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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/25/2026 has been entered.
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 16 and 19-31 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. In claim 16, the limitation “adjusting the laser such that, for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees” is considered new matter because the specification does not provide support for such limitation. The specification discloses “Preferably the laser is pointed towards the surface such that the laser beam impacts the surface at an angle of about 90 degrees” (page 2, lines 24-25) but there is no disclosure about segments of the surface having different orientations, and each segment of the surface being impacted at an angle of 90 degrees.
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.
Claims 16 and 19-31 are rejected under 35 U.S.C. 103 as being unpatentable over Foerster (US 2020/0240411) in view of Wang (US 2019/0036429), and further in view of Simoneaux (US 6,013,140).
Regarding claim 16, Foerster teaches a method for treating a surface of a machine part selected from a group consisting of at least a part of a screw rotor for an oil free screw compressor and at least a part of a housing element for such oil free screw compressor (para. 0017; 0019; 0098; 0107), said method including the steps of: applying a pattern (surface roughness) onto said surface of said machine part (para. 0107); and applying a coating onto the patterned surface (para. 0019; 0107).
Foerster fails to disclose manufacturing the machine part; applying a laser to said surface of said machine part to simultaneously clean said surface of said machine part and apply a pattern onto said surface of said machine part; wherein the applying the laser comprises determining at least one path onto the surface such that the at least one path extends over the surface; operating the laser in such a manner that a laser beam of the laser impacts the surface on the at least one path; and adjusting the laser such that, for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees.
Wang teaches a method for treating a surface (para. 0004; 0007) of machine part (12, 60, 60’; para. 0059-0060), said method including the steps of: manufacturing the machine part (abstract; para. 0004; 0007); applying a laser (14) to said surface of said machine part (para. 0007; 0017; 0039-0044) to simultaneously clean said surface of said machine part (some sort of cleaning is inherently done when applying a laser to the surface of the machine part) and apply a pattern (as shown in Fig. 3-4) onto said surface of said machine part (para. 0007; 0017; 0039-0044); and applying a coating (52, 53) onto the patterned surface (abstract; para. 0004; 0007; 0017; 0039-0043; 0047; Fig. 6); wherein the applying the laser comprises determining at least one path onto the surface such that the at least one path extends over the surface (as shown in Fig. 4); operating the laser in such a manner that a laser beam (16) of the laser impacts the surface on the at least one path (para. 0044); and wherein the laser beam impacts the surface at an angle of about 90 degrees (as shown in Fig. 1).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Foerster, with Wang, by using a laser for cleaning and roughening the surface of the screw compressor, to reduce processing time, and increase precision and quality. POSITA would have been motivated to combine the references because using a laser to clean and roughen the surface of a screw compressor would have a reasonable expectation of success and predictable results such as reducing processing time and increase precision and quality.
Foerster and Wang combined fail to disclose adjusting the laser such that, for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees.
Simoneaux teaches adjusting the lase such that, for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees (as shown in Fig. 7; Col. 8, lines 34-38, 42-47).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Foerster and Wang, with Simoneaux, by adjusting the laser such that for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees, to assure proper surface treatment. POSITA would have known that adjusting the laser such that for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees would have a reasonable expectation of success and predictable results such as assuring proper surface treatment, and therefore increase the machine part quality and durability.
Regarding claim 19, Foerster and Wang combined teach the method according to claim 17, wherein operating the laser comprises displacing the laser with respect to the surface such that an impact point of the laser beam follows said at least one path at a predetermined speed (Wang; para. 0044-0046).
Regarding claim 20, Foerster and Wang combined teach the method according to claim 17, wherein the laser comprises a pulse-generating laser source (Wang; para. 0044) and wherein operating the laser comprises outputting said laser beam at a predetermined operating frequency and at a predetermined operating intensity (Wang; para. 0046).
Regarding claim 21, Foerster and Wang combined teach the method according to claim 17, wherein the predetermined speed and the predetermined operating frequency are kept in a predetermined relation with respect to each other (Wang; para. 0046).
Regarding claim 22, Foerster and Wang combined teach the method according to claim 21, wherein the predetermined relation is chosen such that subsequent laser beam spots are located at a point-to-point distance with respect to each other that is smaller than a laser surface impact diameter (Wang; as shown in Fig. 4; para. 0044-0046).
Regarding claim 23, Foerster and Wang combined teach the method according to claim 22, wherein the at least one path comprises multiple adjacent path segments, wherein the adjacent path segments show a center-to-center distance which is smaller than said laser surface impact diameter (Wang; as shown in Fig. 4; para. 0044-0046).
Regarding claim 24, Foerster and Wang combined teach the method according to claim 16, wherein the applying the laser is parametrized to obtain an Ra surface roughness of the surface in the range of 10-100 µm, or more preferably in the range of 20-30 µm (Wang; para. 0043).
Foerster and Wang combined fail to disclose wherein the Ra surface roughness of the surface is higher than 1.0µm.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed surface roughness, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 25, Foerster and Wang combined teach the method according to claim 16, wherein the coating is applied in multiple layers (Foerster, title, abstract; Wang, para. 0004-0006, 0052).
Regarding claim 26, Foerster and Wang combined teach the method according to claim 16, further comprising applying a first coating layer onto the surface of said machine part before said step of applying a pattern (Foerster; para. 0112), and wherein said applying a coating is applying a second coating layer onto said patterned surface (Foerster; para. 0112).
Regarding claim 27, Foerster and Wang combined teach the method according to claim 16, said coating having a composition comprising any one of polytetrafluoroethylene, amorphous graphite powder, thinner for spray cleaning apparatuses, methyl ethyl ketone, or cellosolve acetate coating additive (Foerster; para.0014; 0054; 0056).
Regarding claim 28, Foerster and Wang combined teach an oil free screw compressor (Foerster; 20) comprising a rotor (Foerster; 1, 2) and a housing (Foerster; 11), at least one of which is at least partly treated according to claim 16 (Foerster, para. 0017; 0019; 0098; 0107; Wang, abstract; para. 0004; 0007; 0017; 0039-0044; 0047).
Regarding claim 29, Foerster and Wang combined teach the method according to claim 24, wherein the applying the laser is parametrized to obtain an Ra surface roughness of the surface in the range of 10-100 µm, or more preferably in the range of 20-30 µm (Wang; para. 0043).
Foerster and Wang combined fail to disclose wherein the Ra surface roughness of the surface higher than 1.3 µm.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed surface roughness, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 30, Foerster and Wang combined teach the method according to claim 16, wherein the applying the laser is parametrized to obtain a roughness of the surface in the range of 10-100 µm, or more preferably in the range of 20-30 µm (Wang; para. 0043).
Foerster and Wang combined fail to disclose wherein the Ry surface roughness of the surface higher than 10 µm.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed surface roughness, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 31, Foerster and Wang combined teach the method according to claim 16, wherein the applying the laser is parametrized to obtain a roughness of the surface in the range of 10-100 µm, or more preferably in the range of 20-30 µm (Wang; para. 0043).
Foerster and Wang combined fail to disclose wherein the Ry surface roughness of the surface higher than 15 µm.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed surface roughness, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Response to Arguments
Applicant's arguments filed 06/16/2026 have been fully considered but they are not persuasive. Regarding claim 16, Applicant argues that “Wang merely depicts a laser oriented toward a flat surface having a same orientation throughout. Wang does not appear to teach or suggest that the laser can be adjusted for different segments of the surface that have different orientations to maintain an impact angle at 90 for each segment” on remarks page 1-4. In response to Applicant’s arguments, Foerster and Wang combined fail to disclose adjusting the laser such that, for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees. Simoneaux teaches adjusting the lase such that, for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees (as shown in Fig. 7; Col. 8, lines 34-38, 42-47). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Foerster and Wang, with Simoneaux, by adjusting the laser such that for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees, to assure proper surface treatment. POSITA would have known that adjusting the laser such that for different segments of the surface having different orientations, the laser beam impacts each segment of the surface at an angle of about 90 degrees would have a reasonable expectation of success and predictable results such as assuring proper surface treatment, and therefore increase the machine part quality and durability.
For these reasons, the arguments are not persuasive.
Regarding claims 19-31, Applicant relies on the same arguments, therefore, the same response applies.
Conclusion
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/ALBA T ROSARIO-APONTE/Examiner, Art Unit 3761 07/10/2026
/ELIZABETH M KERR/Primary Examiner, Art Unit 3761
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