump and was construed to mean a structural configuration because, again, this was supported by the specification.
Boston Scientific Corp. v. Cordis Corp., 2006 WL 3782840 (N.D. Cal. Dec. 20, 2006) construed the phrase “adapted to” to mean “configured to,” not “capable of,” again, because the patent supported this interpretation.
Therefore, it is clear that whether the narrow interpretation of “configured to” is proper depends on whether it would be supported by the instant application. That is, whether the term “configured to” is properly interpreted as a structural limitation depends on the application as a whole.
In the present case, Applicant fails to satisfy the requirements of Federal Circuit law for two reasons: (1) they do not claim the controller is structurally limited to a particular function; operable, as explained above means capable of not configured to; (2) they do not provide support in their specification to limit the interpretation to support a narrow structural interpretation of the claimed element.
Applicant argues “ Examiner appears to argue that the controller of Graff could be programmed to meet the specifics required by the claims. However, the claims require the control is already operable in a certain way, and thus require the control be actually programmed to achieve this operation.”
Examiner does not find this persuasive because rejection is that the controller of Graff is identical to the controller as claimed. The claim requires a controller that is operable to control a vacuum, a heater, and injector. Graff discloses a controller that controls a vacuum, a heater, and injector.
The claimed controller does not require any particular structure (e.g., programming). Programming refers to a algorithmic processes. Applicant has not described any such algorithm. The claim requires a controller that can connect to and control a vacuum, a heater, and injector (operable to control these elements). Graff discloses a controller that can connect to and control a vacuum, a heater, and injector (operable to control these elements). Graff meets the claim.
Applicant cites to Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011) and argues that likewise here “the claim does not merely require a controller for each of the components, but rather requires specific controls programmed into that controller. The prior art Graff patent cannot meet any of these limitations.”
Examiner disagrees with Applicant’s premise because the presently claimed controller does not recite programming.
Applicant argues that “In the Advisory Action mailed January 28, 2026, the Examiner dismisses the very clear showing mentioned above. The Examiner states he "does not find this persuasive at least because the ordinary and customary meaning of "operable" that it is possible to use."
Of course, a claim must be read in connection with the specification and drawings. Here it is clear that the controller is capable of performing the method. The case law makes clear the rejection is faulty.”
Examiner agrees that a claim must be read in connection with the specification and drawings. It is for this reason that the term “operable” should not be interpreted to mean anything more than the ordinary and customary meaning of that it is possible to use, e.g., “able to be treated by an operation” (Definition of operable from the Cambridge Advanced Learner's Dictionary & Thesaurus© Cambridge University Press; https://dictionary.cambridge.org/us/dictionary/english/operable July 2026).
Rather than replying to Examiner’s concern that Applicant is misusing the word “operable” to mean “programmed”, applicant simple dismisses the entirety of the rejection as unreasonable.
Even if Applicant disagrees with Examiner’s rejections regarding the written description rejection and the obviousness rejection, they should respond to this issue separately. The interpretation of this word substantially affects the reasonableness of the rejections and the interpretation of the claims as a whole. Rather than providing any guidance to the office, applicant dismisses the fact that they are plainly using the word contrary to its accepted meaning.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“the controller operable to control [an element] configured to…” in claim 1
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-12 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.
In reference to claim 1, the term “operable” in claim 1 is used by the claim to mean “programmed to” while the accepted meaning is “possible to use”, “able to be treated by an operation” (Definition of operable from the Cambridge Advanced Learner's Dictionary & Thesaurus© Cambridge University Press; https://dictionary.cambridge.org/us/dictionary/english/operable July 2026)..” The term is indefinite because the specification does not clearly redefine the term.
In reference to claim 1, the claim limitation “the controller operable to control [an element] configured to…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
As evidenced by Applicant’s remarks Applicant intends for the claimed controller to refer to a specialized programmed controller. (e.g., “the claim does not merely require a controller for each of the components, but rather requires specific controls programmed into that controller”, App. Br. Pg. 11, emphasis in original), however, the specification fails to provide disclose of an algorithm for performing the claimed specific computer function. See MPEP 2181:
For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming.
Accordingly, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor.
Mere reference to a general purpose computer with appropriate programming without providing an explanation of the appropriate programming, or simply reciting “software” without providing detail about the means to accomplish a specific software function, would not be an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In this case there is no disclosure of any algorithm. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-12 are rejected by virtue of their dependence on claim 1.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-12 are 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.
In reference to claim 1-12, if “operable” was read as programmed to (see 112(b) rejection), then the claim is rejected because there is no description of a programmed controller other that “The controller 38 is appropriately configured and programmed as known in the art to perform the necessary steps of the subject method.” (Paragraph 41 of the publication). Generally directing an artisan to configure a controller is not sufficient to describe the structure of the controller.
It is not enough that one skilled in the art could build a component to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement.
This is not an enablement rejection. Rather, the question is whether paragraph 41 constitutes disclosure sufficient to satisfy the patent bargain requirements of 35 USC 112(a) regarding written description support for a controller having the claimed structure.
The written description rejection is appropriate because Applicant is only entitled to claim that which is disclosed. Applicant is not entitled to subject matter, which is not disclosed, but would be obvious2.
The statement that “the controller 38 is appropriately configured and programmed” demonstrates that Applicant envisioned the idea that the method could be programmed, but this does not demonstrate possession of a controller with the claimed structure. Rather, this is pure functional claiming.
A rather straight forward example demonstrates that generic “appropriately configured and programmed” statements are not sufficient for possession: “a controller that is appropriately configured and programmed to command a robot to build a house according to known methods” (hypothetical example). This is an idea to automate a method using a controller, not a disclosure of a programmed controller. This is an obvious idea, but it is only an idea. It is not a written description of a specialized controller that can build a house because the actual programming, however possible by persons in the art, is not disclosed.
Likewise in the present case, “the controller 38 is appropriately configured and programmed as known in the art to perform the necessary steps of the subject method.” (paragraph 41), is an obvious automation of a manual activity, but is not a sufficient disclosure of a programmed controller.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graff (US 5518385 A) and in view of Gardner (US 20030132543 A1).
In reference to claim 1-12, Graff discloses a mold with a cavity and a controller (Fig 2-4) wherein the controller is capable of controlling a vacuum, injector, and heat source as claimed.
See description of Figs 2-4, in particular:
“A controller controls the movement of the mold sections, the operation of the vacuum pump and the resin injector,” (C2L51-53)
“the mold 80 also includes heating elements 98 for heating the walls of the mold… set, for example by the controller 31” (C6L29-31)
“the vacuum pump 94 is started by the controller” (C7L55)
Claim limitation
Reference element
mold
“mold” (C2L51-53)
controller
“controller” (C2L51-53)
the controller operable to control a heat source…
“the mold 80 also includes heating elements 98 for heating the walls of the mold… set, for example by the controller 31” (C6L29-31)
the controller operable to control a vacuum pump…
“the vacuum pump 94 is started by the controller” (C7L55)
the controller operable to control an injector…
“A controller controls the movement of the mold sections, the operation of the vacuum pump and the resin injector,” (C2L51-53)
The controller of Graff is operable to control a heat source, vacuum pump, and injector. This is identical to the structure of the controller claimed by Applicant. Thus, Graff is alone believed to mee the claim. The Graff controller is operable as claimed.
Furthermore, if the claimed controller was read as requiring programming of an algorithm to perform the method of thermally desizing the preform, the claim is rejected in view of Gardner.
Graff describes a controller that is operable to control a heat source, vacuum pump, and injector, but does not describe a controller that comprises an algorithm for automation of the method of thermal desizing.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, thermal desizing in composite molding, Gardner discloses a molding apparatus comprising:
a mold defining an internal cavity (“RTM mold” [Abstract] and See Fig 2 and 10);
a shaped reinforcement configured to be positioned within the internal cavity, the shaped reinforcement comprised of a plurality of fibers (“unidirectional tape comprising carbon fibers and a fugitive binder is provided, as well as methods for forming the tape and composite parts using the unidirectional tape in a resin-transfer molding (RTM) process” [P0015]) sized with a low temperature … binder to form a plurality of sized fibers comprising a preform (“fugitive binder is completely pyrolyzed and leaves no residue” [P0015]. Furthermore, since the claim is directed to an apparatus the prior art apparatus is merely required to be capable of working on the material as claimed because:
a heat source configured to heat the mold, wherein the preform is de-sized by the heat source heating the mold to an initial temperature that is sufficient to break down the low temperature … binder to a gaseous phase (“mold is heated, and hot nitrogen gas is pumped through the mold cavity or bag, heating the carbon fibers. The fugitive binder is completely pyrolyzed and leaves no residue, as the nitrogen carries gaseous products from the pyrolysis of the binder to outside the mold.” [P0015]);
a vacuum pump configured to remove the gaseous phase of the low temperature … binder material or a pressurized gas flow designed to remove the gaseous phase of the low temperature … binder material (“Vent ports 25 are connected to an exhaust, and during most of the pyrolysis step, vent ports 25 can be at atmospheric pressure. At the end of the pyrolysis, vacuum is drawn on vent ports 25 and the injection of the nitrogen gas is stopped. Injection ports 23 are closed and a full vacuum is pulled on mold 13 to evacuate cavity 27. Carbon fibers 41 of tape 39 will cool very quickly. As the binder is pyrolyzed, fibers 41 are held in place by the mechanical pressure caused by fibers 41 being slightly compressed between surfaces 29, 31.” [P0033]); and
an injector configured to inject an infusion liquid to infuse a de-sized shaped reinforcement, wherein the heat source heats the mold to an infusion temperature such that the infusion liquid completely wets-out the fibers to provide an infused shaped reinforcement, and wherein the heat source heats the infused shaped reinforcement to a curing temperature (“Injection ports 23 are then switched to accept resin. Mold 13 will already be preheated and the temperature should be lowered to a processing temperature suitable for RTM injection…. RTM procedures then continue as described above for conventional methods, resin being injected into cavity 27 through each injection port 23 while a vacuum is pulled on each vent port 25” [P0034]).
The binder disclosed by Gardner is “preferably an aliphatic, thermoplastic, organic polymer which pyrolyzes completely when heated in an inert atmosphere. Ideal binders are water soluble, and suitable polymers for this application include hydroxypropyl cellulose, hydroxyethyl cellulose, hydroxymethyl cellulose, polyvinyl alcohol, polyvinyl pyrrolidone and polyvinyl acetate. For many of the example polymers, pyrolysis can be achieved with a thermal treatment of 650.degree. F. for thirty minutes. After this pyrolysis, the fugitive binder is completely "burned off," leaving no charred material or residue” [P0028], which overlaps with the sizing disclosed by the instant application (“PVA (polyvinyl alcohol)” [P0034 of Published Application]).
Thus, even if patentable weight was given to the material worked upon, Gardner teaches renders a sizing as claimed obvious.
Therefore, when the Gardener apparatus is used to perform the method further disclosed by Gardner (see claim 1) including the steps of
“(b) providing sections of adjacent fibers, the fibers being parallel to each other and being coated with a fugitive binder that adheres the fibers to each other;
(c) arranging the fibers within the mold cavity and assembling the mold; then
(d) heating the fibers to a temperature sufficient to pyrolyze the binder; then
(e) injecting resin into the mold cavity, the resin forming a matrix enclosing the fibers;”
it would render the configuring of the apparatus to burn off a sizing to be obvious because the binder of Gardner encompasses a sizing as claimed.
To provide a mechanical or automatic means to replace manual activity, which accomplishes the same result, is within the ambit of a person of ordinary skill in the art. See In re Venner, 120 USPQ 192 (CCPA 1958) (see MPEP § 2144.04).
The combination would be achievable by integrating the controller of Graff that is operable to control a heat source, vacuum pump, and injector, and using it to automate the method of Gardner.
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to arrive at the claimed apparatus comprising a controller having algorithms stored thereon which enable the automation of a method for perform automatic thermal desizing of composite preforms.
Conclusion
Aoi (JP2007191662A) teaches “The volatile matter removal treatment process is performed, for example, with an apparatus configuration as shown in FIG. 5(b) … the volatile matter here refers to the remaining solvent, water, and sizing agent.” and “a sizing agent removing treatment is performed to heat the heat-resistant composite material to a first temperature at which the sizing agent volatilizes but the heat-resistant composite material does not cure.”
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 NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/ Examiner, Art Unit 1744
Prosecution Reopened
In view of the appeal brief filed on 04/20/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/XIAO S ZHAO/ Supervisory Patent Examiner, Art Unit 1744
1 See Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) at:
“The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. See Martin v. Mayer, 823 F.2d 500, 504, 3 USPQ2d 1333, 1337 (Fed. Cir. 1987) (stating that it is "not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure.... Rather, it is a question whether the application necessarily discloses that particular device.") (quoting Jepson v. Coleman, 50 C.C.P.A. 1051, 314 F.2d 533, 536, 136 USPQ 647, 649-50 (1963))”
2 See Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) at:
“The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. See Martin v. Mayer, 823 F.2d 500, 504, 3 USPQ2d 1333, 1337 (Fed. Cir. 1987) (stating that it is "not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure.... Rather, it is a question whether the application necessarily discloses that particular device.") (quoting Jepson v. Coleman, 50 C.C.P.A. 1051, 314 F.2d 533, 536, 136 USPQ 647, 649-50 (1963))”
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