DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ amendments and remarks filed March 2, 2025. Claims 1, 6, 15, and 44-52 are pending with claims 44-52 begin new. This action is NON-FINAL.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6, 15, and 44-49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 5, 6, 7, 10, 11, and 16 of U.S. Patent No. 12,421,653. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims require each and every feature of the pending claims. While no single patented claim requires each and every feature by itself, it would be within the ordinary skill in the art to combine features from the patented claims to arrive at the claims of the instant application. Claims 1, 5-7, and 11 combine to disclose each and every feature of claims 1 and 45 of the instant application, where claim 3 covers the feature of instant claim 15, claim 4 covers claim 46, claim 10 covers claim 48, claim 16 covers claim 49, and claims 6, 44, and 47 are covered by issued claim 1.
The features of claims 50-52 are not disclosed by or obvious over the issued claims.
Allowable Subject Matter
Yoshida et al. (US Patent 4,169,911) disclose a porous carbon fiber material comprising cut carbon fibers connected to each other by a binder at portions of the intersections of the fibers, where the cut carbon fibers may be oriented arbitrarily (considered to be randomly looped), and the material is coated with a metal (col. 1 lines 5-15, col. 3 line 66 - col. 4 line 2, col. 5 lines 6-25, col. 6 lines 10-13, and figures 1-2). The have a plate-like shape for may be formed into a column or cylinder (col. 5 lines 61-68). Given that the material is capable of taking on, and maintaining, a desired shape, the material is considered to be dimensionally-stable. Further given random orientation of fibers within the material, the material is non-woven and given shapes such as a cylinder or a plate, the material may be used as a covering and therefore may be a veil, thereby meeting the requirements of a dimensionally stable nonwoven veil.
Yoshida et al. further disclose the carbon fibers to be covered with a thin metal film (col. 6 lines 1-2), but do not appear to explicitly disclose the metal film to include a first metal coating comprising copper covering the bound fibers and the binder material, and a second metal coating comprising nickel covering the surface of the first metal coating where the first metal coating (first and second coating as in claim 1, and copper and nickel materials as in claim 5). However Kwag et al. (PGPub US 2017/0204519) disclose a plating process for a non-woven fabric, useful in the fields of electrical and electronic materials, where a non-woven carbon fiber material is plated with a layer of copper and layer of nickel (paragraph 0089). The plating process allows continuous processes and provides high electrical conductivity while providing shortening of processing time, providing price competitiveness, and simplifying production facilities (paragraph 0014). One of ordinary skill in the art before the effective filling date of the invention would have found it obvious to provide the porous carbon fiber material of Yoshida et al. with copper and nickel platings by the process of Kwag et al. in order to provide the material with excellent conductivity at reduced cost and without problems in mechanical properties (paragraph 0088).
With regards to the claimed requirement of a first coating which covers the carbon fibers and the binder materials, Yoshida et al. disclose a manufacturing process where the binder is distributed on a pile of cut fibers followed by a metal plating step (col. 6 lines 16-24). Kwag et al. disclose that the fibers may comprise carbon fiber, glass fiber, aramid fiber, ceramic fiber, metal fiber, polyimide fiber, polybenzoxazole fiber, natural fiber, and combinations thereof (paragraph 0027-0028). Given the diversity of materials on which the process of Kwag et al. is suitable for the deposition of the copper and nickel layers, and given plating of the material of Yoshida et al. after solidification of the binder material, one of ordinary skill in the art could reasonably expect the metal layers to be deposited on both the carbon fiber and binder material of Yoshida et al.
Yoshida et al. as modified by Kwag et al. however do not disclose a coating of copper having a basis weight of 10 to 50g/m2 having thereon a nickel coating with a basis weight of 5 to 20 g/m2 such as to produce a plated composite having a basis weight of less than 60 g/m2 and having a sheet resistance of 0.015 ohms per square. Further there in insufficient motivation such that one of ordinary skill in the art would have modified the modified carbon fiber material of Yoshida et al. to achieve the combination of basis weights and sheet resistance as claimed.
Claims 50-52 are objected to but would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicants’ amendments to the claims together with their supporting arguments have been found to be persuasive. As amended, applicants’ claims overcome the rejections over Yoshida et al. in view of Kwag et al. Following further search and considerations applicants’ claims are found to distinguish over the prior art, however new grounds of rejection under Double Patenting have been identified and set forth above. Given that the new grounds of rejection were not necessitated by applicants’ amendments to the claims, 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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/Adam Krupicka/ Primary Examiner, Art Unit 1784
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