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 .
Election/Restrictions
Applicant's election with traverse of group I, claims 1-14 in the reply filed on 24 March 2026 is acknowledged. The traversal is on the ground(s) that there would not have been a burden to search both inventions because both of the searches would have to include the common features and classifications of both inventions. This is not found persuasive because apparently applicant envisions a much less thorough search than is envisioned by the examiner. The search terms would both be searched, however the method claims would require searching additive manufacturing methods, whereas the article claims would require searching turbine engine arts. The additional search of the turbine arts for a part that matches represents a much greater burden than what applicant describes. Additionally, there were several reasons pointed out in the prior Office action why a burden exists, which applicant has not argued against. The mere allegation that there would not have been a burden is insufficient to overcome the reasoning described previously.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings were received on 24 October 2023. Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 3 and 10 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.
The term “substantially different properties of thermal expansion” in claims 3 and 10 is a relative term which renders the claim indefinite. The term “substantially different” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case there is no basis for determination of what constitutes “substantially different” as opposed to just “different.”
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.
Claim(s) 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 10-2017210909 A1 (cited by applicant; hereinafter “Geisen”).
Regarding claim 1, Geisen teaches the method of making a component for a gas turbine (See abstract or [0002]). Geisen teaches that the method includes additive manufacturing ([0003]-[0005] on first page of translation).
Geisen describes the manufacture at [0029]-[0039] (second and third pages of translation) and in Figs 1-4. Geisen teaches manufacturing a component with first and second uppermost surfaces (Fig. 1), evacuating the powder (Fig. 2), wherein a flange is placed, which is resting on the second uppermost surface, while being flush with the first uppermost surface (Fig 3). The limitation of being a “forged” flange is not considered to distinguish over the flange which is taught by Geisen. The material with the same shape, sued in the same process, for the same function, has the same structure as claimed in this case. Geisen teaches that the flange is then covered over with powder and a thin layer is manufactured to cover (Figs 3-4). Geisen teaches that the component is built over the flange (See [0032]-[0035] second and third pages of translation for example), reading on filling the powder again.
Regarding claim 2, the structure of Geisen reads on a bearing chamber (See Figs 1-4).
Regarding claim 3, Geisen teaches that the flange protects the material from heat (see [0037]). Thus the material having “substantially different” thermal expansion properties is met. Geisen teaches that the flange is connected with a welding or cohesive or metallurgical bond by the process (See [0035]), thus clearly envisioning a metal material in one embodiment.
Regarding claim 4, Geisen teaches a chamfer (figs 1-4).
Regarding claim 5, Geisen teaches that the flange is connected with a welding or cohesive or metallurgical bond by the process (See [0035]).
Regarding claim 6, Geisen teaches that the component is continued to be built after the flange is placed (Figs 1-4).
Regarding claim 7, Geisen teaches that the method is executed in a SLS or EBM approach (see [0008]). Thus the method is executable in such an apparatus.
Regarding claim 8, Geisen envisions that the flange portion Is removed (See [0041]-[0042]).
Regarding claim 9, Geisen is applied to the claim as stated above. Geisen teaches that the component is built over the flange (See [0032]-[0035] for example), reading on the claim.
Regarding claim 10, Geisen teaches that the flange protects the material from heat (see [0037]). Thus the material having “substantially different” thermal expansion properties is met. Geisen teaches that the flange is connected with a welding or cohesive or metallurgical bond by the process (See [0035]), thus clearly envisioning a metal material in one embodiment.
Regarding claim 11, Geisen teaches a chamfer (figs 1-4).
Regarding claim 12, Geisen teaches that the flange is connected with a welding or cohesive or metallurgical bond by the process (See [0035]).
Regarding claim 13, Geisen teaches that the method is executed in a SLS or EBM approach (see [0008]). Thus the method is executable in such an apparatus.
Regarding claim 14, Geisen envisions that the flange portion Is removed (See [0041]-[0042]).
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.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/493,470 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims differ in that the copending claims require a “thin layer” over the forged flange. However instant claim 1 recites that the buildup takes place on top of the forged flange, which would be considered to include such a feature. Dependent claims find correspondence in applicant’s copending claims. Instant claim 2 corresponds to copending claim 2, instant claim 3 corresponds to copending claim 3, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759
Prosecution Insights