DETAILED ACTION
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 claim 1-22 in the reply filed on 7/8/2026 is acknowledged.
Claim Objections
Claim 2 is objected to because of the following informalities: there needs to be a comma after “polyetherketone (PEK)”. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: there needs to be a comma after “buckyballs”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: there needs to be a comma after “polymeric fibers”. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: there needs to be a comma after “organoaluminate”. Appropriate correction is required.
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.
Claims 1-22 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. Dependent claims not rejected separately are rejected due to their dependency.
Claim 1 recites the limitation "a chamber" in d.. Is this the same chamber from the previously stated “a chamber” in b.? There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “said pyrolyzing" in line 13. Does this reference the pyrolyzing in b, d, or both? There is insufficient antecedent basis for this limitation in the claim.
Claim 1 is vague and indefinite due to the limitation “wherein the temperature within the chamber increases one or more times at a rate from 1 °C/h to about 20 °C/h during said pyrolyzing.” Which chamber is this happening in, the one in b, d, or both?
Regarding claim 4, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 5 recites the limitation “the pyrolyzing". Does this reference the pyrolyzing in b, d, or both in claim 1? There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "a chamber". Does this reference the chamber in b, d, or both in claim 1? There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation “the pyrolyzing". Does this reference the pyrolyzing in b, d, or both in claim 1? There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the chamber". Does this reference the chamber in b, d, or both in claim 1? There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation “the pyrolyzing". Does this reference the pyrolyzing in b, d, or both in claim 1? There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the chamber". Does this reference the chamber in b, d, or both in claim 1? There is insufficient antecedent basis for this limitation in the claim.
Claim 11 is seen as vague and indefinite since it is unclear what are the meets and bounds of “co-weaving a continuous fiber or fabric with a PAEK fiber comprising PAEK and the at least one reinforcing additive to make a filled co-woven PAEK fiber or fabric”. Is there an additional fiber being woven with the reinforced PAEK fiber, or is the woven reinforced PEAK fiber the only fiber used?
Claim 12 is seen as vague and indefinite due to the limitation “processing aligned reinforcing additives and the resin comprising a polyaryletherketone (PAEK) to make an aligned reinforcing additives PAEK”. The antecedent basis of the resin in claim 12 is from claim 1 and it is a resin comprising PAEK and a reinforcing additive. Now in claim 12 is there an additional reinforcing additive that is aligned that is added to the PAEK and reinforcing additive of the resin? Since this is entirely unclear, claim 12 is seen as vague and indefinite.
Claim 12 is seen as vague and indefinite since it is unclear what “1-2 dimensional” means within the context of the claim and disclosure. Is this to mean 1 or 2 dimensional? By saying 1 dimensional flake or particle is there a certain size limitation, i.e. nano scale, in order for it to be considered 1 dimensional? Since the disclosure does not offer any additional information as to how “1-2 dimensional” is to be treated it is seen as vague and indefinite.
Claim 18 is seen as vague and indefinite since it is not clear how the group IV, V, or VI are connected to carbide, silicide, boride, or nitride. Is claim 18 trying to say carbide, silicide, boride, or nitride or group IV, V, or VI elements, or just carbides of those groups. Based on how claim 18 is currently written the grammar is vague and indefinite, and needs to be amended to more clearly indicate the species involved.
Claim 20 recites the limitation "the melt processing" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 12 never states melt processing.
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 1-22 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12497335. Although the claims at issue are not identical, they are not patentably distinct from each other because one can not perform the process of claims 1 and 5 of the instant application or the process of claims 1 or 8 without infringing on the other.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY J KENNEDY whose telephone number is (571)270-7068. The examiner can normally be reached Mon-Fri 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TIMOTHY KENNEDY/Primary Examiner, Art Unit 1743
Prosecution Insights