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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 25-46 (see new claims 25-46 submitted in the preliminary amendment filed on 11/5/2025 after the application filing date of 12/20/2024) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not describe in claim 25 “a porous medium”, in claim 26 “a porous network”, in claim 27 “a porous medium”, and in claim 29 “the porous medium comprises a collection of nanostructures”. The specification describes a collection of nanostructures comprises channels for example pores between the nanostructures as may be considered (see new claims 29 and 30) a single species/single type of a porous medium/network however the specification does not broadly/generally describe or reasonably convey (regarding claims 25-28 and 33-36 and 46) a porous medium/network inclusive of anything other than a collection of nanostructures or (regarding claims 29-32 and 37-45) that the porous medium/network comprises anything in addition to a collection of nanostructures (see further MPEP 2163.05 and “B. Addition of Generic Claim”).
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.
Claims 30 and 46 are 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.
Claim 30 recites the limitation “the collection of nanostructures comprises channels and/or pores”. The limitation “and/or” is unclear and confusing as pores are an example of channels (see page 24 of the instant specification).
Claim 46 recites the limitation “the composite article has at least 10% less void volume than would be present if no collection of nanostructures were arranged between the first substrate and the second substrate but the processing conditions were otherwise identical”. The limitation is unclear and confusing as to what is required as neither claim 27 nor claim 46 expressly and positively recite a collection of nanostructures is arranged between the first substrate and the second substrate.
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 25-27, 29-32, 36-41, 45, and 46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Balachandra et al. (U.S. Patent Application Publication 2016/0059534).
Regarding claims 25-27, 29-32, 36-41, and 45, Balachandra discloses a method of forming a composite article, comprising: arranging, necessarily within an environment, a porous medium/network (nanomaterial mat and regarding claim 29 wherein the porous medium comprises a collection of nanostructures and regarding claim 30 wherein a portion of a volume within the collection of nanostructures comprises channels and/or pores between the nanostructures, see Figures 1 and 2 the limitation rejected in as much as it is currently understood see the 35 U.S.C. 112(b) rejection above, and regarding claims 31, 32, and 45 wherein the collection of nanostructures comprises carbon nanotubes/carbon-based nanostructures and regarding claims 40 and 41 wherein the collection of nanostructures comprises nanostructures that are substantially aligned as an aligned nanomaterial array of nanostructures perpendicular to a joining surface, see Abstract and Figure 2 and Paragraph 0028, and including arranged in side-by-side fashion with one another as a forest of elongated nanostructures including consistent with that set forth in the instant specification as a “forest” on page 18 and regarding claim 39 the collection of nanostructures comprises elongated nanostructures and including the nanotubes have a maximum cross-sectional dimension less than 1 micron and a length resulting in an aspect ratio greater than or equal to 10 see Paragraph 0046 consistent with that set forth in the instant specification as an “elongated nanostructure” on page 14) between a surface of a first substrate (joining substrate) comprising a polymer (e.g. polyester) and a surface of a second substrate (joining substrate) comprising a polymer (e.g. polyester), heating the first substrate and the second substrate out of an autoclave (such as within a microwave oven, see paragraphs 0029 and 0049, and regarding claim 36 wherein at least a portion of the heating does not take place within an autoclave) and while the first substrate and the second substrate are in an environment having a pressure of less than 3 bar absolute (pressure of about 50 kPa is applied, see paragraph 0049) such that polymer within the first substrate (i.e. at least a portion of the first substrate) and polymer within the second substrate (i.e. at least a portion of the second substrate) softens and melts and the porous medium/network becomes at least partially embedded within the first substrate and the second substrate (Figure 2 and regarding claim 37 wherein the nanostructures within the collection become at least partially embedded in the first substrate and the second substate and regarding claim 38 wherein the nanostructures within the collection become at least partially embedded in the first substrate and the second substrate during the heating step) to form the composite article (Figures 1 and 2 and Paragraphs 0029 and 0045-0050).
As to the limitation in claim 25 of “wherein during at least a portion of the arranging step, the porous medium is separate from the first substrate and the second substrate”, this limitation is interpreted as set forth on page 6, lines 3-21 of the instant specification wherein separate is by being spatially separated or by not being spatially separated but separable without the use of appreciable force or specialized tools such as by simple manipulation or cleanly separable under the application of minimal force. Balachandra teaches the porous medium is provided onto one of the substrates by heating the substrate to locally melt the substrate and embedding tips thereof into the substrate prior to arranging, in an environment, the porous medium between a surface of the first substrate and a surface of the second substrate (Example 2). The porous medium, during at least a portion of the arranging step, while not being spatially separated from the substrate is considered separable without the use of appreciable force or specialized tools or cleanly separable under the application of minimal force by lifting the porous medium from the heated (or reheated) substrate so that Balachandra teaches during at least a portion of the arranging step, the porous medium is separate from the first substrate and the second substrate.
Regarding claim 46, Balachandra does not expressly teach the composite article has at least 10% less void volume than would be present if no collection of nanostructures were arranged between the first substrate and the second substrate but the processing conditions were otherwise identical, and the Office is unequipped to test for this property. However, because Balachandra teaches the collection of nanostructures arranged between the first substrate and the second substrate and the claimed processing conditions Balachandra is considered to necessarily result in the composite article has at least 10% less void volume than would be present if no collection of nanostructures were arranged between the first substrate and the second substrate but the processing conditions were otherwise identical (in a like manner to the same in the instant invention the claim limitation rejected in as much as it is currently understood see the 35 U.S.C. 112(b) rejection 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.
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 25, 33-35, 42-44, and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Balachandra in view of Kennedy et al. (WO 2015/120011).
Balachandra (and including regarding claims 25 and 27) is described above in full detail.
As to the limitation in claim 25 of “wherein during at least a portion of the arranging step, the porous medium is separate from the first substrate and the second substrate”, in the event it is considered Balachandra does not necessarily teach the limitation as set forth above the following rejection is made. Balachandra is not limited to any particular method to provide the porous medium comprising the collection of elongated nanostructures between the first substrate and the second substrate. Known providing of the porous medium comprising the collection of elongated nanostructures (201, 301, etc.) is by arranging the collection of elongated nanostructures with a resin film (202, 302, etc.) between a surface of the first substrate and a surface of the second substrate (e.g. substrates comprising polymer sheets of resin film and including polymer that is the same as in the resin film such as polyester) as a separate nanostructure array and including to maintain alignment and positioning of the array during infusion of channels and pores of the array with polymer including from the substrates such as by heating and allowing the polymer to flow into the channels and/or pores and fully encapsulate the collection of elongated nanostructures as taught by Kennedy (Figures 2 and 3 and Paragraph 0007, 0010-0012, 0017, 0032-0035, 0039, 0047, and 0048). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to arrange the porous medium comprising the collection of elongated nanostructures between the surface of the first substrate and the surface of the second substrate in Balachandra by arranging, within an environment, the porous medium comprising the collection of elongated nanostructures between the surface of the first substrate and the surface of the second substrate wherein the porous medium comprising the collection of elongated nanostructures is separate from the first substrate and the second substrate as an array including a resin film (of the same polymer as the first substrate and the second substrate) not only as a simple substitution of one method of providing the porous medium comprising the collection of elongated nanostructures for another to yield predicable results but to maintain alignment and positioning of the nanostructures including during heating and infusion of the channels and pores of the array with the softened and melted polymer from the substrates and resin film which flows into the channels and pores to fully encapsulate the porous medium comprising the collection of elongated nanostructures as taught by Kennedy.
Regarding claim 46, Balachandra does not expressly teach the composite article has at least 10% less void volume than would be present if no collection of nanostructures were arranged between the first substrate and the second substrate but the processing conditions were otherwise identical, and the Office is unequipped to test for this property. However, because Balachandra as modified by Kennedy teaches the collection of nanostructures arranged between the first substrate and the second substrate and the claimed processing conditions (including to fully encapsulate the porous medium) Balachandra as modified by Kennedy is considered to necessarily result in the composite article has at least 10% less void volume than would be present if no collection of nanostructures were arranged between the first substrate and the second substrate but the processing conditions were otherwise identical (in a like manner to the same in the instant invention the claim limitation rejected in as much as it is currently understood see the 35 U.S.C. 112(b) rejection above).
Regarding claims 33-35, Balachandra does not expressly teach the substrates comprise prepreg, it being noted Balachandra does not teach away from the substrates comprise prepreg. It is well understood by one of ordinary skill in the art the substrates comprise prepreg (i.e. thermoplastic or thermosetting polymer containing embedded fibers and including that is configured but not required to be cured in an autoclave consistent with that set forth in the instant specification as “autoclave prepreg” on page 26) as taught by Kennedy (Paragraphs 0032 and 0040). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the first substrate and the second substrate taught by Balachandra each comprise a prepreg not only as a simple substitution of one substrate to yield predictable results but as is fiber reinforced as evidenced by Kennedy.
Regarding claims 42-44, Balachandra does not expressly teach the number average nearest neighbor distance or volume fraction of nanostructures in the collection of nanostructures, it being noted Balachandra does not require any particular distance or volume fraction. It is well understood by one of ordinary skill in the art the collection of nanostructures has an average distance between nanostructures considered average nearest neighbor distance of less than or equal to 100 nm such as 5 nm to 100 nm and a volume fraction of nanostructures of greater than or equal to 0.001 and less than or equal to 0.8 such as 0.001 to 0.78 as taught by Kennedy (Paragraph 0010). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the collection of nanostructures taught by Balachandra has an average distance between nanostructures considered average nearest neighbor distance of less than or equal to 100 nm such as 5 nm to 100 nm and a volume fraction of nanostructures of greater than or equal to 0.001 and less than or equal to 0.8 such as 0.001 to 0.78 as a simple substitution of the well understood distance and volume fraction known in the art to yield predictable results as evidenced by Kennedy.
Claims 28 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Balachandra in view of Kamihara et al. (WO 2016/194676 wherein U.S. Patent Application Publication 2018/0250852 from the same patent family is used as a translation).
Balachandra (and including regarding claim 27) is described above in full detail.
Regarding claim 28, Balachandra does not expressly teach heating the first substrate and the second substrate comprises moving the source of heat, it being noted Balachandra does not teach away from moving the source. It is well understood by one of ordinary skill in the art of heating polymer (e.g. thermoplastic or thermoset) substrates (2b) and fiber structures (2a) therebetween for bonding the substrates and structures to perform the heating comprises moving (6) the source (5) of heat (and optionally source of pressure) laterally across the substrates to contact the surfaces of the substrates together and embed the fiber structures (from Figures 5A to 5D or 1A to 1B) and removes voids (bubbles) as taught by Kamihara (Figures 1A-1C and 5A-5D and Paragraphs 0028 and 0100-0117). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the heating (and pressing) the first substate and second substrate taught by Balachandra comprises moving the source of the heat (and optionally pressure) laterally across the substrates not only as a simple substitution of one known method of heating (and pressing) to achieve predictable results but to remove voids from between the substrates and nanostructures prior to contacting surfaces of the substrates and embedding the nanostructures as taught by Kamihara.
Regarding claim 46, Balachandra does not expressly teach the composite article has at least 10% less void volume than would be present if no collection of nanostructures were arranged between the first substrate and the second substrate but the processing conditions were otherwise identical, and the Office is unequipped to test for this property. However, because Balachandra as modified by Kamihara teaches the collection of nanostructures arranged between the first substrate and the second substrate and the claimed processing conditions (including to remove voids) Balachandra as modified by Kamihara is considered to necessarily result in the composite article has at least 10% less void volume than would be present if no collection of nanostructures were arranged between the first substrate and the second substrate but the processing conditions were otherwise identical (in a like manner to the same in the instant invention the claim limitation rejected in as much as it is currently understood see the 35 U.S.C. 112(b) rejection above).
Claims 25-27 and 29-46 are rejected under 35 U.S.C. 103 as being unpatentable over Kennedy optionally in view of Balachandra.
Regarding claims 25-27, 29-36, and 39-45, Kennedy discloses a method of forming a composite article, comprising: arranging, necessarily within an environment, a porous medium/network (702 and regarding claim 29 wherein the porous medium comprises a collection of nanostructures and regarding claim 30 wherein a portion of a volume within the collection of nanostructures comprises channels and/or pores between the nanostructures, see Figure 7 the limitation rejected in as much as it is currently understood see the 35 U.S.C. 112(b) rejection above, and regarding claims 31, 32, and 45 wherein the collection of nanostructures comprises carbon nanotubes/carbon-based nanostructures and regarding claims 40 and 41 wherein the collection of nanostructures comprises nanostructures that are substantially aligned perpendicular to a joining surface, see Figure 7, and including arranged in side-by-side fashion with one another as a forest of elongated nanostructures including consistent with that set forth in the instant specification as a “forest” on page 18 and regarding claim 39 the collection of nanostructures comprises elongated nanostructures and including the nanotubes have a maximum cross-sectional dimension less than 1 micron and a length resulting in an aspect ratio greater than or equal to 10 see Paragraph 0005 consistent with that set forth in the instant specification as an “elongated nanostructure” on page 14) with a resin film (202 or 302 corresponding to 704 and regarding claims 42-44 the collection of nanostructures has an average distance between nanostructures considered number average nearest neighbor distance of less than or equal to 100 nm such as 5 nm to 100 nm and a volume fraction of nanostructures of greater than or equal to 0.001 and less than or equal to 0.8 such as 0.001 to 0.78 see Paragraph 0010) between a surface of a first substrate (701) comprising a polymer (prepreg comprising impregnated resin such as thermoplastic or thermoset see Paragraphs 0012, 0032, and 0052 embedding fibers considered a layer of thermoplastic or thermoset polymer containing embedded fibers and regarding claims 33 and 35 further considered comprises an autoclave prepreg/prepreg that is configured to be cured in an autoclave consistent with that set forth in the instant specification as “autoclave prepreg” on page 26) and a surface of a second substrate (703) comprising a polymer (regarding claim 34 the second substrate comprises a prepreg), heating the first substrate and the second substrate out of an autoclave (such as within an oven and regarding claim 36 wherein at least a portion of the heating does not take place within an autoclave) such that polymer within the first substrate (i.e. at least a portion of the first substrate) and polymer within the second substrate (i.e. at least a portion of the second substrate) and polymer within the resin film flows as a liquid resin (considered softens and/or melts) and the first substrate, the second substrate, the resin film, and the porous medium/network are consolidated and including the porous medium/network is fully encapsulated to form the composite article; wherein: during at least a portion of the arranging step, the porous medium is separate from the first substrate and the second substrate (Figure 7 and Paragraphs 0004, 0005, 0007, 0010, 0012, 0014, 0017, 0018, 0032, 0033, 0040, and 0052).
As to the limitations in claim 25 of “the porous medium becomes at least partially embedded in the first substrate and/or the second substrate”, in claim 26 of “a porous network between the first substrate and the second substrate becomes at least partially embedded within the first substrate and/or the second substrate”, and in claim 27 of “a porous medium between the first substrate and the second substrate becomes at least partially embedded within the first substrate and/or the second substrate” and in claims 37 and 38, Kennedy does not appear to expressly teach the nanostructures within the porous medium/network become at least partially embedded in the first substrate and/or the second substrate. However, Kennedy teaches heating the first substrate and the second substrate such that polymer within the first substrate and polymer within the second substrate and polymer within the resin film flows as a liquid resin (considered softens and/or melts) and the first substrate, the second substrate, the resin film, and nanostructures within the porous medium/network are consolidated and including nanostructures within the porous medium/network are fully encapsulated (Paragraphs 0032, 0033, and 0040) and including at least in embodiments expressly embedded into the substrates (see Figures 9 and 10 and Paragraphs 0054 and 0055) so that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention heating the first substrate and the second substrate as taught by Kennedy comprises polymer within the first substrate and polymer within the second substrate softens and/or melts (i.e. flows as a liquid resin) and the nanostructures within the porous medium/network become at least partially embedded (at least at ends/tips thereof) within the first substrate and the second substrate during the heating step (and regarding claim 37 the nanostructures within the collection become at least partially embedded in the first substrate and the second substrate and regarding claim 38 the nanostructures within the collection become at least partially embedded in the first substrate and the second substrate during the heating step) as is consistent is with that taught by Kennedy (as described above) and shown in Figure 7 to result in consolidation and encapsulation as required by Kennedy. In the event it is somehow considered Kennedy (alone) does not necessarily teach the limitation the optional following rejection is made. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention heating the first substrate and the second substrate as taught by Kennedy comprises polymer within the first substrate and polymer within the second substrate softens and/or melts and nanostructures within the porous medium/network become at least partially embedded within the first substrate and the second substrate during the heating step (and regarding claim 37 the nanostructures within the collection become at least partially embedded in the first substrate and the second substrate and regarding claim 38 the nanostructures within the collection become at least partially embedded in the first substrate and the second substrate during the heating step) as is not only consistent with that taught by Kennedy but as is the known result of the heating as understood by one of ordinary skill in the art and including to further form a strong joint between the substrates with the nanostructures within the porous medium anchored to the substrates via embedment as taught by Balachandra (Figure 2 and Abstract and Paragraphs 0003, 0028, and 0045).
As to the limitation in claim 27 of “an environment having a pressure of less than 3 bar absolute”, Kennedy teaches pressure applied is optional (may be placed under vacuum and/or have pressure applied see Paragraphs 0014 and 0032) so that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention a pressure of the environment in Kennedy is less than 3 bar absolute as Kennedy does not require any pressure applied. In the event it is somehow considered Kennedy (alone) does not necessarily teach the limitation the following optional rejection is made. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention a pressure of the environment as taught by Kennedy is less than 3 bar absolute as is not only consistent with that taught by Kennedy (as described above) but as is conventionally known as predictable applied pressure in the method as evidenced by Balachandra (Paragraphs 0047-0050).
Regarding claim 46, Kennedy does not expressly teach the composite article has at least 10% less void volume than would be present if no forest of nanostructures were arranged between the first substrate and the second substrate but the processing conditions were otherwise identical, and the Office is unequipped to test for this property. However, because Kennedy as optionally modified by Balachandra teaches the forest of nanostructures arranged between the first substrate and the second substrate and the claimed processing conditions Kennedy as optionally modified by Balachandra is considered to result in the composite article has at least 10% less void volume than would be present if no forest of nanostructures were arranged between the first substrate and the second substrate but the processing conditions were otherwise identical (in a like manner to the same in the instant invention the claim limitation rejected in as much as it is currently understood see the 35 U.S.C. 112(b) rejection above).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Kennedy and optionally Balachandra as applied to claims 25-27 and 29-46 above, and further in view of Kamihara.
Kennedy (and including regarding claim 27) is described above in full detail.
Regarding claim 28, Kennedy does not expressly teach moving the source of heat, it being noted Kennedy does not teach away from moving the source. Kamihara is described above in full detail. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the heating as taught by Kennedy as optionally modified by Balachandra comprises moving the source of the heat laterally across the substrates not only as a simple substitution of one known method of heating to achieve predictable results but to remove voids from between the substrates and nanostructures prior to contacting surfaces of the substrates and resin film and encapsulating the nanostructures as taught by Kamihara.
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.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,215,206 in view of Kennedy. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of U.S. Patent No. 12,215,206 fully encompass claim 25 of the instant application but for a specific teaching of how the porous medium comprising the collection of elongated nanostructures is arranged between the first substrate and the second substrate. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to arrange the porous medium comprising the collection of elongated nanostructures between the surface of the first substrate and the surface of the second substrate in claims 1-18 of U.S. Patent No. 12,215,206 by arranging, within an environment, the porous medium comprising the collection of elongated nanostructures between the surface of the first substrate and the surface of the second substrate wherein the porous medium comprising the collection of elongated nanostructures is separate from the first substrate and the second substrate as an array including a resin film (of the same polymer as the first substrate and the second substrate) not only as a simple substitution of one method of providing the porous medium comprising the collection of elongated nanostructures between the substrates to yield predicable results but to maintain alignment and positioning of the nanostructures including during heating and infusion of the channels and pores of the array with the softened and melted polymer from the substrates and resin film which flows into the channels and pores to fully encapsulate the porous medium comprising the collection of elongated nanostructures as taught by Kennedy.
Claims 26-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,215,206. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of U.S. Patent No. 12,215,206 fully encompass claims 26-46 of the instant application (it being noted regarding claims 30 and 41 as the forest of elongated nanostructures taught by claims 1-18 of U.S. Patent No. 12,215,206 becomes at least partially embedded within the first substrate and/or the second substrate via capillary action and a forest of elongated nanostructures corresponds to a plurality of elongated nanostructures arranged in side-by-side fashion with one another as noted in the instant invention a portion of a volume within the collection of nanostructures taught by claims 1-18 of U.S. Patent No. 12,215,206 is considered to necessarily comprise channels and/or pores between the nanostructures for the capillary action of the arranged side-by-side nanostructures and the collection of nanostructures comprises nanostructures that are substantially aligned in side-by-side fashion).
Claims 25-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,760,848. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-15 of U.S. Patent No. 11,760,848 fully encompass claims 25-46 of the instant application (it being noted regarding claim 30 as the forest of elongated nanostructures taught by claims 1-15 of U.S. Patent No. 11,760,848 becomes at least partially embedded within the first substrate and/or the second substrate via capillary action and the forest of elongated nanostructures corresponds to a plurality of elongated nanostructures arranged in side-by-side fashion with one another as substantially aligned a volume within the collection of nanostructures taught by claims 1-15 of U.S. Patent No. 11,760,848 is considered to necessarily comprise channels and/or pores between the nanostructures for the capillary action of the arranged side-by-side nanostructures).
Conclusion
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746
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