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 claims 7-15 in the reply filed on 1/30/2025 is acknowledged.
Response to Arguments
Applicant’s arguments, filed 9/5/2025, with respect to the rejection(s) of claim(s) 23 under 35 U.S.C 102 have been fully considered and are persuasive because the arguments are directed towards the unexamined amendments of the amended claims of 9/5/2025. Therefore, a new ground(s) of rejection is made in view of US 8585934 B2 Shah.
Applicant's arguments regarding 35 USC 103 for claims 12, 14, and 21 fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Drawings
The drawings are objected to because figs. 8 through 10 are grayscale photos.
(b) Photographs.—
(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.
(2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 Rejections - 35 USC § 112
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.
Claim 7 is 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. Regarding the recitation of “A cured matrix formed by combining the first and second parts and curing, the cured matrix having a plurality of conductive nanotubes uniformly dispersed throughout an entire thickness of the cured matrix”, the applicant does not have support for being uniform throughout the entire thickness of the cured matrix. The closest the applicant discloses to being uniform is in par. 28 of the specification of the instant application which discloses “The distribution of nanofiller particles 110 are not inhomogeneous, but instead uniform and unvaried or substantially unvaried. Substantially unvaried means limited to no clumping (agglomeration) of large groups (e.g., a group of 10+) of nanofiller particles 110” and this does not disclose being uniform throughout the entire thickness of the cured matrix it does disclose
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 22 and 23 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 22, the recitation of wherein the multi-walled carbon nanotubes are stably and uniformly dispersed for a period of time without visible agglomeration is unclear which part of the think film heater is stably and uniformly dispersed for a period of time. The examiner interprets the applicant means the cured matrix. The examiner is also unclear what constitutes visible agglomeration.
Claims 23 are also rejected due to their dependence to one or more of the above rejected independent claims.
Regarding claim 23, the examiner is unclear because the structure required to make the nanotubes stably and uniformly dispersed for a period of 15 months or more are not positively recited in the specification or claims. One skilled in the art would not be apprised of what specific structure meets the claimed structure/elements.
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 22 and 23 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. Claim 7 discloses that the nanotubes are uniformly distributed in a cured matrix and the cured matrix therefore exhibits uniform distribution forever because it is cured. Adding a predetermined amount of time of which the nanotubes are stably and uniformly dispersed does not further limit claim 7 of which claims 22 and 23 are dependent and broadens the scope of claim 7. Adding a predetermined amount of time in claims 22 and 23 broadens the scope of claim 7 by saying it can still be the product after a period of time without uniform dispersal, which means it does not require the uniform dispersal of claim 7. 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 7, 8, 9, 10, 11, 12, 13, 15, 21, 22, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20100126981A1 Heintz in view of US 8585934 B2 Shah.
Regarding claim 7, Heintz teaches, except where struck through,
A thin film heater (par. 1 teaches “The present invention relates to an electrically conductive coating composition for use in preventing the icing of and actively de-icing aircraft and other substrate surfaces”) comprising:
A first part that is an aqueous precursor comprising water and multi-walled carbon nanotubes stably and uniformly dispersed (par. 58 teaches use a water as a solvent par. 54 teaches “Referring now to FIG. 2, another embodiment of the electrically conductive coating composition is shown in which the coating has been formed from a nanomaterial and a liquid carrier such as a solvent which solvent evaporates to forms a film 14 on substrate 10. Suitable nanomaterials for use in this embodiment of the coating composition include single-walled or multi-walled carbon nanotubes, including double-walled and few-walled varieties, metal nanorods, and functionalized metal nanoparticles. Single-walled and multi-walled carbon nanotubes are preferred for use in the present invention as they exhibit high conductivity due to their graphitic carbon structure and nanoscale size, they exhibit high thermal stability, are non-corrosive, light-weight, and are readily dispersed in solvents”);
and at least two conductive leads (conductive leads 16 and 18 fig. 2) configured to be connected to a power source (par. 61 teaches “at least two conductive leads 16 and 18 are embedded into or applied to the surface of the film to allow voltage to be applied to the film. The leads may be comprised of any conductor including metal foils, metal wires, conductive paints such as silver-filled epoxy, or other conductive materials”), the at least two conductive leads embedded within and fully encapsulated by the cured matrix (par. 61 teaches “at least two conductive leads 16 and 18 are embedded into or applied to the surface of the film to allow voltage to be applied to the film. The leads may be comprised of any conductor including metal foils, metal wires, conductive paints such as silver-filled epoxy, or other conductive materials”).
The difference between the prior art and the claimed invention is that Heintz does not teach: A second part that is a curable base material; A cured matrix formed by combining the first and second parts and curing, the cured matrix having a plurality of conductive nanotubes uniformly dispersed throughout an entire thickness of the cured matrix.
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Further, there were design incentives for implementing the claimed variation. Specifically, Shah teaches a tailored composite component containing a CNT-infused fiber layer forming a heating element used for wings subject to icy conditions (column 4 lines 8 through 25) with colloidal solutions being formed of water or solvents (column 12 lines 4 through 6) and further teaches the composite’s makeup as A first part that is an aqueous precursor comprising water and multi-walled carbon nanotubes stably and uniformly dispersed (column 11 lines 64-67 and column 12 lines 1-19); A second part that is a curable base material (barrier coating is taught to interact with the catalyst to infuse a carbon fiber material with carbon nanotubes column 23 lines 65 to 67 and column 24 lines 1 to 15); A cured matrix formed by combining the first and second parts and curing, the cured matrix having a plurality of conductive nanotubes uniformly dispersed throughout an entire thickness of the cured matrix (columns 23 lines 65-67 and column 24 lines 1 to 52 teach infusing carbon fiber material with carbon nanotubes and column 15 lines 39 to 47 teach that it is known that process of Shah for CNT’s infused on a fiber material to have a uniform length and distribution to impart their useful properties uniformly over the fiber material).
Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify Heintz with the barrier coating and catalyst of Shah for the purpose of to create a material with improved CNT loading capacity to create a tailored hybrid composite (Shah column 1 lines 50-58).
Regarding claim 8, Heintz teaches,
(par. 54 teaches “Referring now to FIG. 2, another embodiment of the electrically conductive coating composition is shown in which the coating has been formed from a nanomaterial and a liquid carrier such as a solvent which solvent evaporates to forms a film 14 on substrate 10. Suitable nanomaterials for use in this embodiment of the coating composition include single-walled or multi-walled carbon nanotubes, including double-walled and few-walled varieties, metal nanorods, and functionalized metal nanoparticles. Single-walled and multi-walled carbon nanotubes are preferred for use in the present invention as they exhibit high conductivity due to their graphitic carbon structure and nanoscale size, they exhibit high thermal stability, are non-corrosive, light-weight, and are readily dispersed in solvents”).
The examiner notes that Shah also teaches in column 5 lines 42 through 56, column 15 lines 19 through 29, and column 17 lines 4 through 17, that the invention of Shah also uses multi-walled carbon nanotubes in place of double-walled and single walled carbon nanotubes, called simply “CNT” by Shah.
Regarding claim 9, Heintz teaches,
wherein an amount of the conductive nanotubes is between 0-32.1% w/w, and an amount of the base material is between 67.9-100% w/w (claim 12 teaches “The electrically conductive coating composition of claim 2 wherein said nanomaterial comprises a nanostructure which comprises from about 20 to about 99% by weight of said polymer and from about 0.02 to about 50 wt % of said carbon nanotubes or fullerenes” where the examiner considers to be within the range disclosed in the instant application).
Regarding claim 10, Heintz teaches,
wherein the conductive nanotubes have a resistance between 0-300 Ohm-cm (claim 19 teaches “A substrate having a resistively heatable film thereon, said film comprising an electrically conductive coating composition comprising a nanomaterial selected from carbon nanotubes, metal nanorods, and functionalized metal nanoparticles, and a nanostructure comprising carbon nanotubes or fullerenes grafted to a polymer containing an active functional group, said film having a sheet resistance of from about 0.01 to about 1000 ohm/sq” and par. 12 teaches “In this embodiment, the coating composition forms a film having a sheet resistance of between about 10 and 1000 ohms/square, and more preferably, between about 10 and 400 ohms/square” which encompasses the range disclosed by the instant application).
Regarding claim 11, Heintz teaches,
wherein the conductive nanotubes are configured to raise a temperature of the base material in response to an electric current (par. 37 teaches “In addition, because the coating contains nanomaterials which are electrically conductive, electrical current may be applied to the coating to generate resistive heating which further aids in preventing ice formation or in removing ice from a substrate surface. Melting the ice at the interface between the coating and the ice creates a weak boundary layer, and the high hydrophobicity of the coating allows shedding of the wet ice”)
Regarding claim 12, Heintz teaches, wherein the conductive nanotubes have a resistance that decreases as a temperature of the conductive nanotubes increases (the examiner respectfully notes that the structure and makeup of the invention of Heintz matches the disclosure of the instant application and that the examiner believes that while not expressly disclosed by Heintz, that the invention of Heintz will act the same way in terms of resistance decreasing as temperature of carbon nanotubes increases because this is an inherent property of carbon nanotubes as the applicant discloses in par. 24 of the disclosure of the instant application which discloses “For thin film heaters, film resistance is the result of various factors. One factor is the nanofiller particles themselves. Many inherent factors of the nanoparticles or particulates influence the electronic properties of nanofiller particles, including surface area or aspect ratio of the nanotube, diameter, chirality, defect, curvature, and local environment. Additionally, high polarizability and strong van der Waal interactions can create a heterogeneous, or uneven, distribution of the nanofiller particles, which in turn may lower the conductivity of the film”. Essentially, the structure of the prior art of Heintz matches the structure of the instant application and it is obvious for the invention of Heintz to behave similarly to the disclosure of the instant application. It would have been obvious to one of ordinary skill at the time of the invention was made such that the resistance of carbon nanotubes decreases as temperature increases, since it has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more that yield predictable results).
Regarding claim 13, Heintz teaches,
further comprising: a substrate, wherein the conductive nanotubes are on the substrate (figs. 1, 2, and 3).
Regarding claim 15, Heintz teaches,
further comprising a primer coating on the substrate, wherein the conductive nanotubes overlays the primer coating (claim 22 teaches “The substrate of claim 19 further including a primer coating on said substrate; wherein said film overlies said primer coating”).
Regarding claim 21, Heintz teaches, wherein the conductive nanotubes are soluble in water (the examiner respectfully notes that the structure and makeup of the invention of Heintz matches the disclosure of the instant application and that the examiner believes that while not expressly disclosed by Heintz, that the invention of Heintz will act the same way in terms of carbon nanotubes being soluble in water because the carbon nanotubes as disclosed in the instant application are . Essentially, the structure of the prior art of Heintz matches the disclosed structure of the instant application and it is obvious for the invention of Heintz to behave similarly to the disclosure of the instant application. It would have been obvious to one of ordinary skill at the time of the invention was made such that the carbon nanotubes of Heintz are soluble in water, since it has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more that yield predictable results).
Regarding claim 22, Heintz teaches, wherein the multi-walled carbon nanotubes are stably and uniformly dispersed for a period of time without visible agglomeration (see the rejection of claim 7 where the first part is taught to be uniformly and stably dispersed, regarding the cured portion having stably and uniformly dispersed carbon nanotubes, the fact that it is cured inherently makes it stable for a period of time. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine a period of time for nanotubes to be stably and uniformly dispersed, the invention isn’t complete until a period of time elapses, since it has been held by the courts that patentability of a product does not depend on its method of production. If the product in the product-by-process claim is disclosed, or suggested, by 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))
Regarding claim 23, Heintz teaches, wherein the period of time comprises at least fifteen months (see the rejection of claim 7 where the first part is taught to be uniformly and stably dispersed, regarding the cured portion having stably and uniformly dispersed carbon nanotubes, the fact that it is cured inherently makes it stable for a period of time. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine a period of time for nanotubes to be stably and uniformly dispersed, the invention isn’t complete until a period of time elapses, since it has been held by the courts that patentability of a product does not depend on its method of production. If the product in the product-by-process claim is disclosed, or suggested, by 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)).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20100126981A1 Heintz in view of US 8585934 B2 Shah in view of US 20160221680 A1 Burton
Regarding claim 14,
The primary combination of Heintz in view of Shah does not teach further comprising; an event sensor that is configured to sense a change in physical properties of the substrate and transmit a signal to the power source to increase or decrease an electric current to the at least two conductive leads.
Burton teaches, further comprising; an event sensor that is configured to sense a change in physical properties of the substrate and transmit a signal to the power source to increase or decrease an electric current to the at least two conductive leads (par. 96 teaches that it is obvious to use closed loop feedback based on a temperature sensor input as “A closed loop control and data acquisition system based on a National Instruments CompactRIO programmable automation controller. was used for this testing Key data acquisition (DAQ) parameters for the wing and inlet testing included heater AC voltage, current and power; and thermocouple temperatures by location. High speed closed-loop controls were used to drive the heaters to the desired surface temperatures, while ensuring that temperature, voltage, and current limits were not exceeded. Surface temperature was measured by thermocouple at location underneath the laminate heater, approximately 200 μm below the surface. Three Variac AC transformers were used as the power sources for this testing. The Variac outputs were run as inputs to the control system. The control system used solid state relays driven by the CompactRIO control loop to cycle power to the individual heaters to maintain the desired temperature. The Variac transformers provided sufficient power for the test articles”).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Heintz reference, to include an event sensor that is configured to sense a change in physical properties of the substrate and transmit a signal to the power source to increase or decrease an electric current to the at least two conductive leads, as suggested and taught by Burton, for the purpose of providing the advantage to add controlled feedback to the invention of Heintz to cycle power to the individual heaters to maintain the desired temperature (par. 96).
Conclusion
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 ADAM M ECKARDT whose telephone number is (313)446-6609. The examiner can normally be reached 6 a.m to 2:00 p.m EST Monday to Friday.
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, Edward Landrum can be reached at (571) 272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ADAM MICHAEL. ECKARDT
Assistant Examiner
Art Unit 3761
/ADAM M ECKARDT/ Examiner, Art Unit 3761 /EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761