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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on 13 February 2026 is acknowledged.
Claims 15-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the aforementioned reply. Examiner does not understand Applicant’s generic statements qualifying their election without traverse to supersede any normal patent examination protocol, rules, laws, etc. drawn to the same. As indicated, the election has been considered to be one made without traverse, according to normal procedures that govern the same.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “frame” introduced in claim 6 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The present invention claimed as a “kit” (e.g., a collection of parts for use together) has been considered as a manufacture/product and has been examined accordingly, although individual features themselves could be considered as different inventions of different categories (e.g., the one or more e-beam physical vapor deposition systems as an apparatus for performing a process on an article worked upon and the structural liner as an article worked upon by an apparatus). However, notably, the kit is not considered commensurate to a final product produced by use of the kit (i.e. “a structure with the metallic structural shell on the liner”).
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: claim 1 e-beam physical vapor deposition system which has been interpreted as a material source capable of receiving electron beams, and equivalents thereto, as illustrated in Fig. 5 and set forth at para. 5 of the specification.
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.
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.
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.
Claim(s) 1 and 4-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP Patent Pub. No. 2003-247693 to Tsunoda et al. in view of U.S. Patent No. 2013/0101770 to Joshi et al. and U.S. Patent Pub. No. 2022/0195589 to Ignatiev.
In Fig. 4, e.g., Tsunoda et al. disclose a “kit” capable of manufacturing a structure in space substantially as claimed, the “kit” comprising: an inflatable bladder (e.g., 43) having an internal wall (configured to define an internal space of the structure when the bladder is inflated; a structural liner (e.g., 41 and 42) coupled to the internal wall of the inflatable bladder.
However, Tsunoda et al. fail to disclose one or more physical vapor deposition systems configured to be positioned within the internal space of the structure when the bladder is inflated, the one or more deposition systems capable of forming a metallic structural shell on the structural liner.
Joshi et al. disclose a “kit” capable of manufacturing a structure in space substantially as claimed, the “kit” comprising: an inflatable bladder (e.g., Fig. 18D-K, outer walls 1833 and 1845) having an internal wall; a structural liner (e.g., 1857, 1869) coupled to the internal wall of the inflatable bladder; and one or more physical vapor deposition systems (1875) configured to be positioned within the internal space of the structure when the bladder is inflated, the one or more deposition systems capable of forming a metallic structural shell on the structural liner for the purpose of improving surface properties, such as optical properties (see, e.g., para. 45).
However, Joshi et al. fail to disclose the one or more physical vapor deposition systems are e-beam physical vapor deposition systems.
Ignatiev discloses a “kit” for deposition in space capable of having various types of deposition sources (110), including a high stiffness and high strength alloy having titanium, including an electron beam deposition source for the purpose of fabricating, repairing, restoring and upgrading space assets, including coatings, and thin film and thick film materials on space assets (see, e.g., Fig. 4, paras. 27-34, 46 and 57).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided as part of Tsunoda et al. a ”kit” comprising one or more e-beam physical vapor deposition systems configured to be positioned within the internal space of the structure when the bladder is inflated, the one or more deposition systems capable of forming a metallic structural shell on the structural liner in order to improve surface properties, such as optical properties by and repair, restore, and upgrade space assets, including coatings, and thin film and thick film materials on space assets as taught by Joshi et al. and Ignatiev.
With respect to claims 4-5, in modified Tsunoda et al., Ignatiev discloses the one or more e-beam physical vapor deposition system including a high stiffness and high strength alloy having titanium, for example.
With respect to claims 6-8, in modified Tsunoda et al., Ignatiev disclose a frame (Fig. 1, 200) configured to support and move (i.e. capable of supporting and moving) the one or more e-beam physical vapor deposition systems; and Joshi et al. discloses the one or more e-beam physical vapor deposition systems positioned within the internal space during deposition, such that in the combination frame is configured to move (i.e. capable of moving) while within the internal space while creating the metallic structural shell. Also, regarding intended use, it is noted that the courts have ruled a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
With respect to claims 9 and 10, which are drawn to method steps drawn to a deposition process using the apparatus, again, it is noted that the courts have ruled that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
With respect to claim 11, in modified Tsunoda et al., an internal surface of the structural liner is configured to define a volume when the bladder is inflated, and wherein the one or more physical vapor systems are configured to seal (i.e. capable of sealing) the volume defined by the internal surface of the structural liner by creating a metallic layer and further reinforcing the internal surface of the structural liner. Also see above
With respect to claim 12, in modified in Tsunoda et al., Tsunoda et al. disclose the “kit” further comprises a gas source (44) configured to inflate the bladder.
With respect to claim 13, in modified Tsunoda et al., Tsunoda et al. disclose the inflatable bladder is configured to transform (i.e. capable of transforming) from a folded configuration to an unfolded configuration when gas from the gas source inflates the bladder.
With respect to claim 14, the process of forming the metallic structural shell and the resulting metallic structural shell are considered to be based on an intended use of the “kit”. Also, see above regarding intended use.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Tsunoda et al. as applied to claims 1 and 4-14 above, and further in view of U.S. Patent No. 5,399,418 to Hartmanns et al.
Modified Tsunoda et al. disclose the “kit” substantially as claimed and as described above.
However, while modified Tsunoda et al. do disclose the structural liner comprises a woven carbon fiber liner, modified Tsunoda et al. fail to disclose the structural liner of the “kit” comprises a braided carbon fiber liner.
Hartmanns et al. disclose providing a protective carbon fiber material that may be woven or braided for the purpose of providing a fabric with a 3-dimensional structure having a gradient from an inner surface to an outer surface and to impart a material providing protection against adverse thermal, chemical, electrical and mechanical environmental effects that might by hazardous in space (see, e.g., abstract, column 7, rows 21-52) ). It is also noted that the courts have ruled that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
It would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have alternatively provided the carbon fiber material of Tsunoda et al. as a braided material in order to provide a structural liner having with a 3-dimensional structure having a gradient from an inner surface to an outer surface and to impart the material of the structural liner providing protection against adverse thermal, chemical, electrical and mechanical environmental effects that might by hazardous in space as taught by Hartmanns et al.
With respect to claim 3, in modified Tsunoda et al., Hartmann et al. further disclose the structural liner of the “kit” comprises a ceramic (e.g., metal oxide such as TiO2 or BaSO4) for the purpose of improving protection against adsorption and emission, as well as against electrical charging effects (see, e.g., column 5, rows 41-60).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent No. 5,869,801 discloses a device for manual electron beam processing of materials in space and US Patent Pub. No. 2009/0017217 discloses an apparatus and method for applying coatings onto the interior surfaces of components and related structures produced therefrom.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARLA MOORE whose telephone number is (571)272-1440. The examiner can normally be reached Monday-Friday, 9am-6pm EST.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716
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