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 .
DETAILED ACTION
Election/Restrictions
Newly submitted claims 54-55 (Group II) are directed to an invention that is independent or distinct from the invention originally claimed (Group I) for the following reasons:
Inventions II and I are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not require enclosing the composite structure is a casting. Additionally, the combination does not require the casting to be separate from the composite. The subcombination has separate utility such as a method performed without a base, and/or a method performed wherein the casting the does not enclose a portion.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
A search burden exists at least for the reasons detailed in section of the 11/20/25 restriction.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 54-55 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 30, 45, 49-51 and 53 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.
As to claim 30, it’s not clear if the “casing material” corresponds to the “casting” recited in claim 29.
As to claims 49-51 and 53, “the casting material” lacks proper antecedent basis in the claims.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 29, 31-33, 40, 41, 45-48 and 50-52 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US 2021/0001519).
As to claim 29, Wang discloses a method comprising: enclosing at least a portion of a composite structure (lowermost layers of composite workpiece 205 - e.g. 195b/195c in fig 7, see figs 7, 11-14, para 65-85) in a casting (uppermost layer of composite workpiece 205 – 195a in fig 7), wherein the casting is separate from the composite structure (uppermost layer is separate from other layers); expanding an expandable medium (232/264, figs 9, 12-16, para 125-140) to apply positive pressure (step 308, fig 26, para 122, 132) to the composite structure; and curing (step 310, fig 26) the composite structure (figs 7, 9-16, 26, para 11-14, 65-85, 125-140).
As to claim 31, Wang discloses enclosing at least the portion of the composite structure and the casting in a constraining container 220/230 (fig 10, 11); and disposing the expandable medium within an interior volume of the constraining container (figs 10-12, 26, para 73-81).
As to claim 32, Wang discloses changing an attribute of the expandable medium to expand the expandable medium to a predetermine volume (para 141-142, 150); and applying the positive pressure to the casting and the constraining container (para 150-152).
As to claim 33, Wang discloses selectively varying the interior volume of the constraining container (para 150-153).
As to claim 40, Wang discloses the composite structure comprises a plurality of composite layers; at least a portion of which is uncured (para 50-52 67-68, figs 7-8).
As to claim 41, Wang discloses at least one of the plurality of composite layers is a composite patch configured to repair a portion of a composite surface of the composite structure (para 128, additionally composite is functionally a repair patch).
As to claim 45, Wang discloses the casting material is applied directly to at least the portion of the composite structure (fig 7-9, para, 65-70).
As to claim 46, Wang discloses positioning the casting between the composite structure and the expandable medium (figs 9, 12-16, para 125-140)
As to claim 47, Wang discloses producing a predetermined change in an internal cellular structure of the expandable medium thereby expanding the expandable medium (para 92-120).
As to claim 48, Wang discloses producing a predetermined change in a chemical state of the expandable medium thereby expanding the expandable medium (para 92-120).
As to claim 50-51, Wang discloses the casting material comprises one of a polymer thermoset material or a polymer thermoplastic material (para 67).
As to claim 52, Wang discloses forming a pressure-leveling layer with the casting to transfer a non-uniform pressure generated by the expandable medium into a uniform pressure applied to the composite structure (para 103, 121-130)
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.
Claim(s) 30, 49 and 53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 29 above, and further in view of Barr et al. (US 2010/0193635).
As to claim 30, Wang discloses enclosing at least the portion of the composite structure in the casting comprises: applying a casting material over at least the portion of the composite structure (fig 7, para 64-69), and hardening the casting material in response a predetermined change produced in an attribute of the casting material (para 67, 148, 121-130, fig 7, 26).
Wang does not disclose the hardening of the casting material occurs prior to the curing of the composite structure. Barr discloses a casting material 22, wherein the casting material is hardened (para 30) before the curing of the composite structure (para 35-36, fig 11, associated text). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Wang such that eh casting material is hardened before the curing of the composite as taught by the Barr above a such improves the strength and rigidity of the component while maintaining reduced weight (para 11-12, 30)
As to claim 49, the casting can comprise epoxy (para 30 Barr).
As to claim 53, Wang disclose at least a portion of the composite structure comprises an uncured composite material (para 67-72); and Barr discloses the casting comprises a casting material that is different than the composite material (polyester and/or epoxy and/or phenolic, para 28, 33).
Response to Arguments
Applicant's arguments filed 5/26/27 have been fully considered but they are either not persuasive or moot in light of the new grounds of rejection detailed above. Wang meets the new limitations and added claims as detailed in the body of the rejection above.
Conclusion
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 CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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