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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 12 January 2024. These drawings are accepted.
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 1-12 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.
Regarding claim 1, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Because it is unclear whether the limitations are a part of the claim, the point of infringement of claim 1 cannot be determined and the claim is indefinite.
Each of claims 2-5 depends from claim 1 and is also indefinite. Claim 6 similarly includes the limitation “in particular” and is indefinite for the same reasons. Each of claims 7-12 depends from claim 6 and is also indefinite.
Regarding claim 1, the use of the phrases "on the one hand" and “on the other hand” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is not clear whether the phrase “the other hand” refers to a singular embodiment having two elements within the composition or two alternative embodiments of the composition. The point of infringement of claim 1 cannot be determined and the claim is indefinite.
Each of claims 2-5 depends from claim 1 and is also indefinite. Claim 6 similarly includes the limitations “on the one hand” and “on the other hand,” and is indefinite for the same reasons. Each of claims 7-12 depends from claim 6 and is also indefinite.
Regarding claim 1, the limitation “selected from the group consisting of titanium and/or molybdenum and/or niobium and/or chromium” in indefinite. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims, after the appellant in Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 127 (1924). The listing of specified alternatives within a Markush claim is referred to as a Markush group or Markush grouping. Abbott Labs v. Baxter Pharmaceutical Products, Inc., 334 F.3d 1274, 1280-81, 67 USPQ2d 1191, 1196-97 (Fed. Cir. 2003) (citing to several sources that describe Markush groups). Applicant is further directed to MPEP 2173.05(h).
In this case the “group consisting of A OR B OR C” is considered to be an open Markush grouping which includes multiple possibilities that are not positively recited. It is not clear what are the metes and bounds of the grouping itself in this case. Each of claims 2-5 depends from claim 1 and is also indefinite. Claim 6 similarly includes the limitations of a Markush group without a positive recitation of the elements therein, and is indefinite for the same reasons. Each of claims 7-12 depends from claim 6 and is also indefinite.
Regarding claim 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Because it is unclear whether the limitations are a part of the claim, the point of infringement of claim 3 cannot be determined and the claim is indefinite.
Claim 7 recites the limitation "mixing the pure powders. There is insufficient antecedent basis for this limitation in the claim. Prior to this, and in claim 6, no mention is made of “pure” powders. It is not clear what is meant by this limitation. Is this meaning to imply that the powders mixed are elemental (“pure”) powders? Is this supposed to mean that powders of one or more different pre-reacted MAX phases are supplied, which are nominally pure? Does this mean something else altogether? The point of infringement of claim 7 cannot be determined and the claim is indefinite.
Claim 7 recites the limitation "mixing the pure powders. There is insufficient antecedent basis for this limitation in the claim. Prior to this, and in claim 6, no mention is made of “pure” powders. It is not clear whether this limitation (“pure”) is intended to limit the powders of claim 6 or not, based on the use of “the,” which would refer to the antecedent.
Claim 8 includes a similar reference to “the pure powders” and is indefinite for the same reasons as claim 7.
Claim 9 recites the limitation of “a supply channel configured to allow the supply of powder constituting the part to be manufactured, is provided in the counter-form.” It is not clear what claim 9 means. Literally the claim requires that the channel is to “allow…powder.” It is not clear what the supply of powder is “allowed” to do. The function to be performed by the channel required is not described in the claim, and therefore the point of infringement of claim 9 cannot be determined.
Claim 11 recites a process of using a part made by the process of claim 6. Claim 11 fails to further limit the claim 6, as by only incorporating the product of claim 6 without the actual steps required by claim 6. The metes and bounds of the claim cannot be determined. It is suggested that applicant should either positively recite the method of claim 6 as being part of claim 11, or to alternatively recite the counter-form of claim 1 instead.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11-12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 11 recites a process of using a part made by the process of claim 6. Claim 11 fails to further limit the claim 6, as by only incorporating the product of claim 6 without the actual steps required by claim 6. It is suggested that applicant should either positively recite the method of claim 6 as being part of claim 11, or to alternatively recite the counter-form of claim 1 instead.
Claim 12 depends from claim 11, and therefore also fails to further limit a parent claim.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12528234. Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s prior patent describes a molding core for manufacture, including the same composition as instant claim 1. Both the molding core and the counter-form are defined primarily by their composition, and are considered to be obvious variants due to being used to shape a fluent material in forming an aeronautical part. Applicant’s patent claims include limitations corresponding to other pending claims. For example, patent claim 1 further reads on instant claim 2, patent claims 2 and 3 combined corresponds to instant claim 3, and so on.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12121955. Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s prior patent describes a casting core for manufacture of aeronautical parts, including the same composition as instant claim 1. Both the casting core and the counter-form are defined primarily by their composition, and are considered to be obvious variants due to being used to shape a fluent material in forming an aeronautical part. Applicant’s patent claims include limitations corresponding to other pending claims. For example, patent claim 2 further reads on instant claim 2, patent claim 3 corresponds to instant claim 3, and so on.
Conclusion
NO claims are allowed. NO rejection is made over the prior art.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20220325417 A1 and US 20210179505 A1 teach to provide MAX phase coating on aeronautical parts. US 20220032498 A1 is considered to be representative of the prior art methods used to manufacture counterforms. US 20200300100 A1 teaches to manufacture composite aeronautical parts comprising MAX phase.
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.
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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
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