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 amendment filed December 12, 2025 has been received and entered. With the entry of the amendment, claims 1-13 and 21-24 are canceled, and claims 14-20 are pending for examination.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 14-20, in the reply filed on August 15, 2025 is acknowledged. It is noted that non-elected claims 1-13 and 21-24 have been canceled by the amendment of December 12, 2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: free meniscus coating apparatus in claim 14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
It is understood that “resistively heated” as to the “flexible resistively-heated conductive filament” in claim 14 means that the end product filament can be resistively heated. Note the statement at page 6 of the amendment of December 12, 2025.
Claim Rejections - 35 USC § 112
The rejection of claims 14-20 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 is withdrawn due to the amendments of December 12, 2025.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/169843 (hereinafter ‘843, used as provided with the IDS of August 29, 2023) in view of Lorch et al (US 2528009) and Chin et al (US 2010/0151228).
Claim 14: ‘843 teaches a color changing filament/fiber and a method for making such a filament (note page 3, lines 5-15, page 16, lines 1-15). The method would include providing a black backing coating composition (since such is to be coated on the filament) and a flexible conductive filament (understood to be “restrictively heated” conductive element to the extent claimed since a metallic wire can be used as the filament, and as well, it is indicated that the filament can have good conductive properties, and the end product can be resistively heated, note page 14, lines 5-15, page 15, lines 20-30, filament can be provided with power from an electric current to heat for color change), and coating the filament with the black backing composition (note page 8, line 10 to page 9, line 10). Then, a liquid crystal composition is provided and coated over the filament with the black backing composition applied to provide a liquid crystal layer on the filament (note page 8, lines 10-20, page 16, lines 1-10, where the liquid crystal layer would initially coat the filament before the next coating or at least be suggested to do so with an expectation of predictably acceptable results, as providing the liquid crystal layer would provide the base for the next layer application) . Then, the liquid crystal coated filament is coated with a transparent protective polymer to form a color changing filament (note page 8, lines 10-20, page 9, lines 15-35, page 16, lines 1-10).
As to the specific coating methods for the black backing composition and liquid crystal composition,
Lorch teaches a method of coating a wire/filament that allows the coating of a variety of materials, including enameling, latex, and aqueous dispersion of polymer material (note column 1, lines 1-25). The method includes providing a coating apparatus (which corresponds for 35 USC 112(f) purposes with applicant’s described free meniscus coating apparatus, note how the wire/filament would be drawn up through an entryway hole passage that would have an orifice size to prevent liquid from flowing down and out the passage/opening, and into an inverted wider opening area at the top that gives a free surface where there is no wiping action on the wire from the walls, which would be the equivalent or at least substantially equivalent to that described by applicant), where the material to be coated would be provided to the apparatus as a coating liquid (at the cup/inverted wider opening, and the filament would be drawn up through the apparatus (note figures 1, 2, column 1, line 25 to column 2, line 10). After coating, the filament would pass through the apparatus area and be collected on a spool/reel 10 (note figure 1, column 3, lines 15-30).
Chin notes how liquid crystal material to be coated can be provided in an aqueous solution/dispersion form with a controlled viscosity (note 0021-0023).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify ‘843 to provide coating with the liquid black backing composition by providing the composition in liquid form to the apparatus of Lorch, and drawing the filament up through the coating apparatus to coat the filament with a layer of the black backing composition, then further providing the liquid crystal composition of predetermined viscosity to an apparatus as in Lorch and drawing the black backing coated filament through the coating apparatus to coat with at least one liquid crystal layer to form a liquid crystal coated filament before coating the transparent protective polymer and then collecting the coated filament on a spool as suggested by Lorch and Chin with an expectation of providing a desirable coating system that can coat the different layers as desired, since (1) ‘843 indicates the filament can be coated with black backing composition, and Lorch indicates a desirable coating system that can coat a variety of materials, provided in a liquid, as discussed above, and thus would give a desirable apparatus to use coating the black backing composition, and provide coating by drawing the filament up through the coating apparatus to coat the filament with a layer of the black backing composition, (2) as to the second coating of the liquid crystal, ‘843 describes coating the liquid crystal coating as an intermediate coating that would be under the outer protective coating, and Lorch indicates a desirable coating system that can coat a variety of materials, including polymer dispersions, where Chin would indicate that liquid crystal coating can be provided of similar materials with a desired predetermined viscosity, and Lorch would indicate to provide coating by drawing the filament up through the coating apparatus to coat the filament with a layer of the composition, where while Lorch does not show the two sequential coatings, it would have been an obvious manner of duplication of parts to provide a second application device to apply the liquid crystal polymer composition after the black backing composition applicator to allow the desired multiple coatings to be applied, the same effect of coating would be applied (note MPEP 2144.04(VI)(B)), and similarly for the desired protective polymer coating can also be provided in sequence to efficiently apply all coatings in a single applicator system, where when using more than one applicator, each can be considered as part of the overall coating apparatus system, (3) as to collecting the resulting color changing filament on a spool, this would further be suggested by Lorch, which indicates how the resulting product wire can be would up on a take out reel/spool. The apparatus can be considered a free meniscus coating apparatus as all the features described as needed for such an apparatus is present. Note Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)..
Claim 17: as to the viscosity of the liquid crystal coating composition, Chin further describes how such a liquid crystal coating composition can be an aqueous composition, where the viscosity can be kept in the range of 800-2000 cps or 1000-1100 (cP), in the claimed range (note 0022-0023, 0031), giving suggested features to use.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over ‘843 in view of Lorch and Chin as applied to claims 14 and 17 above, and further in view of Haubs et al (US 5156888).
Claim 15: as to the filament transported vertically up through in-line stages applying the black backing composition and liquid crystal composition and is transported down for coating with the protective polymer, Lorch shows vertical transport upwards when coating with its applicator (note figure 1), so when using the applicator for the black backing composition and liquid crystal composition as discussed for claim 14 above, there would be upward in-line vertical movement through these stages, and Lorch shows after the coating stages the is a further transport in a downward movement to the spool (figure 1).
As to applying the protective polymer while moving the filament downwards, Haubs further describes a system for applying polymeric coatings to fibers (note column 1, lines 5-10), where the filament is passed downwards through a bath of the polymer for coating (note figure 1, column 2, lines 20-65),
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify ‘843 in view of Lorch and Chin to provide the protective p9olymer coating while moving the filament downwards as suggested by Haubs with an expectation of predictably acceptable results, since Lorch would indicate how coating can be applied while moving vertical upwards (which for here would be applying the black backing and liquid crystal polymer coatings), and then the filament would be moved vertically downwards to a spool, and since a third protective polymer coating needs to be applied after the first two coatings, Haubs would show that placement of the protective polymer coating would be predictably and acceptably provided in line after the switch to moving downwards, and it shows a desirable system for coating filaments with polymer can be used while the filament is moving downwards.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over ‘843 in view of Lorch and Chin as applied to claims 14 and 17 above, and further in view of Viol (US 2005/0066896).
Claim 16: As to treating the filament prior to coating with the black backing composition to improve adherence of this composition, and then treating the filament coated with the black backing composition to improve adherence with the liquid crystal, as to treating the filament coated with the black backing composition, Lorch indicates to heat the applied coating with oven 3 (note figure 1, column 3, lines 15-30). It is understood that providing such heating, at the least, solvent/water is removed, providing a set coating on the filament, which would make the black backing composition more adherent, and the resulting liquid crystal coating have better adherence with the backing composition as the backing composition would have less chance of sliding, dripping from the filament.
Further as to treating the filament prior to coating with the black backing composition, Viol indicates that before coating a metal wire/filament, most such wires are made by drawing, and it is desirable to pretreat such wires before coating to remove lubricant remainders (note 0002, 0003), and indicates to provide a process to clean and surface activate the wires, helping subsequently applied coating adhere to the wire (note 0009-0010).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify ‘843 in view of Lorch and Chin to provide the pretreatment to the filament as described by Viol before applying the black backing composition as ‘842 indicates metal filaments can be used, and Viol indicates pretreating metal filaments/wires before coating to improve adhesion of further applied coatings.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over ‘843 in view of Lorch and Chin as applied to claims 14 and 17 above, and further in view of Nakano (US 5508068).
Claims 18-20: as to the filament as a metallic wire adapted to be resistively heated by the passage of electric current, ‘843 provides that the filament can be a metal wire (note page 8, lines 20-25, page 9, lines 1-7), and the filament can be provided with power from an electric current to heat for color change (giving resistive heating) (note page 14, lines 5-15, page 15, lines 10-36). ‘843 notes reaching a temperature of at least 35 degrees C for color change (note page 20, lines 5-10). As to the temperature change difference, cycling repeatedly, and the color change over a full spectrum,
Nakano describes color changing liquid crystal compositions that can be used for coating (note column 1, lines 10-25). Nakano describes color change over an entire spectrum (note column 25, lines 25-25), where different color changes occur at a range of about Δ1 degree C, for example (note change from 31-32 degrees, 33-34 degrees C, etc. (note column 25, lines 25-35).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify ‘843 in view of Lorch and Chin to use liquid crystal material as in Nakano with an expectation of providing a desirable color changing material, since ‘843 uses color changing liquid crystal that changes color with heat, and Nakano indicates that a similar material can be used, where this gives a desirable color change over an entire spectrum, and where color change can occur over about a Δ1 degrees C. If further would be understood or suggested that the cycles occur repeatedly without damaging the wire filament, due to the low temperature of use and desire to have the color changing occur.
Bowker et al (US 2022/0145498) is the US national stage application for ‘843.
Response to Arguments
Applicant's arguments filed December 12, 2025 have been fully considered.
(1) As to the claim interpretation under 35 USC 112(f), it is argued that the lack of the word “means” presumes no intent to invoke 35 USC 112(f), and “free meniscus” precedes coating apparatus, where “free meniscus” refers to the interface between the wire substrate and coating liquid, and “free meniscus coating apparatus” is a term of the art referring to a coating system characterized by the free meniscus, and terms with a structural modifier before a generic term, routinely do not invoke means plus function analysis. It is also argued that if invoked would read on a wire coating apparatus where the interface between the wire substrate an liquid coating material is a free meniscus, the structure and materials described in the specifical and equivalents thereof.
The Examiner remains of the position that the term invokes 35 USC 112(f), where although means are not used, and noted in paragraph 7 above, use of the term ‘means’ is not required in this case where there is the generic place holder ‘apparatus’ and functional language ‘free meniscus coating’ without sufficient structure recited. There is no showing by applicant’s attorney that the referred to ‘free meniscus coating apparatus’ has a known understanding. Rather, this argument appears to be merely attorney arguments. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.")The Examiner has described in the rejection of claim 14 what appears to be required by the free meniscus coating apparatus from the disclosure in the specification, and that position is maintained.
(2) As to the 35 USC 103 rejections, it is argued that ‘843/Bowker does not disclose a black backing layer on a wire, where even if the coating is black it is not backing the LC (liquid crystal) material, and does not contemplate one as thin as that contemplated with a free meniscus coating method. The Examiner disagrees. ‘843 notes that the initial core wire/filament can be “coated to provide a black surface” which is to have an overlying liquid crystal layer (note page 8, lines 30-35), and this would therefore provide a black backing layer (black layer backing the liquid crystal layer, since that layer is provided over the black layer). As to the thinness or thickness of the black layer, there is no limitation as to the thickness in ‘843 or the present claims, and thus the described coating methods using Lorch and Chin understood to meet the claim requirements.
As to Lorch teaching a free meniscus coating apparatus, but not use for coating LC on a wire or black backing, and Chin not directed to a filament, black background etc., the Examiner is of the position that, as noted above, the black backing layer is suggested from ‘843, and the coating methods suggested by Lorch and Chin (note discussion in the rejections above).
As to the free meniscus coating method being the only method that can made the extremely thin functional layers, no specific thickness is required or claimed.
As to a requirement of the predetermined viscosity to work, this is not claimed, merely a predetermined viscosity. Chin notes the general use of a predetermined viscosity when providing an LC composition, which would be expected to be usable as the viscosity can be provided as desired. When, going from a die to a meniscus coating, this still provides layers can be applied on a wire material. As to the use of dies and the obvious matter of duplication, while the coating liquids may be different for the different layers, duplicate uses of the same applicator would be predictably and acceptably used as showing how layers can be applied. Successive application would be considered acceptable as the LC can be coated over the wire/filament to give a core then LC coating applied in ‘843.
As to claim 15, it is argued that it would not have been obvious to go from one step application to requiring different applicators. The Examiner disagrees, where ‘843 indicates how the core wire can be coated with the black backing, then LC applied, since the core is indicated as acceptably being the black backing coated wire, and this is to be further have LC applied, indicating multiple processes can be used.
As to claims 18-20, it is argued that Nakano does not teach LC coated filaments, and so cannot make obvious operational parameters of such filaments. However, Nakano is cited for teaching specific LC material features it is desirable to provide. The other references are cited as to how coating would be provided.
Therefore, the rejections above 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 KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718