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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on August 8, 2025, has been entered.
Claim Rejections - 35 USC § 112
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, 4, and 5 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 claims 1, 4, and 5, claim 1 recites that the exerted tension force is 30% to 90% of bearing force for on the antioxidative material or the non-antioxidative material coated with the first antioxidative coating. The verbiage of the claim is unclear rendering the claim indefinite, as it is unclear what exerted tension force property is being claimed, including how the exerted tension force is related to a bearing force, and what a bearing force necessarily entails.
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.
Claims 1, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,896,968 to Golecki in view of US Pub. No. 2015/0274316 to Kamihara.
Regarding claims 1, 4, and 5, Golecki teaches a protective coating for a carbon-containing component comprising a material including silicon, silicon oxide and silicon carbide (Golecki, Abstract, column 2 lines 28-50). Golecki teaches that the coating may include a single layer of fixed composition or it may have multiple layers (Id., column 2 lines 51-59). Golecki teaches that the composition of the carbon-containing component may include carbon fibers (Id., column 2 lines 60-65). Golecki teaches that such compounds of the group prevent and/or retard oxidation when free of microcracks and other defects (Id., column 2 line 66 to column 3 line 1-10). Golecki teaches that the coatings may be applied by various techniques including chemical vapor deposition (Id., column 3 lines 24-33). Golecki suggests that carbon composites are suitable for use in aerospace and aircraft applications (Id., column 1 lines 12-22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coated carbon fibers of Golecki, wherein the carbon-containing component is a carbon fiber and the protective coating is silicon carbide, based on the totality of the teachings of Golecki.
Golecki does not appear to teach the claimed ends of the carbon-containing component being not coated. However, Kamihara teaches a structural material for structures characterized by comprising a carbon-fiber reinforced plastic wherein the reinforcement comprises carbon fibers and the matrix comprises a plastic (Kamihara, Abstract). Kamihara teaches that in a structural material for structures, the ends of the carbon fibers are exposed (Id., claim 1). Kamihara teaches electrical conduction is desirable at the ends of the carbon fibers, allowing for electrical current to flow therethrough upon being struck by lightning, and allowing for the prevention of electrical discharge between the ends of the carbon fibers (Id., paragraphs 0013-0024).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coated carbon fibers of Golecki, wherein the ends of the carbon fibers are exposed, as taught by Kamihara, motivated by the desire of forming a conventional carbon fiber known in the art as being suitable for use in structural material applications, where exposing the fiber ends predictably allows for electrical current to flow therethrough and prevent electrical discharge.
Regarding the limitations directed to the tension-bearing core material and the oxidizable pressure-bearing core material in a tension-compression balance state, since the prior art combination teaches a substantially similar structure and composition as claimed, the invention of the prior art combination appears to meet the claimed limitations.
Regarding the coatings, the prior art combination teaches a carbon fiber coated with silicon carbide, including multiple layers. Note that the antioxidative coating may be silicon carbide and that silicon carbide appears to be within the scope of the oxidizable pressure-bearing coating. Additionally, multiple coatings would include a coating arranged between the carbon fiber and the outer coating, and a coating would be present in other positions as claimed.
Regarding the limitations directed to the oxidation speed and the antioxidative ability, as set forth above, it is unclear exactly what is claimed. However, the prior art combination teaches and suggests a carbon fiber coated with silicon carbide, such as claimed. Therefore, the claimed property would appear to naturally flow from the teachings of the prior art combination, as the prior art combination teaches a substantially similar structure and composition as claimed. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding forming the fiber as claimed, including the claimed exerted tension force, as set forth above, it is unclear what the scope of the claimed exerted tension force necessarily entails. However, the limitations are interpreted as product by process limitations. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicants intend to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicants should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claim 5, the prior art combination teaches a carbon fiber coated with silicon carbide, including multiple layers. The prior art combination teaches that the coatings may be applied by various techniques including chemical vapor deposition (Golecki, column 3 lines 24-33), in an oxidizing ambient (Id., column 4 line 48 to column 5 line 38).
Response to Arguments
Applicants’ arguments filed August 8, 2025, have been fully considered but they are not persuasive. Applicants argue that Golecki protects carbon fibers by coating materials with strong oxidation resistance, while the present application mainly protects carbon fibers by closing matrix cracks based on mechanical principles, as after the oxidizable pressure-bearing coating is oxidized, the shape of the tension-bearing core material retracts and releases elastic potential energy. Examiner respectfully disagrees. The rejection is based on the combined teachings of the prior art. Therefore, Applicants’ arguments directed to differences between Golecki and the claimed invention fail to address the combined teachings of the prior art.
Additionally, although Applicants argue differences between Golecki and the claimed invention, the differences are based on the function of the fibers disclosed by Golecki and the function of the claimed invention. Applicants’ arguments do not address structural or compositional differences between the invention of the prior art combination and the claimed invention. In other words, even if the intended function of the fibers of Golecki and the claimed fibers are different, Applicants do not establish that such a difference patentably distinguishes the claimed invention from the invention of the prior art combination.
Applicants argue that the exposure of the carbon fiber end disclosed by Kamihara is to allow current to flow and prevent discharge, rather than to help anchor it to the matrix, whereas the present invention requires the fiber end to be exposed and anchored to the matrix in order to drive the matrix to close cracks. Examiner respectfully disagrees. The claims are directed to an oxidation-induced shape memory fiber, and not a combination of a matrix and a shape memory fiber. Additionally, similar as above, although Applicants argue differences between Kamihara and the claimed invention, the differences are based on the function of the fibers disclosed by Kamihara and the function of the claimed invention. Applicants’ arguments do not address structural or compositional differences between the invention of the prior art combination and the claimed invention. In other words, even if the intended function of the fibers of Kamihara and the claimed fibers are different, Applicants do not establish that such a difference patentably distinguishes the claimed invention from the invention of the prior art combination.
Applicants argue that although similar materials are used (compared to Golecki and Kamihara) for the pressure-bearing coating in this application, the mechanism of crack self-healing in the matrix is essentially different. Additionally, Applicants argue that there is a difference in usage location and form of action as the fiber is placed inside the matrix, and that there is a difference in the mechanism of action.
Regarding Applicants’ arguments, Examiner respectfully disagrees. As set forth above, the claims are indefinite based on the unclear verbiage of the claim. Additionally, although Applicants acknowledge that the claimed invention and the invention of the prior art combination comprise similar materials, neither the claimed invention nor the invention of the prior art combination is required to be in a matrix. Therefore, Applicants’ arguments are not commensurate in scope with the claimed invention.
Additionally, Applicants do not provide evidence that even if the claimed invention can close and seal cracks as argued, that the invention of the prior art combination which comprises a substantially similar structure and composition as claimed, does not behave similarly.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786