DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ amendments to the claims and remarks filed July 23, 2026. Claims 2, 3, 6 and 8-15 are pending.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection I, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 3 are rejected because they fail to depend form a claim previously set forth where claim 2 depends from claim 6 (claim later set forth) and claim 3 depends from claim 2. Claim 2 and 3 are examined based on their stated dependance.
Claim Rejections - 35 USC § 103
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 2, 3, 6, 8, 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Luxon (US Patent 4,668,578).
Regarding applicants’ claims 3 and 6, Luxon discloses surface treated metallic filaments useful in the manufacture of composites, where the filaments are formed into cloth or fabric-like articles provided in a polymer matrix. Luxon disclose nickel coated carbon or aramid fibers (col. 4 lines 20-24) and a process for oxidizing the surface of the metal coated where the filaments are dried prior to surface treatment filament (col. 5 lines 47-64). The surface treatment provides a silane having the general formula Y-R-Si-X3 where X is a hydrolysable group such as an alkoxy group, Y is a functional organic group such as amines, and R is a small aliphatic linkage (col. 4 lines 53-58). In an example, nickel plated carbon fibers are provided with a 15-50 angstrom thick oxide surface (col. 6 lines 26-32). While Luxon does not disclose a single example of a co-molded resin impregnated fiber reinformed preform, one of ordinary skill in the art would have found it obvious to form a metal lined resin impregnated fiber reinforced part by selecting from the disclosed compositions in the formation of laminates, mats, or weaves which are coated in epoxy resin and cured thereby forming a resin-impregnated fiber reinforced part.
The term co-molded is a product-by-process requirement where 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-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. The term co-molded does not impart a specific geometry or configuration to the claimed part such that the cured epoxy resin part disclosed by Luxon has the necessary structure to satisfy any requirements imposed by the process of co-molding.
Regarding applicants’ claim 2, Luxon disclose the metal surface to comprise a metal capable of oxidation by chemical or atmospheric techniques with nickel, tin, copper, brass and the like, but do not appear to explicitly disclose the use of aluminum. The examiner takes official notice that aluminum is oxidizable by atmospheric and chemical techniques. One of ordinary skill in the art before the effective filing date of applicants claimed invention would have found it obvious to select from known oxidizable metals for the metal surface, including aluminum.
Regarding applicants’ claim 8, formation of the thin film by a chemical precursor applied with atmospheric pressure plasma is a product-by-process requirement. 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-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, “the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product” See MPEP 2113.
Absent evidence of criticality regarding the presently claimed process and given that the surface treatment of Luxon meets the requirements of the claimed metal oxide and organic functional groups claimed.
Regarding applicants’ claims 10-13, the Y-R-Si-X3 formula provides a hydrolyzable group such as an alkoxy group (X), and an organic functional group (Y) including amine groups, that provides bonding between the oxide surface and the resin such as an epoxy resin (col. 4 lines 30-60 and col. 6 lines 1-5).
Allowable Subject Matter
Claims 9, 14, and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding applicants’ claim 9, Luxon discloses surface treated metallic filaments useful in the manufacture of composites as discussed above with respect to claim 6, but does not disclose alkoxysilanes with hybrid organic and metal oxide groups with at least one organic functional groups, while the silane is configured to couple to the oxide surface Luxon does not disclose a hybrid organic and metal oxide alkoxysilane. Further there is insufficient motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention to would have found it obvious to modify the silane of Luxon in order to conform to the claimed hybrid organic and metal oxide alkoxysilane.
Regarding applicants’ claims 14 and 15, Luxon discloses surface treated metallic filaments useful in the manufacture of composites as discussed above with respect to claim 6, but does not disclose the metal layer to have a surface layer with a thickness of 10nm or more containing of a metal oxide and metal oxide hydrate in which the hydrate portion comprises between 20% and about 50% of the layer on an atomic basis. Further there is insufficient motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention to would have found it obvious to modify the surface layer of Luxon in order to create a layer with a thickness of 10nm or more containing of a metal oxide and metal oxide hydrate in which the hydrate portion comprises between 20% and about 50% of the layer on an atomic basis
Response to Amendments/Arguments
Applicants’ amendments and supporting remarks filed July 23, 2026 have overcome the rejections under 35 U.S.C. 112(b), however following further search and consideration new grounds of rejection have been identified and have been set forth above. Claims 3, 9, and 14-15 remain allowable. Given that the new grounds of rejection are not necessitated by applicants this office action is made NON-FINAL.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Adam Krupicka/Primary Examiner, Art Unit 1784
