Detailed Office Action
Applicant’s amendments and arguments dated 12/17/2025 have been entered and fully considered. Claims 1 and 9 are amended. Claims 5, 7-8, and 12-17 are cancelled. Claims 18-20 are withdrawn from examination. New claims 21-22 are added. Claims 1-4, 6, 9-11, and 18-22 remain pending.
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 .
Response to Amendments and Arguments
Applicant’s amendment to claim 9 has overcome the 35 USC 112(b) rejection previously set forth in the non-final office action of 9/19/2025. This rejection is withdrawn.
Applicant states that the amendments overcome the double patenting rejection previously set forth in the non-final office action of 9/19/2025, however, does not provide any reasoning(s). The Examiner disagrees and maintains this rejection as outlined below.
Applicant’s arguments regarding the primary art of GRAY is not persuasive.
Applicant states that with respect to Gray, claim 1 recites "applying a machinable coating to a manufactured ceramic matrix composite article with a manufacturing artifact, the manufactured ceramic matrix composite article including ceramic reinforcement disposed in a ceramic matrix." In Gray, the coating is applied to a preform prior to formation of the ceramic matrix (see [0021] "Once the desired dimensional and surface characteristics are obtained with the machined coating 16, the resulting near net-shape preform 12 is ready for melt infiltration to produce the article 10."). Accordingly, at the stage when Gray applies the coating, there is no "manufactured ceramic matrix composite article" as in claim 1.
The Examiner respectfully disagrees. GRAY clearly discloses that the preform was slurry cast to obtain a finished panel and then spray coated with the coating (emphasis added by the Examiner) {[0024]}. Finished panel reads on the limitation “manufactured ceramic matrix composite article”. The Examiner maintains the rejection over GRAY and has reiterated below.
Applicant’s arguments regarding the primary art of JARMON is not persuasive.
Applicant states that with regard to Jarmon, Jarmon does not disclose a "manufacturing artifact includes at least one of a dent, a depression" as claimed. Instead, Jarmon addresses general surface deviations or inconsistencies (e.g., see [0019] and [0025]) by applying a hardenable layer to enable precise machining for tolerances, not to fill a specific defect like a dent or depression resulting from manufacturing. Jarmon's CMC component exhibits "surface deviations" due to the fabrication process, described as "inconsistencies" or "inconsistent dimensional control" rather than discrete artifacts like dents or holes (Jarmon [0025]). The hardenable material coating is applied to vary in thickness, compensating for these variations to form a machinable interface, but this is not filling an existing depression or hole, it is building a layer for overall dimensional control. Jarmon contains no explicit mention of a "dent," "depression," or "hole" as a manufacturing artifact. Therefore, Jarmon does not disclose all elements present claim 1, and the rejection should be withdrawn.
The Examiner respectfully disagrees. The Examiner showed that JARMON discloses the depression in the article (see non-final office action of 9/19/2025, page 5).
JARMON discloses that a silicon layer 56 is applied at the interface 58 to compensate for the inconsistency of CMC part 52; this inconsistency is indeed a depression that existed on the CMC part 52 {[0025], [FIG. 3] note that 56 fills the empty space between part 52 and surface 60/58 that absent of the coating 56 would have been a depression of the article 52}. The Examiner maintains the rejection over GRAY and has reiterated below.
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, 5, 9-11, and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GRAY (US-2006/0147622), hereinafter GRAY. Note that the italicized text below are the instant claims.
Regarding claim 1, GRAY discloses A method of correcting a manufactured article {[abstract] note machining the coating is correcting}, comprising:
applying a machinable coating to a manufactured ceramic matrix composite article with a manufacturing artifact {[abstract]};
the manufactured ceramic matrix composite article including ceramic reinforcement disposed in a ceramic matrix, the manufacturing artifact includes at least one of a dent, a depression, or a hole {[0004] note the imprint pattern or defect is the depression that the coating fills, [0008], [0019], [0024]};
and machining the machinable coating to provide a desired geometry {[abstract] note becoming free of imprint pattern is achieving a desired geometry}.
Regarding claim 3, GRAY discloses wherein the coating includes at least one of rare earth silicates, alkaline earth silicates, alkaline earth aluminosilicates, yttria-stabilized zirconia, alumina- stabilized zirconia, hafnon, zircon, yttria, mullite, titania, chromia, silicon, silicon oxides, silicon carbides, silicon oxycarbides, barium-magnesium aluminosilicate, hafnium oxides, hafnium silicon oxides, alumina-stabilized zirconia, zirconium oxides, yttrium oxides, and combinations thereof {[0019]}.
Regarding claim 6, GRAY discloses wherein the machinable coating fills in the artifact after the applying (claim 6) {[0004] note the imprint pattern or defect is the depression that the coating fills, [0008], [0019]}.
Regarding claims 9-10, GRAY discloses wherein the applying includes applying the machinable coating to a geometry that is larger than the desired geometry (claim 9), wherein the machining includes machining the machinable coating to the desired geometry {[abstract] note machining indicates removal, thus the original coating that was applied was larger and machining obtains the desired geometry}.
Regarding claim 11, GRAY discloses further comprising manufacturing the manufactured article by one of chemical vapor infiltration and melt infiltration, and wherein the artifact is an artifact of a connection between a fixture holding the article during the chemical vapor infiltration or melt infiltration {[0003], [0004] note the tooling surface or the holding fixture creates the defect of artifact}.
Regarding claim 21, GRAY discloses including forming the manufactured ceramic matrix composite article by holding a fiber preform in a fixture and infiltrating the fiber preform with a ceramic-based matrix material to form the ceramic matrix, and upon removal of the manufactured ceramic matrix composite article from the fixture, the fixture leaving the manufacturing artifact on the manufactured ceramic matrix composite article {see claims 1 and 11 above}.
Regarding claim 22, GRAY discloses wherein the coating includes at least one of alkaline earth silicates, yttria-stabilized zirconia, alumina-stabilized zirconia, hafnon, zircon, yttria, titania, chromia, silicon, silicon oxides, silicon carbides, silicon oxycarbides, barium-magnesium aluminosilicate, zirconium oxides, yttrium oxides, and combinations thereof {[0019]}.
Claims 1-3, 6, 9-10, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JARMON (US-2011/0219775), hereinafter JARMON. Note that the italicized text below are the instant claims.
Regarding claim 1, JARMON discloses A method of correcting a manufactured article {[abstract] note machining the hardenable material is correcting}, comprising:
applying a machinable coating to a manufactured ceramic matrix composite article with a manufacturing artifact {[0004] note not having the desired dimension before applying the hardenable material indicates a defect or artifact};
the manufactured ceramic matrix composite article including ceramic reinforcement disposed in a ceramic matrix, the manufacturing artifact includes at least one of a dent, a depression, or a hole {[0025], [FIG. 3] note the depression or empty space between CMC 52 and interface 58 that the machinable coating 56 fills};
and machining the machinable coating to provide a desired geometry {[0004] note becoming free of imprint pattern is achieving a desired geometry}.
Regarding claim 2, JARMON discloses wherein the machining includes at least one of grinding, ultrasonic machining, water guided laser, milling, and remain {[0022]}.
Regarding claim 3, JARMON discloses wherein the coating includes at least one of rare earth silicates, alkaline earth silicates, alkaline earth aluminosilicates, yttria-stabilized zirconia, alumina- stabilized zirconia, hafnon, zircon, yttria, mullite, titania, chromia, silicon, silicon oxides, silicon carbides, silicon oxycarbides, barium-magnesium aluminosilicate, hafnium oxides, hafnium silicon oxides, alumina-stabilized zirconia, zirconium oxides, yttrium oxides, and combinations thereof {[0016]}.
Regarding claim 6, JARMON discloses wherein the machinable coating fills in the artifact after the applying (claim 6) {[0025], [FIG. 3] note the depression or empty space between CMC 52 and interface 58 that the machinable coating 56 fills}.
Regarding claims 9-10, JARMON discloses wherein the applying includes applying the machinable coating to a geometry that is larger than the desired geometry (claim 9), wherein the machining includes machining the machinable coating to the desired geometry {[abstract] note machining indicates removal, thus the original coating that was applied was larger and machining obtains the desired geometry}.
Regarding claim 22, JARMON discloses wherein the coating includes at least one of alkaline earth silicates, yttria-stabilized zirconia, alumina-stabilized zirconia, hafnon, zircon, yttria, titania, chromia, silicon, silicon oxides, silicon carbides, silicon oxycarbides, barium-magnesium aluminosilicate, zirconium oxides, yttrium oxides, and combinations thereof {[0016]}.
Claims 11 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JARMON as evidenced by SURACE (US-2024/0173890), hereinafter SURACE.
Regarding claims 11 and 21, JARMON discloses further comprising manufacturing the manufactured article by one of chemical vapor infiltration and melt infiltration, and wherein the artifact is an artifact of a connection between a fixture holding the article during the chemical vapor infiltration or melt infiltration (claim 11), including forming the manufactured ceramic matrix composite article by holding a fiber preform in a fixture and infiltrating the fiber preform with a ceramic-based matrix material to form the ceramic matrix, and upon removal of the manufactured ceramic matrix composite article from the fixture, the fixture leaving the manufacturing artifact on the manufactured ceramic matrix composite article (claim 21) {[0014]}.
The Examiner notes that as evidenced by SURACE, it is known that during the production of CMC the article or the fiber preform is held by a fixture {[0033]}. It is inherent that this holding exerts pressure on the article and causes deviation from the desired dimension. As disclosed by JARMON the purpose of the invention is obtain the desired dimension {[0003]}. Therefore, this area with deviation in dimension is also considered an artifact where the hardenable material of JARMON is applied.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over GRAY in view of JARMON.
Regarding claim 2, GRAY discloses all the limitations of claim 1 as discussed above. GRAY generally talks about machining and is silent on the type of machining.
In the same field of endeavor that is related to machining coated CMC, JARMON discloses wherein the machining includes at least one of grinding, ultrasonic machining, water guided laser, milling, and remain {[0022]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the generic machining of GRAY with grinding of JARMON, since it has been held that a simple substitution of one known element for another where predictable results are obtained is within the skill of an artisan {see MPEP 2143 (I)(B)}. Predictable results are achieved because both arts deal with machining a coating.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over GRAY in view of LITTON (US-2004/0175597), hereinafter LITTON.
Regarding claim 4, GRAY discloses all the limitations of claims 1 and 3 as discussed above. GRAY, however, is silent on the coating being mullite.
In the same field of endeavor that is related to coated CMC, LITTON discloses wherein the coating includes at least one of hafnon, zircon, and mullite {[0005]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the ceramic coating of GRAY with the mullite coating of LITTON, since it has been held that a simple substitution of one known element for another where predictable results are obtained is within the skill of an artisan {see MPEP 2143 (I)(B)}. Predictable results are achieved because both arts deal with a ceramic coating on CMC.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over JARMON in view of LITTON.
Regarding claim 4, JARMON discloses all the limitations of claims 1 and 3 as discussed above. JARMON, however, is silent on the coating being mullite.
In the same field of endeavor that is related to coated CMC, LITTON discloses wherein the coating includes at least one of hafnon, zircon, and mullite {[0005]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the ceramic coating of JARMON with the mullite coating of LITTON, since it has been held that a simple substitution of one known element for another where predictable results are obtained is within the skill of an artisan {see MPEP 2143 (I)(B)}. Predictable results are achieved because both arts deal with a ceramic coating on CMC.
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.
Claims 1-4, 6, 9-11, and 21-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-9 of U.S. Patent No. 12,138,720, hereinafter US’720. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 4 of US’720 claims all the limitations of the instant claim 1 (note claim 4 of US’720 has all the limitations of its claim 1). The Examiner notes that nonconforming is the artifact.
Instant claim 2 is claimed by claim 8 of US’720.
Instant claims 3 and 22 are claimed by claim 2 of US’720.
Instant claim 4 is claimed by claim 3 of US’720.
Instant claim 6 is claimed by claim 5 of US’720.
Instant claim 9 is claimed by claim 1 of US’720.
Instant claim 10 is claimed by claim 9 of US’720.
Instant claims 11 and 21 is claimed by claims 1 and 6 of US’720 (note the evidentiary document of SURACE discussed above under item 7).
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 S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748