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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-13 and 18-20, a masking system for selectively masking a component, the masking system comprising: the first insert section and the first carrier section having a first connector set, the first insert section and the second insert section having a second connector set, the first connector set extending in a first direction and removably coupling the first insert section to the first carrier section, the second connector set extending in a second direction oblique to the first direction and removably coupling the first insert section to the second insert section; classified in H01L2251/56; or
Claims 14-16, a masking system for selectively masking a disc, the first carrier section and the second carrier section having a first connector set, the first carrier section and the first insert section having a second connector set, the first connector set extending in a first direction and removably coupling the first carrier section to the second carrier section, the second connector set extending in a second direction disparate from the first direction and removably coupling the first carrier section to the first insert section, classified in C23C14/564
Inventions I and II are related as subcombination and combination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination (claim 14) does not require the masking system comprising: the first insert section and the first carrier section having a first connector set, the first insert section and the second insert section having a second connector set, the first connector set extending in a first direction and removably coupling the first insert section to the first carrier section, the second connector set extending in a second direction oblique to the first direction and removably coupling the first insert section to the second insert section. The subcombination has separate utility such as for masking a golf club.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply: the inventions have acquired a separate status in the art in view of their different classification, and the inventions require a different field of search for example, searching different classes/subclasses or electronic resources, or employing different search queries.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
In addition, an election of species is required in this application. The species are independent or distinct because they contain configuration which are structurally different (i.e. non-overlapping). In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, none of the claims is generic.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
A provisional election without traverse was made in phone conversation with Hissan Anis Reg. Num. 65,943, on May 29, 2026 to elect Group I, Claims 1-13 and 18-20. A written confirmation of the election of Group I is requested in Applicant’s response to this Office Action.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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.
Claims 1-3, 6-12, 14, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Num. 4,829,720 to Cavalieri (hereinafter Cavalieri) in view of ES 2 732 867 to Quiyue Chen (hereinafter Chen).
Regarding claim 1, Cavalieri teaches a masking system (fixture 2; figure 2) for selectively masking a component (blade 100, figure 3) , the masking system comprising: a mask carrier (datum plates 8, 10; fig. 1) having a first carrier section (datum plate 8; figure 1) and a second carrier section (datum plate 10; figure 1) ; and an insert (base 4, block 6, collectively; figure 1) configured to retain the component (as shown in fig. 3, col. 3, lines 10-25), the insert having a first insert section (base 4; fig. 1) and a second insert section (block 6; figure 1) , the first insert section and the first carrier section having a first connector set (threaded opening in base 4 and screw 12 connection plate 8 to base 4; col. 3, lines 1-10), the first insert section and the second insert section having a second connector set (opening 22 and dowel 18, fig 1), the first connector set extending in a first direction and removably coupling the first insert section to the first carrier section (as shown, figure 1) , the second connector set extending in a second direction to the first direction and removably coupling the first insert section to the second insert section (as shown, figure 1) .
Cavalieri does not explicitly teach the second direction oblique to the first direction (as shown, figure 1)
Chen is directed to a workholder.
Chen teaches the use of a connecting element into an oblique plug hole allows for expansive opening. (See Chen, Machine Translation, page 2, second paragraph.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Cavalieri’s second direction to be oblique to the first direction, because this would allow the workholder to be opened expansively. (See Chen, Machine Translation, page 2, second paragraph.)
Intended use language is located in the preamble of claim 1 (apparatus for selectively masking a component). A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Cavalieri in view of Chen would be capable of the intended use and meets the claim limitation.
Regarding claim 2, Cavalieri discloses the masking system of claim 1, and Cavalieri further discloses wherein the first connector set (threaded opening in base 4 and screw 12; figure 1; column 3, lines 1-10) includes a first connector (screw 12; figure 3) and a second connector (threaded opening in base 4; figure 1; column 3, lines 1-10), the first connector being part of the first carrier section (datum plates 8; figure 3) and the second connector being part of the first insert section (base 4; figures 1, 3).
Regarding claim 3, Cavalieri discloses the masking system of claim 2, and Cavalieri further discloses wherein the second connector set (opening 22 and dowel 18; figure 1) includes a third connector (opening 22; figure 1) and a fourth connector (dowel 18; figure 1), the third connector being part of the first insert section (base 4; figures 1, 3) and the fourth connector being part of the second insert section (base 6; figure 1). 1; column 3, lines 1-10), the first connector being part of the first carrier section (datum plates 8; figure 3) and the second connector being part of the first insert section (base 4; figures 1, 3).
Regarding claim 3, Cavalieri discloses the masking system of claim 2, and Cavalieri further discloses wherein the second connector set (opening 22 and dowel 18; figure 1) includes a third connector (opening 22; figure 1) and a fourth connector (dowel 18; figure 1), the third connector being part of the first insert section (base 4; figures 1, 3) and the fourth connector being part of the second insert section (base 6; figure 1).
Regarding claim 6, Cavalieri discloses the masking system of claim 1, and Cavalieri further discloses wherein the first connector set (threaded opening in base 4 and screw 12; figure 1; column 3, lines 1-10) has a male component (screw 12; figure 1; column 3, lines 1-10) and a female component (threaded opening in base 4; figure 1; column 3, lines 1-10).
Regarding claim 7, Cavalieri discloses the masking system of claim 1, and Cavalieri further discloses further including a tongue (projection indicated to by 30; figure 1) disposed on the first carrier section (base 4; figure 1) and a complementary groove (bottom groove of block 6 adjacent 16; figure 1) disposed on the second carrier section (as shown; figures 1, 3).
Regarding claim 8, Cavalieri discloses the masking system of claim 1. Cavalieri fails to explicitly disclose wherein the first carrier section is additively manufactured.
It would have been obvious to one of ordinary skill in the art before the priority date to modify Cavalieri's first carrier section to be additively manufactured, since it was known in the art that additively manufactured parts are used in masking systems. The motivation would have been to rigidity to the carrier section (Cavalieri; column 1, lines 20-30).
Regarding claim 9, Cavalieri discloses the masking system of claim 1, and Cavalieri further discloses configured to selectively mask the component for a shot peening process (fixture 2 is capable of selectively masking the blade 100 for a shot peening process; figures 2, 3).
Regarding claim 10, Cavalieri discloses the masking system of claim 1, and Cavalieri further discloses wherein the component is a gas turbine component (turbine blade 100; figure 3).
Regarding claim 11, Cavalieri discloses the masking system of claim 10, and Cavalieri further discloses wherein the gas turbine component is a vane (turbine blade 100; figure 3).
Regarding claim 12, Cavalieri discloses the masking system of claim 10, and Cavalieri further discloses wherein the insert (base 4, block 6, collectively; figure 1) is configured to retain the gas turbine component (turbine blade 100; figure 3) only in one orientation (as shown; figures 3, 5).
Regarding claim 18 [as best understood], Cavalieri discloses a masking system (fixture 2; figure 2) for selectively masking a component (blade 100; figure 3) for a shot peening process (capable of being used for a shot peening process; figure 3), the masking system comprising: a mask carrier (datum plates 8, 10, collectively; figure 1) having a first carrier section (datum plate 8; figure 1) and a second carrier section (datum plate 10; figure 1); and an insert (base 4, block 6, collectively; figure 1) configured to retain the component (as shown; figure 3; column 3, lines 10-25), the insert having a first insert section (base 4; figure 1) and a second insert section (block 6; figure 1), the first insert section and the first carrier section having a first connector set (threaded opening in base 4 and screw 12 connecting plate 8 to base 4; column 3, lines 1-10), the first insert section and the second insert section having a second connector set (opening 22 and dowel 18; figure 1), the first connector set extending in a first direction and removably coupling the first insert section to the first carrier section (as shown; figure 1), the second connector set extending in a second direction and removably coupling the first insert section to the second insert section (as shown; figure 1). Cavalieri fails to explicitly disclose a second direction oblique to the first direction.
It would have been obvious to one of ordinary skill in the art before the priority date to modify Cavalieri's second direction to be oblique to the first direction, since rearranging parts of an invention involves only routine skill in the art. The motivation would have been to rigidly secure the component (Cavalieri; column 1, lines 20-30).
Intended use language is located in the preamble of claim 1 (apparatus for selectively masking a component). A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Cavalieri in view of Chen would be capable of the intended use and meets the claim limitation.
Regarding claim 19, Cavalieri discloses the masking system of claim 18. Cavalieri fails to explicitly disclose wherein an outermost diameter of the mask carrier is oversized relative to an interior diameter of a can of a shot peen device. It would have been obvious to one of ordinary skill in the art before the priority date to modify Cavalieri's outermost diameter of the mask carrier to be oversized relative to an interior diameter of a can of a shot peen device, since a mere change in the size of a component involves only routine skill in the art. The motivation would have been to rigidly secure the component (Cavalieri; column 1, lines 20-30).
Regarding claim 20, Cavalieri discloses the masking system of claim 18, and Cavalieri further discloses wherein the component is a gas turbine component (turbine blade 100; figure 3).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Num. 4,829,720 to Cavalieri (hereinafter Cavalieri) and further in view of US Pat. Num. 5,527,435 to Arnau (hereinafter Arnau).
Regarding claim 4, Cavalieri discloses the masking system of claim 3.
Cavalieri fails to explicitly disclose further including a third connector set associated with each of the first carrier section and the second carrier section, the third connector set extending in the second direction and removably coupling the first carrier section to the second carrier section.
Arnau teaches further including a third connector set (screw 19, tapped hole 23; figure 3) associated with each of the first carrier section (plate 20A; figure 3) and the second carrier section (plate 20B; figure 3), the third connector set extending in the second direction and removably coupling the first carrier section to the second carrier section (as shown; figure 3; column 3, lines 50-62).
It would have been obvious to one of ordinary skill in the art before the priority date to modify Cavalieri's masking system to incorporate Arnau's third connector set. The motivation would have been to improve quality and reduce manufacturing cost by means of clamping action (Arnau; column 4, lines 15-25).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Num. 4,829,720 to Cavalieri (hereinafter Cavalieri) as applied to claim 1 and US Pat. Pub. No. 20180209279 A1 to Trzcinski et al (hereinafter Trzcinski).
Regarding claim 13, Cavalieri fails to explicitly disclose the first carrier section has a semi-cylindrical base and an insert support.
Trzcinski teaches the first carrier section has a semi-cylindrical base (102, 104) and an insert support (110). (See Trzcinski Abstract, Figs. 2-6, and paragraphs 38-42, 46-48.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the first carrier section has a semi-cylindrical base and an insert support, because Trzcinski teaches this structure would allow the root to be located into a partial receptacle to complete a masking box to shiled the root. (See Trzcinski Abstract, Figs. 2-6, and paragraphs 7, 10, 13, 15, 17-19, 22, 38-42, 46-48.)
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of 18/529,944 to Oras et al (hereinafter Oras) in view of US Pat. Pub. No. 20220162745 A1 to Eric Jorzik (hereinafter Jorzik) .
Regarding claim 1, Oras teaches a masking system for selectively masking a component (a masking system for selectively masking a component) , the masking system comprising: a mask carrier (housing) having a first carrier section (first shell) and a second carrier section (second shell) ; and an insert (liner 162) configured to retain the component ( the component), the insert having a first insert section (first part 170) and a second insert section (second part 180) , the first insert section and the first carrier section having a first connector set ( back side 174 of the liner see paragraphs 80-81). (See Oras, Abstract, Figs. 1-11, and paragraphs 62, and 64-88.) Oras does not explicitly teach the first insert section and the second insert section having a second connector set, the second connector set extending in a second direction oblique to the first direction and removably coupling the first insert section to the second insert section.
Jorzik teaches coating workpieces and shielding a portion of each workpiece from line-of-sight coating material.
Jorzik teaches the first insert section (22a) and the second insert section (32a) having a second connector set (hinge), the second connector set extending in a second direction oblique to the first direction and removably coupling the first insert section to the second insert section. (See Jorzik, Abstract, Fig. 1, paragraphs 5-6, 15, and paragraphs 32-33.) (Examiner is considering a hinge to be a known structure for removably coupling. )
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the first insert section and the second insert section having a second connector set, the second connector set extending in a second direction oblique to the first direction and removably coupling the first insert section to the second insert section, because this would allow the workholder to be shield a portion of the workpiece from coating and adjust to the size of the workpiece accordingly.(See Jorzik, Abstract, Fig. 1, paragraphs 5-6, 15, and paragraphs 32-33.)
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 ( or 6) of 18/478,126 to Hopkins et al (hereinafter Hopkins) in view of US Pat. Pub. No. 20220162745 A1 to Eric Jorzik (hereinafter Jorzik).
Regarding claim 1, Hopkins teaches a masking system for selectively masking a component (a masking system for masking a component) , the masking system comprising: a mask carrier (first portion, second portion) having a first carrier section (first portion) and a second carrier section (second portion) ; and an insert ( seating area) configured to retain the component ( the component), the insert (seating area) having a first insert section (elastic locking member) and a second insert section ( recessed portion) , the first insert section (elastic locking member) and the first carrier section (first portion) having a first connector set ( first elastic locking member). (See Hopkins, Abstract, Figs. 1-11, and paragraphs 62, and 64-88.) Hopkins does not explicitly teach the first insert sectionand the second insert section having a second connector set, the second connector set extending in a second direction oblique to the first direction and removably coupling the first insert section to the second insert section.
Jorzik teaches coating workpieces and shielding a portion of each workpiece from line-of-sight coating material.
Jorzik teaches the first insert section (22a) and the second insert section (32a) having a second connector set (hinge), the second connector set extending in a second direction oblique to the first direction and removably coupling the first insert section to the second insert section. (See Jorzik, Abstract, Fig. 1, paragraphs 5-6, 15, and paragraphs 32-33.) (Examiner is considering a hinge to be a known structure for removably coupling. )
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the first insert section and the second insert section having a second connector set, the second connector set extending in a second direction oblique to the first direction and removably coupling the first insert section to the second insert section, because this would allow the workholder to be shield a portion of the workpiece from coating and adjust to the size of the workpiece accordingly.(See Jorzik, Abstract, Fig. 1, paragraphs 5-6, 15, and paragraphs 32-33.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARL V KURPLE whose telephone number is (571)270-3477. The examiner can normally be reached Monday-Friday 8 AM-5 PM.
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/KARL KURPLE/
Primary Examiner
Art Unit 1717
Prosecution Insights