DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-11 in the reply filed on 06/01/2026 is acknowledged.
Specification
The disclosure is objected to because of the following informalities: the specification should not reference the claims.
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.
Claims 1-11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad and narrower recitations of different amounts of band-like material, therefore including both broad and narrower statement of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The claim also requires that the main body comprises carbon fibers and is also “formed by a carbon composite material” but it is not clear if these are the same or separate materials and/or limitations.
Claim 2 recites the limitation "the defined volume" in claim 1. There is insufficient antecedent basis for this limitation in the claim. Further, there is no indication of what structure is defined as the first plane or second plane – as claimed, these are merely arbitrary planes in the main body without any structural distinction.
Claims 4 and 7 require preferable ranges which are indefinite as noted above.
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.
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 1-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Schweikert (3,030,189) in view of Kim (WO2007/0136209), Rousseau (4,97,899), Wan (2007/0251455) and DesRosier (2018/0327271).
Schweikert teaches a carrier body, see Figs 3 and 7, col 2, line 36 – col 3, line 25. The carrier body has opposite ends with electrical connections as depicted. The first and second power connections are intended use of the product - it has been held that claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). The conducting of power is a use of the power connections – by having the power connections, the intended use is met.
The teachings include that the main body has a length. In regard to the main body and deposition surface – the use for depositing SIC is intended use.
In regard to the composition of the main body – the teachings include silicon but Kim further teaches that such filament systems are usefully formed of silicon carbide (see bottom p42- to top p41), while not teaching specifically carbon fibers, Rousseau teaches that a carbon fiber substrate is useful for growth of SiC, see Figs. 2 and 3 and col 7, lines 42-65). It would have been obvious to one of ordinary skill in the art before the effective date of the invention to apply the materials of Kim and Rousse in the system of Schweikert because the teachings include that SiC/carbon materials, including fibers are useful bases for the production of SiC. Further, as per MPEP 2144.07, the selection of a material is an obvious selection – to select carbon and/or SiC materials including fibers would have been obvious in that they are an operable basis for growing SiC materials as per the prior art.
The teachings therefore include the main body and the material, but not the required tensile strength or that it is ‘band-like’ as claimed.
The teachings of Wan further include, see Fig. 3B and related text, that a filament in a filament-based deposition system includes a variety of shapes include a "band" shape. It would have been obvious to one of ordinary skill in the art before the effective date of the invention to form the main body/filament of Schweikert of a band shape as Wan teaches that various shapes are useful. Further, per MPEP 2144.04 IV. B. a selection of shape is obvious without a showing of criticality. It is not clear if the ‘preferably’ language applies to only the sections, but further as per MPEP 2144.04 IV. A. also a selection of size is obvious – effectively the selection of the size and shape of the main body such as a band of a particular size (including the claimed width of 1.5 and depth as larger than 3 cm) is obvious and not demonstrated within the application as critical within the scope of the claims.
All elements of the claim are taught except for the tensile or flexural strength, but DesRosier teaches that filaments such as the claimed body, desirably have a good mechanical strength [0007], while not explicitly teaching the claimed tensile or flexural strength, it is known in the art to have a sufficiently high strength as noted. However, because it is well settled that "where the principal difference between the claimed process and that taught by the reference is a temperature difference, it is incumbent upon applicant to establish criticality of that temperature difference", see Ex Parte Khusid 174 USPQ 59. This principle clearly is analogous to other parameters such as a strength of a material when it is generally taught that strength is desired.
Regarding claims 2 and 3, wherein the first and second planes are randomly defined without pointing to any particular structure, such planes are understood as taught by the combined prior art. In regard to the main body is configured to resist forces generated during deposition (to claims 2 and 3) – this is an intended use of the apparatus as noted above. The configuration to resist forces does not require any structural difference as claimed and therefore the limitation is met.
Regarding claim 4, as noted above, the selection of the shape is obvious without a showing of criticality. Schweikert teaches a generally tubular shape and Wan teaches a number of shapes as noted, including tubular and band.
Regarding claims 5 and 6, the claims are drawn to disparate manners of forming the main body – as per MPEP 2144.04 V. B. and C. making separable or integral are both obvious without a showing of criticality. Since the specification and claims are drawn to different options, this supports the noted lack of criticality.
Regarding claim 7, as per claim 5 above, multiple pieces is an obvious manipulation. In regard to the material, the selection of a material is obvious as per MPEP 2144.07. In this case, though, Rousseau further teaches controlling the coefficient of thermal expansion of the material see col 1, lines 36-57, therefore the claimed selection of the material based on such coefficient is further obvious.
Regarding claim 8, as per the above arguments, the different shapes are known and also the multiple pieces is known. While the teachings do not include connecting pieces, such pieces would be included in the formation of different sections and different shapes as connecting pieces. The connecting pieces do not define further structure than what is made obvious as per above.
Regarding claim 11, the body is a U-shape as claimed.
Allowable Subject Matter
Claims 9 and 10 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. While manipulation of the parts as addressed above is obvious, the particular arrangements as claimed are beyond a routine rearrangement without any particular motivation. The motivation is not found in any applied or other known art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A MILLER, JR whose number is (571)270-5825 and fax is (571)270-6825. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Cleveland, can be reached on 571-272-1418. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH A MILLER, JR/Primary Examiner, Art Unit 1712
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