DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ amendments to the claims and remarks filed June 17, 2026. Claims 1-10 are pending with claims 6-9 remaining withdraw as directed to non-elected subject matter.
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 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,888,226. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims require each of the features of claims 1 and 2 of the instant application. The patented claims are directed to an electromagnetic absorber which includes top and bottom layers as well as a honeycomb core layer comprising metal-coated glass fibers. The patented structure has a structure capable of performing as a multi-functional heating sandwich composite and is capable of application to large-wing structures. The top and bottom layers are face skins which are capable of absorbing electromagnetic waves where the instant claims do not require absorption to occur at a specific wavelength or to a particular degree. The patented honeycomb core comprises metal-coated glass fibers thereby allowing it to convert power loss into thermal energy where the glass fibers are dielectric fibers and the requirement of electroless plating is a product-by-process requirement (MPEP 2113). The patented claims are constructed of substantially identical materials arranged in a substantially identical manner to that of the instant claims such that the patented claims would be expected to exhibit substantially identical behavior including the capability to reduce reflected electromagnetic waves by dissipating through periodic changes in impedance, particularly where the degree of reflection and the frequency bands are not specified. Further the composite would be expected to exhibit power loss conversion behavior subsntially identical to applicants composite.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-5 and 10 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the outside" in line 4, however there is insufficient antecedent basis for this limitation in the claim. Applicants’ amendment has provided additional clarification however the language adds the term “the side” and “for the composite” which is not found to clearly establish an outside relative to an inside. Applicants’ may consider language such as “applied from an outside of the composite, the outside being opposite to an interior of the composite;”
Claims 2-5 and 10 are rejected as depending from claim 1 as rejected above.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nam ‘136 (KR102105136, references herein made to the English language translation obtained from EPO espacenet on March 6, 2026).
Regarding applicants’ claim 1, Nam ‘136 disclose an electromagnetic wave absorber having a honeycomb core formed of nickel coated glass fibers, where the core is disposed between a pair of base portions (paragraph 0014). The nickel coating is an electroless plated nickel coating (paragraph 0020).
Applicants’ preamble to a multi-functional heating sandwich composite based on electromagnetic wave absorption technology applicable to large wing structures, is not considered to limit the structure beyond the structure explicitly defined in the body of the claim. Structures which satisfy the requirements of the body of the claim are considered capable of meeting the functional and intended use of the preamble.
The base portions of Nam ‘136 are face skins formed on the top and bottom of the composite. Given that the base portions are capable of absorbing at least some amount electromagnetic waves at some frequency, the base layers satisfy the requirement of being capable of absorbing electromagnetic waves.
The honeycomb core of Nam ‘136 is considered capable of converting the power loss into thermal energy where substantially identical materials would be expected to behave in a substantially identical manner. Given that both Nam ‘136 and applicants disclose a nickel coated dielectric fiber honeycomb core sandwich composite, the honeycomb core of Nam ‘136 would be expected to behave in manner substantially identical to applicants’ composite, including conversion of power loss as claimed.
With regards to the reduction of reflected electromagnetic waves by dissipation though periodic changes in impedance, substantially identical structures are expected to behave in a substantially identical manner, as discussed above. Given that the claims do not limit the frequency band, and that the structure of Nam ‘136 is substantially identical to applicants’ disclosed structure, the honeycomb core of Nam ‘136 would reduce reflected electromagnetic waves by dissipating the electromagnetic waves through periodic changes in impedance in some defined target frequency band. Further the composite of Nam’136 would be expected to exhibit a power loss conversion relationship that is the same as (anticipates) or is so close to applicants’ claimed equation as to establish a prima facia case of obviousness.
Regarding applicants’ claim 2, Nam ‘136 disclose an electromagnetic wave absorber having a honeycomb core comprising a honeycomb core disposed between a pair of base portions (paragraph 0014). The base portions are a bottom face skin and a top face skin.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nam ‘149 (US PGPub 2023/0136149).
The applied reference has one or more common inventors and/or assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding applicants’ claim 1, Nam ‘149 discloses a radar absorbing material including skin layers and a honeycomb core comprising metal coated dielectric fibers (paragraphs 0045-0047).
Applicants’ preamble to a multi-functional heating sandwich composite based on electromagnetic wave absorption technology applicable to large wing structures, is not considered to limit the structure beyond the structure explicitly included in the body of the claim. Structures which satisfy the requirements of the body of the claim are considered to be capable of meeting the functional and intended use requirements of the preamble.
The honeycomb core of Nam ‘149 is considered capable of converting the power loss into thermal energy as claimed where substantially identical materials would be expected to behave in a substantially identical manner. Nam ‘149 disclose dielectric fibers electrolessly plated with nickel (paragraph 0047). Given that both Nam ‘149 and applicants disclose a nickel coated dielectric fiber honeycomb core sandwich composite, the honeycomb core of Nam ‘149 would be expected to behave in manner substantially identical to applicants’ composite, including conversion of power loss as claimed.
With regards to the reduction of reflected electromagnetic waves by dissipation though periodic changes in impedance, substantially identical structures are expected to behave in a substantially identical manner, as discussed above. Given that the claims do not limit the frequency band, and that the structure of Nam ‘139 is substantially identical to applicants’ disclosed structure, the honeycomb core of Nam ‘139 would reduce reflected electromagnetic waves by dissipating the electromagnetic waves through periodic changes in impedance in some defined target frequency band. Further the composite of Nam’136 would be expected to exhibit a power loss conversion relationship that is the same as (anticipates) or is so close to applicants’ claimed equation as to establish a prima facia case of obviousness.
Regarding applicants’ claim 2, Nam ‘149 disclose a top and bottom skin layer (paragraph 0045).
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 3-5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nam ‘136 (KR102105136, references herein made to the English language translation obtained from EPO espacenet on March 6, 2026).
Regarding applicants’ claims 3-4 and 10, Nam ‘136 disclose an electromagnetic wave absorber as discussed above with respect to claim 1 including a core of a plurality of cells in the form of hexagonal columns, but do not appear to explicitly disclose the dimensions of the composite or the dimensions of the hexagonal cells. However the determination of a workable range of dimensions of the composite is within the ordinary level of skill based on general engineering design considerations. Nam ‘136 disclose a composite which must have dimensions corresponding to those claimed, such as a length, width, thickness, etc… such that in order to practice the disclosure one of ordinary skill in the art would need to determine values which produce a composite exhibiting the desired wave absorption properties. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to discover a workable range of values for the dimensions of the composite structure of Nam ‘136. There is a reasonable expectation that such dimensions will be at least overlapping or so close to applicants’ claimed ranges as to fail to establish a patentable distinction where the claimed composite is based on electromagnetic wave absorption technology and where Nam ‘136 is directed to an electromagnetic wave absorber. Absent a showing of criticality with respect to one or more of the claimed dimensional ranges, the claimed dimensions are not found to distinguish the claims from the dimensions of Nam ‘136 as practiced by one of ordinary level of skill in the art.
Regarding applicants’ claim 5, Nam ‘136 disclose electroless nickel coated glass fibers (paragraph 0020). While Nam ‘136 do not appear to disclose the exact thickness of the coating it would be within the ordinary of skill in the art to discover a workable coating thickness. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to discover a workable range of values for the thickness of the nickel coating to provide the composite with suitable wave absorbing properties. There is a reasonable expectation that such thickness values will be at least overlapping or so close to applicants’ claimed ranges as to fail to establish a patentable distinction where the claimed panel is based on electromagnetic wave absorption technology and where Nam ‘136 is directed to an electromagnetic wave absorber. Absent a showing of criticality with respect to one or more of the claimed dimensional ranges, the claimed dimensions are not found to distinguish the claims from the dimensions of Nam ‘136 as practiced by one of ordinary level of skill in the art.
Claims 3-5 and 10 are rejected under 35 U.S.C. 103 as being obvious over Nam ‘149 (US PGPub 2023/0136149).
The applied reference has a common inventor and/or assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding applicants’ claims 3-4 and 10, Nam ‘149 disclose a composite as discussed above with respect to claim 1 including a core of a plurality of cells in the form of hexagonal columns, but do not appear to explicitly disclose the dimensions of the composite or the dimensions of the hexagonal cells. However the determination of a workable range of dimensions of the composite is within the ordinary level of skill based on general engineering design considerations. Nam ‘149 disclose a composite which must have dimensions corresponding to those claims such as a length, width, thickness, etc… such that in order to practice the disclosure one of ordinary skill in the art would need to determine values which produce a composite exhibiting the desired wave absorption properties. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to discover a workable range of values for the dimensions of the composite structure of Nam ‘149. There is a reasonable expectation that such dimensions will be at least overlapping or so close to applicants’ claimed ranges as to fail to establish a patentable distinction where the claimed composite is based on electromagnetic wave absorption technology and where Nam ‘149 is directed to an electromagnetic wave absorber. Absent a showing of criticality with respect to one or more of the claimed dimensional ranges, the claimed dimensions are not found to distinguish the claims from the dimensions of Nam ‘149 as practice by one of ordinary level of skill in the art.
Regarding applicants’ claim 5, Nam ‘149 disclose electroless nickel coated dielectric fibers (paragraph 0047). While Nam ‘149 do not appear to disclose the exact thickness of the coating it would be within the ordinary of skill in the art to discover a workable coating thickness. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to discover a workable range of values for the thickness of the nickel coating to provide the composite with suitable wave absorbing properties. There is a reasonable expectation that such thickness values will be at least overlapping or so close to applicants’ claimed ranges as to fail to establish a patentable distinction where the claimed composite is based on electromagnetic wave absorption technology and where Nam ‘149 is directed to an electromagnetic wave absorber. Absent a showing of criticality with respect to one or more of the claimed dimensional ranges, the claimed dimensions are not found to distinguish the claims from the dimensions of Nam ‘149 as practice by one of ordinary level of skill in the art.
Response to Arguments
Applicants’ arguments filed June 16, 2026 have been considered but have not been found to be persuasive.
Applicants argue the double patenting rejection is overcome by the amendments to the claims where the patented claims do not express the newly claimed power loss conversion formula. Applicants’ arguments are not persuasive because the patented claims require a substantially identical structure to applicants’ disclosed structure such that the patented composite would be expected to exhibit substantially identical properties including satisfying the claimed power loss conversation formula.
Applicants argue that Nam ‘136 and Nam ‘149 fail to disclose a power loss conversion that satisfies applicants’ claimed mathematical relationship and that the cited art is directed to fundamentally different objectives. However neither anticipation nor obviousness is negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with that of applicants’. Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection and the examiner presents evidence of reasoning to show inherency the burden of production shifts to applicant. The PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. (MPEP 2112 V).
For these reasons, and for those reasons as set forth above, the claims are not found to distinguish over Nam ‘136 or Nam ‘149.
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 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
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