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 .
The status of the 07/24/2026 claims, is as follows: Claims 18, 26, 28, and 31-32 have been amended; Claim 38 has been added; Claims 1-17, 21, 34 have been canceled; and Claims 18-20, 22-33, 35-38 are pending.
It's noted that Per 37 CFR 1.121, section "(c)," - "In the claim listing, the status of
every claim must be indicated after is claim number by using one of the following
identifiers in a parenthetical expression (Currently amended) (Canceled)…"
Claims 28 and 31 are given the status identifier, "(currently amended)” but no amendments have been provided, so for the record, these claims are taken as being (previously presented).
Claim Objections
Claims 28-30, 31, and 36 are objected to because of the following informalities:
In claim 28 (similarly applying to claims 29 and 30):
The phrase “electrodes” in line 2 should be read “the electrodes” because it is presumed to have antecedent basis in line 4 of claim 18 that recites “pairs of electrodes”.
In claim 31:
The phrase “an adhesive” in line 3 should be read “the adhesive” because it is presumed to have antecedent basis in line 4 of claim 18 that recites “an adhesive”.
Appropriate correction is required.
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 27 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 pre-AIA the applicant regards as the invention.
In claim 27 (similarly applying to claims 31-32):
The limitation "passing leads through the aircraft surface" renders the claim indefinite because it is unclear if the “leads” is intended to refer to the electrodes previously recited in claim 18. Throughout the published specification, at least para. 0022 and 0017, it appears that the “leads” are the same thing as the “electrodes”.
For the purpose of substantive examination, it is presumed to read “passing the electrodes through the aircraft surface”.
In claim 31:
The limitation "the substrate” in line 2 renders the claim indefinite because it lacks an antecedent basis.
For the purpose of substantive examination, it is presumed that it refers to the aircraft surface.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 18, 25-31, 33, and 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Heintz (WO 2012068424) in view of Wang (US 20110155713)
Regarding Claim 18, Heintz discloses a method of making an array of CNT heater cells (plurality of separated rows of CNTs) on an aircraft surface (substrate that is a part of airplane i.e. wing) (p. 4, 1, 10 lines 4-7, 10-15, 21-23 respectively), comprising:
providing the aircraft surface (substrate) (“the substrate is an airplane or part of an airplane such as a wing”, p. 10, lines 21-24);
attaching pairs of electrodes (first and second leads; fig. 3) to the aircraft surface (substrate) (p. 5, lines 28-30);
placing a mask (mask) over a portion of the surface (substrate) between the pairs of electrodes (leads) (p. 4, lines 3-6);
spraying a layer of CNTs (depositing a layer of CNTs) over the mask (p. 4, lines 4-7); and
removing the mask (removing the strips of masking material) to form the at least two heater cells separated by a region with no CNTs (plurality of separated rows of CNTs) (p. 4, lines 4-7; fig. 3); where each of the heater cells (each CNT) comprises a pair of electrodes (first and second leads; figs. 3. It is noted fig. 3 shown below is used to indicate that each of the CNTs comprises the pair of electrodes to energize the individual CNT) in electrical contact with the CNT layer (CNT) that is disposed between a pair of the electrodes (first and second leads) (p. 5, 4, lines 27-30, 1-7 respectively).
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Heintz does not disclose the method comprising:
attaching the pairs of electrodes to the aircraft surface with an adhesive, and
spraying a layer of CNTs (depositing a layer of CNTs) over the electrodes
However, Heintz discloses in another embodiment the method comprising attaching the pairs of electrodes (leads) to the aircraft surface (substrate) prior to applying carbon nanotube layer onto the substrate (p. 6 lines 7-12).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Heintz to attach the pairs of electrodes to the surface as a film coating prior to the application of CNT layer as taught by further embodiment of Heintz, in order to eliminate the need for bulky leads which can interfere with the aerodynamics of the wing and increase the probability for damage because the leads protrude from the substrate (p. 6, lines 7-12).
The modification would result in the step of spraying a layer of CNTs (depositing a layer of CNTs) over the electrodes (electrodes) (col. 4, lines 1-7) because the electrodes would have been attached to the substrate prior to the application of the CNT layer.
The modification does not disclose the step of attaching the pairs of electrodes to the aircraft surface with an adhesive.
However, Wang discloses an adhesive layer 17 is used to fix carbon nanometer film 16 on the substrate 18 (para. 0020).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Heintz to include the step of attaching the pairs of electrodes to the surface using the adhesive as taught by Wang, in order to incorporate known technique (i.e. using the adhesive to attach the pairs of electrodes to the aircraft surface) to a known device (heater for defrost window) to yield predictable result, which is securely fix the electrodes to the surface via the adhesive.
Regarding Claim 25, Heintz discloses a method, wherein the aircraft surface (substrate) is part of an existing aircraft (p. 10, lines 21-22).
Regarding Claim 26, Heintz discloses the method further comprising depositing a protective layer (protective layer) after the step of removing the mask (p. 5, 4 lines 28-29, 1-7 respectively).
The modification does not disclose the protective layer having a thickness of 500 µm or less.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the protective layer to have the thickness of 500 µm or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The motivation is to ensure the CNT heater cells are effectively protected from the environment.
Regarding Claim 27, Heintz discloses the surface (substrate which is part of aircraft) comprises apertures (holes) for passing leads (leads) through the aircraft surface (p. 20, 10 lines 9-10, 21-24 respectively).
Regarding Claim 28, Heintz discloses the method further comprising scuffing the surface (scuff the surface) prior to the step of attaching electrodes (p. 16, 6 lines 14-16, 7-14 respectively).
Regarding Claim 29, Heintz discloses the method further comprising wiping the surface (surface) with a solvent (solvent) prior to the step of attaching electrodes (p. 16, 6 lines 19-25, 7-14 respectively).
Regarding Claim 30, Heintz discloses the method further comprising Corona treating (corona discharge treating the surface) the surface prior to the step of attaching electrodes (p. 16, 6 lines 29-35, 7-14 respectively).
Regarding Claim 31, Heintz discloses the method, wherein the leads (leads) were placed in parallel (fig. 3 is used to indicate that each of the CNTs comprises the pair of electrodes to energize the individual CNT), and attached to the substrate (substrate) with an adhesive (based on rejection to claim 18, the leads are attached to the substrate via the adhesive of Wang).
The modification does not disclose the leads are between 2 in to 3.5 in in length, and spaced between 1.5 in to 2.5 in apart.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the leads such that they are between 2 in to 3.5 in in length, and spaced between 1.5 in to 2.5 in apart, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The motivation is to ensure they can effectively direct electrical current from a power supply to the array of the PCT heater cells.
Regarding Claim 33, Heintz discloses the method comprising attaching the electrodes (first and second leads; fig. 3) to the surface (substrate) (p. 5, lines 28-30).
The modification does not disclose the step of attaching the electrodes to the surface with a structural adhesive.
However, Heintz further discloses a structural adhesive is utilized to attach the laminating heater to the substrate (p. 6, lines 20-24).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the step of attaching the electrodes to the surface of Heintz with the structural adhesive as further taught by Heintz, in order to permanently secure the electrodes to the surface of the aircraft such that the electrodes do not flap during flight for example.
Regarding Claim 36, Heintz discloses the method wherein the scuffing (scuffing) is performed mechanically using a rough surface (Scotch Brite scouring pad) (p. 20, lines 16-17).
Regarding Claim 37, Heintz discloses the method further comprising curing the array after removal of the mask (p. 6, 4 lines 14-19, 1-7 respectively).
Regarding Claim 38, Heintz discloses the method further comprising depositing a protective layer (protective layer) after the step of removing the mask (p. 5, 4 lines 28-29, 1-7 respectively).
The modification does not disclose the protective layer having a thickness of 100 µm or less.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the protective layer to have the thickness of 100 µm or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The motivation is to ensure the CNT heater cells are effectively protected from the environment.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over the modification of Heintz (WO 2012068424) and Wang (US 20110155713) as applied to claim 18, further in view of Rutherford (US 6330986)
Regarding Claim 19, the modification discloses substantially all of the claimed features as set forth above, except comprising depositing a heat spreading layer on the aircraft surface prior to the step of placing the mask on the surface.
However, Rutherford discloses the method comprising depositing a heat spreading layer (layer 24) on the aircraft surface (aircraft surface) (col. 9, lines 17-22; figs. 4-5).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Heintz to deposit the heat spreading layer on the aircraft surface as taught by Rutherford, in order to effectively distribute heat from the CNT layer to the surface of the aircraft to prevent ice formation. The modification would result in the method, wherein the step of depositing the heat spreading layer (layer 24 of Rutherford) on the surface (substrate of Heintz) prior to the step of placing the mask on the surface because the layer 24 would have been applied to the surface before the step of forming the CNT layer on the surface which includes: the step of masking the surface, depositing the CNT layer on the surface, and the removing the mask.
Regarding Claim 20, the modification discloses substantially all of the claimed features as set forth above, except comprising depositing a heat spreading layer over the aircraft surface after the step of placing the mask.
However, Rutherford discloses the method comprising depositing a heat spreading layer (layer 22) over the aircraft surface (aircraft surface) after the step of forming the foil layer 20 (col. 8, lines 56-64).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Heintz to deposit the heat spreading layer (layer 22) on the aircraft surface (surface aircraft) as taught by Rutherford, in order to effectively distribute heat from the CNT layer to melt the accumulated ice on the aircraft surface. The modification would result in the method, wherein the step of depositing the heat spreading layer (layer 22 of Rutherford) on the surface (substrate of Heintz) after the step of placing the mask on the surface because the layer 24 would be applied to the surface after the step of forming the CNT layer on the surface which includes: the step of masking the surface, depositing the CNT layer on the surface, and the removing the mask.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Heintz (WO 2012068424), Wang (US 20110155713), and Rutherford (US 6330986) as applied to claim 19, further in view of Takada (US 20110287173)
Regarding Claim 22, the modification discloses substantially all of the claimed features as set forth above, wherein the heat spreading layer (layer 24 of Rutherford) is applied to the surface (substrate of Heintz).
The modification does not disclose the heat spreading layer is applied to the surface by coating the surface with a coat of solvent-based epoxy.
However, Takada discloses solvent-based epoxy (solvent type epoxy) is utilized to laminate a protective film on a polarizer (para. 0089).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Heintz in view of Wang and Rutherford to attach the heat spreading layer of Rutherford to the surface by coating the surface with the coat of solvent-based epoxy as taught by Takada, in order to securely attach the heat spreading layer to the surface of the aircraft using the solvent-based epoxy.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over the modification of Heintz (WO 2012068424) and Wang (US 20110155713) as applied to claim 18, further in view of Brittingham (US 20080166563)
Regarding Claim 23, the modification discloses substantially all of the claimed features as set forth above, except further comprising wrapping a fibrous non-woven veil over the array.
However, Brittingham discloses the step of wrapping a fibrous non-woven veil (carbon fiber layer) over the electrically conductive layer 120 (para. 0052. It is noted according to published specification of the instant application para. 0021, it states that the fibrous non-woven veil made of carbon fiber or nickel coated carbon fiber).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Heintz in view of Wang to include the step of wrapping a fibrous non-woven veil over the array of the CNT heater cells as taught by Brittingham, in order to enhance heat transfer from the CNT heater cells to the aircraft surface to prevent ice formation (para. 0055 of Brittingham).
Regarding Claim 24, the modification discloses the method further comprising applying an epoxy layer (urethane topcoat of Heintz) over the veil (carbon fiber layer of Brittingham) (p. 8, 21 lines 25-30, 1-4 respectively of Heintz).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Heintz (WO 2012068424) and Wang (US 20110155713) as applied to claim 18, further in view of Feng (US 20140124495)
Regarding Claim 32, the modification discloses substantially all of the claimed features as set forth above, except the interface between the leads and CNT heaters has a smooth transition created by applying a silver epoxy.
However, Feng discloses the interface between the leads (electrodes 12 and 14) and CNT heaters (carbon nanotube film 16) has a smooth transition created by applying a silver epoxy (silver adhesive) (para. 0034. It is noted the silver adhesive allows for smooth transition between the electrodes and CNT film 16 to deliver smooth transition of electrical current from the electrodes to the CNT film to energize the film).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Heintz in view of Wang to apply the silver adhesive between the leads and the CNT heaters, in order to secure the leads to the CNT heaters and enable electrical connection between the leads and the CNT heaters such that the CNT heaters are energized.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Heintz (WO 2012068424) and Wang (US 20110155713) as applied to claim 18, further in view of Brigham (US 4429216)
Regarding Claim 35, the modification discloses substantially all of the claimed features as set forth above. Heintz discloses the electrodes are connected to CNT layer (p. 5, line 29).
The modification does not disclose applying a conductive polymer onto the electrodes.
However, Brigham discloses the electrodes can be bonded to the conductive layer using an electrically conductive adhesive, such as an adhesive comprising an epoxy or polyester resin containing conductive particles such as graphite, carbon black or powdered metal (col. 6, lines 4-7). In other words, Brigham discloses the step of applying a conductive polymer (electrically conductive adhesive) onto the electrodes (electrodes).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Heintz to include the step of applying the conductive polymer onto the electrodes as taught by Brigham, in order to securely attach the electrodes to the CNT array and enable a secure electrical connection via conductive adhesive i.e. conductive polymer.
Response to Amendment
With respect to drawing objections: since updated specification has been provided, therefore drawing objections are withdrawn.
With respect to claim objections: since amendments to the claims, therefore claim objections are withdrawn.
With respect to 112a rejections: since amendment to claim 21, therefore 112a rejections are withdrawn.
With respect to 112b rejections: since amendments to the claims, therefore 112b rejections are withdrawn.
Response to Argument
Applicant's arguments filed on 07/24/2026 have been fully considered but they are respectfully not persuasive because:
Applicant’s Arguments: with respect to claim 18 on p. 10-12 of the Remarks “The rejection reaches claim 18 only by selecting individual features from three separate
embodiments of Heintz and rearranging Heintz's assembly order, and it does so without the articulated reasoning with a rational underpinning that an obviousness conclusion requires. Claim 18 forms and separates the heater cells with a mask: pairs of electrodes are attached
to the aircraft surface, a mask is placed over the region between the pairs, a layer of CNTs is
sprayed over the electrodes and the mask, and the mask is removed to leave heater cells separated by regions having little or no CNTs. The Office Action assigned the "array of CNT heater cells" and "pairs of electrodes" to Fig. 3 of Heintz. (Office Action at 8-9.) But Fig. 3 forms and separates its rows by an entirely different mechanism: it is the grooved, embossed-polymer embodiment, in which the CNT dispersion settles down into physical grooves and the electrical leads are seated in flat channels running perpendicular to the grooves. Masking and grooving are alternative, independent ways of producing separated rows in Heintz-the masking method is described separately (Heintz at 4) and does not employ a grooved substrate.
Once a mask defines and separates the cells, the grooves of Fig. 3 serve no purpose that
the mask is not already serving; they are surplusage. Nothing in Heintz suggests beginning from
the grooved embodiment and then adding a mask on top of it, and the Office offers no reason for
that choice. A person of ordinary skill setting out to practice the claimed masked-cell method
would use an ordinary flat surface. The rejection's decision to build the claimed method on the
grooved Fig. 3 substrate is unexplained.
The motivation the Office Action articulates is untethered from the combination it asserts.
The Office's reason for attaching the electrodes first and spraying the CNTs over them eliminating bulky leads that interfere with the aerodynamics of the wing-is drawn from a
different Heintz embodiment: the flat, roll-coat process described at page 6, in which the leads are printed on a base film and a continuous CNT layer is applied with no mask at all. (Heintz at 6.) That passage supplies a reason to print leads on a flat film; it supplies no reason to graft the separate masking method onto the grooved substrate, nor to overcoat electrodes seated in the channels of that substrate. The stated rationale thus does not correspond to the modification actually proposed.
To arrive at claim 18 the rejection takes the array and electrodes from the grooved Fig. 3
embodiment, the mask-and-remove steps from the masking embodiment (Heintz at 4), and the
leads-first, spray-over sequence from the flat roll-coat embodiment (Heintz at 6), and assembles
these three separate and unconnected teachings in an arrangement that appears nowhere in Heintz. There is no proper motivation to make this combination. The only motivation for that particular selection and ordering is Applicant's own claim. That is impermissible hindsight reconstruction rather than the reasoned analysis the Office must supply. KSR, 550 U.S. at 418; MPEP § 2142.
The absence of any reason to begin from the grooved substrate is underscored by the
practical mismatch between that substrate and the claimed process. If a grooved substrate is used, then masking is superfluous because the tops of the grooves are wiped clean in Heintz' process. Conversely, if masking is used, then disposing electrodes in dedicated flat channels machined across the grooves is a superfluous fabrication step that a masked-cell method neither needs nor uses. Alternatively, if the electrodes are adhered directly across the grooves and the CNTs are sprayed over them, the electrodes shade the groove segments beneath and disrupt the continuous CNT rows on which the grooved structure depends (Heintz at 7), and they obstruct removal of the excess dispersion from the peaks that Heintz requires to remain bare (Heintz at 7, 18). On either approach the grooved substrate contributes nothing but added complication, confirming that a person of ordinary skill would have had no reason to select it as the starting point.”
Examiner’s Responses:
The applicant’s arguments that the rejection of claim 18 is reached by selecting individual features from three separate embodiments and rearranging the Heintz’s assembly order and it does so without articulated reasoning, are respectfully not persuasive. The embodiment is relied upon is the feature of “a first step of placing strips of a masking material over the polymeric substrate; a subsequent second step of depositing a layer of CNTs; and a third step of removing the strips of masking material to result in plurality of separated rows of CNTs disposed on the polymeric substrate.” p. 4, lines 1-7. Fig. 3 depicted is merely utilized to show the plurality of separated rows of CNTs formed with the pair of the electrodes is electrically connected to the individual CNT. There is no paragraph used in the rejection that points to the grooved substrate and the separated rows CNT’s are formed within the groove. Reference paragraphs provided in the rejection are consistent with the embodiment relied upon, as described in p. 4, lines 1-7. For example, the method of attaching the electrodes to the substrate (p. 5, lines 28-30) of Heintz is applicable to the grooved substrate (first embodiment) and the substrate using the mask to form the separated rows of CNTs (second embodiment).
The embodiment relied upon of Heintz does not disclose the spraying the CNT’s over the electrode.
However, the other embodiment (third embodiment) discloses attaching the electrodes to the substrate prior to the application of the CNT layer on the substrate (p. 6, lines 7-12).
One of ordinary skill in the art would be motivated to attach the pair of the electrodes to the substrate as the film coating prior to the application of CNT layer over the substrate, in order to eliminate the need for bulky leads which can interfere with the aerodynamics of the wing and increase the probability for damage because the leads protrude from the substrate (p. 6, lines 7-12). The modification would result in the step of spraying a layer of CNTs (depositing a layer of CNTs) over the electrodes (electrodes) (col. 4, lines 1-7) because the electrodes would have been attached to the substrate prior to the application of the CNT layer.
The modification does not disclose attaching the electrodes to the substrate by means of adhesive. However, Wang discloses it is known to attach nanometer film 16 onto the substrate using adhesive layer 17 (para. 0020).
One of ordinary skill in the art would be motivated to attach the electrodes to the substrate using the adhesive because it is conventionally known to use adhesive to attach two components together.
It is Examiner’s position that rejection is relied upon the only one embodiment in which the substrate is covered with mask that results in the separated rows of CNT’s being formed on the substrate. Fig. 3 is only used to depict the separated rows of CNT’s formed and the pair of the electrodes is connected to the individual CNT (there is no reference being made in the rejection regarding the grooved substrate). The other embodiment (third embodiment) is relied upon for the feature of the electrode is printed on the substrate prior to the application of CNT layer, for the motivation to eliminate the bulkiness of the electrodes which can interfere with aerodynamics of the aircraft and increase the probability for damage because they protrude from the surface. The modification would result in the method, in which the spraying the CNT over the electrodes because the electrodes would have been attached to the substrate prior to the application of the CNT layer.
Applicant’s Arguments: with respect to claim 33 on p. 13 of the Remarks
“The Office Action points to Heintz at page 6, lines 20-24. That passage, however, describes attaching the completed laminate heater to the part to be heated: a structural adhesive such as epoxy is offered there as a more permanent field installation in place of the pressure-sensitive adhesive. Unlike the claimed invention, the adhesive is not "attaching the electrodes to the surface" but, rather, is disposed on the side of the substrate opposite the CNT layer and the electrodes and its function is to mount the finished device-not to fix electrodes to the surface prior to application of the CNT layer.
There is no reason, articulated in the rejection or found in the cited references to modify
Heintz by using Heintz's structural adhesive to secure individual electrodes to the surface before
the CNT layer is applied. The motivation stated by the Office-securing the electrodes so that they
do not flap during flight-is not found in Heintz. The rejection thus rests upon impermissible
hindsight rather than reasoning with a rational underpinning. SeeKSR, 550 U.S. at 418. Wang does not supply the missing teaching, as its adhesive fixes the CNT film to the substrate rather than the electrodes.”
Examiner’s Responses:
With respect to claim 33, the applicant’s argument is not respectfully found persuasive because the rejection is made based on the combination.
Based on the current embodiment in which the substrate is covered with masks, Heintz discloses the method of attaching the electrodes to the surface/substrate (p. 5, lines 28-30).
However, Heintz does not disclose attaching the electrodes to the substrate with the structural adhesive.
However, structural adhesive is conventionally known to attach two components together for permanent installation (p. 6, lines 20-24).
One of ordinary skill in the art would be motivated to use the structural adhesive to attach the electrodes to the substrate as it is conventionally known in the art to securely adhere the electrodes to the substrate such that the electrodes would not become loose during flight. “a more permanent installation” in p. 6, lines 20-24 implies strong adhesion between the two components. Therefore, the electrodes are strongly adhered to the substrate so they would not flap during flight.
For the above reasons, the rejections to all of the claims are respectfully sustained by the Examiner.
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 extension fee 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 BONITA KHLOK whose telephone number is (571)270-7313. The examiner can normally be reached on M-F: 9:00am-6pm.
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, IBRAHIME ABRAHAM can be reached on (571) 270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BONITA KHLOK/ Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/ Supervisory Patent Examiner, Art Unit 3761
