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 .
This is the initial Office action based on application number 18/281881 filed September 13, 2023. Claims 14-26 are currently pending and have been considered below.
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: the movement element in claim 14 and the winding machine in claim 19.
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. A review of the specification indicates that the corresponding structure for the movement element is a roller and/or robot arm, and there is no corresponding structure provided for the winding machine.
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.
Claim 15 recites “at least one condenser” that surrounds and creates an electromagnetic field within the CVD chamber. The figures show this clearly refers to a charge electrode arrangement, while the term “condenser” is a very old term to refer to a capacitor. As Applicant is their own lexicographer, there is nothing unclear about the usage of this term “condenser”, however for the purposes of examination it will be understood as it is clearly shown to be in the figures- an electrode arrangement which surrounds the chamber and creates an electromagnetic field.
Additionally, claims 19 and 21-24 recite a number of limitations that appear to be limiting the product made by the instant production system, i.e. the fabric (14) and radar absorbing structure (15). These are not parts of the production system, but rather products made by the apparatus. Therefore, these limitations do not impart any patentability to the system claims, and are rather tantamount to intended use limitations. See MPEP 2111.01 and 2114-2115.
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 19-20 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 limitation “winding machine (13)” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification merely states that the winding machine automatically knits the fabric but fails to discuss any actual structure or mechanism associated with this function. Further, figure 1 merely shows a conical element as the “winding machine (13)” with no corresponding discussion or description of the device itself. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 19 recites the limitation "the radio waves" in claim 14. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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.
Claims 14, 19, 21-24 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Malecki et al. (US 2013/0071565).
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).
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 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 26: Malecki et al. discloses the above winders (220, 222) which are circular and as such can be considered rollers (par. 86).
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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Malecki et al. as applied to claims 14, 19, 21-24 and 26 above.
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).
Claims 15, 17 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Malecki et al. as applied to claims 14, 19-24 and 26 above and further in view of David et al. (US 2004/0144314).
Regarding claim 15: 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).
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 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).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Malecki et al. and David et al. as applied to claims 14-15, 17, and 19-26 above and further in view of Slafer (US 2009/0194505).
Regarding claim 16: 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).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Malecki et al. and David et al. as applied to claims 14-15, 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).
Conclusion
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
4/7/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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