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 .
Examiner’s Note
The previous set of claims submitted 30 September 2024 included new claims 33 and 34. However, the current set of claims submitted 24 September 2025 not only does not include previously considered claim 34, but there is nothing present in the response which even mentions claim 34 as being withdrawn, cancelled, pending, etc. To further prosecution, the examiner suspects this omission of claim 34 is an inadvertent error, and claim 34, from the 30 September 2024 submission, will be examined on the merits in this Office action. To prevent a notice of non-compliance in a future correspondence, the examiner recommends adding claim 34 back into an updated set of claims and provide an accurate status identifier to represent its current status.
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.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. US 2018/0305212 (hereinafter “Huynh”), and further in view of an article titled “Effects of vertically aligned carbon nanotubes on shear performance of laminated nanocomposite bonded joints” by Davood Askari, et al (hereinafter “Askari”).Regarding claim 1 Huynh teaches a deformable substrate and attaching a nanofiber forest (nanoforest-based reinforcement) to the surface of said deformable substrate (paragraph [0004]). Huynh teaches the nanofiber forest (nanoforest-based reinforcement) includes multiple layer embodiments where a first nanofiber precursor forest (second layer comprising nanotubes or nanowires) and a second nanofiber precursor forest (first layer comprising a nanoforest comprising nanotubes or nanowires) stacked on said first nanofiber precursor forest to form nanofiber sheets (paragraphs [0061] and [0064]), where the nanofibers are carbon nanotubes (paragraph [0058]). Huynh teaches the direction of nanofiber alignment between adjoining or interleaved sheets may be 90° and in a horizontal direction (first nanofiber precursor forest (second layer) is oriented substantially parallel to a surface of the substrate) (paragraphs [0063] and [0064] and Figure 2). Huynh teaches depositing a catalyst on the first nanofiber precursor forest (second layer) and then introducing additional fuel compound to the reactor to encourage growth of the second nanofiber precursor forest (first layer grown on the second layer) from the catalyst positioned on the first nanofiber forest (second layer), where the second nanofiber precursor layer (first layer) may grow on top of the first nanofiber precursor layer (second layer) (paragraph [0061]), which corresponds to the first layer has been grown on the second layer. Huynh does not explicitly teach the second nanofiber precursor forest (first layer) is oriented substantially perpendicular to a surface of the substrate. Askari teaches using carbon nanotubes (CNTs) as reinforcement between the laminae in a laminated composite, where a chemical vapor deposition technique is used to grow dense vertically aligned arrays of CNTs (second nanofiber forest (first layer)) being oriented substantially perpendicular to a surface of a substrate) over the surface of a two-dimensionally woven cloth and fiber tows (first layer grown on a second layer). The nanoforest-like fabrics used to fabricate three-dimensionally reinforced laminated nanocomposites. The presence of CNTs aligned normal (oriented substantially perpendicular to a surface of a substrate) to the layers and in-between the layers of laminated composites enhance the properties of the laminates (abstract). Askari teaches a 3D multifunctional hierarchical nanocomposite having a nanoforest of carbon nanotubes in the perpendicular (through-the-thickness) direction on silicon carbide (SiC) fibers and woven cloths, yields a 3D laminated nanocomposite exhibiting superior combination of properties such as fracture toughness, flexural modulus, flexural strength, flexural toughness, damping, coefficient of thermal expansion, through-the-thickness thermal conductivity and through-the-thickness electrical conductivity (page 2, paragraph bridging the left hand column and right hand column). Askari teaches the nanoforest can be grown directly on a variety of commercially available fibers by removing any coating applied to said fibers and functionalized with diluted HF acid (page 3, paragraph bridging the left hand column and right hand column). Huynh and Askari are analogous inventions in the field of nanoforest composites. It would have been obvious to one skilled in the art at the time of the invention to modify the nanosheets of Huynh with the normally aligned CNTs (oriented substantially perpendicular to a surface of a substrate) as disclosed by Askari to yield a nanocomposite exhibiting superior combination of properties such as fracture toughness, flexural modulus, flexural strength, flexural toughness, damping, coefficient of thermal expansion, through-the-thickness thermal conductivity and through-the-thickness electrical conductivity.Regarding claims 2 and 3 In addition, Huynh teaches the nanofiber forest may be included in a nanofiber sheet and can have a thickness between approximately 5 nm and 30 µm (paragraph [0062]), which encompasses the claimed ranges.Regarding claim 4 In addition, Huynh teaches the nanofiber sheet may be stacked on top of one another to form a multi-layered sheet stack, where any number of nanofiber sheets may be stacked to form said multi-layered sheet stack and includes 2, 3, 4, 5, 10, or more individual nanofiber sheets (paragraph [0064]). Huynh teaches a nanofiber sheet can have a thickness between approximately 5 nm and 30 µm (paragraph [0062]). For the embodiment of the multi-layered sheet stack that includes 2 individual nanofiber sheets, the resulting thickness (total height) is between approximately 10 nm to 60 µm, which significantly overlaps the claimed range.Regarding claim 5 In addition, Huynh teaches the nanofibers comprises carbon or boron nitride (paragraph [0051]).
Claims 6-11, 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Huynh and Askari as applied to claim 1 above, and further in view of United States Patent Application Publication No. 2013/0216811 (hereinafter “Ghasemi”).Regarding claims 6 and 10 The limitations of claim 1 have been set forth above. In addition, Huynh teaches the nanofiber forest may be included in multiple layers and be part of a technological composite part application (paragraphs [0049], [0053] and [0060]). Huynh does not explicitly teach the composite part includes the plurality of layers of the nanofiber forest being interleaved with a plurality of fiber reinforcement layers. Ghasemi teaches a nano-structure comprising a population of nanotubes referred to as a forest (abstract and paragraph [0107]). Ghasemi teaches the structure includes nano-reinforcements useful in reinforcing a variety of structures including composite systems by interleaving the reinforcement within regular continuous fiber composite, such as unidirectional, 2D woven, 3D triaxial/braided fabrics, which produces high-performance nanocomposites (paragraphs [0094] and [0096] – [0097]). Ghasemi also teaches the reinforcement may be used locally to strengthen and toughen regions of stress concentrations (paragraph [0099]). Ghasemi teaches an embodiment where a plurality of unidirectional carbon fiber tows (fiber reinforcement layers) are interleaved with a plurality of layers of CNT film (nanoforest-based reinforcement) (Figure 25(a), reproduced below).
PNG
media_image1.png
396
635
media_image1.png
Greyscale
Ghasemi teaches the disclosed reinforcements and methods impart improved properties on materials, the improvement being physical, chemical, mechanical (static–strength, stiffness, strain, toughness; and dynamic–fatigue, impact, damping, etc.), electrical, thermal, and the like (paragraph [0102]). Huynh, Askari and Ghasemi are analogous inventions in the field of nanoforest composites. It would have been obvious to one skilled in the art at the time of the invention to modify the nanoforest composite from the combination of Huynh and Askari with the plurality of reinforcement layers interleaved with the plurality of nanofiber forest layers (nanoforest-based reinforcement) of Ghasemi to produce a high-performance nanocomposite which improves the properties of traditional composites, said properties including physical, chemical, mechanical (static–strength, stiffness, strain, toughness; and dynamic–fatigue, impact, damping, etc.), electrical, thermal, and the like.Regarding claim 7 In addition, Ghasemi teaches the nano-structure materials may be incorporated at the interface between two other structures, such as the aforementioned unidirectional, 2D woven, 3D triaxial/braided composite fabrics (abstract and paragraphs [0094] – [0097]), which corresponds to the nanoforest-based reinforcement grown directly on the fiber reinforcement layers. Moreover, the use of product-by-process limitations has been noted in claim 7, for example, "the nanoforest-based reinforcement was grown directly on the fiber reinforcement layers". "[E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.Regarding claim 8 In addition, Ghasemi teaches the formed composite part includes a resin matrix comprising a cured epoxy (paragraphs [0224], [0225] and [0243]).Regarding claim 9 In addition, Ghasemi teaches the regular continuous fiber composite (fiber reinforcement layers), which is interleaved with the nanotube forests in the composite system, includes carbon, glass, Kevlar (para-aramid synthetic fiber), Spectra (polyethylene fiber), silicon carbide, alumina, etc. (paragraph [0096]).Regarding claim 11 In addition, Ghasemi teaches the methods are applicable to virtually any geometry, whether flat, curved, contoured, and multi-curvatures (paragraph [0101]).Regarding claims 33 and 34 In addition, Ghasemi teaches a nanotape formed from the CNT nanoforest includes a thickness ranging from 40-70 µm, which is equal to the distance between adjacent ply fibers filled with only matrix in composite materials (gap between consecutive fiber reinforcement layers), where the nanotape is used to fill the gap between fibers of adjacent layers and the major axes of the nanostructures may include a perpendicular orientation relative to the fibers (length of the nanostructures corresponds to a distance between consecutive fiber reinforcement layers) (paragraphs [0172] and [0222]), which encompasses the claimed range. Ghasemi also teaches a major axis (length) of the nanostructure (height for each of the plurality of layers of the nanoforest-based reinforcement) ranges from 1-100 µm (paragraphs [0111] – [0112]), which encompasses the claimed range. These two measurements (length of nanostructures / distance of gap * 100%), when using the two lower limits of the disclosed ranges, correspond to each of the plurality of layers of the nanoforest-based reinforcement fills greater than about 2.5% (1 µm length of nanostructure / 40 µm gap between adjacent ply fibers * 100%) of a distance between consecutive fiber reinforcement layers, which encompasses the claimed range.
Response to Arguments
Applicant's arguments filed 24 September 2025 have been fully considered but they are not persuasive. The applicant argued, with the amendment of independent claims 1 and 12, a catalyst is now required which forms a catalyst layer in the final product, where a catalyst layer is not present when nanoforests are stacked because they have already been grown. The examiner respectfully disagrees. First, the claim merely requires a catalyst. The claim does not require the catalyst layer must be present between adjacent nanoforest layers. Therefore, if the prior art teaches a catalyst is used on a substrate to form the initially grown nanoforest layer (analogous to the second layer, as claimed), the claim would be met. Second, as is presented in the updated rejection of record, Huynh teaches depositing a catalyst on the first nanofiber precursor forest (second layer) and then introducing additional fuel compound to the reactor to encourage growth of the second nanofiber precursor forest (first layer grown on the second layer) from the catalyst positioned on the first nanofiber forest (second layer) (paragraph [0061]). Therefore, Huynh teaches a catalyst layer which was argued by the applicant as not being present. The applicant argued Huynh teaches against growing layers on other layers, so Askari may not properly be combined with Huynh. The examiner respectfully disagrees and contends that Huynh does teach growing layers on other layers. See at least paragraph [0061] from Huynh. Moreover, Askari teaches nanoforests can be grown directly on a variety of commercially available fibers (page 3, paragraph bridging the left hand column and right hand column). Therefore, the examiner maintains the position that the combination of Huynh and Askari is proper, and the proposed modification does not change the principle of operation thereof. The applicant argued the examiner relied on impermissible hindsight because Askari teaches a nanoforest grown on a substrate and Huynh teaches stacked horizontal layers that have no substrate and growing a vertical nanoforest on stacked, unbonded layers of a horizontal nanoforest would not enhance the physical properties of a composite. The examiner respectfully disagrees and contends that it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, the examiner relied upon the teachings and motivation of the prior art to meet the claims. Furthermore, contrary to the position taken by the applicant, Huynh does teach the use of a catalyst between nanoforest layers which is expected to provide a bond between the first and second nanoforest layers disclosed therein.
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 BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783