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 .
Status of Claims
Responsive to the amendment filed 10 December 2025, claims 7 and 17 are amended and claims 18-20 are cancelled. New claim 21 is added. Claims 1-17 and 21 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 10 December 2025, new grounds of rejection are presented responsive to the amendment.
Information Disclosure Statement
The information disclosure statement filed 19 November 2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. No legible copy has been provided for the NPL McMilon article. The text cannot be read and the document has not been submitted in compliance with 37 CFR 1.98(a)(2).
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 7 and 21 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.
Claim 7 recites that the first material and the second material include “at least some braze material.” This limitation is not found in the specification at any place, and is new matter.
Claim 21 includes a similar limitation and is also new matter.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4-6, 8, 9, and 12-13 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 20230294221 A1 (hereinafter “Heinrich”).
Regarding claim 1, Heinrich teaches a method of overhauling (“repairing”) a workpiece (See title). Heinrich teaches that the method includes a series of steps for optimizing the repair strategy to the workpiece’s usage requirements (see [0006]-[0015]). Heinrich teaches that the workpiece is a metal component (See [0034]). Heinrich teaches that the method includes phases P1 thru P3 (see Fig 1 and [0021]-[0038]).
Heinrich teaches that the first phase includes a scanner to acquire a present shape of the workpiece ([0024]), which reads on claim step a) of scanning to provide scanned data. Heinrich teaches that the scanner may use a structured light ([0024]).
Heinrich teaches that the shape is compared to a intended shape (See [0025]). Heinrich teaches that the repair unit simulates how a part will be performing, and determines a desired “supplemented” shape to form (see [0025]-[0033]) The reads on step b) as claimed.
Heinrich teaches that the workpiece is enlarged by an additive manufacturing process (see [0034]-[0035]). This reads on step (c) as claimed.
Heinrich teaches that a physical behavior of the workpiece is evaluated taking into consideration the properties of the printing material (see [0025]-[0033]). This reads on step (d) as claimed. Heinrich teaches that this is used to generate data for a machining step in P3 (see [0025]-[0033]), reading on step (e) as claimed. Heinrich teaches machining the work ([0035]-[0038]). This reads on step (f) as claimed. Heinrich teaches that the workpiece may be scanned again, and steps may be repeated as necessary (See [0036]-[0037]).
Regarding claim 4, Heinrich teaches that the intended shape of the workpiece is provided via a CAD model (See [0025]).
Regarding claim 5, Heinrich teaches that a defect is milled out, and then filled (See [0028]-[0030]).
Regarding claim 6, Heinrich teaches that a coating is applied (See [0016]).
Regarding claim 8, Heinrich teaches that a defect is milled out, and then filled (See [0028]-[0030]). This reads on forming a cladding over a worn portion of the component.
Regarding claim 9, Heinrich teaches that a defect is milled out, and then filled (See [0028]-[0030]). This reads on removing a residual cladding of the component. Additionally Heinrich teaches that the steps of additive and subtractive manufacturing may be repeated as necessary (See [0036]-[0037]), also reading on what is claimed.
Regarding claim 12, Heinrich teaches that the steps of additive and subtractive manufacturing may be repeated as necessary (See [0036]-[0037]), reading on what is claimed.
Regarding claim 13, Heinrich teaches that a defect is milled out, and then filled (See [0028]-[0030]). This reads on forming a second object, and coating it.
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(s) 1 and 4-17 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20200164465 A1 (hereinafter “Burbaum”), in view of US 20230294221 A1 (hereinafter “Heinrich”).
Regarding claim 1, Burbaum teaches a method of overhauling (“filling a defect”) in a component (See title, Fig 1). Burbaum teaches that this may be a turbine component (see [0010] or [0013]). Burbaum teaches that the method includes depositing a braze material using laser welding (see [0010] and [0019]). This meets the limitation of depositing material on the component with an “additive manufacturing device.” Burbaum teaches that the deposition welding uses two different materials (See [0010]).
Burbaum does not teach wherein the method includes steps of scanning using structured light, comparing scan data to a reference, determining the characteristics of the object, or providing machining data. Burbaum does not specify the particulars of the process, and just describes a deposition welding process without much embellishment ([0010] and [0018]-[0019]).
Heinrich teaches a method of overhauling (“repairing”) a workpiece (See title). Heinrich teaches that the workpiece is a metal component (See [0034]). Heinrich teaches that the method includes phases P1 thru P3 (see Fig 1 and [0021]-[0038]).
Heinrich teaches that the first phase includes a scanner to acquire a present shape of the workpiece ([0024]), which reads on scanning to provide scanned data. Heinrich teaches that the scanner may use a structured light ([0024]).
Heinrich teaches that the shape is compared to a intended shape (See [0025]). Heinrich teaches that the repair unit simulates how a part will be performing, and determines a desired “supplemented” shape to form (see [0025]-[0033]) The reads on step b) as claimed.
Heinrich teaches that the workpiece is enlarged by an additive manufacturing process (see [0034]-[0035]). This reads on step (c) as claimed.
Heinrich teaches that a physical behavior of the workpiece is evaluated taking into consideration the properties of the printing material (see [0025]-[0033]). This reads on step (d) as claimed. Heinrich teaches that this is used to generate data for a machining step in P3 (see [0025]-[0033]), reading on step (e) as claimed. Heinrich teaches machining the work ([0035]-[0038]). This reads on step (f) as claimed. Heinrich teaches that the workpiece may be scanned again, and steps may be repeated as necessary (See [0036]-[0037]). Heinrich teaches that the process optimizes the repair strategy based on the requirements placed on the workpiece ([0015]).
It would have been an obvious matter to one of ordinary skill in the art at time of invention to have altered the deposition welding process of Burbaum by using the method of Heinrich, because Heinrich teaches that this method optimizes the repair strategy based on the requirements placed on the workpiece ([0015]).
Regarding claim 4, Heinrich teaches that the intended shape of the workpiece is provided via a CAD model (See [0025]).
Regarding claim 5, Burbaum teaches to fill a void in the component (see Fig 1). Heinrich teaches that a defect is milled out, and then filled (See [0028]-[0030]).
Regarding claim 6, Heinrich teaches that a coating is applied (See [0016]).
Regarding claim 7-8, Burbaum teaches to provide alternating layers of different materials on the work to be repaired (See Fig 1, [0010] and [0016]-[0019]). This reads on forming a cladding over a worn portion of the component.
Burbaum teaches that the metals used are a braze material and either one of a parent metal or a material similar to the parent metal (see [0016]-[0019]). Burbaum teaches that the braze metals are known to be similar to the parent metals (see BACKGROUND and [0003]). The selection of a braze metal as the metal that is similar to the parent metal in the invention of Burbaum would have been an obvious matter because Burbaum identifies the braze metals as being similar (see [0003]), and thus is a suitable material.
Regarding claim 9, Heinrich teaches that a defect is milled out, and then filled (See [0028]-[0030]). This reads on removing a residual cladding of the component. Additionally Heinrich teaches that the steps of additive and subtractive manufacturing may be repeated as necessary (See [0036]-[0037]), also reading on what is claimed.
Regarding claim 10, Burbaum envisions melting the braze powder (see [0010] and [0015]-[0017]). Heinrich teaches that the process is compatible with either of laser melting or laser sintering (See [0034]). It would have been obvious to one of ordinary skill in the art at time of invention to have altered the method as by using sintering instead of melting. The simple substitution of one known equivalent for another in the same field of endeavor is prima facie obvious.
Regarding claim 11, Burbaum teaches that a post-welding heat cycle is applied to the workpiece to close cracks with the braze metal (see [0010]).
Regarding claim 12, Heinrich teaches that the steps of additive and subtractive manufacturing may be repeated as necessary (See [0036]-[0037]), reading on what is claimed.
Regarding claim 13, Heinrich teaches that a defect is milled out, and then filled (See [0028]-[0030]). This reads on forming a second object, and coating it.
Regarding claim 14, Burbaum teaches to repair a turbine component (see [0010] or [0013]).
Regarding claim 15, Burbaum in view of Heinrich is applied to the claim as stated above. It would have been an obvious matter to one of ordinary skill in the art at time of invention to have altered the deposition welding process of Burbaum by using the method of Heinrich, because Heinrich teaches that this method optimizes the repair strategy based on the requirements placed on the workpiece ([0015]).
Regarding claim 16, Burbaum teaches to fill a void in the component (see Fig 1).
Regarding claim 17, Burbaum teaches to provide alternating layers of different materials on the work to be repaired (See Fig 1, [0010] and [0016]-[0019]). This reads on forming a cladding over a worn portion of the component.
Regarding claim 21, Burbaum teaches that the metals used are a braze material and either one of a parent metal or a material similar to the parent metal (see [0016]-[0019]). Burbaum teaches that the braze metals are known to be similar to the parent metals (see BACKGROUND and [0003]). The selection of a braze metal as the metal that is similar to the parent metal in the invention of Burbaum would have been an obvious matter because Burbaum identifies the braze metals as being similar (see [0003]), and thus is a suitable material.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heinrich as applied to claim 1 above, and further in view of US 10814439 B2 (hereinafter “Ozturk”).
Regarding claims 2-3, Heinrich describes that the scanning may be done using structured light ([0024]). Heinrich does not specify any color of the structured light.
Ozturk describes a method of repairing turbine components (See title or DETAILED DESCRIPTION). Ozturk teaches that the method includes use of an inspection system having a structured light profiler (See Fig. 1 and col. 6). Ozturk teaches that the structured light profiler projects a pattern of light that may be blue or white light (col 6).
It would have been obvious to one of ordinary skill in the art at time of invention to have altered the method of Heinrich, as by choosing to use one of blue or white light because Ozturk describes these as suitable examples for the purpose of scanning turbomachinery components for repair (col. 6). The simple substitution of one known equivalent for another in the same field of endeavor is prima facie obvious.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burbaum in view of Heinrich as applied to claim 1 above, and further in view of US 10814439 B2 (hereinafter “Ozturk”).
Regarding claims 2-3, Heinrich describes that the scanning may be done using structured light ([0024]). Heinrich does not specify any color of the structured light.
Ozturk describes a method of repairing turbine components (See title or DETAILED DESCRIPTION). Ozturk teaches that the method includes use of an inspection system having a structured light profiler (See Fig. 1 and col. 6). Ozturk teaches that the structured light profiler projects a pattern of light that may be blue or white light (col 6).
It would have been an obvious matter to one of ordinary skill in the art at time of invention to have altered the deposition welding process of Burbaum by using the method of Heinrich, because Heinrich teaches that this method optimizes the repair strategy based on the requirements placed on the workpiece ([0015]), and further to have chosen to use one of blue or white light because Ozturk describes these as suitable examples for the purpose of scanning turbomachinery components for repair (col. 6). The simple substitution of one known equivalent for another in the same field of endeavor is prima facie obvious.
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 1-17 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/116588 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 differs from copending claim 6 in that the method of the copending claim is “repairing” and in that the material in the copending claim is melted. Copending claim 6 is considered to be more narrow in scope than claim 1, and thus claim 1 is obvious. Other instant claims are similarly detailed by the copending claims. For example instant claim 2 corresponds to copending claim 7, instant claim 3 corresponds to copending claim 8, instant claim 4 corresponds to copending claim 9, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-17 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/942050 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 differs from copending claim 1 in that the method of the copending claim recites that the comparing step includes dimensional and rotational alignment information. Copending claim 1 is considered to be more narrow in scope than claim 1, and thus claim 1 is obvious. Other instant claims are similarly detailed by the copending claims. For example instant claim 2 corresponds to copending claim 2, instant claim 3 corresponds to copending claim 3, instant claim 4 corresponds to copending claim 4, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-17 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/117200 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 differs from copending claim 1 in that the method of the copending claim includes a first and second material that are deposited. Copending claim 1 is considered to be more narrow in scope than claim 1, and thus claim 1 is obvious. Other instant claims are similarly detailed by the copending claims. For example instant claim 2 corresponds to copending claim 3, instant claim 3 corresponds to copending claim 4, instant claim 4 corresponds to copending claim 5, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 10 December 2025 have been fully considered but they are not persuasive.
Regarding claim 1, applicant argues that Heinrich does not teach the step d). Applicant argues that there is no disclosure of “providing additive manufacturing data” or of depositing material on the component based on that data. Once again, this argument is not persuasive because applicant’s arguments are not commensurate in scope with what is claimed. The comparison of the current state of workpiece with the determined shape and the intended shape is for the purpose of providing additive manufacturing data. The comparison by itself generates the data inherently. Additionally, the properties of the part are considered at least in [0025]-[0033]. [0026] recites that a deviation is measured and used for the process. These are unequivocally “additive manufacturing data,” by a broadest reasonable interpretation of the words. In other words, applicant’s argument seems to depend on some specified form of data being required by the step, which is not recited. The steps are all the same, prior to the step d) and after. Step d) is explicitly met.
Regarding claims 7 and 21, applicant argues that Heinrich does not teach wherein the two materials include braze material. The claim is rejected for including new matter. Specifically “at least some” is broader in scope than anything found in the specification. Applicant further argues that Burbaum teaches a parent material is alternated with a braze material. This argument is considered but it is not persuasive. Burbaum discloses that the materials used may be a braze material and a material that is similar to the parent ([0016]-[0019]). Burbaum previously had identified that braze metals are known to be similar to the parent ([0003]). Thus the selection of a braze metal as the material similar to the parent would have been an obvious choice based on the teachings of Burbaum.
When all of the evidence if considered as a whole, evidence against patentability outweighs evidence of patentability.
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 CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759