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 .
Election/Restrictions
Claims 1-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/10/2026.
Applicant's election with traverse of claims 29-37 (Group III) in the reply filed on 02/10/2026 is acknowledged. The traversal is on the ground(s) that there is no undue burden to examine claims 21-28 and 41-42 in addition to claims 29-37 because claims 21-28 and 41-42 also depend upon claim 29.
The examiner agrees that based on the claims as amended, there would be no undue burden to examine claims 21-37 and 41-42, therefore the restriction/election requirement between elected Group III (29-37) and Group II (claims 21-28) and Group IV (claims 41-42) has been withdrawn.
The applicant also traverses the restriction/election requirement between the product of Group I (claims 1-20) and the process of the elected invention on the ground(s) that there is sufficient overlap that would obviate any undue examination burden.
This is not found persuasive because the inventions of group I and the elected invention belong to separate statutory categories of invention (product and process of making) and further the process steps of the elected invention are not shared with the product of Group I which would cause and therefore a prior art reference that may apply to one invention may not be applicable to the other invention, and would require a separate and distinct search and a process of making a product and the product itself would likely raise different issues such 35 U.S.C. 101, 35 U.S.C. 112(a), 35 U.S.C. 112(b), and/or Statutory or non-Statutory Double Patenting, etc.. Therefore the search for the two inventions would be non-coextensive and require separate searches for each invention and would consequently place an search and examination burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The Information disclosure statements (IDS) filed on 05/31/2023, 06/01/2023, 07/14/2023, 11/09/2023, 11/09/2023, 05/22/2024, 05/22/2024, 07/19/2024, 09/23/2024, 11/14/2024, 02/21/2025, 04/28/2025, 10/23/2025, and 03/23/2026 have been acknowledged.
Claim Objections
Claims 21-37 and 41-42 are objected to because of the following informalities:
Claim 29 line 1-3 should be amended to add a colon and a line break after “A process for extruding material, the process comprising” to clarify the separation between the preamble of the claim and the body of the claim.
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 42 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.
Claim 42 recites “where in the extrusion product has an electrical conductivity of at least 65% IACS”. However, claim 21 which claims 41-42 depend upon recites that the conductive extrusion product comprises Al and NCCF, but the electrical conductivity of aluminum and its alloys have maximum values of about 61.8% and metal-carbon composites generally have reduced conductivity compared with the base metal due to interfacial issues as is known in the art, for example the specific example of AL-NCCF extrusion described in the specification has 60.83% IACS as discussed in Para 00183 of the specification as originally filed. It appears that claim 42 mixes two different embodiments of the invention, i.e. copper-NCCF extrusions which can have higher conductivity and AL-NCCF extrusions which have lower conductivity. Therefore it is not sufficiently clear how an Al-NCCF extrusion can have an electrical conductivity of at least 65% IACS as claimed in light of the specification, thereby rendering the claim indefinite as the metes and bounds of the claim are not sufficiently clear. For the purpose of examination, the examiner interprets claim 42 to recite “wherein the extrusion product has an electrical conductivity of above about 60% IACS” instead, wherein ‘about’ is interpreted to mean plus or minus 10%.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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 29-31 and 33-37 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by US 5,262,123 to Thomas.
As per claim 29, Thomas discloses a process for extruding material, the process comprising:
providing both rotational and axial forces (see arrows in Fig 2) between a die tool (see die 11 in Fig 2) and a length of feedstock material (see rotating consumable bar 10 in Fig 2) to form an extrusion product (see extruded product in Fig 2 exiting extrusion port 14),
wherein the length of feedstock material comprises a length of one material extending from a first end to a second end (see bar 10 in Fig 2 wherein the first end and the second end are defined by the length of the counterbores 12 and 13); and
at least one slot (see counterbores 12 and 13 in Fig 2) extending lengthwise within the one material between the first and second ends of the one material (see Col 6 line 12-26).
As per claim 30, Thomas discloses the elements of the current invention as detailed above with respect to claim 29. Thomas further discloses another material (“matrix composite materials (MMC)”; Col 2 line 45-65, Col 6 line 31-21, Col 8 line 17-22) is provided within the at least one slot.
As per claim 31, Thomas discloses the elements of the current invention as detailed above with respect to claim 30. Thomas further discloses that the other material (“matrix composite materials (MMC)” which can include diamond particles )”; Col 2 line 45-65, Col 6 line 18-24, Col 8 line 17-22) is chemically different than the one material (steel, aluminum, aluminum alloys, etc. as discussed in Col 4 line 12-15 and Col 11 line 44-62).
As per claim 33, Thomas discloses the elements of the current invention as detailed above with respect to claim 29. Thomas further discloses that the feedstock material further comprises at least another slot aligned opposing the at least one slot (see counterbore 12 and counterbore 13 in Fig 2).
As per claim 34, Thomas discloses the elements of the current invention as detailed above with respect to claim 29. Thomas further discloses that the feedstock material further comprises a plurality of slots (see counterbore 12 and counterbore 13 in Fig 2).
As per claim 35, Thomas discloses the elements of the current invention as detailed above with respect to claim 34. Thomas further discloses that the at least two of the plurality of slots are aligned opposing one another (see counterbore 12 and counterbore 13 in Fig 2 which are aligned opposing each other across a center axis of the bar 10).
As per claim 36, Thomas discloses the elements of the current invention as detailed above with respect to claim 34. Thomas further discloses that the plurality of slots are uniformly distributed about the length of material (see counterbore 12 and counterbore 13 in Fig 2 which are uniformly distributed across a cross-section of the bar and along a length of the bar 10).
As per claim 37, Thomas discloses the elements of the current invention as detailed above with respect to claim 34. Thomas further discloses another material (“matrix composite materials (MMC)”; Col 2 line 45-65, Col 6 line 13-21, Col 8 line 17-22) within at least one of the plurality of slots.
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 21-24 and 27 are rejected under AIA 35 U.S.C. 103 as being unpatentable over US 5,262,123 to Thomas in view of US 2015/0075242 to Eller.
As per claim 21, Thomas discloses the elements of the current invention as detailed above with respect to claim 29. Thomas further discloses that the extrusion product is conductive (the extruded product can contain steel, aluminum, aluminum alloys, as discussed in Col 4 line 12-15 and Col 11 line 44-62, which would inherently and/or obviously be conductive), and that the length of feedstock and conductive extrusion product comprises Al (Col 4 line 12-15 and Col 11 line 44-62) and metal matrix composite materials (MMC) (Col 2 line 45-65) which can include diamond particles (Col 8 line 17-22) which is considered to be a Nanocrystalline Carbon Forms (NCCF) as claimed.
Further, Eller discloses a similar method of shear assisted extrusion (see friction extrusion system 500 in Fig 5 including rotating container 570 and ram 540; see Fig 23) of a metal material that can include aluminum (aluminum or aluminum alloys, Para 0089) and carbon nanoparticles to increase the mechanical and metallurgical properties of the extrusion for a higher strength-to-weight ratio and high temperature resistance and a reduced cost thereby enabling mass production of the extrusions (Para 0091).
At the time the application was filed, it would have been obvious to one of ordinary skill it the art to have modified the MMC materials of Thomas to include carbon nanoparticles as disclosed in Eller. One of ordinary skill in the art would have recognized that using additives for metal extrusions is well-known in the art for improving and/or modifying the material properties of the extruded metal and therefore it would be a routine matter to look to other references such as Eller for other additives for improving the material properties of the extruded metal; the obvious advantages being the addition of carbon nanoparticles (NCCF) would increase the mechanical and metallurgical properties of the extruded metal-NCCF for a higher strength-to-weight ratio and high temperature resistance and a reduced cost thereby enabling mass production of the extrusions as taught by Eller (Eller: Para 0091).
As per claim 22, Thomas and Eller disclose the elements of the current invention as detailed above with respect to claim 21. Thomas further discloses that the NCCF is provided within the slot(s) (Col 6 line 13-21).
As per claim 23, Thomas and Eller disclose the elements of the current invention as detailed above with respect to claim 21. Thomas further discloses that the length of the one material comprises Al alloy (Col 4 line 12-15 and Col 11 line 44-62).
As per claim 24, Thomas and Eller disclose the elements of the current invention as detailed above with respect to claim 23. Thomas discloses that the length of the one material comprises Al alloy (Col 4 line 12-15 and Col 11 line 44-62) and also mentions that the Al alloy can be aluminum tin (Sn) specifically used for bearing materials (Col 2 line 5-9). Further, Eller discloses that the feedstock material can include aluminum alloys containing molybdenum (Mo) or chromium (Cr) (Para 0089).
As per claim 27, Thomas and Eller disclose the elements of the current invention as detailed above with respect to claim 21. Thomas further discloses that the extruded conductive product can include aluminum (Col 4 line 12-15 and Col 11 line 44-62) (Col 4 line 12-15 and Col 11 line 44-62) and metal matrix composite materials (MMC) (Col 2 line 45-65) which can include diamond particles (Col 8 line 17-22) which is considered to be a Nanocrystalline Carbon Forms (NCCF); and Eller discloses that the extruded conductive product can include (aluminum or aluminum alloys, Para 0089) and carbon nanoparticles to increase the mechanical and metallurgical properties of the extrusion for a higher strength-to-weight ratio and high temperature resistance and a reduced cost thereby enabling mass production of the extrusions (Para 0091).
Claims 25 and 32 are rejected under AIA 35 U.S.C. 103 as being unpatentable over US 5,262,123 to Thomas and US 2015/0075242 to Eller in further view of US 2024/0183007 to Horn.
As per claim 25, Thomas and Eller disclose the elements of the current invention as detailed above with respect to claim 22. Thomas discloses that the materials including the NCCF/MMC are provided within the slot (Col 6 line 13-21), but does not explicitly disclose that the material within the slot is a foil.
Horn discloses a similar friction extrusion process (Para 0003, 0006, and 0034-0035) for extruding matrix metal composites materials(MMC) comprising copper or aluminum or aluminum alloys (Para 0031 and 0049), wherein the MMC materials can be provided in holes (see Fig 10-11) in the billet (similar to Thomas) or can be provided by forming slots (see slices 102 in Fig 14-17) in the billet (see billet 100 in Fig 14-17) and a foil (see sheet(s) 102 in Fig 14-17) comprising graphene is inserted into the slots (Para 0045-0046) for the extrusion of MMC’s with enhanced electrical and mechanical properties (Para 0031).
At the time the application was filed, it would have been obvious to one of ordinary skill it the art to have modified the slots and MMC materials of Thomas to instead be slots configured for MMC material foils as taught by Horn. One of ordinary skill in the art would have recognized that it would be within the skill of one of ordinary skill in the art to choose a desired means of providing the NCCF in the billet for extrusion based on a given circumstance especially in view of Horn which discloses different embodiments in which the NCCF is provided in the same manner of Thomas by providing the NCCF in holes in the billet and providing foils with the NCCF in slots cut in the billet as discussed above; the obvious advantages being that this would provide enhanced electrical and mechanical properties to the extruded material as discussed in Horn (Horn: Para 0031).
As per claim 32, Thomas and Eller disclose the elements of the current invention as detailed above with respect to claim 30. Thomas discloses that the other materials including the NCCF/MMC are provided within the slot (Col 6 line 13-21), but does not explicitly disclose that the material within the slot is a foil.
Horn discloses a similar friction extrusion process (Para 0003, 0006, and 0034-0035) for extruding matrix metal composites materials(MMC) comprising copper or aluminum or aluminum alloys (Para 0031 and 0049), wherein the MMC materials can be provided in holes (see Fig 10-11) in the billet (similar to Thomas) or can be provided by forming slots (see slices 102 in Fig 14-17) in the billet (see billet 100 in Fig 14-17) and a foil (see sheet(s) 102 in Fig 14-17) comprising graphene is inserted into the slots (Para 0045-0046) for the extrusion of MMC’s with enhanced electrical and mechanical properties (Para 0031).
At the time the application was filed, it would have been obvious to one of ordinary skill it the art to have modified the slots and MMC materials of Thomas to instead be slots configured for MMC material foils as taught by Horn. One of ordinary skill in the art would have recognized that it would be within the skill of one of ordinary skill in the art to choose a desired means of providing the NCCF in the billet for extrusion based on a given circumstance especially in view of Horn which discloses different embodiments in which the NCCF is provided in the same manner of Thomas by providing the NCCF in holes in the billet and providing foils with the NCCF in slots cut in the billet as discussed above; the obvious advantages being that this would provide enhanced electrical and mechanical properties to the extruded material as discussed in Horn (Horn: Para 0031).
Claims 26, 28, and 41-42 are rejected under AIA 35 U.S.C. 103 as being unpatentable over US 5,262,123 to Thomas and US 2015/0075242 to Eller in further view of US 2019/0267153 to Kappagantula.
As per claim 26, Thomas and Eller disclose the elements of the current invention as detailed above with respect to claim 22, but Thomas and Eller do not explicitly disclose that the NCCF is between 0.1% and 10% of the entire length of material. However, discovering the optimum or workable ranges involves only ordinary skill in the art and therefore it would have been an obvious design choice for one of ordinary skill in the art to modify the amount of NCCF provided in the length of material.
Kappagantula discloses a similar process for extruding composite materials (see extrusion device 28 in Fig 1D) comprising a metal length of material (see copper rod 12 and copper discs 10 in Fig 1A-C; Para 0015) and a NCCF including graphene (graphene 14 in Fig 1B-C) deposited on portions of the length of material (see CVD deposited graphene 14 in Fig 1B-C; Para 0018), wherein the amount of NCCF can be between 0-50% by weight of the length of material to improve the electrical properties of the extruded material which allows for the forming of ultra-conductive metal composite form that has superior conductivity (Para 0004 and 0021-0022).
At the time the application was filed, it would have been obvious to one of ordinary skill it the art to have modified the above combination of Thomas and Eller to control the amount of NCCF material provided in the length of material to be between 0.1% and 10% of the entire length of material as taught by Kappagantula. One of ordinary skill in the art would have recognized that discovering the optimum or workable ranges of elements such as NCCF involves only ordinary skill in the art, and that Kappagantula is also directed towards extrusion of metal composites and it would have been obvious to one of ordinary skill in the art to look the Kappagantula for improvements on Thomas and/or Eller, therefore it would have been an obvious design choice for one of ordinary skill in the art to modify the amount of NCCF provided in the length of material to be between 0.1% and 10% of the entire length of material as taught by Kappagantula based on a particular intended application of the invention, the obvious advantages being that the resultant metal-NCCF extrusions would result in an ultra-conductive metal composite with superior conductivity (Kappagantula: Para 0004 and 0021-0022).
As per claim 28, Thomas and Eller discloses the elements of the current invention as detailed above with respect to claim 27. Thomas further discloses that the extruded conductive product can include aluminum (Col 4 line 12-15 and Col 11 line 44-62) (Col 4 line 12-15 and Col 11 line 44-62) and metal matrix composites (MMC) (Col 2 line 45-65) which can include diamond particles (Col 8 line 17-22) which is considered to be a Nanocrystalline Carbon Forms (NCCF); and Eller discloses that the extruded conductive product can include (aluminum or aluminum alloys, Para 0089) and carbon nanoparticles to increase the mechanical and metallurgical properties of the extrusion for a higher strength-to-weight ratio and high temperature resistance and a reduced cost thereby enabling mass production of the extrusions (Para 0091), but neither Thomas nor Eller explicitly disclose that the NCCF in the extruded conductive product is graphene.
Kappagantula discloses a process for extruding conductive metal composite materials (see extrusion device 28 in Fig 1D) comprising a metal length of material (see copper rod 12 and copper discs 10 in Fig 1A-C; Para 0015) and a NCCF including graphene (graphene 14 in Fig 1B-C) deposited on portions of the length of material (see CVD deposited graphene 14 in Fig 1B-C; Para 0018) to improve the electrical properties of the extruded material which allows for the forming of ultra-conductive metal composite form that has superior conductivity (Para 0004 and 0021-0022).
At the time the application was filed, it would have been obvious to one of ordinary skill it the art to have modified the above combination of Thomas and Eller to change the NCCF material to include graphene as taught by Kappagantula. One of ordinary skill in the art would have recognized that choosing a particular NCCF for an extrusion would be within the skill of one of ordinary skill in the art based on a particular application of the invention, and that Kappagantula is also directed towards extrusion of metal composites and it would have been obvious to one of ordinary skill in the art to look the Kappagantula for improvements on Thomas and/or Eller, therefore it would have been an obvious design choice for one of ordinary skill in the art to choose to use graphene as the NCCF material, the obvious advantages being that the resultant metal-graphene extrusions would have increased conductivity to result in an ultra-conductive metal composite with superior conductivity (Kappagantula: Para 0004 and 0021-0022).
As per claim 41, Thomas and Eller disclose the elements of the current invention as detailed above with respect to claim 21, but Thomas and Eller do not explicitly disclose that the NCCF comprises at least 0.1% of the feedstock material. However, discovering the optimum or workable ranges involves only ordinary skill in the art and therefore it would have been an obvious design choice for one of ordinary skill in the art to modify the amount of NCCF provided in the length of material.
Kappagantula discloses a similar process for extruding composite materials (see extrusion device 28 in Fig 1D) comprising a metal length of material (see copper rod 12 and copper discs 10 in Fig 1A-C; Para 0015) and a NCCF including graphene (graphene 14 in Fig 1B-C) deposited on portions of the length of material (see CVD deposited graphene 14 in Fig 1B-C; Para 0018), wherein the amount of NCCF can be between 0-50% by weight of the length of material to improve the electrical properties of the extruded material which allows for the forming of ultra-conductive metal composite form that has superior conductivity (Para 0004 and 0021-0022).
At the time the application was filed, it would have been obvious to one of ordinary skill it the art to have modified the above combination of Thomas and Eller to control the amount of NCCF material provided in the length of material to be at least 0.1% of the feedstock material as taught by Kappagantula. One of ordinary skill in the art would have recognized that discovering the optimum or workable ranges of elements such as NCCF involves only ordinary skill in the art, and that Kappagantula is also directed towards extrusion of metal composites and it would have been obvious to one of ordinary skill in the art to look the Kappagantula for improvements on Thomas and/or Eller, therefore it would have been an obvious design choice for one of ordinary skill in the art to modify the amount of NCCF provided in the length of material to be at least 0.1% of the feedstock material as taught by Kappagantula based on a particular intended application of the invention, the obvious advantages being that the resultant metal-NCCF extrusions would result in an ultra-conductive metal composite with superior conductivity (Kappagantula: Para 0004 and 0021-0022).
As per claim 42, as best understood, Thomas, Eller, and Kappagantula disclose the elements of the current invention as detailed above with respect to claim 41. Kappagantula further discloses that the extrusion product has an electrical conductivity of above about 60% IACS” instead, wherein ‘about’ is interpreted to mean plus or minus 10% (see Para 0022 that discloses that the Al-Graphene extrusion has a conductivity greater than about 59.58% IACS).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua D. Anderson, whose telephone number is (571) 270-0157. The examiner can normally be reached from Monday to Friday between 7 AM and 1 PM Arizona time.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Thomas Hong, can be reached at (571) 272-0993.
Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Applicants are invited to contact the Office to schedule an in-person interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
/JOSHUA D ANDERSON/
Examiner, Art Unit 3729
/THOMAS J HONG/Supervisory Patent Examiner, Art Unit 3729