DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-18 in the reply filed on 06/26/2026 is acknowledged.
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.
Claims 1, 3, 4, 8-12, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saylor (7,632,541).
Saylor teaches a system for selectively masking a component comprising:
- first and second shell halves, see Fig. 3 and first and second shells, see col. 4, lines 26-68, wherein 12 represents two identical shells;
In regard to the requirement related to “when the component is retained by the masking system” – this is intended use and applies to the use of the apparatus. it has been held that claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). In this case, the component is not claimed – the mask is usable for a component that, for example, is larger and does not require the parts to overlap.
It is further held that the portions that are joined at the split 30 meet the requirements of a protrusion as the portions protrude towards each other – the protrusion is not specifically limited as far as the shape or location and the portions as noted in the prior art protrude out from another part of the mask.
Regarding claims 3 and 4, the claims are intended use, but in any case the teachings of Saylor include a mask for a coating process (abstract).
Regarding claim 8, the claim is drawn to a product-by-process limitation – as per MPEP 2113, an apparatus claim is limited only by the structure claimed and not the method of making. Wherein the prior art teaches the same structure, the limitations of the claim are met.
Regarding claims 9-11, the claim limitations are still related to intended use. The claims do not explicitly claim the turbine and therefore the limitations are met by the structure of Saylor being useful for turbine blades as described. In any case, Saylor teaches that the mask system is useful for a turbine blade.
Regarding claim 12, the two half shells are taught as per above – the coming into contact is again an intended use of the apparatus.
Regarding claim 15, all elements of the claim are met as per above, with the first and second shells and protrusion. The requirement for “additively manufactured” is a product -by process limitation and therefore inconsequential and the use of the suction and pressure sides of the blades are intended use as explained above and the limitations are met by the teachings of the same structure. The coating is again intended use and met by the same structure.
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.
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.
Claims 1-4, 8-12, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Saylor in view of McNally (2012/0073353) and Uihlein (2016/0333706).
The teachings of Saylor are described above – if it were determined that the requirement of the clam shells overlapping is not intended use, the teachings of McNally are included. McNally teaches a clamshell system – the teachings include that the clamshell is adjustable and has overlapping portions in order to accommodate different sized components (see abstract, background, Fig. 2. It would have been obvious at the effective date of the invention to form the clamshell of Saylor with overlapping portions as per McNally as it would allow for the mask system to be more flexible of dimension.
In any case/alternative, the formation of the shells of Saylor as per McNally is an operable alterative to forming in the manner wherein the shells adjoin directly as per Fig. 3 and would not impede the intended purpose of masking the component.
In regard to the protrusion, the teachings of Uihlein are applied. Uihlein teaches that in a system for masking a turbine blade, it is useful to have a protrusion to block deposition on the edge (the blade root of the blade is inserted into another portion of mask [0002]). See abstract and Figs. 1 and 2 – wherein a mask covers the tip 4. It would have been obvious at the effective date of the invention to have a protrusion to cover the blade tip of a turbine when forming a coating on a turbine blade. It would have been obvious at the effective date of the invention to include a protrusion with the mask of Saylor as Uihlein teaches that it is useful in some cases to block deposition from a portion and that it is effective to have a mask part that masks the blade tip. In combining the art, one would reasonably combine the teachings to form the mask of Saylor to include the protrusion as directed by Uihlein to the mask system as an operable combination of the teachings. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but rather whether the claimed subject matter would have been obvious to those of ordinary skill in the art in the light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the techniques is obvious unless its actual application is beyond his or her skill.” See id. at 417.
Regarding claims 2 and 16, the protrusion is not taught as being removable, but as per MPEP 2144.04 V. C. making parts separable is obvious without a showing of criticality. To make the additional protrusion separable would have been obvious and no criticality of the ability is demonstrated.
Regarding claims 3 and 4, the claims are intended use, but in any case the teachings of Saylor include a mask for a coating process (abstract).
Regarding claim 8, the claim is rejected in the same manner as over Saylor above and won’t be repeated.
Regarding claims 9-11, the claims are rejected in the same manner as above, it is further noted that in any case Uihlein teaches the dovetail as claimed.
Regarding claims 12 and 15, the claim is again rejected as above.
Regarding claims 17 and 18, the teachings do not include the claimed shapes, but as per MPEP 2144.04 IV. A. a selection/change in shape is obvious without a showing of criticality. To form the protrusion of any desired shape to property effect the mask would have been obvious. The distinct claims support a lack of criticality.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Saylor, McNally (2012/0073353) and Uihlein (2016/0333706) and in further view of Oussaada (2005/0227589).
The teachings of Saylor et al are described above, and do not include tabs as claimed. Oussaada, however, teaches that multiple clamps 236 (i.e. tabs) are useful for securing a clamshell mask, see Fig. 5 and related text, particularly [0039]. It would have been obvious at the effective date of the invention to apply the tabs of Oussaada with the clamshell mask of Saylor et al as an effective manner of securing the mask.
Regarding claims 6 and 7, the teachings do not include fasteners / interlocking clips, but examiner takes Official Notice that wherein the two parts of the mask are adjoined it is generally known to secure separate parts using various techniques and the use of any fastener, including clips, would not have been patentable.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Saylor, McNally and Uihlein and in further view of Bernaski (2006/0021579).
The teachings of Saylor et al are described above, and do not a mounting portion as claimed. Bernaski, however, teaches a masking (fixture) system for masking a turbine and teaches that it is useful to have mounting parts connected to at least one portion (i.e. shell) of the masking system, see Fig. 2 and related text, particularly [0017-21]. It would have been obvious at the effective date of the invention to apply the mounting portion of Bernaski to the mask of Saylor as Bernaski teaches that such elements are useful to include a support for holding the mask system. The mounting portion attaches to at least one of the shells.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A MILLER, JR whose number is (571)270-5825 and fax is (571)270-6825. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Cleveland, can be reached on 571-272-1418. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH A MILLER, JR/ Primary Examiner, Art Unit 1712
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