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 .
Claim Interpretation
It is noted that claim 1 defines the one or more wound metal filaments of the electrically conductive layer as being both “at least partially exposed” and (by way of amendment) “eroded”. Support for the amendment in the specification can be found at [0062] and Fig. 3c. In particular, the specification states at [0062] – “and a grinding stage in which grinding apparatus 6 removes a layer of material to expose the conductive filaments 1 (partially exposed and eroded filaments indicated at 7)”.
Upon analysis of Fig. 3c, further in view of the disclosure at [0062] (of which is the only written description of the filaments being “eroded”) referencing grinding as the method of exposing and eroding the fibers, it can be said that the term “eroded” may be interpreted as the filaments having at least some degree of constituent material removed or otherwise worn away, of which is generally synonymous with the plain meaning of the term – “worn away” or “to be gradually worn away”.
However, it is noted that the specification does not indicate, neither quantitatively nor qualitatively, the necessary/desired degree of erosion of the fibers (e.g., mass/volume/dimension(s) of filament constituent material removed); nor do the claims limit the aforesaid. Further, as stated, the specification attributes the filaments being “eroded” to grinding [0062]; however, the specification lists other methods for material removal and exposure of the filaments, including etching and keying [0051].
As such, the broadest reasonable interpretation of the claimed term “eroded” in view of Applicant’s specification, while also not improperly importing limitations into the claims from the specification (see MPEP 2111; 2111.01(I), (II)), is such that the constituent material of the fibers is removed or otherwise “worn away” to any degree (i.e., at least some amount, no matter how small); and is not limited to being formed by grinding (i.e., “grinding” is not improperly imported as an implicit limitation).
In view of the foregoing, and simply put, any degree of material removal or “wear” from the filaments reads on the claim limitation of “eroded”; and the “eroded” limitation is not required to be formed by grinding or any particular method.
Claim Rejections - 35 USC § 112
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 12 is 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 12 recites the limitation comprising at least partially exposing the one or more wound metal conductive filaments by removing material from the electrically conductive layer. However, this does not further limit claim 1 since claim one already recites so that one or more wound metal filaments are at least partially exposed at the surface of the electrically conductive layer. 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 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.
Claim(s) 1, 3, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giddings (US 2015/0086795), in view of Mizrahi (US 2010/0040902); and Tomantschger et al. (US 2010/0304171).
Regarding claim 1, Giddings discloses a composite material comprises a composite substrate including a polymeric matrix with fiber reinforcement (composite substrate), and a two-phase primer layer (electrically conductive layer) comprising a reinforcing phase of material elements embedded in a predefined distribution in a polymeric phase, that is applied on the composite substrate [0009, 0017, 0018]
where metals are known electrical conductors [see spec. 0024]. A coating layer is adhered to the outer surface of the two-phase primer layer [0009, 0020]. The metal fibers embedded in the polymeric phase are at least partially exposed at an outer surface of the two-phase primer layer to provide a surface texture allowing for mechanical interlock to ensure high interface strength (i.e., adhesion) between the coating layer and the substrate [0009-0011].
Giddings discloses that the polymeric matrix of the two-phase primer layer and the polymeric matrix of the composite substrate may both be thermoset materials including epoxy resins [0017, 0019]. Furthermore, the coating layer adhered to the outer surface of the two-phase primer layer comprises metals and alloys, including metal oxides such as chromium oxide in order to provide a very hard, wear and corrosion-resistant layer to the composite [0020]. Additionally, Giddings discloses that the materials may be formed utilizing wrapping methods [0018], which reads on the limitation forming an electrically conductive layer comprising one or more metal conductive filaments embedded in a polymeric matrix and forming a composite substrate comprising a polymeric matrix with fiber reinforcements.
As for the curing the polymeric matric of the electrically conductive layer and the polymeric matrix of the composite substrate, Gididng discloses curing the layers [0026].
Gidding further discloses the coating layer may be ceramic, metal, and even plastics/composites, and may be applied by methods such as, inter alia, high-velocity spraying and electroplating. The spraying typically results in erosion of the composite substrate [0020, 0021].
Giddings is silent regarding the metal fibers of the two-phase primer layer being wound; and does not explicitly disclose the metal fibers being eroded.
Analogous art, Mizrahi, discloses a lightweight composite material comprising at least a polymeric layer and a metallic layer, where said polymeric layer contains metallic fibers therein, the lightweight composite material useful in industries including transportation [Abstract; 0002, 0003, 0015, 0029, 0090, 0126]. The fibers may be wrapped or otherwise aligned, positioned, and/or distributed in the polymeric layer such that an electrically conductive network across at least portions of the filled polymeric layer is formed [0031, 0055, 0072]. Mizrahi discloses that the polymer of the polymeric layer may be or include a thermoset polymer [0051]. Mizrahi teaches that exemplary metallic fibers include steel, low carbon steel, stainless steel, aluminum, magnesium, titanium, copper, copper alloys, aluminum alloys, titanium alloys, or any combination thereof [0074] and that the metallic fibers typically provide one or a combination of electrical conductivity, strength reinforcement, or strain hardening [0082]. The fibers may be used at any desired volume which corresponds to the desired degree of electrical conductivity exhibited by the conductive network [0031]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have included a wound metal based on the design needs of the final product.
Further, analogous art, Tomantschger, is directed to a metal-clad polymer in the form of an article such as, inter alia, cylindrical shafts, drive shafts, tubes, pipes, and hydraulic actuator cylinders [Abstract; 0021, 0034]. The metal-clad polymer includes a polymeric substrate comprising a thermoset polymer matrix such as epoxy, reinforced with, inter alia, metal fibers; and an electroplated metal layer disposed directly on the substrate, wherein the metal layer may define the inner or outer surface of the article [0015, 0018, 0020, 0027, 0030, 0035, 0039, 0060, 0085, 0086, 0096, 0097, 0137-0139, 0142-0145, 0174, 0175]. Tomantschger, similar to Giddings, teaches that to enhance the adhesion of the plated metal layer to the polymeric substrate (in view of the mismatch between the thermal expansion coefficients of the metal and polymer), the surface is pretreated to develop a degree of surface roughness or other “anchoring surface” features, thereby increasing the interfacial surface area available for the plated metal to adhere to, as well as creating an anchoring (i.e., “interlocking”) effect, resulting in increased adhesion. Tomantschger teaches that the polymeric substrate may be treated to expose the embedded fibers, thereby allowing the coating to adhere to and re-encapsulate them (i.e., creating an anchoring structure and resulting in the anchoring effect). To expose the fibers as an anchor structure, or in combination with forming other regular/irregular surface roughness/features (such as protrusions, dimples, grooves, etc. in combination with the exposed fibers), the polymeric substrate is mechanically and/or chemically abraded/etched, such as by sanding, grit blasting, grinding/machining, and exposure to acids/bases [0022-0024, 0030, 0041, 0065, 0067, 0121, 0137, 0147, 0148, 0150-0154, 0158, 0169]. As such, Tomantschger reasonably teaches that the aforesaid methods are suitable for removal of substrate material to expose the fibers, and that multiple different anchoring structures (including exposed fibers) and methods of formation may be used in combination to achieve different levels of adhesion. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated eroding the one or more wound metal conductive filaments after curing the polymeric matrix of the electrically conductive layer and the polymeric matrix of the composite substrate so that the one or more wound metal filaments are at least partially exposed at the surface of the electrically conductive layer so the composite substrate layer is formed first and the electrically conductive layer is formed on top of the composite substrate layer in order to adhere the two different layers together.
Regarding claim 3, Mizrahi discloses the wound metal conductive filaments having a dimeter of at least 0.08 mm (claim 8).
Regarding claim 14, Tomantschger teaches eroding the one or more electrically conductive filaments comprises a grinding process [0154].
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giddings (US 2015/0086795), in view of Mizrahi (US 2010/0040902); and Tomantschger et al. (US 2010/0304171), as evidenced by crosslinking.
Regarding claim 6, Giddings discloses comprising curing the composite substrate simultaneously with said electrically conductive layer so as to bond the composite substrate and the electrically conductive layer together via polymeric crosslinking [0026] (curing requires bonding so it would inherently have crosslinking (see crosslinking npl)).
Claim(s) 7-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giddings (US 2015/0086795), in view of Mizrahi (US 2010/0040902); and Tomantschger et al. (US 2010/0304171) as applied to claim 1 and further in view of Dewhirst (US2006/0258469 A1).
Regarding claims 7-10, Mizrahi discloses winding conductive metallic fiber layers [0031, 0055, 0072] but not explicitly disclose wherein forming the conductive layer comprises winding the one or more conductive filament as a high angle hoop. However, analogous art, Dewhirst, discloses winding the one or more conductive filament as a high angle hoop [0014, 0016] for the benefit of controlling the thickness and providing high plies [0014] (instant claims 7-8). Regarding claims 9-10, Dewhirst further discloses a single layer of conductive filament formed by winding a single conductive filament and that individual (i.e. single) fiber layers may be (pre) impregnated with uncured resin [0014, 0016-0017].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated winding the one or more conductive filament as a high angle hoop, as taught by Dewhirst, into the method taught by Gidding for the benefit of controlling the thickness and providing high plies.
Regarding claim 12, Giddings does not explicitly disclose partially exposing the one or more conductive filaments after curing the polymeric matrix by removing material from the conductive layer. However, analogous art, Dewhirst discloses exposing the fibers produces an optimized surface though which torsional stresses can be transferred without premature shearing of individual helical layers after curing [0017]. Further, MPEP states In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). As for the limitation, removing material from the conductive layer, it is conventional knowledge that material needs to be removed in order to have exposed surfaces. A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated partially exposing the one or more conductive fibers, as taught by Dewhirst, into the method taught by Gidding for the benefit of optimizing surface though which torsional stresses can be transferred without premature shearing of individual helical layers.
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giddings (US 2015/0086795), in view of Mizrahi (US 2010/0040902); and Tomantschger et al. (US 2010/0304171) as applied to claim 1, and further in view of Facchini (US2010304179 A1).
Regarding claims 15-16, Gidding does not explicitly disclose depositing a coating layer on a surface of the conductive layer of Co-P alloy. However analogous art Facchini discloses depositing a coating layer on a surface of the conductive layer with a metal oxide of Co-P [0152]for the benefit of increasing the hardness and the strength of the final product [0151]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have deposited a coating layer on a surface of the conductive layer of Co-P alloy, as taught by Facchini, into the method taught by Gidding for the benefit of increasing the hardness and the strength of the final product.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giddings (US 2015/0086795), in view of Mizrahi (US 2010/0040902); and Tomantschger et al. (US 2010/0304171) as applied to claim 1 and further in view of Hiel et al (US 2013/0101845A9).
Regarding claim 17, Gidding discloses epoxy based for the polymeric matrix [0017] but does not explicitly disclose epoxy anhydride. However, analogous art, Hiel et al, discloses the use of epoxy anhydride for the benefit of high reactivity [0030]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized epoxy anhydride, as taught by Hiel et al, for the benefit of its high reactivity.
Response to Arguments
Applicant’s arguments have been considered but are moot in light of the newly cited references over Giddings (US 2015/0086795), in view of Mizrahi (US 2010/0040902); and Tomantschger et al. (US 2010/0304171).
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 FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754