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
Applicants’ election of Group I, in the reply filed on January 27, 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 3 is 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.
Regarding claim 3, the claim recites that the primer includes a resin of a same family as the resin of the composite material. It is unclear what the scope of a “same family” necessarily entails as Applicants’ specification does not identify any structure or characteristics or properties associated with “a family.”
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2014/0011414 to Kruckenberg in view of US Pub. No. 2009/0227162 to Kruckenberg (herein referred to as “Kruckenberg II”).
Regarding claims 1-8, Kruckenberg teaches nanoreinforced films and laminates for use on an external part of an aerospace vehicle, comprising a nanoreinforcement film, a support veil, and a composite layer (Kruckenberg, Abstract). Kruckenberg teaches that the nanoreinforcement film can comprise carbon nanomaterial and a polymer resin (Id.), wherein nanomaterials include carbon nanofibers having a diameter between about 60 to about 300 nm, and an average length of between about 30 µm and about 50 millimeters (Id., paragraph 0014). Kruckenberg teaches that the polymer resin comprises resins such as epoxy, polyimides, polyamides, polyesters, and phenolics (Id., paragraph 0018). Kruckenberg teaches that the support veil is a mat of carbon fibers and a binder (Id., paragraph 0020). Kruckenberg teaches that the nanoreinforced film and support veil can be combined in such a way that no interface between the nanoreinforced film and support veil is observable (Id., paragraphs 0021, 0028). Kruckenberg teaches that that the composite laminate part can be used on various external components, such as the leading edge of the inlet lip and cowl of an engine nacelle (Id., paragraph 0055).
Kruckenberg teaches that the laminate also can have a lightning strike protection layer and an external paint and primer (Kruckenberg, Abstract, paragraph 0012). Kruckenberg does not appear to teach that the paint is conductive. However, Kruckenberg II teaches a low density lightning strike protection for use in airplanes, comprising surface films, paints, or primers including a low-density electrically conductive materials and a polymer resin (Kruckenberg II, Abstract, paragraph 0007). Kruckenberg II teaches that the low density conductive nanoparticles can include carbon nanotubes and carbon nanofibers (Id., paragraph 0009). Kruckenberg II teaches that the composite material is suitable for use in preparing aircraft and aircraft components with acceptable lightning strike protection (Id., paragraph 0164).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the nanoreinforced laminates of Kruckenberg, wherein the paint is a conductive paint, as taught by Kruckenberg II, motivated by the desire of forming a conventional nanoreinforced laminate comprising paints known in the art to be predictably suitable for providing acceptable lightning strike protection for aircraft applications.
Regarding claim 2, the prior art combination teaches that the nanoreinforced film and support veil can be combined in such a way that no interface between the nanoreinforced film and support veil is observable. Since the claims require the conductive primer applied to a surface of the composite material, the recitation of the carbon fiber being exposed on a surface in contact with the conductive primer would appear to inherently be met, as the claimed condition is directed to the intermediate product.
Regarding claim 3, as set forth above, it is unclear exactly what is claimed. However, since the nanoreinforced film and support veil can be combined in such a way that no interface between the nanoreinforced film and support veil is observable, the film and veil appears to be of a same family as claimed.
Regarding claims 4 and 5, the prior art combination teaches that nanomaterials include carbon nanofibers having a diameter between about 60 to about 300 nm, and an average length of between about 30 µm and about 50 millimeters. Note that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 6, the prior art combination teaches a substantially similar nanoreinforcement film and conductive paint and support veil as the claimed composite material, conductive primer and sealant. Therefore, the claimed difference in electrical conductivities would appear to naturally flow from the teachings of the prior art combination. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claim 7, the prior art combination teaches that the nanoreinforcement film may comprise carbon nanofibers and that the conductive paint may comprise carbon nanotubes or nanofibers.
Additionally, regarding claims 7 and 8, Kruckenberg II teaches that the thickness of the paints and primers are selected to provide suitable conductivity and density (Kruckenberg II, paragraph 0144). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the nanoreinforced laminates of the prior art combination, and adjusting and varying the thicknesses and electrical conductivities, such as claimed, as taught by Kruckenberg II, motivated by the desire of forming a conventional nanoreinforced laminate having the desired properties including conductivities and thicknesses, suitable for the intended application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786