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 .
Claims 1-14 are currently pending in the above identified application.
Claims 10-14 have been withdrawn from consideration as being directed towards the non-elected invention.
Claim Interpretation
The term “coverage” in claim 2 is interpreted as referring to the ratio of the area covered with the cover substance to the total surface area of the ceramic continuous fiber, aligned with para 0047 of the published application.
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 1-2 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,036,762 to Sambasivan as evidenced by Complete Textile Glossary to Celanese.
Regarding claims 1-2 and 5-9, Sambasivan teaches a coated substrate, including ceramic fibers, having a layer of metal phosphate (cover layer) formed from a metal salt solution, including lanthanide series phosphate (La, Ce, Nd, Eu, Gd) and exemplified with LaPO4 (inorganic acid salt, lanthanum phosphate, claims 5-7) (Sambasivan, abstract, col. 1 line 55-col. 3 line 30), reading on a cover-layer-including ceramic fiber comprising a ceramic fiber and a cover layer formed of an inorganic acid salt and disposed on a surface on the ceramic fiber. Sambasivan teaches the precursor solution being highly uniform, allowing a highly uniform coating of even and uniform thickness to be applied to the substrate and teaches a specific film formed being smooth, uniform, and continuous (Id., col. 3 lines 25-30, col. 2 lines 6-10), reading on a low thickness variation coefficient (claim 1) and a high coverage (claim 2). Sambasivan teaches a specific embodiment formed on an alumina-based (claim 8) monofilaments (Id., col. 3 lines 43-col. 4 line 9). Monofilaments are known in the art as being a continuous fiber as evidenced by Celanese (Celanese, p. 3-4), reading on a cover-layer-including continuous fiber comprising a ceramic continuous fiber. Sambasivan teaches the solution precursor having good wetting and coating properties and the phosphate coating allows for increased toughness for composition (Id., col. 3 lines 1-8).
While Sambasivan does not explicitly teach the coating (cover layer) having a thickness variation coefficient of 80% (claim 1), Sambasivan does teach the layer formed being smooth and uniform, which would read a low thickness variation coefficient. Absent evidence to the contrary, it would have been obvious to one of ordinary skill in the art before the effective filing date to form the coated substrate of Sambasivan, wherein the thickness variation coefficient of the coating (cover layer) is minimizes, such as within the claimed range, motivated by the desire to form a coating that is even and having a uniform thickness as taught by Sambasivan as being a feature of the invention and desirable.
While Sambasivan does not explicitly teach the coating (covering layer) providing a coverage of 90% or more (claim 2), Sambasivan teach the formed coating being smooth, uniform, and continuous, which would read on a high coverage. Absent evidence to the contrary, it would have been obvious to one of ordinary skill in the art before the effective filing date to form the coated substrate of Sambasivan, wherein the coverage of the coating is maximized, such as within the claimed range, motivated by the desire of forming a coating that is smooth, uniform, and continuous as taught by Sambasivan as a feature of the invention and desirable.
Regarding claim 9, Sambasivan teaches a composite comprising a fibrous preform containing unidirectional fiber tows of Nextel 720 used as reinforcement material for ceramic matrix composites (Sambasivan, col. 3 line 33- col. 4 line 28), reading on a ceramic matrix composite material comprising the cover-layer including ceramic continuous fiber.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2467928 to Roy.
Regarding claims 1-9, Roy teaches a coated inorganic fiber (cover-layer-including inorganic fiber for use in reinforcing ceramic matrix composites (claim 9) comprising a fiber, including endless and alumina fiber (claim 8) (ceramic continuous fiber), and a coating (cover layer) of a phosphate (inorganic acid salt), such as LaPO4 (lanthanum phosphate, claims 5-7) (Roy, abstract, Table 1, p. 5, 8, 11), reading on a cover layer formed of an inorganic acid salt, specifically lanthanum phosphate, disposed on a surface on a ceramic continuous fiber, specifically alumina. Roy teaches the filament having a nanometer thin monolayer coating and in each deposition cycle, coating thickness is constant in the range of nanometer formed on each filament separately and homogeneously (Id., p. 7-8), reading on a low variation in the thickness and therefore a low thickness variation coefficient (claim 1). Roy teaches the coating being pinhole free, smooth on continuous fiber (Id.), reading on the coating having a high coverage of the continuous fiber (claim 2). Roy teaches depending on the process and reactor being used, one complete cycle can deposit 0.01 to 0.3 nm thick film and allows easy tuning of the film thickness on the substrate with a constant growth rate and uniform film formation throughout the whole substrate surface (Id., p. 6, 11).
While Roy does not explicitly teach the coating (cover layer) having a thickness variation coefficient of 80% (claim 1), Roy does teach the layer formed being homogenous and constant thickness, which would read a low thickness variation coefficient. Absent evidence to the contrary, it would have been obvious to one of ordinary skill in the art before the effective filing date to form the coated inorganic fiber of Roy, wherein the thickness variation coefficient of coating (cover layer) is minimizes, such as within the claimed range, motivated by the desire to form a coating that is homogenous, and therefore a constant thickness, as taught by Roy as being a feature of the invention and desirable, and controllable by the process.
While Roy does not explicitly teach the coating (covering layer) providing a coverage of 90% or more (claim 2), Roy teach the formed coating being homogenous with no pinholes around the filament, which would read on a high coverage. Absent evidence to the contrary, it would have been obvious to one of ordinary skill in the art before the effective filing date to form the coated inorganic fiber of Roy, wherein the coverage of the coating is maximized, such as within the claimed range, motivated by the desire of forming a coating that is smooth, uniform, and continuous as taught by Roy as a feature of the invention and desirable.
Regarding claims 3-4, Roy teaches an embodiment that is smooth, homogenous film on the fiber surface with a coating (cover layer) thickness of 44.41 nm (Roy, p. 8, 12-14) (claim 4). Roy teaches the coating thickness is increased to the desired thickness just by repeating the number of cycles (Id., p. 11). While Roy does not explicitly teach the thickness being greater than 50 nm, it would have been obvious to one of ordinary skill in the art to predictably increase the coating (cover layer) thickness, such as within the claimed range, by repeating the cycles in order to achieve the desired thickness based on the desired properties and application, as taught by Roy.
Response to Arguments
Applicant's arguments filed February 9, 2026 have been fully considered but they are not persuasive.
Applicant argues with regards to the application of Sambasivan, that Sambasivan does not expressly disclose any of the quantitatively defined parameters recited in the claims and that smooth, uniform and/or continuous qualitative properties does not inherently read on the claimed quantitative properties and no evidence has been provided to substantiate this portion. Examiner respectfully disagrees. A coating that has a consistent thickness would be uniform and smooth. A coating the fully covers the fiber would continuous and uniform. While not quantitative, the qualitative describes the desired quantitative and would motivated one of ordinary skill in the art before the effective filing date to form the coating the fully coats (continuous and uniform) and has low variation (uniform and smooth), and therefore having a low thickness variation coefficient and coverage of 90% or more. While not quantitative, the qualitative describes the desired quantitative and would motivated one of ordinary skill in the art before the effective filing date to form the coating the fully coats (continuous and uniform) and has low variation (uniform and smooth), and therefore having a low thickness variation coefficient, such as 80% or less, and coverage of 90% or more, absent evidence to the contrary. Examiner is not relying on inherency by an obviousness rejection.
Applicant argues that the instant disclosure teaches the LaPO4 thin film formed on the surface of the ceramic continuous fiber prior to liquid-phase coating with controlled nucleation starting point to promote uniform nucleation starting point whereas Sambasivan forms a coating by simply immersing ceramic fibers in a metal-salt-containing solution followed by heat treatment with no step corresponding to the formation of metal alt thin film prior to coating nor recognize the role of nucleation control in achieving uniform coatings. Examiner does not disagree that the methodologies may be different, however, the formed product has patentable significance. Applicant points to data showing the benefit of coatings that have the claimed coverage and thickness variation coefficient of 80% or less. However, this does not provide evidence that the product of Sambasivan would be capable of achieve the claimed thickness variation coefficient or coverage.
Applicant argues, with regards to the application of Roy, that Roy is directed towards a different problem and does not disclose a thickness variation coefficient, statistical measure of thickness variation, and does not disclose any numerical coverage ratio or method for measuring surface coverage. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Applicant argues that “homogenous”, “constant thickness” or “pinhole-free” cannot be equated with , nor do they inherently satisfy, quantitatively defined parameters having specific numerical thresholds and measurement meanings. Examiner respectively disagrees. A constant thickness would means low variation and low thickness variation coefficient. Homogenous and pin-hole free would mean full coverage and low variation. As discussed above, while not quantitative, the qualitative describes the desired quantitative and would motivated one of ordinary skill in the art before the effective filing date to form the coating the fully coats (homogenous and pin-hole free) and has low thickness variation (homogenous and constant thickness), and therefore having a low thickness variation coefficient, such as 80% or less, and coverage of 90% or more, absent evidence to the contrary. Applicant has provided no evidence that the prior art would be outside the claimed quantification.
Applicant argues that Roy does not recognize the technical significance of the claimed thickness threshold (greater than 50 nm) in any context relating to claim 3 or claim 4, nor provides any teaching that increasing thickness beyond 50 nm would be desirable in Roy. Examiner respectfully disagrees. Roy teaches thickness being easily tunable and teaches an embodiment having a thickness of 44.41 nm. Therefore adjusting the thickness would have been obvious to one of ordinary skill in art. 44.4 nm thickness is not very far from 50 nm. While Applicant argues a technical significance, the originally filed disclosure does not teach the significance and explicitly states “[t]he lower limit of the thickness of the cover layer is not particularly limited; the cover layer can have a thickness of 1 nm or more, 10 nm or more, more than 50 nm” (see para 0054 of the published application). There does not appear to be a unexpected result linked with the claimed thickness. Additionally, Examiner would like to note a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that,
where the only difference between the prior art and the claims was a recitation of relative
dimensions of the claimed device and a device having the claimed relative dimensions
would not perform differently than the prior art device, the claimed device was not
patentably distinct from the prior art device.
Therefore, Examiner maintains the rejections detailed above.
Conclusion
THIS ACTION IS MADE FINAL. 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 JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789
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