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 12/04/2022 claims, is as follows: Claims 1-17 have been canceled; Claims 18-37 have been added; and Claims 18-37 are pending.
Information Disclosure Statement
The (3) information disclosure statements (IDS) submitted on 06/11/2023, 02/17/2023, and 02/08/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement are being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 31, 33, 35, 37, 39, 41, and 43 shown in fig. 3. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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 Objections
Claims 18-37 are objected to because of the following informalities:
In claim 18:
The phrase “an aircraft surface” in line 3 should be read “the aircraft surface”.
The phrase “at least two heater cells” in line 7 should be read “the at least two heater cells” because it is presumed that the “at least two heater cells” refers to the array of CNT heater cells in line 1.
The phrase “each heater cell” in line 8 should be read “each of the heater cells”.
The phrase “a pair of electrodes” in line 8 should be read “a pair of the electrodes”
The phrase “a CNT layer” in lines 8-9 should be read “the CNT layer”.
In claim 28:
The phrase “electrodes” in line 2 should be read “the electrodes”.
In claim 31:
The phrase “an adhesive” in lines 2-3 should be read “the adhesive” because it is presumed to have antecedent basis in line 4 of claim 18.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 21:
The limitation “further comprising depositing the heat spreading layer onto the mask and electrodes” is not supported in the published specification. Para. 0070 of the specification states “a heat spreading layer can be applied under and/or over the heater cells, when the mask is not present. The heat spreading layer may be applied over top of the heater array by fabricating the heater array, removing the mask, coating with a mist coat of solvent-based epoxy, and then by wrapping a fibrous non-woven veil over the array”. In other words, the step of depositing the heat spreading layer onto the CNT array occurs when the mask is not present. There is no description that discloses depositing the heat spreading layer onto the mask.
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 21, 26-27, 31-32, and 34 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 pre-AIA the applicant regards as the invention.
In claim 21:
The limitation "further comprising depositing the heat spreading layer onto the mask and electrodes” renders the claim indefinite because according to claim 18, the mask is removed to form the heater cells and according to para. 0070 of the published specification, the heat spreading layer is applied under and/or over the heater cells, when the mask is not present. The limitation is unclear because the mask has been removed to form the heater cells and how can the heat spreading layer is applied onto the mask that has already been removed?
For the purpose of substantive examination, it is presumed to read “further comprising depositing the heat spreading layer onto the electrodes”.
In claim 26:
The limitation "more preferably 100 µm or less” renders the claim indefinite because it is unclear whether the limitation following “more preferably” is part of the claimed invention. See MPEP § 2173.05(d).
For the purpose of substantive examination, the limitation “more preferably 100 µm or less” will be examined as a claim feature that is optionally met by the prior art.
In claim 27 (similarly applying to claims 31-32, and 34):
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.
In claim 32:
The limitation "an insulating epoxy” in line 2 renders the claim indefinite because it is unclear what “insulating” means? Does it refer electrically insulating or something else? However, according to the published specification of the instant application, para. 0051 and 0053, it is stated that the “insulating epoxy” refers to the electrical interface material 4; fig. 2 that connects the electrode 5 and the CNTs. The “insulating epoxy” is the transition material that is a conductive adhesive, such as silver epoxy.
For the purpose of substantive examination, it is presumed that the limitation means “an electrical conductive epoxy”. It is suggested to use a claim term that is consistent with the term in the specification i.e. transition material.
In claim 34:
The limitation "the amount of structural adhesive is metered” in line 1 renders the claim indefinite because it is unclear how this is accomplished? Is a sensor (not disclosed) being used to measure the amount of structural adhesive, or something else?
For the purpose of substantive examination, it is presumed to read “the material of the structural adhesive is chosen to prevent spreading of the adhesive past the leads.”
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 36-37 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; fig. 3) on an aircraft surface (substrate that is a part of airplane i.e. wing) (p. 1, 10 lines 10-15, 21-23 respectively), comprising:
providing an 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 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 heater cell (each CNT) comprises a pair of electrodes (first and second leads; figs. 3) in electrical contact with a CNT layer (CNT) that is disposed between a pair of 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, 4 lines 7-12, 1-7 respectively).
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 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), 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).
Claims 19-21 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.
Regarding Claim 21, the modification discloses further comprising depositing the heat spreading layer (layer 22 of Rutherford) onto the electrodes (leads of Heintz) (it is noted the feature would be present based on claim 20 because the electrodes of Heintz is adhesively attached to the surface of the aircraft and the layer 22 is applied on the surface).
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 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 an insulating 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 an insulating epoxy (conductive adhesive as interpreted by 112b above) (para. 0034. It is noted the conductive 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 conductive 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 34 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 33, further in view of Jang (US 20120228560)
Regarding Claim 34, the modification discloses substantially all of the claimed features as set forth above, except the amount of structural adhesive is metered to prevent spreading of the adhesive past the leads.
However, Jang discloses the thixotropic agent is used as the adhesive because it improves wetting property, wettability, and thixotropy and enables the adhesive to be hardened quickly (para. 0069).
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 structural adhesive of Heintz to include thixotropic agent as taught by Jang, which is known to be hardened quickly. According to the published specification of the instant application, para. 0052, it is stated that the “preferred adhesives are thixotropic, to prevent wicking onto the lead, and selected so that curing temperature is compatible with substrates.”. It is noted that prior art teaches all the structure limitation of the claim already, and when the structure recited in the reference is substantially identical to that of the claim, claimed properties or functions are presumed to be inherent (see MPEP 2112.01). In this case, the thixotropic of Jang would be expected to prevent the spreading of the adhesive past the leads because it is hardened quickly.
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.
Conclusion
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.
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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
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