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 Applicant’s amendment filed on January 26, 2026 was received. Claims 1 and 8-9 were amended.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office action issued August 27, 2025.
Claim Objections
The objections to claims 8 and 9 are withdrawn because Applicant amended the claims to correct the grammatical issues.
Claim Rejections - 35 USC § 102
The claim rejections under 35 U.S.C. 102(a)(1) as anticipated by Vydra et al. (US 5,187,021) on claims 1-3, 5-7 and 9 are maintained. The rejections are restated below.
Regarding claim 1: Vydra et al. discloses a carbon fiber (12) coating system which includes a coating chamber (74) configured to apply a metal to the carbon fiber (12), as well as a series of vacuum chambers (50, 200) which is a vacuum processing system that anneal the coating to convert it into a silicon carbide coating, which is a metal carbide (col. 3 lines 38-64, col. 6 lines 49-53, col. 7 lines 43+, col. 8, col. 9 lines 1-28, figure 5).
Regardless, the limitations regarding how the reaction occurs are considered to be statements with regard to the intended use of the apparatus, and not a structural feature of the instant invention. In apparatus claims, a claimed intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP § 2111.02. Since the structure of Vydra et al. meets that of claim 1, it is clearly capable of performing the same reactions. Similarly, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (MPEP § 2114) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01).
Regarding claim 2: Vydra et al. discloses that the metal carbide coating can be silicon carbide (col. 9 lines 15-20).
Regarding claim 3: Vydra et al. discloses that leads (78, 80) are provided to heat carbon electrodes (76) which then heat the carbon fiber (12) (col. 8 lines 35-55, figure 5).
Regarding claim 5: Vydra et al. discloses that the vacuum chamber (50) is composed of several stages (53, 55, 57) which are individual chambers (col. 8 lines 10-17, figure 5).
Regarding claim 6: Vydra et al. discloses that the vacuum chambers (53, 55, 57) have an increasing level of vacuum such that the final one has the lowest pressure, which can be considered the central vacuum chamber as it is central to the overall device (col. 8 lines 10-17, figure 5).
Regarding claim 7: Vydra et al. discloses a similar vacuum chamber (200) series (202, 204, 205) downstream of the coating chamber (74) such that the first one of that, which has the highest level of vacuum, can be considered to be an “objective” chamber which naturally helps convert a portion of the coated carbon fiber (12) to the silicon carbide coated fiber (col. 9 lines 6-14, figure 5).
Regarding claim 9: Vydra et al. discloses that silicon tetrachloride can be one of the reactant vapors used by the coating chamber (74) to create the silicon carbide coating (col. 4 lines 44-48, col. 8 lines 35-55, col. 9 lines 15-28).
Claim Rejections - 35 USC § 103
The claim rejection under 35 U.S.C. 103 as unpatentable over Vydra et al. as applied to claims 1-3, 5-7 and 9 above on claim 4 is maintained. The rejection is restated below.
Regarding claim 4: Vydra et al. fails to explicitly disclose the temperature the heating leads are set to heat the carbon fiber (12) to. However, Vydra et al. does explain earlier in the disclosure that the formation of silicon carbide can take place at temperatures above 1500 degrees Celsius (col. 4 lines 29-43). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the heating elements at a temperature above 1500 degrees Celsius if not using a catalyst to create silicon carbide, because Vydra et al. teaches that it is known that silicon carbide formation takes place at this temperature (col. 4 lines 29-43).
The claim rejections under 35 U.S.C. 103 as unpatentable over Vydra et al. as applied to claims 1-7 and 9 above and further in view of Brun et al. (US 2007/0099527) on claims 8 and 10-11 are maintained. The rejections are restated below.
Regarding claim 8: Vydra et al. fails to explicitly disclose that the metal application system comprises a slurry bath or brush system that applies a layer of slurry onto the fibers. However, Brun et al. discloses a similar fiber tow coating system which uses a CVD coating technique or instead a slurry bath dipping system (par. 5) such that CVD coating and slurry bath dipping are functional equivalents for coating fiber tows. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a slurry-dipping coating technique for the fibers of Vydra et al. as taught by Brun et al. because simple substitution of functional equivalents is not considered to be a patentable advance (MPEP 2143, 2144.06).
Regarding claims 10-11: Vydra et al. discloses that the carbon fibers can be coating and wound together but does not disclose any structural details about the finished carbon fiber size or amount of fibers in the tow. However, Brun et al. discloses a similar processing system for coating a carbon fiber tow which coats tows consisting of about 500-12,000 fibers having a cross-sectional diameter of between 4 and 25 microns (par. 26). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use entire fiber tows as taught by Brun et al. for the carbon fiber coating of Vydra et al. because Brun et al. teaches that this enhances productivity when compared to coating single fibers one at a time (pars. 6-8). While this is not the exact claimed range of 10-10,000 fibers or 10-50 microns, the disclosed range of 500-12,000 fibers and 4-25 microns overlaps the claimed ranges such that it would have been obvious for one of ordinary skill in the art before the effective filing fate of the claimed invention through routine experimentation to result in the claimed ranges of 10-10,000 fibers or 10-50 microns because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive. Applicant primarily argues that Vydra et al. teaches formation of silicon carbide whiskers by external reactions and not by converting the fiber itself, as now required by claim 1.
In response:
Firstly, the limitations about how a reaction occurs do not further limit an apparatus or system claim. Claim 1 requires no structure that is any different from that of Vydra et al. The claim must require specific structure that causes the reaction claimed in order for that to have patentable weight.
Second, Applicant appears to be severely mischaracterizing the Vydra et al. reference as well as the previous Office Action. Nothing in the Office Action mentioned formation of whiskers, because that is only one of the functions of the apparatus of Vydra et al.- before the whiskers are even formed, Vydra et al. discloses an apparatus for coating the carbon fiber (12) with one of a number of materials- the primary example being used in columns 6-8 is diamond, but Vydra et al. clearly states that a number of other coatings can be formed by this apparatus, including silicon carbide, and Vydra et al. explicitly mentions that this is formed by wetting the carbon fibers in the selected metal (i.e. silicon) and then annealing it within a vacuum to form a silicon carbide coating (par. 3 lines 38-64). This is exactly how the instant invention performs the claimed function- applying the metal to a carbon fiber and then heating it within a series of vacuum chambers. Applicant’s argument appears to completely ignore this function of Vydra et al., which was described at length in the cited portions of the document, with the apparatus performing this function displayed in figure 5. Therefore, Applicant’s arguments are not persuasive and the rejections are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN A KITT whose telephone number is (571)270-7681. The examiner can normally be reached M-F 9am-5pm.
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/S.A.K/
Stephen KittExaminer, Art Unit 1717
3/19/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717