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 .
Claims 1, 5-9, and 20-21 are currently being examined.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/482832, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Currently Amended Claim 1 of the instant application recites “the selected surfaces have surface roughnesses of 5-10 [Symbol font/0x6D]m Ra.” The limitation of a surface roughness of 5-10 [Symbol font/0x6D]m Ra had originally been recited in claims 4 and 13 of the instant application with claims 4 and 13 subsequently canceled. However, claims 4 and 13 of application 63/482832 each recite “the feed conduit surface and the nozzle surface have surface roughnesses of 6-12 Ra” which includes no units for Ra.
In addition, in the specification of application 63/482832, para. 0023 recites “a surface roughness 58 of 6-12 Ra” but does not recite any units for Ra, and para. 0028 recites “the feed conduit surface and the nozzle surface 52 have surface roughnesses 58 of at least 6-12 Ra” but does not recite any units for Ra. Typical units for Ra are micrometers or micro-inches but these or some other type of unit are not provided in application 63/482832. If units for 6-12 Ra were intended to be [Symbol font/0x6D]m Ra, the claimed 5 [Symbol font/0x6D]m Ra in currently amended claim 1 and its dependents of the instant application is outside the range of 6-12 [Symbol font/0x6D]m Ra in the provisional application.
Accordingly, claims 1, 5-9, and 20-21 of the instant application are not entitled to the benefit of the prior application.
Claim Objections
Claim 1 is objected to because of the following informalities: in lines 9-10 and in line 14, “the feed conduits” should read as -- the plurality of feed conduits --. Appropriate correction is required.
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 1, 5-9, and 20-21 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 1 recites “only the selected surfaces have surface roughnesses of 5-10 µm Ra” which is not supported by the original disclosure. The specification does not describe or imply that no other surfaces of the injector or of any other feature of the gas turbine engine may also have a surface roughness in the claimed range. Therefore, claim 1 fails to comply with the written description requirement.
Claims dependent upon claim 1 are rejected for the same reason as claim 1.
Allowable Subject Matter
Claims 1, 5-9, and 20-21 would be allowable if claim 1 was rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) set forth in this Office action.
It would not be obvious to have closest prior art of record Monty et al. 5123248 in view of Naik et al. 20230204213 and McMasters et al. 20170051675 used to reject claim 1 in the Non-Final Rejection to have only the selected surfaces of amended claim 1 have surface roughnesses of 5-10 [Symbol font/0x6D]m Ra.
McMasters teaches additively manufacturing fuel nozzles which results in a surface roughness of about 8 to 10 [Symbol font/0x6D]m which includes the claimed range of 5-10 [Symbol font/0x6D]m Ra. McMasters teaches that additively manufacturing the fuel nozzle is beneficial because additive manufacturing allows novel and complex nozzle designs to be produced and tested relatively quickly. It would not be obvious to modify the injector of Monty in view of Naik and McMasters which uses hydrogen fuel to have a surface roughness on surfaces other than the claimed selected surfaces which is different than the surface roughness of the selected surfaces.
Response to Arguments
In light of the indicated allowable subject matter, Applicant's arguments filed 07/20/2026 are moot. However, as discussed above in the 112(a) rejection, the amendment to claim 1 is not supported by the original disclosure.
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.
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/A.J.H./ /GERALD L SUNG/ Primary Examiner, Art Unit 3741 Examiner, Art Unit 3741
