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
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 21, 2026.
Applicant’s election without traverse of Group I (claims 1-9) in the reply filed on May 21, 2026 is acknowledged.
Claims 1-9 are pending, claim 1 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
As presently recited in claims 1 and 4, the “average” (length or diameter) is of an individual fiber (i.e. across the surface area for length or length for diameter).
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Specifically, the abstract is too long.
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.
Claim 2 is 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. Specifically, claim 2 has no upper limit for the void distribution peak top diameter, which makes it indefinite with claim 1 from which it depends which has an upper limit of 30 microns.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 2 has a broader upper limit for void distribution peak top diameter than claim 1 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Wiley et al. (US 2019/0305322A1), hereinafter Wiley (of record).
Regarding claims 1, 2 and 7, Wiley teaches a plurality of nanowires in a 3D mesh configuration (non-woven) with a diameter of each nanowire of 10-1000nm (Abstract; each wire is a fiber) the mesh is porous (has liquid permeability; [0022]), the nanowires can be copper ([0027]; metal), and Fig. 1 shows an example where the void distribution peak top diameter overlaps that claimed of ~2.5 micron diameter (Fig. 1; annotated below). A metal fiber mesh is a type of metal nonwoven fabric.
Regarding “measured according to mercury porosimetry”, this is functional language, where the feature of testing is defined by what it does, rather than what it is (MPEP 2173.05 (g)). The structural and property limitations (properties themselves are property limitations) of the claims shall be considered for patentable distinction, as the testing method itself is functional language which does not distinguish over the prior art (claims cover what a device is, not what a device does; MPEP 2114 II). In this instance, the space between metal fibers from an average sphere-equivalent diameter is the property (applicants’ specification [0043]) and then the “top peak” value (i.e. the largest) is the property claimed.
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In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claims 4 and 5, Wiley teaches each limitation of claim 1, as discussed above, and further teaches length of Cu NWs (nanowires i.e. fibers) of 40+/-13 microns ([0039]) and the nanowires in a mesh configuration form an electrode ([0025]; i.e. the fabric is an electrode), with a thickness of 20 micron to 10cm ([0026]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 6, Wiley teaches each limitation of claim 1, as discussed above, and further teaches Cu NW electrode specific surface area (nanowires i.e. fibers) 2.4 x 106 m2/m3 (Table 1) and the nanowires in a mesh configuration form an electrode ([0025]; i.e. the fabric is an electrode). This calculates to 0.27 m2/g using the density of copper, which overlaps the claimed range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claims 8 and 9, Wiley teaches each limitation of claim 1, as discussed above, and further coatings on exposed surfaces of the wires of copper (metal fibers) of carbon ([0025]). A coating is considered a shell portion on a core portion of the metal fiber, as presently recited any amount of shell on any amount of core meets the limitations.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the instant claims is Wiley, as applied above to the claims. Wiley does not teach or suggest the claim limitations of claim 3. Wiley further teaches no details of the crystals of the metal fiber.
Additionally, this limitation was allowed as the key feature of novelty in the independent claim in US 12,365,025 B2 with common inventorship.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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