DETAILED CORRESPONDENCE
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 of invention and/or species, and corresponding claims is acknowledged. The election has been made without traverse. Non-elected claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims U.S. Patent No. US12312724B2.
In reference to claim 1, US12312724B2 discloses a method of forming a preform structure, the method comprising:
transforming a ceramic tow from a first tow geometry to a second tow geometry, thereby reducing a first dimension of the ceramic tow and increasing a second dimension of the ceramic tow orthogonal to the first dimension to produce a flattened ceramic tow;
(“transforming a first ceramic tow from a first tow geometry to a second tow geometry, thereby reducing a first dimension of the first ceramic tow and increasing a second dimension of the first ceramic tow orthogonal to the first dimension to produce a first flattened ceramic tow;”)
weaving or braiding the flattened ceramic tow to form a ceramic fabric, wherein the second dimension of the flattened ceramic tow is oriented parallel to a surface of the ceramic fabric; (“weaving or braiding the first flattened ceramic tow to form a first ceramic fabric;”)
separating the ceramic fabric into a plurality of plies,…; and (“separating the first ceramic fabric into multiple plies including at least one first ply;”)
laying up the plurality of plies to form the preform structure. (“laying up the first ply and the second ply to form a preform structure.”)
US12312724B2 claims separating but does not claim that in the separating an average inter-tow pore size of each ply is 35% or less of an average center-to-center spacing of the flattened ceramic tows, however when separating as claimed by US12312724B2 is read in light of the specification it encompasses wherein average inter-tow pore size of each ply is 35% or less of an average center-to-center spacing of the flattened ceramic tows. This is shown in the examples of US12312724B2 and thus when a person of skill in the art went to practice the claims of US12312724B2 they would find it obvious that the claims encompass the examples including this feature. Furthermore, this a matter of optimization and is obvious.
In reference to claim 2, US12312724B2 claims transforming but does not claim that in the transforming comprises securing the ceramic tow in tension across at least some of a plurality of rollers, wherein two or more of the plurality of rollers are arranged to apply opposing pressure to the ceramic tow; and passing the ceramic tow through the plurality of rollers, thereby reducing the first dimension of the ceramic tow and increasing the second dimension of the ceramic tow; however when transforming as claimed by US12312724B2 is read in light of the specification it encompasses wherein transforming comprises securing the ceramic tow in tension across at least some of a plurality of rollers, wherein two or more of the plurality of rollers are arranged to apply opposing pressure to the ceramic tow; and passing the ceramic tow through the plurality of rollers, thereby reducing the first dimension of the ceramic tow and increasing the second dimension of the ceramic tow. This is shown in the examples of US12312724B2 and thus when a person of skill in the art went to practice the claims of US12312724B2 they would find it obvious that the claims encompass the examples including this feature.
In reference to claim 4, US12312724B2 claims preparing but does not claim that in the preparing as claimed; however when preparing as claimed by US12312724B2 is read in light of the specification it encompasses the preparing as presently claimed. This is shown in the examples of US12312724B2 and thus when a person of skill in the art went to practice the claims of US12312724B2 they would find it obvious that the claims encompass the examples including this feature.
In reference to claim 5-6, US12312724B2 claims transforming but does not claim that in the transforming as claimed; however when transforming as claimed by US12312724B2 is read in light of the specification it encompasses the transforming as transforming claimed. This is shown in the examples of US12312724B2 and thus when a person of skill in the art went to practice the claims of US12312724B2 they would find it obvious that the claims encompass the examples including this feature.
In reference to claim 9-10, US12312724B2 claims weaving/braiding but does not claim that in the weaving/braiding as claimed; however when weaving/braiding as claimed by US12312724B2 is read in light of the specification it encompasses the weaving/braiding as weaving/braiding claimed. This is shown in the examples of US12312724B2 and thus when a person of skill in the art went to practice the claims of US12312724B2 they would find it obvious that the claims encompass the examples including this feature. Furthermore, this a matter of optimization and is obvious.
In reference to claim 11-12, US12312724B2 claims separating but does not claim that in the separating as claimed; however when separating as claimed by US12312724B2 is read in light of the specification it encompasses the separating as separating claimed. This is shown in the examples of US12312724B2 and thus when a person of skill in the art went to practice the claims of US12312724B2 they would find it obvious that the claims encompass the examples including this feature. And see claim 9.
In reference to claim 13, see US12312724B2 at claim 10.
In reference to claim 14-15, see claim US12312724B2 at claim 1.
Claim 3 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims U.S. Patent No. US12312724B2 in view of Walker (US 3207640 A).
In reference to claim 3, see claim US12312724B2 does not specifically claim sizing removal.
In the same field of endeavor, resin transfer molding, Walker discloses “that prior to the introduction of the resin, it is desirable to desize the reinforcement if it is made of fiber glass. This is preferably done through heat treatment of the material since it leaves a minimum residue of size” in order to provide a clean glass surface that can be further treated with a finish to enhance bonding of the resin to the fibers (C5L52-67).
Although Walker discusses resin infusion, a person of skill in the art would have understood that a clean surface for binding would be important for other matrices.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to remove sizing in order to provide a clean surface for bonding.
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.
Claim(s) 7-8 is/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 pre-AIA the applicant regards as the invention.
In reference to claim 7-8, subtows lacks antecedent basis.
Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
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