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 .
Response to Arguments
Applicant's arguments filed on 1/13/2026 have been fully considered but they are not persuasive.
Regarding the 103 rejection, applicant argues that amending the claims and adding “the marking bead defines a radially inner limit of permissible material removal and prevents removal of material radially inward of the marking bead” overcomes the rejections because “None of the references-Takabatake, Yoshida, or Rao-discloses or suggests a marking bead that functionally prevents removal of material inward of its radial location” and that “The combination of these references therefore does not teach or motivate the claimed function of the marking bead.” The examiner respectfully disagrees for several reasons. Firstly, the specification doesn’t define any criteria for any specific mention of the permissibility of material removal or specifically the radially inner limit of permissible material removal. The specification also doesn’t define any device or tool or specific means that would be capable of preventing the removal of material radially inward of the marking bead. See the 112(a) and 112(b) rejections below. Also, note that claims 8, 12, and 17 are apparatus type claims and the newly added limitations are functional in nature. Based on the specification, a turbine wheel merely having a marking bead as described in claims 8, 12, and 17 would make the turbine wheel capable of defining a radially inner limit of permissible material removal (i.e., the marking bead), and preventing the removal of material radially inward of the marking bead (by virtue of the presence of the marking bead. The rejections provided below, disclose all of the limitation of claims 8, 12, and 17, including a marking bead and a mass-removal indention. Applicant further argues that this feature is not a design choice because specification discloses a criticality for the location of the marking bead being arranged in the radially outer half of the hub rear wall because the specification discloses “The marking bead (16) may be arranged at any radial position on the hub rear wall (15), preferably in the radially outer half of the hub rear wall (15), particularly preferably in the radially outer third.” The examiner noted that stating “preferably…” by itself, without any particular criticality is not a proof for criticality specifically because the specification explicitly discloses in verbatim that “The marking bead (16) may be arranged at any radial position on the hub rear wall (15).” In response, applicant argues that the specification does discloses a criticality for the stated locations of “in the radially outer half of the hub rear wall” and “in the radially outer third” and “the reason for this preference is provided at least in paragraph [0037] that, “Balancing in the region radially smaller than the marking bead (16) could lead to mechanical limitations with respect to low-cycle fatigue of the turbine wheel (10).”” This is not persuasive for several reasons. Firstly, this statement is not about the location of the marking bead. This is stated several paragraphs after the location of the marking bead and is related to balancing region. Secondly, if anything, the above-mentioned statement at [0037] tends to broaden the region of balancing which is the opposite of narrowing it to a small region of “outer half of the hub rear wall” or “outer third.” Thirdly, if anything can be inferred from this statement is that the balancing region is better to be greater than the marking bead. There is no rational reason to infer from this statement that the location of the marking bead is better to be in the outer half or third of the hub. Hence, applicant’s arguments that the specification discloses a criticality for the location of the marking bead are not persuasive and they don’t find any support in the specification. Applicant further argues that the marking bead refers to a separate raised, bead-like ridge or annular protrusion on the hub rear wall, as has been clarified in Claims 8, 12 and 17, which serves to assist an operator in creating precise mass-removal indentations efficiently, thereby minimizing the time required for balancing turbine wheels.” The examiner notes that the marking bead of Takabatake is also clearly a separate raised, bead-like ridge or annular protrusion on the hub rear wall, and it certainly is capable to perform the mentioned function of serving to assist an operator in creating precise mass-removal indentations efficiently, thereby minimizing the time required for balancing turbine wheels.
Claim Rejections - 35 USC § 112(a)
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 8-12 and 17-20 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. In this instance, the limitation “the marking bead defines a radially inner limit of permissible material removal and prevents removal of material radially inward of the marking bead” of claims 8, 12, and 17 is newly presented, has not been previously disclosed in the specification, and does not find direct support in the originally filed disclosure, hence it is considered new matter. Thus, the originally filed disclosure does not reasonably convey to one of ordinary skill in the art that Applicant was in possession of the invention as now presented/claimed at the time of the filing of the instant application.
Claims 9-11 and 18-20 are rejected due to their dependency from a previously rejected claim.
Claim Rejections - 35 USC § 112(b)
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 8-12 and 17-20 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 pre-AIA the applicant regards as the invention.
Claims 8, 12, and 17 recite that “the marking bead defines a radially inner limit of permissible material removal and prevents removal of material radially inward of the marking bead.” It is not clear what criteria should be used to define the “limit of permissible material removal” and how to prevent the removal of material radially inward of the marking bead. In other words, it is not clear what is permissible and what is not permissible and how to define the permissibility. It is also not clear what “prevents” the removal of material, for example if there is any device or tool that does the function of “preventing” or if it is merely a visual sign by the marking bead that signals the operator to stop the material removal or if it is by other means. For examination purpose, the limitations are interpreted to be functional limitations that are merely achieved by the presence of the marking bead. In other words, merely having a marking bead is enough to “define a radially inner limit of permissible material removal” and to “prevent removal of material radially inward of the marking bead.”
Any and all claims rejected herein under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, if rejected with art below under sections 35 U.S.C. 102 and/or 35 U.S.C. 103, are rejected as best understood.
Claims 9-11 and 18-20 are rejected due to their dependency from a previously rejected claim.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 8-12 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Takabatake et al. (US 2015/0322793), referred to hereafter as Takabatake in view of Yoshida et al. (US 2012/0183406), referred to hereafter as Yoshida.
With regard to claims 8, 12, and 17-20:
Takabatake discloses a turbine wheel for an exhaust gas turbine, an exhaust gas turbine with a turbine wheel, and an exhaust gas turbocharger with a turbine wheel (Fig. 1, 2B, 4A, 5A), wherein the turbine wheel (10, 100) is rotatable about its rotational axis (28, 105) and comprises a hub (12); and a plurality of turbine blades (26, 112) attached to the hub and arranged in a fluid flow region, wherein the hub has a hub rear wall (22, 116) facing away from the fluid flow region, wherein a mass-removal indentation (126, 128, 36. Also see “in one or more zones” and “one or more zones 36 spaced apart in the radial and/or circumferential directions” in [0031]), asymmetric relative to the rotational axis (Fig. 2B, 4A, 5A, and see “the material removed from the surface 34 of the back-wall 22 is not removed in a manner that is symmetrical about the axis of rotation 28” in [0031]), is provided in the hub rear wall for balancing the turbine wheel ([0009], [0030]), wherein the mass-removal indentation is configured as a concave depression in the hub rear wall extending radially only a portion of the hub rear wall (Fig. 2B, 4A, 5A) and having a radially inner limit and a radially outer limit (Fig. 2B, 4A, 5A), said concave depression with a cross-sectional contour, wherein the cross-sectional contour of the mass-removal indentation is defined in a cross-sectional plane (Z-Z) containing the rotational axis (Fig. 2B, 4A, 5A, [0031]), wherein the hub rear wall furthermore has a marking bead (see annotated Fig. 1 and 4B) running concentrically to the rotational axis, said marking bead comprising a protrusion on the hub rear wall (see annotated Fig. 1 and 4B), said mass-removal indentation radially outside the marking bead (Fig. 1, 2B, 4A, 4B, 5A, 5B), and wherein the marking bead and the mass-removal indentation are adjacent to one another without radially overlapping the mass- removal indentation (see Fig. 2B, [0011]. Also note that Takabatake discloses that the indentations can be anywhere in the radial and/or circumferential directions. Also note that two elements being adjacent to each other doesn’t necessarily require them to touch each other), wherein the mass-removal indentation is arranged in the radially outer half, and third, of the hub rear wall (see 126 or 36. Also see “in one or more zones” and “one or more zones 36 spaced apart in the radial and/or circumferential directions” in [0031]).
Takabatake is silent about the shape of the mass-removal indentation, and does not appear to explicitly disclose that the mass-removal indentation is in the form of an ellipse segment. Takabatake also doesn’t disclose that the marking bead is arranged in a radially outer half, or third, of the hub rear wall. Regarding the location of the marking bead relative to the mass-removal indentation, Takabatake discloses that “the second zone 128 on the surface 124 of the back-wall 116 is disposed toward the weld boss 110” ([0010]), and note that 110 is where the marking bead is located. Moreover, [0010] further discloses that “The inner boundary 134 is constrained by a shape and entrance angle of a cutting tool used to remove the material from the surface 124 of the back-wall 116 so that the cutting tool does not cut into a transition surface between the weld boss 110 and the back-wall 116” which by disclosing that “so that the cutting tool does not cut into a transition surface between the weld boss 110 and the back-wall 116” it discloses that the lower boundary of the mass-removal indentation is right at the transition region which is where the marking bead is. Moreover, [0011] discloses that “the second zone 128 adjacent to the weld boss 110” which means the mass-removal indentation is directly adjacent to the marking bead. Even more explicitly, Takabatake discloses that “It is appreciated that there may be one or more zones 36 spaced apart in the radial and/or circumferential directions” [0031], which means that the hub can have many mass-removal indentations that can be placed at any radial location, including directly adjacent to the marking bead, however Takabatake doesn’t appear to explicitly disclose in verbatim that the marking bead and the mass-removal indentation are directly adjacent to one another with said marking bead next to the radially inner limit of the mass-removal indentation.
Regarding the shape of the mass-removal indentation, Yoshida, which is in the same field of endeavor of turbine wheels, teaches a turbine wheel (1) for an exhaust gas turbine and having a hub (9), a plurality of turbine blades (11) attached to the hub, a mass-removal indentation (21) in the hub rear wall (Fig. 1, 2), wherein the mass-removal indentation is configured as a concave depression in the hub rear wall with a cross-sectional contour in the form of an ellipse segment (Fig. 1, 2, [0063]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application, when looking for shapes of the indentation of Takabatake, to use a known technique, namely having elliptical shape indentations in the hub rear wall, to improve similar devices in the same way.
Regarding the location of the marking bead being arranged in the radially outer half, or third, of the hub rear wall, or the location of the marking bead relative to the mass-removal indentation, a careful examination of the specification reveals that there are no criticality for the location of the marking bead being in the radially outer half, or third, of the hub rear wall, nor any reason as to why the turbine wheel of applicant with this marking bead location would operate any different than the turbine wheel of Takabatake, and Applicant has not disclosed that these locations provides an advantage, is used for a particular purpose, or solves a stated problem. On the contrary, the specification discloses that “The marking bead (16) may be arranged at any radial position on the hub rear wall” ([0017]), and note that the marking being arranged at any radial position includes being positioned directly next to the mass-removal indentation. Hence these locations are considered to be a design choice by the applicant. One of ordinary skill in the art, furthermore, would have expected the Takabatake and Applicant’s invention to perform equally well.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the one half or one third for the location of the marking bead, or the marking bead being directly adjacent to the mass-removal indentation, with said marking bead next to the radially inner limit of the mass-removal indentation, as claimed with the turbine wheel of Takabatake in order to achieve a desired dimension or configuration, as they are a matter of design choice. Such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
It is noted that while features of an apparatus may be recited either structurally or functionally, claims 8, 12, and 17 are directed to an apparatus and must be distinguished from the prior art in terms of structure rather than function. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP § 2114.II. The recitations of claim 8, 12, and 17 attempt to define the invention by what it does rather than what it is. The combination of Takabatake and Yoshida discloses all of the claim elements of the current invention and is capable of performing the recited functions including “wherein the marking bead defines a radially inner limit of permissible material removal and prevents removal of material radially inward of the marking bead” by virtue of having a marking bead and a mass-removal indentation adjacent to one another, as disclosed by the combination of Takabatake and Yoshida.
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Annotated Fig. 1 and 4B of Takabatake
With regard to claim 9, the combination of Takabatake and Yoshida further discloses that the mass-removal indentation has at least one of the following properties (a) to (e): (a) the cross-sectional contour of the mass-removal indentation has a minimum curvature radius of more than 0.03*F, wherein F is the diameter of the rear wall of the turbine wheel; (b) the cross-sectional contour of the mass-removal indentation fulfils the condition ((B*B) / H) / F >0.03, wherein H is the large semi-axis of the elliptical cross-sectional contour of the mass-removal indentation, B is the small semi-axis of the elliptical cross-sectional contour of the mass-removal indentation, and F is the diameter of the rear wall of the turbine wheel; (c) the mass-removal indentation is produced by means of a material-removal tool (Takabatake, [0033]); (d) the mass-removal indentation extends along a ring segment running circumferentially around the axis (see Fig. 2B and 4A of Takabatake); (e) the mass-removal indentation extends as a continuous line, as a sequence of portions of continuous lines, or as a sequence of discrete spot indentations (see Fig. 2B and 4A of Takabatake).
With regard to claim 10, the combination of Takabatake and Yoshida further discloses that the marking bead has at least one of the following properties (i) to (iv): (i) the marking bead is raised and convex in the cross-sectional plane (see Fig. 1, 2B, and 4A of Takabatake); (ii) the marking bead is rotationally symmetrical relative to the rotational axis (see Fig. 1, 2B, and 4A of Takabatake); (iii) the marking bead is arranged according to the inequation E< (F - G) / 2 and/or G / F > 0.5, wherein A is the radial extent of the mass-removal indentation from a radially inner end of the mass-removal indentation to a radially outer end of the mass-removal indentation, D is the radial distance of the apex of the marking bead from the mass-removal indentation, E = A + D is the radial distance of the apex of the marking bead from the radially outer limit of the mass-removal indentation, F is the diameter of the turbine wheel, and G is the diameter of the circle defined by the apex of the marking bead; (iv) the marking bead is arranged radially inside the mass-removal indentation (see Fig. 1, 2B, and 4A of Takabatake).
With regard to claim 11, the combination of Takabatake and Yoshida further discloses that the turbine wheel is a radial turbine wheel for a radial exhaust gas turbine, or a mixed-flow turbine wheel for a mixed-flow exhaust gas turbine (see Fig. 1, 2B, and 4A of Takabatake).
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Claims 8-12 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Takabatake et al. (US 2015/0322793), referred to hereafter as Takabatake in view of Yoshida et al. (US 2012/0183406), referred to hereafter as Yoshida, and Rao et al. (US 2019/0162113), referred to hereafter as Rao.
With regard to claims 8, 12, and 17-20:
Takabatake discloses a turbine wheel for an exhaust gas turbine, an exhaust gas turbine with a turbine wheel, and an exhaust gas turbocharger with a turbine wheel (Fig. 1, 2B, 4A, 5A), wherein the turbine wheel (10, 100) is rotatable about its rotational axis (28, 105) and comprises a hub (12); and a plurality of turbine blades (26, 112) attached to the hub and arranged in a fluid flow region, wherein the hub has a hub rear wall (22, 116) facing away from the fluid flow region, wherein a mass-removal indentation (126, 128, 36. Also see “in one or more zones” and “one or more zones 36 spaced apart in the radial and/or circumferential directions” in [0031]), asymmetric relative to the rotational axis (Fig. 2B, 4A, 5A, and see “the material removed from the surface 34 of the back-wall 22 is not removed in a manner that is symmetrical about the axis of rotation 28” in [0031]), is provided in the hub rear wall for balancing the turbine wheel ([0009], [0030]), wherein the mass-removal indentation is configured as a concave depression in the hub rear wall extending radially only a portion of the hub rear wall (Fig. 2B, 4A, 5A) and having a radially inner limit and a radially outer limit (Fig. 2B, 4A, 5A), said concave depression with a cross-sectional contour, wherein the cross-sectional contour of the mass-removal indentation is defined in a cross-sectional plane (Z-Z) containing the rotational axis (Fig. 2B, 4A, 5A, [0031]), wherein the hub rear wall furthermore has a marking bead (see annotated Fig. 1 and 4B) running concentrically to the rotational axis, said marking bead comprising a protrusion on the hub rear wall (see annotated Fig. 1 and 4B), said mass-removal indentation radially outside the marking bead (Fig. 1, 2B, 4A, 4B, 5A, 5B), and wherein the marking bead and the mass-removal indentation are adjacent to one another without radially overlapping the mass- removal indentation (see Fig. 2B, [0011]. Also note that Takabatake discloses that the indentations can be anywhere in the radial and/or circumferential directions. Also note that two elements being adjacent to each other doesn’t necessarily require them to touch each other), wherein the mass-removal indentation is arranged in the radially outer half, and third, of the hub rear wall (see 126 or 36. Also see “in one or more zones” and “one or more zones 36 spaced apart in the radial and/or circumferential directions” in [0031])
Takabatake is silent about the shape of the mass-removal indentation, and does not appear to explicitly disclose that the mass-removal indentation is in the form of an ellipse segment. Takabatake also doesn’t disclose that the marking bead is arranged in a radially outer half, or third, of the hub rear wall. Regarding the location of the marking bead relative to the mass-removal indentation, Takabatake discloses that “the second zone 128 on the surface 124 of the back-wall 116 is disposed toward the weld boss 110” ([0010]), and note that 110 is where the marking bead is located. Moreover, [0010] further discloses that “The inner boundary 134 is constrained by a shape and entrance angle of a cutting tool used to remove the material from the surface 124 of the back-wall 116 so that the cutting tool does not cut into a transition surface between the weld boss 110 and the back-wall 116” which by disclosing that “so that the cutting tool does not cut into a transition surface between the weld boss 110 and the back-wall 116” it discloses that the lower boundary of the mass-removal indentation is right at the transition region which is where the marking bead is. Moreover, [0011] discloses that “the second zone 128 adjacent to the weld boss 110” which means the mass-removal indentation is directly adjacent to the marking bead. Even more specifically Takabatake discloses that “It is appreciated that there may be one or more zones 36 spaced apart in the radial and/or circumferential directions” [0031], which mean the hub can have many mass-removal indentations that can be placed at any radial location, including directly adjacent to the marking bead, however Takabatake doesn’t appear to explicitly disclose in verbatim that the marking bead and the mass-removal indentation are directly adjacent to one another with said marking bead next to the radially inner limit of the mass-removal indentation.
Regarding the shape of the mass-removal indentation, Yoshida, which is in the same field of endeavor of turbine wheels, teaches a turbine wheel (1) for an exhaust gas turbine and having a hub (9), a plurality of turbine blades (11) attached to the hub, a mass-removal indentation (21) in the hub rear wall (Fig. 1, 2), wherein the mass-removal indentation is configured as a concave depression in the hub rear wall with a cross-sectional contour in the form of an ellipse segment (Fig. 1, 2, [0063]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application, when looking for shapes of the indentation of Takabatake, to use a known technique, namely having elliptical shape indentations in the hub rear wall, to improve similar devices in the same way.
Regarding the location of the marking bead being arranged in the radially outer half, or third, of the hub rear wall, and the marking bead and the mass-removal indentation being directly adjacent to one another with said marking bead next to the radially inner limit of the mass-removal indentation, Rao, which is in the same field of endeavor of turbine wheels, teaches a turbine wheel (Fig. 3) having a hub (Fig. 3), a plurality of turbine blades (Fig. 3) attached to the hub, an indentation in the hub rear wall (Fig. 3), and a marking bead, i.e., protrusion (in Fig. 3, see 281 and the protrusion above it) on the hub rear wall (Fig. 3), the protrusion being arranged in the radially outer half, or third, of the hub rear wall (Fig. 3), and the marking bead and the indentation are directly adjacent to one another with said marking bead next to the radially inner limit of the indentation (Fig. 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine prior art elements according to known methods, and add the marking bead, i.e., protrusion of Rao, which is arranged in a radially outer half, or third, of the hub rear wall and is directly adjacent to the indentation, with said marking bead next to the radially inner limit of the indentation, to the turbine wheel of Takabatake, to yield predictable results. Furthermore, this combination would help to break up smooth flow (Rao, [0036]).
It is noted that while features of an apparatus may be recited either structurally or functionally, claims 8, 12, and 17 are directed to an apparatus and must be distinguished from the prior art in terms of structure rather than function. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP § 2114.II. The recitations of claim 8, 12, and 17 attempt to define the invention by what it does rather than what it is. The combination of Takabatake, Yoshida, and Rao discloses all of the claim elements of the current invention and is capable of performing the recited functions including “wherein the marking bead defines a radially inner limit of permissible material removal and prevents removal of material radially inward of the marking bead” by virtue of having a marking bead and a mass-removal indentation adjacent to one another, as disclosed by the combination of Takabatake, Yoshida, and Rao.
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Annotated Fig. 1 and 4B of Takabatake
With regard to claim 9, the combination of Takabatake, Yoshida, and Rao further discloses that the mass-removal indentation has at least one of the following properties (a) to (e): (a) the cross-sectional contour of the mass-removal indentation has a minimum curvature radius of more than 0.03*F, wherein F is the diameter of the rear wall of the turbine wheel; (b) the cross-sectional contour of the mass-removal indentation fulfils the condition ((B*B) / H) / F >0.03, wherein H is the large semi-axis of the elliptical cross-sectional contour of the mass-removal indentation, B is the small semi-axis of the elliptical cross-sectional contour of the mass-removal indentation, and F is the diameter of the rear wall of the turbine wheel; (c) the mass-removal indentation is produced by means of a material-removal tool (Takabatake, [0033]); (d) the mass-removal indentation extends along a ring segment running circumferentially around the axis (see Fig. 2B and 4A of Takabatake); (e) the mass-removal indentation extends as a continuous line, as a sequence of portions of continuous lines, or as a sequence of discrete spot indentations (see Fig. 2B and 4A of Takabatake).
With regard to claim 10, the combination of Takabatake, Yoshida, and Rao further discloses that the marking bead has at least one of the following properties (i) to (iv): (i) the marking bead is raised and convex in the cross-sectional plane (see Fig. 1, 2B, and 4A of Takabatake); (ii) the marking bead is rotationally symmetrical relative to the rotational axis (see Fig. 1, 2B, and 4A of Takabatake); (iii) the marking bead is arranged according to the inequation E< (F - G) / 2 and/or G / F > 0.5, wherein A is the radial extent of the mass-removal indentation from a radially inner end of the mass-removal indentation to a radially outer end of the mass-removal indentation, D is the radial distance of the apex of the marking bead from the mass-removal indentation, E = A + D is the radial distance of the apex of the marking bead from the radially outer limit of the mass-removal indentation, F is the diameter of the turbine wheel, and G is the diameter of the circle defined by the apex of the marking bead; (iv) the marking bead is arranged radially inside the mass-removal indentation (see Fig. 1, 2B, and 4A of Takabatake).
With regard to claim 11, the combination of Takabatake, Yoshida, and Rao further discloses that the turbine wheel is a radial turbine wheel for a radial exhaust gas turbine, or a mixed-flow turbine wheel for a mixed-flow exhaust gas turbine (see Fig. 1, 2B, and 4A of Takabatake).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the attached form PTO-892 for pertinent prior art disclosing similar turbine wheels such as US 7189062.
Duong et al. (US 2013/0017091) discloses marking beads (35).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BEHNOUSH HAGHIGHIAN whose telephone number is (571)270-7558. The examiner can normally be reached Mon-Fri, 7:00am-15:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Courtney D Heinle can be reached at (571) 270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BEHNOUSH HAGHIGHIAN/
Examiner
Art Unit 3745
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745
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