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 .
Specification
The disclosure is objected to because of the following informalities: the Specification does not contain a CROSS-REFERENCE TO RELATED APPLICATIONS section listing the priority claim to Japanese Patent Application No. 2023-102885. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2009/0148637 to Zhang et al. (“Zhang”).
With regard to Claim 1, Zhang discloses an apparatus comprising an interior portion formed from a composite material. See, e.g., Abstract, entire document. Zhang discloses that the composite material comprises two layers of carbon nanotube unwoven cloth, such as buckypaper, are laminated to both sides of a glass fiber fabric and placed on a mold. Figure 3 and paragraph [0065]. Zhang discloses that the composite is vacuum sealed so that resin can flow across the surface of the laminate, followed by heat curing. Paragraph [0065]. With regard to Claim 2, Zhang discloses that the vacuum assisted resin transfer molding moves the resin through the continuous network of nanoscale fibers and fiber material. Paragraph [0016]. As such, the resin of Zhang is both present at the surface of each of the layers and impregnated into the layers. See also paragraph [0058] (“resin may be distributed through the layers using VARTM”). With regard to Claim 3, Zhang provides a ratio of glass cloth layers to carbon nanotube unwoven cloth layers of 1:2. Paragraph [0065]. With regard to Claims 4 and 5, Zhang discloses using multi-walled carbon nanotubes, single-walled carbon nanotubes, and combinations thereof. Paragraphs [0063] to [0066] and Table 1.
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.
Claim 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2018/0346146 to Sang et al. (“Sang”).
With regard to Claim 1, Sang a composite structure comprising a stiffening layer, a curable resin layer, a conductive layer, and a nonwoven layer. See, e.g., Abstract, entire document. Sang discloses that the stiffening layer can comprise a woven or nonwoven fabric comprising glass fibers. Paragraphs [0033] and [0034]. Additionally, Sang discloses that the nonwoven layer can comprise glass fibers and is present at the surface of the curable resin layer to inhibit the curable resin from sticking to other surfaces. Paragraph [0019]. Sang discloses that the curable resin is curable by heating at elevated temperatures. Paragraph [0054]. Sang provides an embodiment of a composite structure having a glass fabric layer combined with the porous conductive layer using the curable resin. Figure 2 and paragraphs [0043] to [0044]; see also Example 3. While Sang does not specifically teach this embodiment includes an unwoven carbon nanotube cloth, Sang does teach that a suitable conductive layer usable in their invention is carbon nanotube paper, which provides flexibility. Paragraph [0015]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a carbon nanotube paper layer as the conductive layer in the composite structure disclosed by Sang because Sang suggests that a carbon nanotube paper provides proper function as the conductive material of their invention, or because Sang teaches that such a conductive material provides flexibility. With regard to Claim 2, Sang teaches that the conductive layer is embedded in the heat-curable resin while the glass fiber layer is fully bonded to its surface. Paragraphs [0043] to [0044]. With regard to Claim 3, Sang provides a ratio of glass cloth layers to carbon nanotube unwoven cloth layers of 2:1 or 1:1, depending upon whether a glass fabric is used as the nonwoven layer.
Claim 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2022/0080681 to Ghazizadeh et al. (“Ghazizadeh”).
With regard to Claims 1 and 2, Ghazizadeh relates to methods of curing one or more prepregs and/or a liquid curable composition using one or more self-supporting, nonwoven carbon nanotube sheets comprising substantially non-aligned carbon nanotubes. See, e.g., Abstract, entire document. Ghazizadeh discloses “a curable system comprising (i) a stack of two or more prepregs, and (ii) one or more carbon nanotube sheets, wherein at least one of the carbon nanotube sheets is placed in-between the two or more prepregs.” Paragraph [0059]. Ghazizadeh teaches that the curable resin comprises a heat-curable resin. Paragraphs [0081] to [0086]. Ghazizadeh discloses that the prepreg can comprise fiber reinforcement in the form of woven or nonwoven fibers, paragraph [0062], wherein the fibers are glass fibers. Paragraph [0064]. The prepreg contains curable resin, paragraph [0031], and Ghazizadeh discloses that “the carbon nanotube sheet must be at least partially impregnated with a curable resin. The curable resin at least partially impregnated into the carbon nanotube sheet(s) can be the same or different as the curable resin in the prepreg(s).” Paragraph [0102]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a glass fiber cloth in the prepregs of composite structure disclosed by Ghazizadeh because Ghazizadeh suggests that glass fibers in a woven or nonwoven construction provides proper function as a prepreg in their invention, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claim 3, Ghazizadeh discloses that one or more carbon nanotube sheets can be combined with two or more prepregs. Paragraph [0059].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ghazizadeh.
With regard to Claim 6, Ghazizadeh discloses the unwoven nanotube cloth can be provided with a thickness of about 5 to 100 microns. Paragraph [0052]. Moreover, providing an air permeability less than 0.5 cm3/cm2*s and a resistivity less than 0.005 Ω*cm are obvious modifications in light of the teachings of Ghazizadeh. After all, Ghazizadeh teaches that the unwoven nanotube cloth is formed to have an average pore size less than 10 nm to provide low permeability. Paragraph [0066]. Additionally, Ghazizadeh the unwoven nanotube cloth is designed to have “dense conducting networks in thin films of SWNT, MWNT, CNF or their mixtures.” Paragraph [0047]. Ghazizadeh discloses that enhanced conductivity can be provided by coating the carbon nanotubes with a metallic material, if necessary to improve its function. Paragraph [0053]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an air permeability less than 0.5 cm3/cm2*s and a resistivity less than 0.005 Ω*cm to the unwoven nanotube cloth disclosed by Ghazizadeh because Ghazizadeh instructs the person having ordinary skill in the art how to lower air permeability and increase conductivity of the material, and because where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,477,709 (“the ‘709 Patent”) in view of Ghazizadeh.
The ‘709 Patent claims “a carbon nanotube unwoven cloth having a thickness of not larger than 1 mm and a specific resistance of not larger than 0.005 Ω*cm being impregnated with a resin; and/or with the resin being laminated on the carbon nanotube unwoven cloth” in claim 1. The ‘709 Patent further claims that the carbon nanotube unwoven cloth has the same air permeability to that recited in dependent Claim 6 of the present application. While the ‘709 Patent does not claim that the carbon nanotube unwoven cloth is used in combination with a glass cloth layer, such a modification is rendered obvious by the disclosure of Ghazizadeh, which discloses that the carbon nanotube sheets are suitable for use in combination with one or more prepregs, wherein the prepreg can comprise fiber reinforcement in the form of woven or nonwoven glass fibers. As such, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the carbon nanotube unwoven cloth claimed in the ‘709 Patent in a composite material containing one or more glass fiber cloth layers, motivated by the desire to utilize the carbon nanotube cloth in an aerospace application, as shown to be known by Ghazizadeh.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/208,141 (“the ‘141 Application”) in view of Ghazizadeh.
The ‘141 Application claims a “composite material comprising one or more carbon fiber layers and one or more carbon nanotube unwoven cloth layers, wherein at least one of the carbon fiber and carbon nanotube unwoven cloth layers in the carbon fiber composite material is impregnated with a heat-curable resin or has a heat-curable resin film laminated thereon” in claim 1. The subject matter of the dependent claims of the ‘141 Application overlap with the subject matter claimed in the present application. While the ‘141 Application claims that the nanotube cloth is combined with a carbon fiber layer, Ghazizadeh teaches that fiber reinforcement suitable for use with a similar nanotube cloth can be selected from either glass fibers or carbon fibers. Paragraph [0064]. As such, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the carbon nanotube unwoven cloth claimed in the ‘709 Patent in a composite material containing one or more glass fiber cloth layers in place of the carbon fiber cloth, motivated by the desire to utilize the carbon nanotube cloth in an aerospace application, as shown to be known by Ghazizadeh.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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