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
Applicant’s election of species A in the reply filed on 12/10/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b).
Claim Rejections - 35 USC § 112
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 5, 6, 8, and 11 are 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. In claims 5, 6 and 11, the “it” is indefinite because it is unclear what it refers to. In claim 5, line 2, there appears something missing after the “and”. In claims 6 and 11, the “formed by” is unclear. The claims were examined as best understood.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Purvin (US 5,080,546). Purvin discloses an assembly comprising: a first part (22); a second part (32); a bolt (30) extending through an orifice in the parts and cooperating with a nut (10); a bearing member comprising a flange (14) between the nut and a first bearing surface on the first part; the flange has a frustoconical shape which forms an angle of 2° with the first bearing (column 2, lines 27-28) such that only the outer periphery is in contact with the first bearing surface in an untightened state (Fig. 3); wherein as the bolt is tightened a larger area would be capable of contacting the first bearing surface (column 2, paragraph beginning line 45).
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Frieberg (US 4,793,752), Frieberg discloses an assembly comprising: a first part (20); a second part (22); a bolt (12) extending through an orifice in the parts and cooperating with a nut (16); a bearing member (24) comprising a flange (28) between the nut and a first bearing surface on the first part; the flange has a frustoconical shape (Fig. 4) such that only the outer periphery is in contact with the first bearing surface in an untightened state and wherein as the bolt is tightened a larger area would be capable of contacting the first bearing surface (column 3, paragraph beginning line 47); and the flange is shown with a thickness at an outer periphery which is smaller than a thickness at an inner periphery (32).
Claims 1, 4 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sander (US 2014/0314547). Sander discloses a turbine engine (Fig. 1) comprising: a first part (74A) made of a composite matrix ceramic material (title); a second part (74B); a bolt (80) extending through an orifice in the parts and cooperating with a nut (82); a bearing member (84) comprising a flange (94) between the nut and a first bearing surface on the first part; the flange is disclosed as Belleville washers (p.[0032]) which by definition have a frustoconical shape such that only the outer periphery is in contact with the first bearing surface in an untightened state (Figs. 8 and 9); and wherein as the bolt is tightened a larger area would be capable of contacting the first bearing surface (p.[0065]).
Claims 1, 6, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stilin (US 10,167,885). Stilin discloses a turbine engine (Fig. 17) comprising: a first part (22); a second part (24); a bolt (90) extending through an orifice in the parts and cooperating with a nut (60); a bearing member (58) comprising a flange (64) between the bolt and a first bearing surface on the first part; the flange has a frustoconical shape such that only the outer periphery is in contact with the first bearing surface in an untightened state (Figs. 8 ); wherein as the bolt is tightened a larger area would be capable of contacting the first bearing surface (column 5, paragraph beginning line 35); the bearing member includes a cylindrical bushing (62) received in the first part orifice; and the first bearing surface is formed in a counterbore (40) in the first part.
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 4, 5, 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Stilin as applied to claim 1 above, and further in view of Mateo (US 10,590,972). Stilin does not disclose the first part is a composite matrix ceramic material nor the spacer between the nut and second part. Mateo discloses a fastening assembly for a turbine engine similar to Stilin but discloses a first part (10) made of a composite matrix ceramic (column 3, paragraph beginning line 58) and a spacer (80) with a coefficient of expansion greater than a bolt (column 5, paragraph beginning line 6). Before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to use the fastener of Stilin with a first part made of a composite matrix ceramic material because those materials are common in turbine engines. And before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to provide Stilin with a spacer as disclosed in Mateo in order to compensate for any expansion as discussed in Mateo.
Double Patenting
Claims 1-6 and 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,258,879. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than those of 12,258,879 where every element claimed has been included in the claims of the 12,258,879 patent.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pearce (US 3,469,490) is cited to teach a flange which tapers towards its periphery. Banhos (US 11,479,002) is cited to teach another example of a frustoconical washer in a turbine engine. Hufenbach (US 10,266,026) is cited to teach a composite fastening structure where a bushing extends into a spacer. The other references cited are of general interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FLEMMING SAETHER whose telephone number is (571)272-7071. The examiner can normally be reached M-F 8:30 - 7:00 eastern.
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/FLEMMING SAETHER/Primary Examiner, Art Unit 3675