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
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on 7 August 2023 is acknowledged. Claim 4 has since been cancelled. Claim 21 is added.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the aforementioned reply.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a control unit in claims 8 and 9 which has been interpreted as storage and software programmed and configured to control operation of the coating process performed in the system, as set forth in the disclosure at for example paras. 37-39.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 1-3, 5, 8-10 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2022/0112594 to Allison et al. in view of U.S. Patent Pub. No. 2009/0050058 to Ovshinsky et al.
Regarding claims 1 and 10: Allison et al. disclose a system capable of chemical vapor deposition coating on fiber tows substantially as claimed and comprising: a coater (Fi. 1, 100) comprising a housing (e.g., 110, 120 and 130) having a tow entrance (150 between 110 and 120), a reactor (120), and a tow exit (150 between 120 and 130) defining an inner space, the reactor further comprising a process gas inlet (162, see, e.g., para. 28), a reactor tow inlet (right 350 in Fig. 3 in left 150 of Figs. 1, 2A) and a reactor tow outlet (left 350 in Fig. 3 in right 150 of Figs. 1, 2A), the tow entrance further comprising a tow entrance inlet (left 350 in Fig. 3 in left 150 of Figs. 1, 2A), and the tow exit further comprising a tow exit outlet (right 350 in Fig. 3 in right 150 of Figs. 1, 2A); at least one marker gas inlet (e.g., 324 in either/both 150) and at least one marker gas detection probe (Fig. 7, 772) both positioned at at least one of the tow entrance and the tow exit; a source of marker gas (734) communicated with the at least one marker gas inlet; wherein the at least one marker gas inlet is positioned between the at least one marker gas detection probe both the reactor tow inlet and the reactor tow outlet, whereby (during an intended use of the apparatus) marker gas flowing from the at least one marker gas inlet away from the coater may be detected by the at least one marker gas detection probe. Regarding intended use, Examiner notes that the courts have ruled a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Additionally, it is noted that in Allison et al., the at least marker gas inlet is positioned between the at least one marker gas detection probe and at least one of the tow entrance inlet and the tow exit outlet, whereby marker gas flowing from the at least one marker gas inlet away from the reactor is capable of being detected by the at least one marker gas detection probe.
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Allison et al. disclose the apparatus/system substantially as claimed and as described above.
However, Allison et al. fail to explicitly disclose a process gas outlet for the reactor.
Ovshinsky et al. disclose a reactor having a process gas outlet (Fig. 2, 20) adapted for connection to a vacuum pump for the purposes of (1) exhausting depleted reaction products; and (2) maintaining the interior of the reactor at an appropriate sub-atmospheric background pressure (see, e.g., para. 41).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided the reactor in Allison et al. comprising a process gas outlet in order (1) exhaust depleted reaction products; and (2) maintain the interior of the reactor at an appropriate sub-atmospheric background pressure as taught by Ovshinsky et al.
With respect to claim 2, in modified Allison et al., Allison et al. may further comprise a pump (735) communicated with the interior space of the coater whereby operation of the pump can be adjusted to adjust pressure in the interior space.
With respect to claim 3, in modified Allison et al., Allison et al. may further comprise a take-off spool (114) capable of feeding fiber tow to the tow entrance, and a take-up spool (134) capable of receiving coated fiber tow from the tow exit.
With respect to claim 5, in modified Allison et al., Allison et al. teach the source of marker gas inert carrier gas containing a detectable fraction of detectible gas (i.e. argon).
Regarding claims 8-9, modified Allison et al. disclose the system substantially as claimed and as described above.
However, modified Allison et al. fail to explicitly disclose a control unit configured to receive input from the at least one marker gas detection probe, and upon receiving input indicating no marker gas detected, configured to operate the coater at a higher pressure in the interior space and/or change operation of the pump to operate the coater at a higher pressure in the interior space.
Ovshinsky teach providing a control unit (i.e., feedback control element is considered to be an equivalent thereto) configured to receive input from at least one probe (diagnostic element [including chemical and elemental sensors (see, e.g., paras. 74-82) at various points of a coater for the purpose of providing real-time optimization of processing conditions during processing (including pressure differentials) so that process conditions may be adjusted (i.e. changed) as necessary to ensure optimal conditions are maintained in real time. Note: “no marker gas detected” is considered to be a processing condition clearly recognizable to one of ordinary skill in the art to relate to the capability to maintain a desired pressure differential.
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided in modified Fujioka et al. a control unit configured to receive input from the at least one marker gas probe and or other probes provided at various points the coater in order to provide real-time optimization of processing conditions during processing (including pressure differentials by adjusting pumping operation) so that process conditions may be adjusted as necessary to insure optimal conditions are maintained in real time as taught by Ovshinsky.
With respect to claim 21, in Allison et al., the tow entrance inlet, the tow exit outlet, reactor tow inlet, reactor tow outlet are separate from the process gas inlet and the process gas outlet.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Allison et al. as applied to claims 1-3, 5, 8-10 and 21 in view of U.S. Patent Pub. No. 2011/018906 to Cao et al.
Modified Allison et al. disclose the system substantially as claimed and as described above.
However, Allison et al. fail to disclose the source of marker gas comprises a source of nitrogen gas dosed with helium, such that the at least one marker gas detection probe is provided to detect (i.e. capable of detecting) helium.
Cao et al. teaches providing a sweep gas (commensurate to marker gas) for a gas gate configured to admit any sweep gas, such as, e.g., one or more of H2, N2, He, Ne and Ar (see, e.g., para. 54). Additionally, the courts have ruled that the selection of a known material based on its suitability for its intended use is prima facie obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided the source of marker gas comprises a source of nitrogen gas dosed with helium as a known marker/sweep gas composition as taught by Cao et al.
With respect to claim 7, in modified Allison et al., one of ordinary skill in the art exercising ordinary creativity, common sense and logic would find it obvious to provide the at least one marker gas detection probe comprises a probe configured to detect helium when the marker gas comprises the same as set forth above.
Response to Arguments
Applicant’s arguments and accompanying amendments with respect to the drawings, specification and 35 USC 112 have been fully considered and are. Thus, they have been withdrawn. However, Applicant’s arguments with respect to the previously and presently relied upon prior art are not persuasive. See below explanations.
Applicant has argued that the process gas inlet in Allison et al. should not be considered a process gas inlet under BRI. Examiner disagrees and notes that Allison et al. in particular discloses that the evaporation source provides evaporated materials in a gaseous phase into the coater (see, e.g., paras. 27-27) and thus can serve as a process gas inlet under BRI. Notably, Applicant has not pointed to any specific deficiency with respect to the interpretation under BRI.
Regarding the relative positioning of the at least one marker gas inlet, the at least one marker gas detection and the tow entrance inlet relative to one another, Examiner disagrees that the positioning fails to meet the claim limitations. See above annotated rejections regarding the relative positioning of the features at issue. Examiner also notes that the configuration of Fig. 3 is provided in a mirror-like configuration on the outlet side of the vacuum chamber/coater as taught by Allison.
Applicant has also argued that Allison fails to disclose a marker gas inlet and detection probe as claimed. Examiner also disagrees with this statement. In claim 1, the function of the claimed marker gas detection probe is to “wherein …the at least one marker gas detection probe…, whereby marker gas flowing from the marker gas inlet away from the coater is detected by the marker gas detection probe”. Examiner submits that a pressure gauge positioned as claimed would be capable of at least generically detecting marker gas based on pressure indicated the presence thereof, and potentially more specifically, depending on the manner in which the apparatus is being used or a more specific type of pressure gauge (e.g., knowing the expected pressure and/or using a pressure gauge/apparatus making use of partial pressures). However, the claimed apparatus is not drawn to a manner of using or a method of using the claimed apparatus. It is drawn to the apparatus. 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., a specific method of using the claimed apparatus) 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).
As previously mentioned, in order to advance examination, Examiner suggests incorporating claim 8 into independent claim 1 and further clarifying the control unit configured to receive the input in-situ during chemical vapor deposition on the tow in the reactor. Alternatively, a separate application drawn to a method may be fruitful.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Pat. Pub. No. 2021/0348268 discloses a deposition chamber with probes/sensors for optimizing processing therein.
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 KARLA MOORE whose telephone number is (571)272-1440. The examiner can normally be reached Monday-Friday, 9am-6pm EST.
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, PARVIZ HASSANZADEH can be reached on (571) 272-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716
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