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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hendricks et al. (USPGPub 2016/0177109) in view of Fugetsu et al. (US9885146) and Yoshinari et al. (JP2020045600).
Regarding claims 1 and 3, Hendricks teaches that it is known to coat a synthetic fiber [0130] with n,n-dimethylformamide and polydopamine (claim 116) which reads upon the solvent claimed wherein the solvent is later removed [0055]. Hendricks further teaches wherein carbon nanotubes are incorporated into the coating (claim 125) but fails to teach wherein the carbon nanotubes are single-walled carbon nanotubes. However, Fugetsu teaches that it is known to incorporate single-walled or multi-walled nanotubes into coatings for synthetic fibers as in Hendricks. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the single wall CNTs of Fugetsu into place of the multi-walled CNTs of Hendricks as a simple substitution of one known form of CNT for another for the purpose of providing electrical coatings for synthetic fibers wherein either would be expected to provided predictable results. Further Hendricks teaches repeating the coating step of Hendricks which is explicitly described in Hendricks [0124] which would read upon a pretreatment step identical to the immersion step. Hendricks further teaches wherein the substrate may be a PET substrate [0129] in the form of a wire [0141] which would read upon a PET fiber. The teachings of Hendricks in view of Fugetsu are as shown above. Hendricks in view of Fugetsu teaches the use of PET fibers in general and is silent as to the cross-sectional shape of those employed. However, Yoshinari teaches that when making conducting fibers having non-conducting portions comprising PET it is preferable to use material such as Calculo (see Mode for Invention), wherein the current arguments describe Calculo as reading upon the current claim limitations as relates to fiber cross-sectional shape. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the PET fibers of Yoshinari that support conductivity as the PET fiber for supporting conductivity of Henricks in view of Fugetsu as a simple substitution of one known PET fiber for supporting conductivity for another wherein the substitution would have been predictable based upon the teachings of Yoshinari.
Regarding claim 5, although Hendricks does not explicitly state that temperature is directly related to the glass transition temperature of the fiber, it is noted that Hendricks states that the temperature is chosen so that it is “low enough to maintain the integrity of the substrate material”. Those of ordinary skill in the art would readily recognize that the glass transition temperature of a material is the temperature at which the material begins to change from a harder state to a softer state. Therefore Hendricks reasonably implies that temperatures employed should not be above the glass transition temperature because that temperature is implied to those of ordinary skill in the art as the/a temperature at which a loss of integrity would take place.
Regarding claim 6, the teachings of Hendricks in view of Fugetsu and Yoshinari are as shown above. Hendricks in view of Fugetsu fails to teach wherein vacuum pressure is used during the drying. However, the examiner is taking Official Notice to inform the applicant that vacuum (reduced pressure) modification of drying processes is well known in the field of drying coatings in general in order to speed drying operations without necessarily raising temperatures. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate vacuum pressures in the drying process of Hendricks in view of Fugetsu and Yoshinari in order to control the drying time of the invention of Hendricks in view of Fugetsu without needing to substantially increase drying temperatures.
Regarding claim 7, the teachings of Hendricks in view of Fugetsu and Yoshinari are as shown above. Hendricks alone fails to teach the use of a ball mill during the coating step. However, Fugetsu teaches that it is known to incorporate ball milling into the coating mixing process for coating for synthetic fibers in order to promote the dispersion of components into the coating created (col. 20 ,lines 20-40). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the ball milling of Fugetsu into the invention of Hendricks in view of Fugetsu and Yoshinari in order to gain the stated dispersing abilities described.
Regarding claim 8, Hendricks teaches wherein the composition “may” contain a surfactant, reasonably implying that the component is considered to be optional [0058]. Further the amount of surfactant said to be present may be “about 0.1%” which also reads on 0%.
Regarding claim 9, the teachings of Hendricks in view of Fugetsu and Yoshinari are as shown above. Hendricks in view of Fugetsu and Yoshinari fails to teach the concentration of single walled carbon nanotubes claimed although Hendricks does teach similar percentages on a weight per volume basis [0101]. However, Hendricks further teaches the amount of conductive material provided is provided so as to control the amount of contact resistance associated with the use of a conductive polymer [0099]. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the mass percentage of SWCNTs provided in the composition of Henricks in view of Fugetsu in order to optimize the contact resistance associated with the use of a conductive polymer in the invention of Hendricks in view of Fugetsu and Yoshinari as guided by Hendricks. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 10, the teachings of Hendricks in view of Fugetsu and Yoshinari are as shown above. Hendricks in view of Fugetsu and Yoshinari fails to teach wherein the solvent removal temperature is in the range claimed. Hendricks generally teaches a solvent removal range from “about 80C to about 160C” [0162]. However, Hendricks additionally states “Those skilled in the art will appreciate that certain substrates may require the thermal curing step to be carried out at a lower temperature and for a longer period of time.” [0165]. Therefore, in the absence of criticality of the specific range claimed, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the curing temperature of Hendricks in view of Fugetsu and Yoshinari as guided by Hendricks as needed and determined by those of ordinary skill in the art as literally stated by Hendricks. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Response to Arguments
The applicant’s arguments with respect to the claims have been considered but are moot because the all new grounds of rejection include a reference not previously applied that relates to the particular fiber type argued by the applicant.
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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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