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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4 December 2025 has been entered.
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Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.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).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “10” has been used to designate both what appears to be the overall system/”coater” (see arrow in upper right and corner of Fig. 1) pointing to claimed “system” generally AND the actual “reactor” located between the tow entrance and tow exit (see underlined 10 in Fig. 2) indicating inside area where actual coating is intended to be performed. Note: the specification also uses the terms “coater” and “reactor” for “10”, which also needs resolution.
Fig. 2 is also objected to naming the marker gas inlet as “28” in addition to “26”. There does not appear to be any indication that “28” would be located on this side of the “reactor” “10”. Thus, the drawing appears to be inaccurate and different than the specification.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “housing” must be shown (and labeled) or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 § 112
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 1-3, 5-10 and 21 are 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. Any claim not specifically mentioned is rejected based on its dependence.
Claim 1 recites the limitation "the reactor" in line 14. There is insufficient antecedent basis for this limitation in the claim. In order to expedite examination, Examiner has assumed previous claim limitation introducing the coater was meant to recite “a coater comprising a housing having a tow entrance, a reactor and a tow exit and defining an interior space, the reactor further comprising a process gas inlet and a process gas outlet, the tow entrance further comprising a tow entrance inlet, and the tow exit further comprising a tow exit outlet” or and has examined accordingly. See below, with respect to claim 1, lines 11-15 and relative positioning, for reasoning as to why the tow entrance inlet and two exit outlet are added to the claim.
Claim 1, lines 6-8 recite “at least one marker gas inlet and marker gas detection probe”. However, this designation renders the claim unclear because further in the claim they are referred to separately rendering it unclear to which of the features “at least one” is meant to refer. In order to expedite examination, Examiner has assumed the claim was meant to refer to “at least one marker gas inlet and at least one marker gas detection probe, both positioned at at least one of the tow entrance and the tow exit” and has examined accordingly.
Claim 1, line 11 recites the limitation "the marker gas inlet”. There is insufficient antecedent basis for this limitation in the claim. In order to expedite examination, Examiner has assumed the claim was meant to refer to “the at least one marker gas inlet” and has examined accordingly.
Claim 1, line 11-12 recites the limitation "the marker gas detection probe”. There is insufficient antecedent basis for this limitation in the claim. In order to expedite examination, Examiner has assumed the claim was meant to refer to “the at least one marker gas detection probe” and has examined accordingly.
Claim 1 lines 11-15 have been amended to refer to the relative positions of the at least one marker gas inlet, the at least one marker gas detection probe, and the tow exit/tow entrance. Additionally, Applicant has used the language “tow entrance” and tow exit” to refer to features which are already assigned to other features of the disclosed apparatus. For at least these reasons, the claimed invention is unclear. In order to expedite examination, Examiner has assumed that the claimed reactor was also meant to include a reactor tow inlet and a reactor tow outlet, which correspond to the inlet and outlet of the reactor where actual coating takes place, not the disclosed tow entrance or the disclosed tow exit as originally disclosed, and has examined accordingly. Note: as disclosed, the relative arrangement appears to actually be between the at least one marker gas inlet, the at least one marker gas detection probe, and a tow entrance inlet/a tow exit outlet.
Claim 7, lines 1-3 recite the limitation "the marker gas detection probe”. There is insufficient antecedent basis for this limitation in the claim. In order to expedite examination, Examiner has assumed the claim was meant to refer to “the at least one marker gas detection probe” and has examined accordingly.
Claim 8, lines 2-4 recite the limitation "the marker gas detection probe”. There is insufficient antecedent basis for this limitation in the claim. In order to expedite examination, Examiner has assumed the claim was meant to refer to “the at least one marker gas detection probe” and has examined accordingly.
Claim 9, lines 2-4 recite the limitation "the marker gas detection probe”. There is insufficient antecedent basis for this limitation in the claim. In order to expedite examination, Examiner has assumed the claim was meant to refer to “the at least one marker gas detection probe” and has examined accordingly.
With respect to claim 10, based on issues addressed above, Examiner has assumed the claim was meant to recite “the at least one marker gas inlet and the at least one marker gas detection probe comprise an … the reactor tow inlet…the reactor tow outlet …” and has examined accordingly.
With respect to claim 21, based on the issues addressed above, Examiner has assumed the claim was meant to recite “the tow entrance inlet, the tow exit outlet, reactor tow inlet and reactor tow outlet” are separate from the process gas inlet and the process gas outlet”.
Clarification and/correction is requested. Examiner has made assumptions above based on their understanding of the claimed and disclosed inventions in order to expedite examination. Examiner’s assumptions are not meant to in any way alter the original disclosure. Applicant is requested to clarify and/or correct in accordance with their understanding and intentions, with respect to the claimed and originally disclosed inventions, in order to also expedite examination.
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. 2022/0122594 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) 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 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 reactor may be detected by the at least one marker gas detection probe.
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 detected by the at least one marker gas detection probe.
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 comprising in Allison et al. in order (1) exhaust depleted reaction products; and (2) maintainthe 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 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.
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, have been fully considered and are persuasive with respect to the previously set forth rejections. Thus, they have been withdrawn. However, new rejections have been elaborated above. Portions of the arguments that remain relevant are addressed below.
Applicant, has stated “Thus, claim 1 now calls for the marker gas inlet to be positioned between the inlet/outlet of the reactor and the marker gas detection probe. This is clearly illustrated in the drawings for example FIG. 2 reproduced below:”, Examiner disagrees and notes at least that the claim does not recite “the inlet/outlet of the reactor”, nor are they labeled in Fig. 2, nor is the arrangement specifically described as such in the specification. Rather, the invention is described in the specification as the marker gas inlet between a probe and the tow entrance inlet (31)/tow exit outlet (33). Claim language related to “coater” and “reactor” further complicates Applicant’s intention with the claimed invention. It appears that Applicant may intend for “tow entrance” and “tow exit” to correspond to “the inlet/outlet of the reactor” wherein the reactor is meant to be taken to be the central volume Fig. 2, “10” where coating occurs. See features 12 and 14 in Fig. 1. However, “tow entrance” and “tow exit” have different meanings in the context of the disclosed invention. Additionally, claim 1 fails to clearly set forth the boundaries of the coater vs. the reactor.
In order to expedite examination, Examiner has interpreted the claimed invention to the best of their ability based on what is more clearly set forth in the drawings and specification provided in light of Applicant’s actual claim language and arguments.
Regarding Applicant’s arguments with respect to the timing of setting forth a previous rejection and “same” claim language in European application, Examiner notes that there is no preclusion on making new rejections as long as they are in accordance with the rules and laws dictating patent examination. It is Examiner’s duty to ensure Applicant’s application meets these rules and laws each time it comes before them. Also, as must Applicant must be aware, the rules and laws in “Europe” are not the same as at the USPTO.
In order to advance examination, Examiner suggests incorporating claim 8 in 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. The amendment should also take into account the myriad of claim clarity issues addressed herein by Examiner.
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.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716