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.
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 1-7 and 17 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. Specifically, the as-filed specification does not describe “wherein a diameter of the SiC fiber and a diameter of the carbon fiber grown therefrom are on the same order of magnitude.” While the as-filed specification does describe the silicon carbide fiber has a diameter of 50 micrometers ([0022]); fibers grown in accordance with this particular set up were approximately 100 microns in diameter. In alternative set-ups, diameters of between 2 and 30 microns may be achieve depending on variables including the focus point width, the laser power, ambient temperature, and the thermal conductance of the wire ([0023]); the as-filed specification does not describe diameters, ranges of diameters, which are commensurate in scope with the breadth of the limitation “wherein a diameter of the SiC fiber and a diameter of the carbon fiber grown therefrom are on the same order of magnitude.” Claims 2-7 and 17 are rejected due to their respective dependence on claim 1.
Claim 17 is 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. Specifically, claim 17 recites the limitation “the discrete junction” in line 4, however, there is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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, 3, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lorette et al. (US 2010/0118911 A1).
Regarding claim 1, Lorette discloses a ceramic temperature sensor (abstract) comprising: a heterogenous fiber formed of first and second materials having different compositions, the heterogenous fiber including a junction between the first and second materials (abstract discloses a carbon fiber coated with SiC); wherein the first material forms a silicon carbide fiber (abstract discloses a carbon fiber coated with SiC; it is noted that the SiC coating disclosed satisfies the limitation requiring a silicon carbide fiber; it is noted that the as-filed specification describes the junction can also be grown so that one material encapsulates the other material as shown in Fig. 2c ([0024]) and the second material forms a carbon fiber (abstract discloses a carbon fiber coated with SiC), wherein a diameter of the SiC fiber ([0086]; the diameter of the SiC coating is 0.5 micron larger than the diameter of the carbon fiber) and a diameter of the carbon fiber are on the same order of magnitude ([0067] discloses a 10 micron diameter).
Regarding the limitations “the carbon fiber being grown from the silicon carbide fiber at the junction responsive to laser-directed chemical vapor deposition” and “grown therefrom,” the limitations are directed to the manner in which the device is made, and it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
With regard to the limitation “wherein the heterogenous fiber is configured to operate as a thermocouple,” the limitation is directed to the manner in which the device is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
While Lorette does disclose a temperature of up to 1000 °C ([0128]), the structure disclosed by Lorette is presumed to satisfy the limitation “to facilitate contact measurement of temperatures in excess of 600 degrees Celsius,” because when the structure recited in the reference is substantially identical to that of the claims, claimed properties of functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 3, Lorette discloses all the claim limitations as set forth above. Lorette further discloses a diameter of the heterogeneous fiber is 10.5 microns ([0067], [0086]).
Regarding claim 6, Lorette discloses all the claim limitations as set forth above. Lorette further discloses a third material, having different composition from the first and second materials, the third material forming a shell around the first and second materials and the junction (the abstract discloses a second coating layer of boron nitride).
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Janas et al. (“Carbon nanotube wires for high-temperature performance”).
Regarding claim 1, Janas discloses a heterogenous fiber formed of first and second materials having different compositions, the heterogenous fiber including a junction between the first and second materials (Fig. 8b); wherein the first material forms a silicon carbide fiber (Fig. 1a; it is noted that the SiC coating disclosed satisfies the limitation requiring a silicon carbide fiber; it is noted that the as-filed specification describes the junction can also be grown so that one material encapsulates the other material as shown in Fig. 2c ([0024]) and the second material forms a carbon fiber (Fig. 1a; CNW).
Janas does not explicitly disclose wherein a diameter of the SiC fiber and a diameter of the carbon fiber grown therefrom are on the same order of magnitude.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the heterogenous fiber of Janas such that a diameter of the SiC fiber and a diameter of the carbon fiber are on the same order of magnitude, because such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
With regard to the limitation in the preamble of the claim “a ceramic temperature sensor,” statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
Regarding the limitations “the carbon fiber being grown from the silicon carbide fiber at the junction responsive to laser-directed chemical vapor deposition” and “grown therefrom,” the limitations are directed to the manner in which the device is made, and it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
With regard to the limitation “wherein the heterogenous fiber is configured to operate as a thermocouple,” the limitation is directed to the manner in which the device is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
While Janas does disclose a range of operation reaching 700 °C (abstract), the structure disclosed by Janas is presumed to satisfy the limitation “to facilitate contact measurement of temperatures in excess of 600 degrees Celsius,” because when the structure recited in the reference is substantially identical to that of the claims, claimed properties of functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: Garnier et al. (US 2012/0088088 A1) discloses a heterogenous fiber formed of first and second materials having different compositions, the heterogenous fiber including a junction between the first and second materials; wherein the first material forms a silicon carbide (SiC) fiber and the second material forms a carbon fiber ([0010]).
Response to Arguments
Applicant’s arguments with respect to claims 1-7 and 17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/TAMIR AYAD/Primary Examiner, Art Unit 1726
