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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-24, drawn to polymer composition, classified in C08K 3/041.
II. Claims 25-28, drawn to an electronic device, classified in G01S 7/028.
III. Claims 29-33, drawn to camera module, classified in G03B 17/12.
Inventions I and II or III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case polymer composition can be utilized as a composite to make non-electronic parts. For example, the articles may include tubular members such as pipes, hoses and fibers which are crosslinked and have excellent physical properties in extreme temperatures (See US 2013/0273290).
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The structural components for electronic device such as radar device comprising electronic housing, shield, antenna and radome are very distinct from the composition claims which would pose burden on the search as evidenced by classification.
The structural components for camera module comprising housing, one or more lenses, wherein lens module contains lens barrel coupled to a lens holder, wherein barrel can receive one or more lenses are very distinct from chemical composition and would also pose burden on the search as evidenced by classification above.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Liam Chris on September 9, 2025 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-24. Affirmation of this election must be made by applicant in replying to this Office action. Claims 25-33 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Interpretation
Instant claim 1 is directed to a composition that includes carbon nanostructures dispersed within polymeric matrix, optionally disposed on a substrate. Recitation on of a substrate with claimed composition disposed onto it is viewed as non-limiting for following reasons: 1) substrate is not part of the claimed composition and 2) composition disposed on the substrate is considered a laminate which is another type of an article and not a composition as claimed.
Claim 18 is directed to carbon nanostructures which include a substrate on which the carbon nanotubes are infused. Similarly, to claim 1, this claim is non-limiting since substrate on which carbon nanotubes are disposed is not part of the composition. This claim will further be rejected under 112 due to lack of consistency with the specification.
Claims 19 and 20 define substrate that is not part of the composition as such the claims while definite are non-limiting.
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.
Claims 1-24 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites term “carbon nanostructures” which contain carbon nanotubes. According to [0004] of instant specification carbon nanostructures are dispersed in polymeric matrix as depicted in Figures 1A-1C. the same paragraph also states that the carbon nanotubes are arranged in a network having web-like morphology wherein Figure 2 defines carbon nanostructure flake. This description is contradictory with the scope of the claims. Specifically when the applicants further define carbon nanostructures as comprising substrate with which the carbon nanotubes are infused (claims 18-20). The claims are further confusing when the substrate is defined in the specification [0047] as fabric, tow, fibers, yarn, sheet, tape belt etc.… Fibers listed include glass fibers such as E-glass, S-glass, D-glass, polymeric fibers, metals carbides and the like. Since claim 1 recites carbon nanostructures, the nanostructures have to comprise carbon and therefore substrate has to also comprise nano carbon which is contrary to the way instant specification defines the substrate. Additionally, the specification failed to describe how such substrates are dispersed in polymeric matrix as required by claim 1. All dependent claims inherit the deficiency of rejected independent claims.
With respect to the definition of web-like morphology instant specification also provides different definition. One explained by figures which show the carbon nanotubes, having random alignment. The second definition inf [0046] of the instant specification attributes web-like morphology due to the ability of carbon nanotubes to grow at a rapid rate which leads to shared walls, branching, crosslinking and the like. However, carbon nanotubes on the substrate are not what is dispersed in claim 1 based on earlier mentioned definition of the substrate.
Claim 1, discloses carbon nanostructures which include carbon nanotubes. Claim 17, which depends on claim 1 states that carbon nanostructures are in the form of a flake material. Carbon nanotubes are not flakes but “fibrils” for lack of better word which have nanosize diameter and a length. Instant specification [0045] states that the form of a flake is obtained once the composition is consolidated and/or coated to increase bulk density. As such the flake shape of the carbon nanostructure is not the structure of the composition itself but the structure of the composition once it is coated. The [0053] provides different definition of a flake but it is a “flake form” not “flake material”. The nanostructures that have flake form include another additives in addition to nanotubes.
The applicants are required to clarify the claim to indicate which definition of flake should be used to interpret the claims. The applicants are further advised that if the definition of flake material is according to [0045] of the instant specification, the claim will be non-limiting because it described consolidation of the carbon nanostructures when coated onto a substrate. As mentioned above substrate is non-limiting because it is not part of the composition.
Instant claim 18 requires for carbon nanostructures to include a substrate on which the carbon nanotubes are infused. Instant specification states that carbon nanostructures contain electrically conductive carbon nanotubes, which are optionally formed or infused onto a substrate [0057] as such it is not clear how carbon nanostructures can include substrate, as the nanostructures are part of the composition comprising thermoplastic polymer and carbon nanotubes and wherein the carbon nanotubes form a web like or a network within polymeric matrix. In [0047] instant specification states that carbon nanotubes and be infused into the fiber by growing the nanotubes from the other surface of the fiber. As such it is not clear how the carbon nanotubes are dispersed in polymer matrix as required by claim 1. Clarification is definitely required as to what actually is the applicants invention. For the purpose of the rejection the examiner will view claim 19 as polymer composition comprising nanotubes when infusion of carbon nanotubes is not necessarily direct but also indirectly via polymeric matrix.
Claim 20 defines fibers to be carbon fibers and glass fibers, which are part of the carbon nanostructures. Based on the definition of the nanostructures, instant specification failed to describe how the substrates in [0047] are meant to be part of the carbon nanostructures especially in view of Figures 1A-1C which only disclosed carbon nanotubes as described in the specification. Moreover glass fibers listed cannot be part of the nanostructures because they are not carbon based and they are not nanosized. While it is noted that the carbon nanotubes maybe grown from the fibrous substrate, it is not clear if substrate in claims 1 and 18-20 are an article such as laminate or product by process claims directed to growing carbon nanotubes before they are incorporated into polymeric matrix. In either way, presence of substrate regardless if it is article claim or product by process claim does not carry patentable weight.
The examiner invites the applicants to an interview which hopefully will clarify the issues however, the specification is still lacking and not commensurate with the scope of the claims.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Grinsteinner (US 2019/0153179).
With respect to claim 1, 4, 17, 21, 22, Grinsteinner discloses fiber reinforced polymer composition. The polymer matrix is a thermoplastic polymer. The components added to the polymer include long fibers which include carbon or glass fibers [0037] which are also reinforcing fibers. A thermally conductive fillers include combinations thereof are carbon nanotubes and graphite, wherein graphite is naturally in form of a flake or platelet[0040].
Based on the methods involved in the formation of the composition the fibers and filler are added into polymeric matrix at various angles between 1-30o [0047-0049] including longitudinally, which would create web like structure. Additionally fibers can be introduced in form of bundles [0036]and randomly or alternately distributed [0044].
The composition has a deflection temperature of 160oC or more, preferred range is 180-220oC [0015] as measured according to ISO 75-2:21-3.
Matrix polymer is an aromatic polymer having meting temperature of 200oC or more [0019].
With respect to claims 2 and 3, the composition has volume resistivity of 10 Ohms-cm or less and since volume resistivity = surface resistivity x thickness, the surface resistivity is also within the claimed range.
With respect to claim 5, composition comprises aromatic polymers [0019].
With respect to claims 6-13, include liquid crystalline polymers that are thermotropic [0027] wherein units are derived from aromatic dicarboxylic acids such as terephthalic acid, isophthalic acid and 2,6-naphthalenedicarboxylic acid as preferred diacids [0031]. Preferred hydroxycarboxylic acids are hydroxybenzoic acid and 6-hydroxy-2-napththoic acid [0032]. Repeat units also comprise aromatic diols, preferred embodiments includes hydroquinone and 4,4’-biphenyl [0033]. As such the polymer is wholly aromatic with hydroxycarboxylic acid and dicarboxylic acid content being in an amount of 10 mole% or more [0031-0032].
With respect to claim 14, Grinsteinner discloses polyarylene sulfides [0023].
With respect to claim 15, Grinsteinner discloses polyaryleneetherketones [0025].
With respect to claim 16, Grinsteinner utilizes nanostructures such as carbon nanotubes and flaky graphite used in amount of 5-70wt% [0039].
With respect to claims 18-20, long fibers are viewed as a substrate. Specifically examples disclose protruding long fibers, wherein the polymeric material infiltrates the fibers (see examples.
With respect to claim 23, Grinsteinner discloses use of silica which is dielectric filler [0043].
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 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.
Claims 1-5, 14, 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Luo (US 2013/0273290).
With respect to claims 1, 4, 5, 14, 22, Luo discloses composition comprising polyarylene sulfide (Abstract), impact modifier and fillers include glass fibers or carbon fibers (reinforcing fillers) [0121] and electrically conductive fillers such as carbon nanotubes [0127].
The composition has a deflection temperature under load of 1.8 MPa (ISO 75-2 equivalent to ASTM D790) of greater than 105oC [0056] and softening point of more than 250oC, which only means that melting temperature is even higher [0057].
The discontinuous fibers (glass fibers and carbon nanotubes) form random, entangles web which are then thermally bonded [0181].
With respect to claims 2 and 3, composition of Luo has volume resistivity of less than 109 Ohms-cm, which is equivalent to less than 108 Ohm-m [0127]. With respect to surface resistivity, the key relationship is that volume resistivity = surface resistivity x thickness (instant case is 0.2 mm [0060], as such for the same thickness of the composition when made into a film the surface resistivity will be within the same range as well.
With respect to claim 16, fillers including carbon nanotubes are utilized in amount of 5-70 wt. % [0120]. This includes carbon nanotubes.
With respect to claim 17 and 21, Luo also teaches use of graphite or graphene [0127] which are in flake (platy shape). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). The two components including carbon fiber are electrically conductive fillers.
With respect to claim 23, Luo discloses use of silica filler which is a dielectric filler [0125].
With respect to claims 18-20, polyarylene sulfide composition is deposited onto antiwear layer which is made of glass fibers or carbon fibers. As such the composition of Luo is deposited onto the fibrous substrate and fused with in which indirectly fuses carbon nanotubes [0166]
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Grinsteinner (US 2019/0153179) or Luo (US 2013/0273290)in view of Elkovitch (US 2004/0232389).
Discussion of Grinsteinner from paragraph 1 of this office action is incorporated here as reference, or the discussion of Luo from paragraph 2 of this office action is incorporated here by reference.
Grinsteinner or Luo both disclose polymer composition that include the same polymer, carbon nanotubes and reinforcing fibers. Both disclosure use silica which is dielectric filler and carbon nanotubes that are dispersed in the polymeric matrix but do not teach polyhedral silsesquioxane.
Elkovitch also discloses electroconductive composition comprising nanotubes and fibers utilizing the same polymers and resulting in the same volume or surface resistivity.
Elkovitch discloses polyhedral silsesquioxane as nanosized dispersion agents. These agents are utilized to improve the dispersion of nanotubes and nano filler within polymeric matrix [0043].
Elkovitch utilizes polyhedral silsesquioxane because they are thermally stable silicon oxygen frameworks [0050] and improve dispersion by lowering friction between nanotubes reducing the stress of entangled carbon nanotubes. Other advantages of using such compounds are good hot-slip properties and good anti-block properties much like those of silica. At the same time silsesquioxane does not affect optical properties if such are required.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, that in order to improve the properties of the nanofillers such as nanotubes and nanoparticles, dispersing agents with good thermal properties would be suitable for compositions that are subject to high temperatures such as those of Luo and Grinsteinner for the advantages disclosed above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 September 9, 2025