DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Newly submitted claim 21 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 21 is directed towards a product distinct from the product of elected claim 1 and would require separate fields of search which would constitute a search burden.
Inventions of claim 1 and claim 21 are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have material different designs because claim 1 claims boron nitride fibers, boron nitride sheets, boron nitride flakes, boron nitride nanobarb powders, or any combination while claim 21 does not. Additionally, claim 21 claims a ceramic precursor comprising a polysilazane, a polysiloxane, a polycarbosilane, a polysilylcarbodiimide, a polycarbosiloxane, a perhydropolysilazane, or any combination thereof, where claim 1 does not. Additionally, claim 21 claims a mixing, pulverizing, compressing, and pyrolyzing step while claim 1 does not. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 21 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 3-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paquette (US5627542, hereinafter referred to as Paquette) in view of Wei et al (CN110078517A with reference to machine translation, hereinafter referred to as Wei).
Regarding claim 1, while Paquette does not explicitly disclose a nanocomposite, it is noted a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and here the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In claim 1, the intended use of a nanocomposite is not given patentable weight.
Paquette discloses a radome material (see Paquette at Col. 1, line 9, disclosing a radome) consisting of: (a) a ceramic material; and (b) a boron nitride material (see Paquette at the Abstract, disclosing blending a powder mixture of 20-60% by weight silicon nitride, 12-40% boron nitride, 15-40% boron nitride, 15-40% silica, and 1-20% oxygen carrying sintering aids; (b) molding the mixture to shape as a preform; and (c) densifying the shaped preform into a monolithic window. Examiner notes silicon nitride, silica, and oxygen carrying sintering aids correspond to a ceramic material).
While Paquette is directed towards a radar transparent ceramic windows … in various types of hypervelocity missiles and reentry vehicles carrying radar equipment (see Paquette at Col. 1, lines 7-13), which is operable above 2000°C (see Paquette at Col. 2, lines 13-14), Paquette does not disclose the boron nitride material comprises boron nitride fibers, boron nitride sheets, boron nitride flakes, boron nitride nanobarb powders, or any combination thereof.
Wei is directed towards a fiber reinforcement nitride ceramic composite antenna house (see Wei at the Abstract) comprising BN fiber (See Wei at the Abstract). Wei teaches the flying speed of guided missiles are increasing … [and] harsh aerodynamic heating makes the antenna housing of guided missiles a critical component with temperatures up to 2500°C or more while requiring the capability to satisfy precision strikes (See Wei at the third paragraph of page 2 of the machine translation). Wei discloses a fiber reinforced nitride ceramic composite radome ... [which is] high temperature resistant ... to satisfy precision strike (See Wei at the fourth paragraph of page 2 of the machine translation). Wei teaches the fiber reinforced nitride ceramic composite antenna house ... is suitable for industrial mass production (See Wei at the third and second to last paragraph of page 2 from the machine translation).
Therefore, it would have been obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the missile radome invention of Paquette to select boron fiber as the source of boron as disclosed by Wei with a reasonable expectation of successfully providing a missile radome which can be used at even higher temperatures of up to 2500°C while being suitable for industrial mass production as taught by Wei.
Regarding claim 3, Paquette discloses the ceramic material comprises SiCN, SiC, SiOC, SiON, or any combination thereof, wherein the ceramic material is optionally doped with a transition metal (see Paquette at the Abstract, disclosing silicon nitride and silica. Paquette at Col. 2, lines 26-27 further discloses densification is carried out at a temperature of 1600°-1850°F with a pressure of about 2000-15,000 PSI. Examiner notes densifying silicon nitride and silica at this temperature and pressure will form oxynitrides such as SiON. This is further evidenced by Paquette at Col. 2, lines 49-50 disclosing Si2ON2 ... [and] various oxynitrides. Examiner notes Si2ON2 corresponds to any combination of SiON, and the various oxynitrides comprises SiON.).
Regarding claim 4, Paquette discloses the nanocomposite radome material comprises from about 0.1 wt% to about 90 wt% boron nitride material (see Paquette at the Abstract, disclosing blending a powder mixture of 20-60% by weight silicon nitride, 12-40% boron nitride, 15-40% boron nitride, 15-40% silica, and 1-20% oxygen carrying sintering aids; (b) molding the mixture to shape as a preform; and (c) densifying the shaped preform into a monolithic window. Examiner notes the disclosed boron nitride content is within the claimed range).
Regarding claim 5, while Paquette does not explicitly disclose the nanocomposite radome material has a real relative permittivity of from about 2 to about 10 over a frequency range of from about 10 MHz to about 100 GHz, this is a property which depends upon the composition and transparency of the material. The composition of the material is substantially identical to the instantly disclosed composition as detailed in the rejections above. The transparency of the material is substantially identical to the instantly claimed transparency as detailed in the rejection of claim 8 below. Therefore, the material of Paquette would inherently possess the claimed property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 6, while Paquette does not explicitly disclose the nanocomposite radome material has an imaginary relative permittivity of from about 0 to about 0.5 over a frequency range of from about 10 MHz to about 100 GHz, this is a property which depends upon the composition and transparency of the material. The composition of the material of Paquette is substantially identical to the instantly disclosed composition as detailed in the rejections above. The transparency of the material is substantially identical to the instantly claimed transparency as detailed in the rejection of claim 8 below. Therefore, the material of Paquette would inherently possess the claimed property.
Regarding claim 7, while Paquette does not explicitly disclose the nanocomposite radome material has a quality factor of from about 10 to about 10000 over a frequency range of from about 10 MHz to about 100 GHz, this is a property which depends upon the composition and transparency of the material. The composition of the material of Paquette is substantially identical to the instantly disclosed composition as detailed in the rejections above. The transparency of the material is substantially identical to the instantly claimed transparency as detailed in the rejection of claim 8 below. Therefore, the material of Paquette would inherently possess the claimed property.
Regarding claim 8, Paquette discloses the nanocomposite radome material is transparent to electromagnetic radiation (see Paquette at the Title, disclosing radar transparent window material).
Response to Arguments
Applicant's arguments filed 01/15/2026 along with the affidavit filed 01/15/2026 have been fully considered but they are not persuasive.
At pages 5-6 of the Remarks, Applicant argues the term nanocomposite in the preamble should be given patentable weight because the term nanocomposite defines a key structural limitation in the claimed material. At point 7 of the Affidavit, Applicant argues that a specific nanostructure such as porosity and grain size correlates to properties including permittivity. Examiner notes that claim 1 does not claim a grain size or porosity, nor does claim 1 claim a permittivity. Additionally, Examiner notes the entire phase “a nanocomposite radome” is not given patentable weight because it merely recites the intended use of the material of claim 1. MPEP 2111.02 states “a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” In the instant case, Examiner notes claim 1 is structurally complete without the preamble. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., grain size, porosity, and properties) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
At pages 6-7 of the Remarks and point 6 of the Affidavit, Applicant argues it would not be obvious to incorporate the boron nitride fibers of Wei into the composite of Paquette because Wei uses braiding techniques to make the fibrous preform while Paquette does not disclose fiber braiding. Examiner notes per MPEP 2141.03(I) that [a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton. In the instant case, a person of ordinary skill in the arts when combining the teachings and disclosures of the radomes of Paquette and Wei would be able to use ordinary creativity to properly combine the boron nitride fibers of Wei to the invention of Paquette while maintaining the benefits taught by Wei.
Applicant further argues that Wei does not disclose a nanoscale boron nitride dispersion within a ceramic matrix; Examiner notes the instant rejection is based upon the combination of Paquette and Wei, and not Wei alone, thus this argument is not convincing. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Similarly, Applicant argues that Paquette discloses boron nitride powder and not boron nitride fibers; this argument is unconvincing for the same reasons as stated above, mutatis mutandis.
As such, Applicant’s arguments are not convincing and the rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CAMERON K MILLER
Examiner
Art Unit 1731
/C.K.M./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731