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 .
Response to Arguments
Applicant's arguments filed 11/20/25 have been fully considered but they are not persuasive to the extent that they apply to the current rejection. Applicant argues that Kumar does not teach a coaxial structure. The bicomponent core and sheath fiber of Kumar is a coaxial fiber albeit not in 3 layers; Kumar does teach configurations that would meet the 3 layer order presented by the claim (Fig 3, Fig 4) and thus combining the multiple layers embodiment and the core and sheath embodiments to create a coaxial fiber is arguably just a rearrangement in part, see MPEP 2144.04. Furthermore, Wei suggested a coaxial configuration as these materials had proven successful at providing a coaxial fiber with good conductivity for microelectronics. Applicant argues that Wei does not discuss graphene nanoplatelets, but Kumar notes that graphite sheets (ie graphene nanoplatelets) are interchangeable with CNTs like those in Wei. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant argues that Kumar does not teach the aligned nanomaterials, but this is disclosed by Kumar II.
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 11-20 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar (US 2010/0272978) in view of Wei (CN 110211729) and Kumar (US 9771669) referred to Kumar II.
As to claim 11, Kumar teaches a method of forming the coaxial composite fiber of claim 1, the method comprising: forming a coagulated gel precursor fiber by extruding a multiplicity of solutions through a multiphase spinneret through an air gap and into a solvent [0106], wherein the coagulated gel precursor fiber comprises: drawing the coagulated gel precursor fiber to yield a drawn precursor fiber [0062, 0065, Fig 1, 2]; oxidizing the drawn precursor fiber to yield a stabilized fiber [0062, 0065 the stabilizing step involves oxidation 0088, claim 9, Fig 1, 2]; and carbonizing the stabilized fiber to yield the coaxial composite fiber [0062, 0065, Fig 1, 2]. The coaxial fiber comprising a middle layer of PAN saturated with graphite sheets which would meet graphene platelets [0017-0019]. Kumar teaches drawing the PAN fiber at 150 and 170 C which is above its Tg [0107]
Kumar does teach a layer of CNT/PAN sandwiched by an inner layer and outer layer comprise of the same material [the layer by layer embodiment Fig 2] but does not explicitly state the fiber comprises an inner layer comprising polyacrylonitrile; a middle layer comprising graphene nanomaterials, wherein the graphene nanomaterials comprise graphene nanoplatelets, graphene nanochips, and an outer layer comprising polyacrylonitrile in a coaxial arrangement.
Wei teaches a method of making a coaxial fiber wherein solutions are prepared each corresponding to a respective layer [page 3] including a middle layer comprising graphene nanomaterials, wherein the graphene (phrased as “graphite alkene”) nanomaterials comprise graphene nanoplatelets, graphene nanochips, [Page 3, step 3 conductive layer spinning liquid, page 4, claim 6] and additionally notes in some embodiments that the conductive layer may comprises PAN as well [page 6 example 2 step 3, page 7 paragraph after step 7 suggests using graphene with the PAN] corresponding to layer (13, 23), and an outer layer comprising polyacrylonitrile corresponding to layer (14, 24) [Page 2, step 4 insulating coating spinning liquid, claim 7]. These are made into a 6 layer coaxial fiber with alternating conductive and insulating layers [Fig 1, 2]. While the additional 2 layers (1 conductive, one nonconductive) are not labeled they would presumably be made of the same material solutions previously discussed in the reference and thus would result in a structure of an inner layer made of polyacrylonitrile (24), a middle layer made of acrylonitrile and CNT (unmarked layer on 24), and a layer of polyacrylonitrile (the outermost layer). This method provides a coaxial fiber suitable for microelectronics with good conductivity [abstract]. 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 Kumar and utilized a 3 layer structure wherein a middle layer of PAN and graphene nanomaterials was sandwiched by 2 layers of PAN created by each layer being made from a separate solution, as suggested by Wei, as these materials had proven successful at providing a coaxial fiber with good conductivity for microelectronics. Additionally, there were a finite number of identified materials suggested by Wei and they had demonstrated success at providing a coaxial fiber it would have been obvious to try an arrangement 3 PAN layers with the middle layer comprising nanomaterials as Wei suggested using PAN in both the conductive and insulating layers and even suggested including additional conductive and insulating layers, see MPEP 2143 I E.
Kumar does not explicitly state that the graphite sheets are aligned but does teach gel spinning as explained above.
Kumar II (same inventor as primary reference) 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 Kumar and aligned the nanomaterials, as suggested by Kumar II, in order to create better stabilized fibers.
As to claim 12, the combination of Kumar and Wei teach the multiplicity of 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 as explained above.
As to claim 13, the combination of Kumar and Wei teach first solution and the third solution comprise polyacrylonitrile as explained above.
As to claim 14, the combination of Kumar and Wei teach first solution and the third solution are the same (ie composed of the PAN solution suggested by Wei) as explained above.
As to claim 15, Kumar teaches the second solution comprises graphene nanomaterials [0075, 0076].
As to claim 16, Kumar teaches the second solution further comprises polyacrylonitrile [Fig 4].
As to claim 17, Kumar 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.
As to claim 18, Kumar teaches all the solutions comprise dimethylformamide (DMF) [0069, 0104, 0105].
As to claim 19, Kumar teaches the solvent comprises methanol [0106].
As to claim 20, Kumar teaches drawing the PAN fiber at 150 and 170 C which is above its Tg [0107].
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 ARMAND MELENDEZ whose telephone number is (571)270-0342. The examiner can normally be reached 9 AM- 6 PM Monday-Friday.
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/ARMAND MELENDEZ/Primary Examiner, Art Unit 1759