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 July 16, 2026 was received. Claims 14, 17 and 19 were amended and claims 15-16 were cancelled.
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 April 17, 2026.
Claim Interpretation
Applicant has stated on the record that the structure of the claimed “winding machine” is implicitly known in the art to be a component which receives treated fiber and forms the fiber into fabric, and therefore the claimed “winding machine” no longer invokes 35 U.S.C. 112(f), and the corresponding 35 U.S.C. 112(b) rejection has been withdrawn. The “movement element” of claim 14 remains interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The rejections of claims 19-20 as indefinite under 35 U.S.C. 112(b) are withdrawn because “winding machine” no longer invokes 112(f) as discussed above, and because the antecedent basis issue in claim 19 has been fixed in the amendment.
Claim Rejections - 35 USC § 102
The claim rejections under 35 U.S.C. 102(a)(1) as anticipated by Malecki et al. (US 2013/0071565) on claims 14, 19, 21-24 and 26 are withdrawn because Applicant amended independent claim 14 to include subject matter from now-cancelled claims 15 and 16.
Claim Rejections - 35 USC § 103
Claims 14, 17 and 19-26 are rejected under 35 U.S.C. 103 as being unpatentable over Malechi et al. in view of David et al. (US 2004/0144314) and Slafer (US 2009/0194505).
Regarding claim 14: Malecki et al. discloses a nanostructure production apparatus for coating carbon nanostructures such as graphene onto fibers (par. 35 and 40) including multiple baths, one of which can be used to apply a barrier coating to the substrate via dipping it in the bath, the barrier coating including CNS-forming catalysts which include transition metals (par. 90, 93, 99, 110), a chemical vapor deposition growth system for depositing CNS materials such as graphene onto the fiber coated with the barrier coating (par. 30), at least a second bath which can contain iron as a transition metal (par. 42, 99-100), at least one winder (220, 222) powered by motors (230, 232) which form a movement element (pars. 85-86), and a system (200) which is an overall control unit that moves the fiber through the various stations by way of the winders (par. 51, 90) thereby sequentially treating the fiber with the above materials, where various parameters such a temperature, gas pressure and conveying speed (i.e. residence time) are controlled to achieve a desired CNS length and density deposited onto the fiber (par. 32, 66, 70, 78, 121, 132).
Malecki et al. discloses components with the CVD apparatus (100) which can create a magnetic and/or electric field to align the growth of the graphene CNS to be vertical (par. 69, 90, 129, 131), but does not show or describe these components and therefore fails to explicitly disclose a condenser to surround the chamber. However, David et al. discloses a similar fiber treating apparatus having a vapor deposition chamber surrounded by an electrode arrangement which creates an electric/electromagnetic field inside the chamber (par. 19-21, 64, figure 3). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an electrode arrangement like that of David et al. to generate the electric/magnetic fields of Malecki et al. because using a known device (electrode surrounding a chamber) for a known technique (forming a field within a chamber) is not considered to be a patentable advance (MPEP 2143).
Malecki et al. discloses sensors such as cameras as part of the system (200) configured to analyze CNS growth progress, which is real-time thickness measurement (par. 51, 91) but fails to explicitly disclose that the sensors can be laser sensors which send laser beams onto the substrate to do this measurement. However, Slafer discloses a similar vapor deposition apparatus for coating a fiber (41) which includes a plurality of sensors (44) for in situ monitoring of the coating coverage on the fiber (41) and teaches that laser beams can be used for this monitoring (pars. 31-32, figure 4). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use laser sensors like those of Slafer rather than the camera sensors of Malecki et al. because Slafer teaches that laser sensors are functionally equivalent to cameras for this purpose (par. 32) and simple substitution of functional equivalents is not considered to be a patentable advance (MPEP 2143, 2144.06).
Regarding claim 17: Malecki et al. discloses that the CVD apparatus (100) has an inlet end (118a) and an outlet end (122a) which are similar in diameter to the substrate (106) (par. 50, figure 1), as “almost exactly the same diameter” is a fairly broad phrase, and teaches that the apparatus (100) allows the CNS growth on the substrate (106) to be uniform (par. 124), i.e. homogenous, but fails to explicitly disclose a sealing element preventing gaps between the substrate (106) and the ends (118a, 122a). However, David et al. discloses a similar vapor deposition apparatus which has a Teflon pass-through (26) which is a sealing member that provides leak-proof access into the chamber for the fiber (par. 36, figure 1). 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 leak-proof pass-through like that of David et al. for at least one of the inlet end (118a) and outlet end (122a) of the chamber (100) of Malecki et al. because David et al. teaches that this prevents leaks from the chamber (par. 36).
Regarding claim 19: Malecki et al. discloses that the system (200) includes winders (220, 222) which wind and spool the fiber substrate (106) which can be considered a way of automatically knitting them (par. 86). Malecki et al. teaches that the system can create a carbon fabric having a network of conductive graphene (par. 35, 95-96) and while Malecki et la. fails to explicitly disclose that this network on the fabric enables radio waves to be routed, 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). In this case since the structure is the same as that claimed, it is expected that it would have the same radio wave routing properties.
Additionally, the limitations regarding the fabric being made by the apparatus are deemed to be statements with regard to the intended use and is not further limiting in so far as the structure of the apparatus is concerned. 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. In the instant case the apparatus of Malecki et al. is capable of making this same product.
Regarding claim 20: Malecki et al. discloses that the system (200) is configured to perform the barrier coating with a transition metal containing CNS-forming catalyst on the fiber substrate (106) (par. 90, 93, 99, 110), and then convey the fiber substrate (106) into the CVD deposition apparatus (100) where residence time is determined by desired growth density, temperature, pressure and gas composition (par. 32, 66, 71), and then wind or knit the substrate (106) automatically by way of a winder (222) (par. 86-86, figure 4). Malecki et al. fails to explicitly disclose that the iron coating bath is configured to apply the iron-based nanoparticles onto the graphene-coated fiber (106).
However, Malecki et al. does state that the system (200) can include sizing or impregnation components which impregnate CNS-infused fibers with additional materials such as polymers and metals (par. 90), and teaches various metals for these processes can include iron-containing materials and teaches that various materials can be applied via a bath or by spraying (par. 41-42, 99-100, 114-118). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to try performing one of these sizing or impregnation steps after CNS application using an iron coating unit (bath/sprayer) because performing a known technique (such as metal matrix sizing or metal impregnation) with a known element (iron-containing dip bath/sprayer), as well as trying from a finite number of solutions or combinations, are not considered to be patentable advances (MPEP 2143).
Regarding claims 21 and 22: Malecki et al. discloses that the fiber substrate (106) can include glass fiber and carbon fiber such that the fabric made includes a glass fiber and/or a carbon fiber (par. 40, 95-96). While Malecki et al. does not explicitly discuss how these fibers interact with radio waves, as discussed above this is considered to be both an inherent property limitation as well as an intended use limitation overall, since these claims are drawn to the fabric made by the apparatus and not the apparatus itself.
Regarding claim 23: While Malecki et al. does not explicitly discuss how these fibers interact with radio waves, as discussed above this is considered to be both an inherent property limitation as well as an intended use limitation overall, since these claims are drawn to the fabric made by the apparatus and not the apparatus itself.
Regarding claim 24: This claim is drawn solely to the intended use of the product made by the instant apparatus, and as such does not limit the apparatus in any way whatsoever. The apparatus of Malecki et al. is clearly capable of making a product usable in an air/space/marine vehicle.
Regarding claim 25: Malecki et al. and David et al. disclose the above apparatus with the Teflon pass-through (26) which is, by definition, a gasket (see David et al. figure 1).
Regarding claim 26: Malecki et al. discloses the above winders (220, 222) which are circular and as such can be considered rollers (par. 86).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Malecki et al., David et al. and Slafer as applied to claims 14, 17 and 19-26 above and further in view of Ha et al. (US 2002/0170496).
Regarding claim 18: Malecki et al. and David et al. fail to explicitly disclose that the system (200) is configured to enable the substrate to exit the chamber and automatically re-enter it by way of the winders such that the fiber surrounds the chamber spirally. However, Ha et al. discloses a similar vapor deposition apparatus having a chamber (60) provided with a plurality of through-holes (68) where the sheet-like substrate is wound through one hole (68) and out another (68), only to automatically re-enter the chamber (60) by way of a tension roll (67) such that the substrate surrounds the chamber (60) in a somewhat spiral fashion (pars. 115-119, figure 6). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an entry and exit arrangement similar to that of Ha et al. for the chamber of Malecki et al. because Ha et al. teaches that this helps improve space utilization while allowing large quantities of substrate to be processed rapidly (pars. 126-128).
Response to Arguments
Applicant's arguments filed July 16, 2026 have been fully considered but they are not persuasive. Applicant primarily argues that Malecki et al., David et al. and Slafer fail to explicitly tie the sensors to the control unit such that the thickness determined by the sensors triggers the control unit sending the fiber to the iron coating unit.
In response:
First of all, Applicant is reading the claims far too narrowly. Claim 14 merely requires that the control unit “transmit the fiber (2) to the iron coating unit (5) by means of the movement element (6) when the thickness value determined by the user is achieved”. This limitation in no way ties this thickness value to the measurements received by the sensors, it merely states that the fibers are moved to the next process once the desired thickness has been achieved, which Malecki et al. explicitly teaches. Applicant is reminded that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Second, even if the claims did more specifically require the signal from the sensors to trigger the movement element to move the fiber to the iron coating unit, this is still similar enough to how Malecki et al. operates- Malecki et al. uses the cameras to analyze CNS growth, which means the thickness is monitored continuously, and while Malecki et al. does not explicitly say why the thickness is monitored, one of ordinary skill in the art would clearly understand in-situ monitoring of CNS growth is done specifically to ensure that the desired thickness is achieved. This means the only reasonable explanation for such an analysis function would be to identify when the growth has reached the desired amount, and ensure that the process continues correctly after this. E.g., the system (200) would show an alert or alarm if the growth is not occurring as expected, and conversely allow the continuation of the process if the growth does proceed as expected. While not explicitly stated by Malecki et al., this is a reasonable reading of the disclosure by one of ordinary skill in the art. Furthermore, case law exists suggesting automation of an otherwise manual process (inputting parameters) is not a patentable advance (MPEP 2144.04), such that even if not considered inherent, this monitoring is still obvious.
Finally, Applicant’s arguments state that the thickness in Malecki et al. is determined by the user-input parameters like residence time and conveyance speed, and therefore the thickness measurement cannot automatically trigger the next stage of the process. However, this argument completely ignores that the exact same process is done in the instant claim 14. Claim 14 requires “the control unit (7) is configured to determine the time that the fiber (2) will remain in the deposition unit (4) according to the temperature and/or pressure and/or time parameters determined by the user, thereby depositing graphene and/or graphene-based nanoribbons of different densities and/or lengths on the fiber (2)” (emphasis added). This is explicitly the same thing that the system (200) of Malecki et al. does, and therefore Applicant’s arguments that this precludes the sensor determined thickness from controlling the next stage is tantamount to an argument against their own invention operating. Applicant cannot have it both ways- the residence time cannot be both determined beforehand by a user and also controlled solely by a sensor once it produces a specific signal. Such an arrangement within the claim would clearly be both a 112(b) indefiniteness issue as well as a 101 enablement issue.
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
8/19/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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