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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 16-20, claim 16 recites that the MXene-PAN fiber and the polymer fiber are intertwined with each other to form a braided structure. Applicants’ specification as originally filed does not appear to teach the claimed limitation.
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 16-20 are rejected under 35 U.S.C. 103 as obvious over “MXene-Based Fibers, Yarns, and Fabrics for Wearable Energy Storage Devices” to Levitt in view of CN 104278388 to Pan.
Regarding claims 16-20, Levitt teaches techniques used to produce MXene-based fibers, yarns and fabric and the progress in architecture design and performance metrics are highlighted (Levitt, Abstract). Levitt teaches that MXenes have the general formula Mn+1XnTx, where M is an early transition metal (n=1-4), X represents carbon and/or nitrogen, and Tx represents the surface terminations (-O, -OH, -F, -Cl) (Id., page 2 of 22). Levitt teaches that there are two approaches to introduce active materials into textile-based architectures in order to achieve the desired energy storage function, including coating fibers or yarns, or introducing active material into a spinning formulation and produce customized composite fibers by melt spinning, wet spinning, electrospinning, or other methods (Id., page 6 of 22, Figure 3). Levitt teaches that to spin composite fibers including polyacrylonitrile (PAN)/Ti3C2Tx fibers, MXene was dispersed in a variety of organic solvents, including DMF for spinning PAN, wherein single to few-layer flakes and multilayer MXene particles can be trapped within individual nanofibers (Id., pages 8 of 22, 14 of 22). Levitt teaches that the fibers comprise 16 wt% MXene (Id., Figure 3). Levitt teaches that MXene fibers can be electrospun around polyester yarn in a core-shell architecture, wherein the strength of the yarn is attributed to the polyester core (Id., page 8 of 22). Note that Table 1 shows that polyester is polyethylene terephthalate (see also Id., page 8 of 22). Levitt teaches that MXene spun fibers exhibit a range of conductivity values from ≈ S cm-1 to ≈ 7750 S cm-1 (Id., page 9 of 22). Levitt teaches that the morphology is advantageous for wearable applications and wearable heaters (Id., pages 8 of 22, 18 of 22, Figure 9).
Regarding the manner of forming the composite fibers, the limitations are interpreted as product by process limitations. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even 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, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Levitt teaches that the fiber/yarn electrodes are typically fabricated into textile super-capacitor devices following various designs, including twisted configurations (Levitt, page 14 of 22). Levitt does not appear to teach that the fibers are intertwined with each other to form a braided structure. However, Pan teaches a conductive doubled and twisted yarn which comprises a plurality of elastic fibers, a plurality of conductive fibers and a plurality of adjusting fibers (Pan, Abstract). Pan teaches that the elastic fiber is a synthetic polymer fiber, the conductive fiber may be a carbon fiber or organic conductive fiber, and that the adjusting fiber includes one or more combinations of polyester fibers, polyamide fiber, polyacrylonitrile fiber, polyethylene fiber, and polypropylene fiber (Id., paragraphs 0012-0015). Pan teaches that the yarn is simple in structure and smart in design, such that the yarn is greatly favorable for improving the stability, durability, and convenience of the fabric made (Id., Abstract). Pan teaches that the fabric woven with the twisted yarn has high elasticity, high resilience and conductivity (Id., paragraph 0019). Note that as shown in at least Figures 1 and 2, the fibers appear intertwined with each other to form a braided structure. Pan teaches that the yarns are suitable for use in clothing fabrics, such as integration of electrical devices into clothing (Id., paragraphs 0002, 0019, 0035).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the MXene fibers of Levitt, wherein the MXene fibers are intertwined with polymer fibers, such as taught by Pan, motivated by the desire of forming a conventional MXene fiber for use in a fabric structure having predictably improved stability, resilience, and conductivity, suitable for use as integration of electrical devices into clothing.
Regarding claims 19 and 20, the prior art combination teaches that the morphology is advantageous for wearable applications and wearable heaters (Levitt, pages 8 of 22, 18 of 22, Figure 9). The prior art combination teaches a textile heater made by sewing MXene yarns into a woven cotton glove (Id., Figure 9). Note that the yarns are within the scope of the claimed wires.
Response to Arguments
Applicant’s arguments have been considered but are moot based on the new ground of rejection.
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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER Y CHOI/Primary Examiner, Art Unit 1786