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 .
Status of the Claims
Claim 6 has been cancelled. Claims 1 and 7-8 have been amended. Claims 2-5 are as previously presented. Claims 9-14 remain withdrawn. Therefore, claims 1-5 and 7-8 are currently pending and have been considered below.
Response to Amendment
The amendment filed on 8/10/2026 has been entered. Applicant’s amendment overcomes the 112(d) rejection of claims 6-8.
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 1-5 and 7-8 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 has been amended to recite "wherein at least one of the two or more carbon filaments is replaced with a solid wire." This limitation was previously in claim 6. In the previous claim set, it was understood that that the carbon filament wire of claim 6 comprised a resin matrix; one or more carbon filaments provided inside of the resin matrix, and a solid wire. The language of claim 1 is indefinite, because it is unclear if claim 1 should be interpreted as previous claim 6 was interpreted (described above), or if claim 1 should be interpreted to require wherein initially, two or more carbon filaments are provided inside of the resin matrix, and then a physical replacement of at least one of the carbon filaments occurs. Additionally, it is noted that claim 1 encompasses wherein zero carbon filaments are provided inside of the resin matrix. For example, the claim covers wherein two carbon filaments are provided inside of the resin matrix, and wherein two carbon filaments are replaced with a solid wire. This results in a lack of clarity regarding whether the carbon filament wire comprises any carbon filaments. Claims 2-5 and 7-8 are also rejected by virtue of their dependence on claim 1.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1 and 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hiel et al. (US 2010/0181012) in view of Sanders et al. (US 2015/0218732).
Regarding claim 1, Hiel discloses a carbon filament wire, comprising:
a resin matrix (described below); and
two or more carbon filaments provided inside of the resin matrix (“a composite core defining a longitudinal axis that defines a center of the composite core. The core comprises a plurality of reinforcing carbon fibers embedded in a resin matrix, the carbon fibers positioned towards the center of the composite core and the carbon fibers having a substantially parallel orientation with respect to the longitudinal axis” [0008]).
Hiel does not expressly disclose wherein at least one of the carbon filaments is replaced with a solid wire.
Sanders is directed to a composite material [Abstract]. Sanders discloses wherein at least one of two or more carbon filaments is replaced with a solid wire (Fig. 1 shows composite material 100 comprising first component 101 and second component 102; "First component 101 may be a metal, for example, while second component 102 may be a carbon material. The metal may be in the form of a wire, and the carbon material may be in the form of fibers, for example. In this case, the wires may be woven together with the fibers to form a braid. Such a braid is exceptionally strong. Both the first component 101 and the second component 102 are surrounded by a thermoplastic material 103" [0034]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein at least one of the carbon filaments is replaced with a solid wire. This is a known configuration of a composite material, applied to a known composite material as described in Hiel, to allow for producing a material that is "strong yet relatively lightweight" [0012].
In addition to structural limitations, claim 1 recites functional limitations drawn toward the intended use or manner of operating the claimed apparatus. The functional limitations are: “for laser welding of a steel sheet having an aluminum-based coating layer.” When the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114.
Regarding claim 3, Hiel does not expressly disclose an aspect ratio (length/diameter) of the carbon filament is 10000 or more.
However, Hiel discloses an exemplary carbon filament diameter of approximately 7.1 µm: “Filament Diameter, in 2.8E-04” [Table 1, para [0180]]; this indicates that the filament diameter is 0.00028 inches, which equals approximately 7.1 µm. Additionally, Hiel describes the length of the filament / fibers: “Composite cores of the present invention comprise fiber tows that are substantially continuous in length. In practice, carbon fiber tows comprising the present invention are preferably between about 3000 and 6000 meters in length, depending on the size of the spool. However, glass fiber lengths can range up to 36 km depending on the size of the spool. Fibers can be selected in the range of 1000 to 33,000 meters. Selection of length of fiber can be based on the longest fibers that the processing equipment will accommodate to form a continuous composite core in excess of 6000 feet, such as in excess of 3000 meters” [0071]. A filament / fiber length of 3000 meters, along with a filament / fiber diameter of 7.1 µm, corresponds to an aspect ratio of approximately 400,000,000.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an aspect ratio (length/diameter) of the carbon filament is 10000 or more. Hiel describes that “Selection of length of fiber can be based on the longest fibers that the processing equipment will accommodate to form a continuous composite core” [0071]. Therefore, one of obvious skill in the art would be motivated to utilize a carbon filament with an aspect ratio large enough to result in forming a continuous composite core.
Regarding claim 4, Hiel discloses wherein a diameter of the carbon filament is 1 to 1000 µm. (“Filament Diameter, in 2.8E-04” [Table 1, para [0180]]; this indicates that the filament diameter is 0.00028 inches, which equals approximately 7.1 µm).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hiel et al. (US 2010/0181012) in view of Sanders et al. (US 2015/0218732) in view of Siripurapu et al. (US 2017/0110704).
Regarding claim 2, Hiel / Sanders does not expressly disclose wherein a diameter of the carbon filament wire is 0.1 to 5mm.
Siripurapu is directed to cables and wires, such as aluminum conductor composite core (ACCC) wires ([Title], [0032]). Siripurapu discloses wherein a diameter of the carbon filament wire is 0.1 to 5mm (“The bonding wire of claim 1 has a diameter of about 300 µm to about 500 µm” [claim 4]; this corresponds to a diameter of about 0.3 mm to about 0.5 mm).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein a diameter of the carbon filament wire is 0.1 to 5mm. This is a known diameter of an ACCC wire, applied to a known ACCC wire, to achieve predictable results.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hiel et al. (US 2010/0181012) in view of Sanders et al. (US 2015/0218732) in view of Brandenberger (US 3,921,542).
Regarding claim 5, Hiel / Sanders does not expressly disclose wherein based on a cross-section of the carbon filament wire, a fraction occupied by the carbon filament in the carbon filament wire is 50 to 90 area%.
Brandenberger is directed to consumable wires [Col. 1, line 9]. Brandenberger discloses wherein a fraction occupied by a core of a wire is as follows: “the ratio of core wire diameter to the wall thickness of the jacket tube is between 1 : 0.7 to 1 : 2” [Col. 1, lines 53-55]; a ratio of core wire diameter to wall thickness of 1 : 0.7 to 1 : 2 corresponds to a fraction occupied by the core of approximately 59% to approximately 33%.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein based on a cross-section of the carbon filament wire, a fraction occupied by the carbon filament in the carbon filament wire is 50 to 90 area%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP § 2144.05-I.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hiel et al. (US 2010/0181012) in view of Sanders et al. (US 2015/0218732) in view of Hughes et al. (US 6,674,047).
Regarding claim 7, Hiel / Sanders does not expressly disclose wherein the solid wire contains, by weight%, C: 0.001 to 1.0%, Mn: 0.01 to 25%, Si: 0.01 to 5.0%, a balance Fe and unavoidable impurities.
Hughes is directed to a wire electrode with a composite core [Title]. Hughes discloses wherein a solid wire contains, by weight%, C: 0.001 to 1.0%, Mn: 0.01 to 25%, Si: 0.01 to 5.0%, a balance Fe and unavoidable impurities (see the table Col. 9; the initial wire of example 4 contains, by weight percent, 0.30 C, 0.6 Mn, 0.80 Si, and the balance Fe).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the solid wire contains, by weight%, C: 0.001 to 1.0%, Mn: 0.01 to 25%, Si: 0.01 to 5.0%, a balance Fe and unavoidable impurities. This is a known composition, applied to a known wire, to achieve predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hiel et al. (US 2010/0181012) in view of Sanders et al. (US 2015/0218732) in view of Cook et al. (US 4,286,026).
Regarding claim 8, Hiel / Sanders does not expressly disclose wherein the solid wire has a diameter of 0.01 to 0.05 mm.
Cook is directed to process for depositing wire material to a substrate [Abstract]. Cook discloses, in Fig. 4, a wire 10 comprising outer portion 12 and inner portion 14. The outer portion has “a diameter between about 0.0005 inch and 0.002 inch” [Col. 4, line 52], and the inner portion has a diameter / “thickness of between about 0.0001 inch and 0.002 inch” [Col. 5, line 3]; that is, the outer portion has a diameter between about 0.01 mm and 0.05 mm, and the inner portion has a diameter / thickness between about 0.003 mm and 0.05 mm. The inner portion’s diameter corresponds to the claimed diameter, and falls within the claimed range.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the solid wire has a diameter of 0.01 to 0.05 mm. This is a known wire diameter, applied to a known wire, to achieve predictable results.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 ELIZABETH KERR whose telephone number is (571)272-3073. The examiner can normally be reached M - F, 8:30 AM - 4:30 PM.
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761
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