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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 recites 10% or more while claim 1 form which it depends recites 15% or more. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 102/103
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.
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 1-3, 10, 13-15, 19-20 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marzocchi et al. (US Pat. 3,091,561).
Regarding claims 1-2, 14-15 and 26, Marzocchi et al. teach a co-filament comprising a first filament (glass filament 13) and a second filament (metal filament coating 30) wherein the first filament and the second filament are physically and/or chemically connected to each other to form a co-filament [1:10-20 and Fig. 6]. The first filament consists of an inorganic substance (glass) and has a Tg in the claimed range as glass is taught and the first filament has a glass transition greater than the melting temperature of second filament. The second filament is made from a metallic material solidified onto the first filament and a contact area between the first filament and the second filament greater than or equal to 15% and less than or equal to 95% of a circumference of the first filament as the first and second filament are taught as partial coating is taught. Given Marzocchi et al. teach the cofilament as a conductor, it would have been obvious to one of ordinary skill in the art to have the cofilament to have an electrical resistance in the claimed range in order provide the improved conductivity and arrive at the claimed invention.
Regarding claim 3, Marzocchi et al. teach the first filament is glass fiber which is made from metal oxides and possesses the claimed bound oxygen content inherently since having an bound oxygen content in glass fiber lower than the claimed range would not form a fiber and further the typical bound oxygen content of glass fibers is 40% or more. Marzocchi et al. are silent regarding the claimed silicon dioxide fraction percent. However, since most commercial glass fibers contain greater than 45 mass% silicone dioxide fraction, it would have been obvious to one of ordinary skill in the art to arrive at the claimed silicon dioxide fraction percent and further it would have been obvious to use the claimed amount of silicon dioxide fraction since silicon dioxide is the primary network former for glass because it provides strength and therefore would be used in the claimed amount to improve fiber strength and arrive at the claimed invention.
Regarding claims 10 and 13, Marzocchi et al. is silent regarding the claimed transverse extension of the first filament and of the cofilament. However, given Marzocchi et al. teach such similar filament mads of such similar material as glass, the claimed property of extension of the first filament is inherent to the filament of Marzocchi et al.
Regarding claim 19, the co-filament is configured to conduct electrical currents since it’s made of metal and such similar materials.
Regarding claim 20, Marzocchi et al. teaches a method for producing a cofilament according to claim 1 comprising forming the first filament with a nozzle drawing manufacturing method or spinning method and at least partially coating the first filament with the second filament [Fig. 1-2].
Claims 5, 7-9, 21-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Marzocchi et al. (US Pat. 3,091,561) as evidenced by PG Pub. 20050129942, PG Pub. 20080233380, KR 20100091537 and WO 2019162390.
Regarding claim 5, Patrick teaches glass fiber, but is silent regarding the aluminum oxide content. However, it would have been obvious to one of ordinary skill in the art to choose E-glass or S-glass which has the claimed aluminum oxide glass content or to arrive at the claimed aluminum oxide content in order to affect the strength, glass temperature, chemical durability or reduce cost as is known in the art.
Regarding claim 7, Marzocchi et al. are silent regarding the claimed basalt filament. However, PG Pub. 20050129942, PG Pub. 20080233380, KR 20100091537 and WO 2019162390 all evidence basalt fiber as an equivalent alternative to glass fiber and more specifically both basalt filament and glass filaments as known reinforcements in the art of conductors and composites and it would have been obvious to one of ordinary skill in the art to use basalt as an alternative to glass filament as is known in the art. See MPEP 2104.06 II.
Regarding claim 8, Marzocchi et al. teach ensuring an aluminum looking color and teach the metal can be any metal. Therefore, it would have been obvious to one of ordinary skill in the art to use aluminum in the claimed amount as the second filament in order to have the desired look without the need to create the look of aluminum and arrive at the claimed invention.
Regarding claim 9, Some minor covalent bonding between the metal and glass fiber can occur. Further, even if Marzocchi et al. does not disclose the claimed method of connecting, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed method and given that Marzocchi et al. meets the requirements of the claimed cofilament, Marzocchi et al. clearly meet the requirements of present claims cofilament.
Regarding claims 21-22, Marzocchi et al. teach a co-filament comprising a first filament (glass filament 13) and a second filament (metal filament coating 30) wherein the first filament and the second filament are physically and/or chemically connected to each other to form a co-filament [1:10-20 and Fig. 6]. The first filament consists of an inorganic substance (glass) and has a Tg in the claimed range as glass is taught and the first filament has a glass transition greater than the melting temperature of second filament. The second filament is made from a metallic material solidified onto the first filament and a contact area between the first filament and the second filament greater than or equal to 15% and less than or equal to 95% of a circumference of the first filament as the first and second filament are taught as partial coating is taught. Given Marzocchi et al. teach the cofilament as a conductor, it would have been obvious to one of ordinary skill in the art to have the cofilament to have an electrical resistance in the claimed range in order provide the improved conductivity and arrive at the claimed invention.
Regarding claim 24, Marzocchi et al. teach a co-filament comprising a first filament and a second filament wherein the first filament comprises an inorganic substance having a glass
transition temperature greater than a melting temperature of the second filament, and the second
filament comprises a metallic material at least partially coated to the first filament via melting to
form the co-filament, wherein the co-filament is free of composite material. Marzocchi et al. are silent regarding the glass fiber being basalt. However, PG Pub. 20050129942, PG Pub. 20080233380, KR 20100091537 and WO 2019162390 all evidence basalt fiber as an equivalent alternative to glass fiber and more specifically both basalt filament and glass filaments as known reinforcements in the art of conductors and composites and it would have been obvious to one of ordinary skill in the art to use basalt as an alternative to glass filament as is known in the art. See MPEP 2104.06 II.
Claims 12 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Marzocchi et al. (US Pat. 3,091,561) in view of Whitehurst et al. (US Pat. 2,772,518).
Regarding claim 12, Marzocchi et al. teaches the metal can be applied by the use of the device from US Pat. 2,772,518 by Whitehurst et al. Whitehurst et al. teach how to vary the thickness of the coating and to make the coating to the desired thickness. It would have been obvious to one of ordinary skill in the art to use any thickness, including that presently claimed as taught by Whitehurst et al. in Marzocchi et al. in order to affect the mechanical and electrical properties of the fiber and arrive at the claimed invention.
Regarding claim 23, Marzocchi et al. teaches the metal can be applied by the use of the device from US Pat. 2,772,518 by Whitehurst et al. Whitehurst et al. teach how to vary the thickness of the coating and to make the coating to the desired thickness. It would have been obvious to one of ordinary skill in the art to use any thickness, including that presently claimed as taught by Whitehurst et al. in Marzocchi et al. in order to affect the mechanical and electrical properties of the fiber and arrive at the claimed invention.
Response to Arguments
Applicant’s arguments with respect to the claims 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.
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 SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Shawn Mckinnon/Examiner, Art Unit 1789
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