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 without traverse of Group I, claims 1-18, in the reply filed on 04/30/2026 is acknowledged.
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/30/2026.
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 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-10 of U.S. Patent No. 11969796. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim substantially similar graded multilayer composites.
Regarding instant claim 17, the limitations are met by claims 1, 9 of patent’796.
Regarding instant claim 18, the limitations are met by claims 1, 10 of patent’796.
Claims 1-3, 7-8, 10-13 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 13-14, 16, 21, 25 and 28 of U.S. Patent No. 11571742, herein patent’742. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim substantially similar graded multilayer composites.
Regarding instant claim 1, the limitations are met by claims 1, 2 and 16 of patent’742.
Regarding instant claim 1, the limitations are met by claim 25 of patent’742.
Regarding instant claim 2, the limitations are met by claims 1, 2 and 16 of patent’742.
Regarding instant claim 2, the limitations are met by claim 25 of patent’742.
Regarding instant claim 3, the limitations are met by claim 13 of patent’742.
Regarding instant claims 7-8, the limitations are met by claim 28 of patent’742.
Regarding instant claims 7-8, the limitations are met by claim 21 of patent’742.
Regarding instant claims 10-12, the limitations are met by claims 1,2 and 16 of patent’742.
Regarding instant claim 13, the limitations are met by claim 13 of patent’742.
Regarding instant claim 16, the limitations are met by claim 14 of patent’742.
Claim 9 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 or 28 of U.S. Patent No. 11571742, herein patent’742, as applied to claim 1 above, and in further view of Sun et al. (CN110238403A) [IDS dated: 09/03/2024], herein Sun.
The Examiner has provided a machine translation of (CN110238403A). The citation of the prior art in this rejection refers to the machine translation.
In regards to Instant claim 9, ‘742 teaches the matrix is metal but does not expressly a specific alloy.
Sun teaches a metal matrix composite comprising ceramic hollow microspheres [0002, 0004]. The metal matrix is formed from one of a magnesium alloy powder, aluminum alloy powder, titanium alloy powder, or a mixture of magnesium alloy powder and aluminum alloy powder [0014].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the aluminum alloy, titanium alloy, or a mixture of magnesium alloy and aluminum alloy taught by Sun as the metal of the matrix of ‘742. One would have been motivated to do so as Sun teaches such metals or alloys are conventionally known for metal matrix composites and thus one would have had reasonable expectation of success. Additionally, the motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/03/2024, 09/06/2024, 01/20/2025, 05/28/2025, 10/03/2025 and 10/03/2025 are compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 102
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 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 1-2, 6-8 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun et al. (CN110238403A) [IDS dated: 09/03/2024], herein Sun.
The Examiner has provided a machine translation of (CN110238403A. The citation of the prior art in this rejection refers to the machine translation.
In regards to claims 1-2, and 11-12, Sun teaches a multilayer material system comprising a non-graded metal matrix composite comprising ceramic hollow microspheres, sandwiched between metal layers [0002, 0004]. The metal matrix is formed from one of a magnesium alloy powder, aluminum alloy powder, titanium alloy powder, or a mixture of magnesium alloy powder and aluminum alloy powder [0014]. The outer layers are metal layers [0009,0012, 0021, Fig. 1]. Here the non-graded multilayered composite is considered the to be one of the outer layers and the sandwich layer comprising the hollow microspheres.
In regards to claim 6, Sun further teaches the ceramic microspheres have a diameter of 3 mm (3000 µm) and a wall thickness of 100±5 μm, which is about 3.3 percent of diameter [0046].
In regards to claim 7, Sun further teaches the metal matrix is an aluminum alloy [0062-0064].
In regards to claim 8, Sun further teaches the metal matrix material is sintered [0020-0022].
In regards to claim 10, Sun further teaches the metal matrix material is uniform in composition [0014, 0062-0064].
Claims 1-2, 5-12 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schaedler et al. (US 20160194762 A1), herein Schaedler.
In regards to claims 1-2, Schaedler teaches a multilayered material system comprising a core sandwich layer of microspheres and one outer layer of metal and the other outer layer a dense coating/filling [ Abstract, 0128, claims 1, 11, Figs. 6-7, 12]. Here the outer metal layer is considered the one layer joined to the non-graded multilayer composite.
In regards to claim 5, Schaedler further teaches the spheres have a diameter of 50 μm [0146].
In regards to claim 6, Schaedler further teaches the spheres have a diameter of 50 μm and a wall thickness of 1 μm, so about 2 percent of the diameter [0146].
In regards to claims 7, 9 and 10-11, Schaedler further teaches the non-graded layer comprises spheres that are in a nickel matrix [0152]. The layer is considered to be substantially unfirm in composition [0114, Fig. 3].
In regards to claim 8, Schaedler further teaches the matrix and spheres are sintered [0133].
In regards to claim 12, Schaedler further teaches spheres are hollow [0087, 0090, 0114, 0119, 0146, 0149].
In regards to claim 15, Schaedler further teaches the layer consists essentially of hollow spheres [0114, 0149, Figs. 1, 4-7].
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 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Schaedler et al. (US 20160194762 A1), herein Schaedler as applied to claims 2, 12 above.
In regards to claims 3 and 13, Schaedler teaches the spheres comprise zirconium oxide-based ceramics [0014]. Schaedler further teaches the certain applications use yttria-stabilized zirconia in TBC for its low thermal conductivity [0006].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the yttria-stabilized zirconia as the zirconium oxide-based ceramic of the spheres. One would have been motivated to do so as Schaedler yttria-stabilized zirconia is a conventionally known ceramic for TBCs and thus for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Claims 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaedler et al. (US 20160194762 A1), herein Schaedler as applied to claims 2, 12 above, and further in view of Seals et al. (US 6071628 A) [IDs dated 09/03/2024], herein Seals.
In regards to claims 4 and 14, Schaedler teaches the spheres comprise hollow glass [0055, 0149]. Schaedler further teaches the glass may be an aluminosilicate glass [0149].
Seals teach hollow aluminosilicate glass spheres commonly referred to as cenospheres [Abstract, Col 4 lines 5-46]. The cenospheres comprise alumina, silica and iron [Col 4 lines 36-67, Col 5 lines 1-20].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the cenospheres of Seals as the aluminosilicate hollow glass spheres of Schaedler. One would have been motivated to do so as it would have been the simple substitution of one aluminosilicate glass for another to achieve predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784
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