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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/1/26 has been entered.
Response to Arguments
Applicant's arguments filed 7/1/26 have been fully considered but they are not persuasive to the extent that they apply to the current rejection as newly cited art is utilized in the current rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 9, 13, 16 of copending Application No. 19053118 in view of Kumar (2010/0272978). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 11-17, 19053118 recites all the limitations of this claim within claim 7 except the inclusion of graphene nanomaterials and the alignment.
Kumar teaches a method of making carbon fibers containing graphene nanomaterials and PAN [Abstract] and notes that nanomaterials can act as reinforcement similar to glass fibers in that graphene nanomaterials significantly improve tensile moduli [0025, 0014] and noted including teaches a weight ratio of the polyacrylonitrile to the graphene nanomaterials is in an overlapping range to 1:15 to 15:1 [0075,0076]. It has been held that choosing the over lapping portion of the range taught in the prior art is a prima facie case of obviousness, see MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of 19053118 and included graphene nanomaterials in ratio of 1:15 to 15:1, as suggested by Kumar, in order to obtain a carbon fiber with improved tensile modulus.
19053118 does not explicitly state that the graphite sheets are aligned but does teach gel spinning as explained above.
Kumar II teaches gel spinning CNT/PAN carbon fiber [Abstract, col 3 line 19-34] and notes aligning the nanomaterials along the axis [Fig 2, col 3 line 35-40, col 5 line 4-17, col 7 line 22-32, claim 7, 10]. This results in greater stabilization [col 2 line 35-60, col 2 line 12-28]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of 19053118 and aligned the nanomaterials, as suggested by 19053118, in order to create better stabilized fibers.
As to claim 18, 19053118 recites all the limitations of this claim within claim 9.
As to claim 19, 19053118 recites all the limitations of this claim within claim 13.
As to claim 20, 19053118 recites all the limitations of this claim within claim 16.
As to claim 21-30, 19053118 recites all the limitations of this claim within claims 7, 9, 13, 16.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 17 is 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.
The term “the acrylonitrile” is unclear as to whether it refers to the acrylonitrile in the middle layer/2nd solution or the acrylonitrile present in all three layers as acrylonitrile is used in all 3, see claim 11.
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 11-15, 18-21, 23, 28 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (In situ alignment of graphene nanoplatelets in poly(vinyl alcohol) nanocomposite fibers with controlled stepwise interfacial exfoliation) in view of Chien (Polyacrylonitrile Fibers Containing Graphene Oxide Nanoribbons).
As to claim 11, Xu teaches a method of forming a 3-layer coaxial composite fiber, the method comprising: forming a coagulated gel precursor fiber by extruding a multiplicity of three solutions through a multiphase spinneret [Fig 1 b, Spinneret engineering] through an air gap and into a solvent [Fig 1 b, 3-phase fiber, wherein the coagulated gel precursor fiber comprises: an inner layer comprising PVA; a middle layer surrounding the inner layer and comprising graphene nanomaterials [3-Phase fiber], wherein the graphene nanomaterials comprise graphene nanoplatelets [3-phase fiber]; and a n outer layer surrounding the middle layer and comprising PVA [3-phase fiber, Fig 1];hot drawing the coagulated gel precursor fiber to yield a drawn precursor fiber [Fig 1 b]; wherein the graphene nanomaterials are aligned along a length of the coaxial composite fiber [abstract].
Xu does not teach a PAN fiber and oxidizing the drawn precursor fiber to yield a stabilized fiber; and carbonizing the stabilized fiber to yield the coaxial composite fiber.
Chien teaches a method of making graphene reinforced carbon fibers [abstract] wherein the fibers are gel spun [Introduction, Conclusion] from PAN solution then subjected to "stabilization in air" in other words oxidation and then carbonized [2 experimental section]. It would have been obvious to one of ordinary skill in the art at the time of filing the claimed invention to have altered the method of Xu and utilized PAN solutions instead of PVA, as suggested by Chien as these materials had proven successful at producing carbon fibers of strong mechanical properties by the same gel spinning methods.
As to claim 12, Xu teaches the multiplicity of three solutions comprises a first solution, a second solution, and a third solution corresponding to the inner layer, the middle layer, and the outer layer, respectively [Fig 1 b, 3 phase fiber].
As to claim 13, Xu teaches the first solution and the third solution comprise PVA, but Xu in combination with Chien would substitute the PVA for PAN as explained above.
As to claim 14, Xu teaches the first solution and the third solution are the same [3-phase fiber, Fig 1 b].
As to claim 15, Xu the second solution comprises graphene nanomaterials [Fig 1 b, 3 phase fiber].
As to claim 18, Xu notes that the solutions are preferably made with DMSO but first solution, the second solution, and the third solution may alternatively comprise dimethylformamide [Fiber morphology, materials].
As to claim 19, Xu teaches the solvent comprises methanol [3 phase fiber].
As to claim 20, the combination of Xu and Chien teach the use of PAN as explained above, Xu teaches hot drawing the coagulated gel precursor fiber comprises heating the coagulated gel precursor fiber above the glass transition temperature [the relationship between GNP weight ratios and draw ratios].
As to claim 21, Xu teaches wherein a diameter of the inner layer of the coaxial composite fiber is in a range of about 20 microns to about 80 microns, a thickness of the middle layer of the coaxial composite fiber is in a range of about 20 microns to about 10 microns, and a thickness of the outer layer of the coaxial composite fiber is in a range of about 10 microns to about 50 microns. However, thickness is tuned by draw ratio and spinneret channel size which influences both alignment degree and modulus[Electrical conductivity of the 3-phase fiber, the relationship between GNP weight ratios and draw ratios, Mechanical performance, GNPs’ orientation in 3-phase fibers]. It is well settled that the determination of the optimum value of a result effective variable, in this case layer thickness, is within the skill of one practicing art, see MPEP § 2144.05 II. It would have been obvious to one of ordinary skill in the art to optimize the layer thicknesses such that the inner layer thickness is about 20 microns to about 80 microns, a thickness of the middle layer of the coaxial composite fiber is in a range of about 20 microns to about 10 microns, and a thickness of the outer layer of the coaxial composite fiber is in a range of about 10 microns to about 50 microns, as suggested by Xu, in order to obtain desired alignment and modulus.
As to claim 23, Xu teaches the hot drawing the coagulated gel precursor fiber comprises hot drawing the coagulated gel precursor fiber at 3 increasing temperatures [3-Phase Fiber] but does not explicitly state at 110°C, followed by hot drawing the coagulated gel precursor fiber at 130°C, followed by hot drawing the coagulated gel precursor fiber at 150°C.
Xu notes that the temperature gradient (in other words the 3 temperature drawing is executed at) is what imparts degree of stretching to the fibers and exfoliation/alignment [GNPs' orientation in 3-phase fibers]. It is well settled that the determination of the optimum value of a result effective variable, in this case layer thickness, is within the skill of one practicing art, see MPEP § 2144.05 II. It would have been obvious to one of ordinary skill in the art to optimize the temperature gradient to 110, 130, 150 C as suggested by Xu in order to optimize the degree of stretching , exfoliation and alignment.
As to claim 28, Xu teaches the multiphase spinneret defines a channel for each of the three solutions [Fig 1 a1]
Claim claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (In situ alignment of graphene nanoplatelets in poly(vinyl alcohol) nanocomposite fibers with controlled stepwise interfacial exfoliation) in view of Chien (Polyacrylonitrile Fibers Containing Graphene Oxide Nanoribbons), as applied to claims 11-15, 18-21, 23, 28 above, and in further view of Kumar (US 2010/0272978) and Zhao (Influence of heating procedures on the surface structure of stabilized polyacrylonitrile fibers).
As to claims 24 and 25, Xu does not explicitly state that the oxidation step is at step to 280 C for 90 min at a heating rate of 5 C/min.
Zhao teaches a method of making PAN and notes that 280 C is a “key temperature” for stabilization of PAN fibers [Abstract, 2.1 materials]. This temperature allows for precarbonization when desired and eliminates unstabilized microstructures [4. Conclusions]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of Xu and utilized 280 C as the stabilization temperature, as suggested by Zhao, in order to allow for precarbonization when desired and eliminates unstabilized microstructures.
Kumar teaches a method of preparing PAN-CNT fiber [abstract] wherein stabilization occurs at 200-400C and lasts 30s-24 hours depending on the size of the part, the exact composition of PAN in order to induce enhanced density and other mechanical properties [0088-0090]. In other words, temperature and duration of the oxidation step is results effective variable on density and other mechanical properties. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have optimized the oxidation step to 280 C for 90 min at a heating rate of 5 C/min, as suggested by Kumar, in order to obtain the desired density and mechanical properties. Moreover, optimization within prior art conditions/routine experimentation is obvious, see MPEP 2144.05 II A.
Claims 16, 17, 26, 27, 29, 30 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (In situ alignment of graphene nanoplatelets in poly(vinyl alcohol) nanocomposite fibers with controlled stepwise interfacial exfoliation) in view of Chien (Polyacrylonitrile Fibers Containing Graphene Oxide Nanoribbons), as applied to claims 11-15, 18-21, 23, 28 above, and in further view of Kumar (US 2010/0272978).
As to claim 16, Xu does not explicitly state the weight ratio of the PAN to the graphene nano materials is 1:15 to 15:1.
Kumar teaches a method of preparing PAN-CNT fiber [abstract] wherein the 2nd solution further comprises PAN [0075, 0076, Fig 4] as this had proven successful at forming graphene carbon fiber [0079]. In other words, temperature and duration of the oxidation step is results effective variable on density and other mechanical properties. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have set the PAN to graphene in an overlapping range 1:15 to 15:1, as suggested by Kumar, in order to obtain the desired density and mechanical properties.
As to claim 17, Xu does not explicitly state the weight ratio of the PAN to the graphene nano materials is 1:15 to 15:1.
Kumar teaches a method of preparing PAN-CNT fiber [abstract] wherein the weight ratio of the PAN to the graphene is 1:15 to 15:1 [0075, 0076] as this had proven successful at forming graphene carbon fiber [0079]. In other words, temperature and duration of the oxidation step is results effective variable on density and other mechanical properties. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have set the PAN to graphene in an overlapping range 1:15 to 15:1, as suggested by Kumar, in order to obtain the desired density and mechanical properties.
As to claims 26 and 27, Xu does not explicitly state wherein carbonizing the stabilized fiber comprises heating to a carbonization temperature of 1250°C and maintaining the carbonization temperature for 10 minutes before cooling, and the heating rate of 5 C/min.
Chien teaches a method of making graphene reinforced carbon fibers [abstract] wherein the fibers are gel spun [Introduction, Conclusion] from PAN solution then subjected to "stabilization in air" in other words oxidation and then carbonized at temperatures near 1250 C: 1200C and 1300 C [3 results and discussion, 2 experimental section]. It would have been obvious to one of ordinary skill in the art at the time of filing the claimed invention to have altered the method of Xu and utilized carbonizing at 1250, as suggested by Chien, as these methods had proven successful at producing carbon fibers of strong mechanical properties by the same gel spinning methods.
Kumar teaches a method of preparing PAN-CNT fiber [abstract] wherein stabilization occurs at 500-1800C and lasts 60 min depending on the size of the part, the exact composition of PAN in order to induce enhanced density and other mechanical properties [0088-0091]. In other words, temperature and duration of the oxidation step is results effective variable on density and other mechanical properties. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have optimized the carbonization step to 1250 C maintaining the carbonization 10 min, rate of 5 C/min, as suggested by Kumar, in order to obtain the desired density and mechanical properties. Moreover, optimization within prior art conditions/routine experimentation is obvious, see MPEP 2144.05 II A.
As to claim 29, Xu teaches DMF as a solvent but does not explicitly state the exact wt% of 15 PAN.
Kumar teaches a method of preparing PAN-CNT fiber [abstract] wherein the 2nd solution further comprises PAN [0075, 0076, Fig 4] with 15% acrylonitrile polymer ie PAN in DMF [0073] and notes 1% nanomaterials with PAN [0115] as this had proven successful at forming graphene carbon fiber [0079]. In other words, temperature and duration of the oxidation step is results effective variable on density and other mechanical properties. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have set the PAN 15 %, 1% graphene nanomaterial in DMF, as suggested by Kumar, in order to obtain the desired density and mechanical properties.
As to claim 30, Xu teaches DMF as a solvent but does not explicitly state the exact wt% of 15 PAN and 1 wt% graphene nanomaterial.
Kumar teaches a method of preparing PAN-CNT fiber [abstract] wherein the 2nd solution further comprises PAN [0075, 0076, Fig 4] with 15% acrylonitrile polymer ie PAN in DMF [0073] and notes 1% nanomaterials with PAN [0115] as this had proven successful at forming graphene carbon fiber [0079]. In other words, temperature and duration of the oxidation step is results effective variable on density and other mechanical properties. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have set the PAN 15 %, 1% graphene nanomaterial in DMF, as suggested by Kumar, in order to obtain the desired density and mechanical properties.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Xu (In situ alignment of graphene nanoplatelets in poly(vinyl alcohol) nanocomposite fibers with controlled stepwise interfacial exfoliation) in view of Chien (Polyacrylonitrile Fibers Containing Graphene Oxide Nanoribbons), as applied to claims 11-15, 18-21, 23, 28 above, and in further view of Knoblauch (US 5489402) in view Verma (Design, Fabrication and Characterization of PVA/Nanocarbon Composite Fibers).
As to claim 22, Xu does not explicitly state providing the second solution to the multiphase spinneret at a first rate of 1 mL/min and providing the first solution and the third solution to the multiphase spinneret at a second rate of 2 mL/ min.
Xu teaches wherein a diameter of the inner layer of the coaxial composite fiber is in a range of about 20 microns to about 80 microns, a thickness of the middle layer of the coaxial composite fiber is in a range of about 20 microns to about 10 microns, and a thickness of the outer layer of the coaxial composite fiber is in a range of about 10 microns to about 50 microns. However, thickness is tuned by draw ratio and spinneret channel size which influences both alignment degree and modulus[Electrical conductivity of the 3-phase fiber, the relationship between GNP weight ratios and draw ratios, Mechanical performance]. It is well settled that the determination of the optimum value of a result effective variable, in this case layer thickness, is within the skill of one practicing art, see MPEP § 2144.05 II.
Knoblauch teaches a method of making a multilayer plastic sheet [Abstract] wherein the flow rates are controlled to obtain the desired thickness of the individual layers [col 2 line 12-45, col 1 line 6-22, col 3 line 50-col 4 line 23, claim 1]. It is well settled that the determination of the optimum value of a result effective variable, in this case flow rate, is within the skill of one practicing art, see MPEP § 2144.05 II. It would have been obvious to one of ordinary skill in the art to optimize the flow rates of the different layers, as suggested by Knoblauch, in order to obtain the desired layer thicknesses.
Verma teaches a method of making a 3 layer composite fiber [abstract] wherein the inner and outer layers are delivered at a faster rate than the middle layer containing graphene nanoplatelets and notes that PVA and PAN polymer can be used [Table 8, Page 22-page 23, 2.2.2 spinneret injection]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of Xu and utilized a flow rate of the middle layer with the nanomaterials lower than then inner and outer layers, as suggested by Verma, as this had proven successful at creating a 3 layer composite fiber.
Conclusion
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/ARMAND MELENDEZ/Primary Examiner, Art Unit 1759
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