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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-4, 11, 14, 16, 18-21, 23, 25, 27-29, 32, 34 and 45, drawn to a method for reinforcing an additively manufactured substructure, classified in B29C 65/344.
II. Claim 68, drawn to a system for reinforcing an additively manufactured substructure, classified in B29C 65/3468.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used in a materially different process such as one which uses a conductive film or ribbon rather than a textile substrate with one or more conductive fibers, or a process which involves heating a composite material for curing rather than consolidation of the textile substrate with the thermoplastic matrix material, or a process which involves the use of a thermosetting rather than thermoplastic matrix. It is noted than an apparatus is not limited to recited functional steps or recited material worked upon, but rather is only limited to apparatus structure implied thereby. See MPEP 2114, 2115.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The identified inventions require different text and/or classification searching. Additionally, given that the claimed apparatus can be used to practice a materially different process, it is likely that divergent prior art would be required to address each identified invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Victor Wasylyna on 18 May 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-4, 11, 14, 16, 18-21, 23, 25, 27-29, 32, 34 and 45. Affirmation of this election must be made by applicant in replying to this Office action. Claim 68 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
i. Claim 27, “vacuum bagging subsystem”, which has been interpreted as a vacuum bag or equivalents thereof. See Applicant’s published application (paragraphs 72 and 105; Figures 13 and 39-40).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-4, 14, 16, 18-21, 23, 28-29, 32, 34 and 45 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dando (US 2022/00227066 A1).
Regarding claim 1, Dando teaches a method for reinforcing an additively manufactured structure (Figure 11; paragraphs 4, 9, 15, 18, 24, 37-38, 99 and 134). Regarding “reinforcing”, Dando uses a textile substrate formed from reinforcing material which is integrated into the structure and thus implicitly provides such reinforcing (paragraphs 38, 99 and 134). Regarding the product-by-process limitation of an additively manufactured structure, this is a rather broad limitation which only requires a structure which is consistent with any additive manufacturing process. See MPEP 2113. The examiner’s position is that any material which is formed from a fusible material such as a thermoplastic or a material which has a chemically or fusible precursor such as a thermosetting resin, or any laminated material or material which could have been formed by lamination satisfies an additively manufactured structure since additive manufacturing typically involves such fusion or lamination of layers. The examiner must give the claims their broadest reasonable interpretation. The laminated thermoplastic matrix composite materials taught by Dando therefore satisfy an additively manufactures structure (paragraphs 4, 24, 93 and 212). Dando teaches draping a textile substrate comprising one or more conductive fibers over at least a portion of a surface of an additively manufactured structure (paragraphs 17, 242), the additively manufactured structure comprising a thermoplastic matrix material (paragraphs 24, 141, 153, 212 and 266); and applying an electric current to at least one conductive fiber of the one or more conductive fibers to heat the thermoplastic matrix material of the additively manufactured structure for consolidation of the textile substrate with the thermoplastic matrix material to form a thermoplastic composite on the surface (paragraphs 9, 15, 18, 23-24, 37-38, 51, 69, 134 and 244). While the examiner acknowledges that Dando provides an additional component over the textile substrate such that the additively manufactured component and the additional component are joined, such is not precluded by the claims. There is no language which indicates the textile substrate forms an outer surface of a finished product.
Regarding claim 2, the textile substrate of Dando as well as the joined composite components may comprise fiber reinforcement such as carbon fiber (paragraph 99, 134 and 212). Accordingly, the formed structure is considered to satisfy a fiber-reinforced additively manufactured structure. It is noted that interpretation of the “additively manufactured” limitation is detailed above.
Regarding claims 3-4, Dando clearly teaches these additional limitations (paragraphs 15, 18, 23-24, 37-38, 147, 153 and 212). The another material is satisfied by the reinforcing fibers of the composite components.
Regarding claims 14 and 16, Dando teaches these additional limitations (paragraphs 43-44, 119, 128-129, 134, 244, 266).
Regarding claim 18, Dando teaches metallic, copper or carbon fibers (paragraph 134).
Regarding claim 19, this limitation is satisfied by the thermoplastic coating used to impregnate the textile substrate in one embodiment of Dando (paragraph 244).
Regarding claim 20, Dando teaches the additional tacking limitation (paragraph 257). It is noted that “in conjunction with” does not require any particular timing of tacking relative to draping.
Regarding claim 21, Dando’s placement of the textile substrate on the additively manufactured structure satisfies wrapping. In its broadest reasonable interpretation, wrapping requires no more than covering.
Regarding claim 23, this additional limitation is clearly indicated by the manner in which electrical current is provided to the textile substrate in Dando. See Dando (Figures 2-6; paragraphs 17, 134 and 247).
Regarding claim 28, this additional limitation is considered implicit in Dando (paragraph 41).
Regarding claim 29, this step is satisfied by cooling after the electrical resistance heating in Dando. See Dando (paragraph 7).
Regarding claim 32, Dando provides these additional steps to join another portion or another surface of the composite components (Figure 11; paragraphs 43-44, 57, 126 and 129).
Regarding claim 34, this additional limitation is satisfied by adding the conductive fibers to a backing paper, the conductive fibers implicitly defining paths corresponding to the fibers themselves distributed about the textile substrate. See Dando (paragraph 263).
Regarding claim 45, the additional step of adding a first conductive fiber to a fiber reinforcement fabric substrate to form a textile substrate, the first conductive fiber forming a first path distributed about at least a first area of the textile substrate is satisfied by Dando’s teaching of interweaving a carbon fiber fabric with metallic filaments (paragraph 134). The cutting wrapping and applying electric current limitations are satisfied for the reasons provided 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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Dando as applied to claims 1-4, 14, 16, 18-21, 23, 28-29, 32, 34 and 45 above, and further in view of Clercq (US 2002/0182961 A1).
Regarding claim 11, while not this limitation is not taught by Dando, Clercq suggests a textile substrate having conductive and non-conductive fiber arranged in the claimed manner for composite material heating applications (Figures 1a-4; paragraphs 9, 27-30, 57-58 and 68). Dando suggests a conductive textile substrate provided with thermoplastic material for consolidation (paragraph 244). It is clear from Clercq that the non-conductive fibers may provide the thermoplastic material for consolidation (paragraphs 57-60). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Dando because one having ordinary skill in the art would have been motivated to a known suitable conductive textile substrate, as suggested by the teachings of Clercq.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Dando as applied to claims 1-4, 14, 16, 18-21, 23, 28-29, 32, 34 and 45 above, and further in view of Liu (US 2019/0232570 A1).
Regarding claim 25, while not recited by Dando, Liu suggests these additional limitations for suitably providing the electrical energy for a similar joining process (Abstract; paragraphs 76, 78 and 82-83). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Dando because one having ordinary skill in the art would have been motivated to suitably provide the electrical energy for joining in a known manner, as suggested by the teachings of Liu.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Dando as applied to claims 1-4, 14, 16, 18-21, 23, 28-29, 32, 34 and 45 above, and further in view of Sherrick (US 4560428).
Regarding claim 27, Dando teaches applying a compressive force during the heating to urge the surfaces together (paragraphs 40-41), but does not recite using a vacuum bag to apply the compressive force. However, in related art, it is known to use a vacuum bag to apply a compressive force for joining with electrical heating. See Sherrick (Abstract; Figures 3-4; column 5, line 49 to column 6, line 28). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in Dando because one having ordinary skill in the art would have been motivated to provide the compressive force of Dando in a known suitable manner, as suggested by the teachings of Sherrick.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
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