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 .
Newly submitted claims 21-23 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The non trivial method of making the composite is distinct from the copolymer of claim 1. Claim 21 does not require both monomers as does claim 1.
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 Accordingly, claims 21-23 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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.
Claims 14-16 and 18-20 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.
Claims 14 and 16’s “at least one” is not present in the original specification.
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 1,4-16 and 18-20 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.
Claim 1’s “at least one” is inconsistent with the later required “combination” of BODA and MODA.
It is unclear which monomer’s “R” is being limited in claim 11.
Claim 14’s “n is a variable of at least one” would not result in a copolymer if only one.
Claim 15 depicts a monomer – not a polymerized monomer. Even if considered to in “polymerized” form, this would be identical to earlier claim 10.
Claim 16’s “m,n,x and y are all at least one” would not result in a copolymer if only one.
Claim 18’s carbonized composition would no longer have the polymeric structure of claim 16.
Claim 19’s carbon-carbon composite is presumably carbonized and would no longer have the polymeric structure of claim 16.
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.
Claim 18 and 19 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. Once carbonized, the structure required by claim 16 is believed to be destroyed. Therefore, claims 18 and 19 no longer have claim 16’s network structure. 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
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 1,4-7,9-11,13-16,18 and 19 rejected under 35 U.S.C. 103 as being unpatentable over Babb 6121495.
Babb exemplifies (#2,3) producing applicant’s BODA monomer with “X” being a bond or -O- and “R” being phenyl. Babb (table VI) then polymerizes these monomers.
These examples polymerize BODA alone rather than the claimed BODA + MODA copolymer.
However, Babb (col 15 line 24-31) suggest copolymerizing two or more different ethynyl aromatic monomers. Specifically, a copolymer of a monomer having two pair of ethynyl groups (ie BODA) with a monomer having only one pair of ethynyl groups. The simplest conceivable monomer having only one pair of ethynyl groups would be Ar(CΞCH)2 (ie MODA). Such a copolymer meets applicant’s claim 1.
In regard to applicant’s dependent claims:
Claims 4 and 5 merely limits what qualifies as applicant’s alkyl “R” in applicant’s larger Markush group of claim 3. An alkyl is not required as “R” and therefore the claims are properly rejected over the reference to “R” being phenyl.
The copolymer would be expected to have applicant’s formula of applicant’s claim 14 prior to final cure. See the Misfud article.
After cure, the copolymer would be expected to have applicant’s formula of applicant’s claim 16. See the Misfud article. Babb’s polymers can be used to form composites with graphite mats (col 20 line 35) – meeting applicant’s claim 16.
Babb (col 3 line 8) suggests his polymer is useful as “carbon glasses”. This is considered to be the carbonization of applicant’s claim 18.
Claims 16 and 18-20 rejected under 35 U.S.C. 103 as being unpatentable over Babb 6121495 in view of White 3809673.
Babb applies as explained above.
Babb (col 20 line 35-39) teaches reinforcing his resin with fibers and graphite mats, but does not mention bundles of carbon fibers.
White (abstract) teaches carbon fiber composites of carbon fibers treated with acetylenic resins that are ultimately carbonized. White (col 4 line 71) teaches the carbon fibers may be in bundled form.
It would have been obvious to use bundles of carbon fibers as Babb’s reinforcement as this is a common form of reinforcement.
Applicant's arguments filed 4/28/25 have been fully considered but they are not persuasive.
Applicant argues the claims no longer encompass “X” being -C(CF3)2- as in Babb.
This is not convincing as Babb also exemplifies monomers with “X” being a bond or oxygen.
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 DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached on weekdays from 9 to 3pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 5/15/25