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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-12 and 17-20, the masking system comprising: a first piece; a second piece having a first channel and a second channel; and a third piece having a first wall, a second wall, a first sidewall, and a second sidewall, the first sidewall having a first notch; wherein: the first piece is configured to be connected to the second piece; and the second wall of the third piece is configured to be insertably received by the first channel and the second channel such that a portion of the component is accessible via the first notch; classified in H01L2251/56; or
Claims 14-16, a masking system for selectively masking a disc, the disc having a stop, the stop including a post with a wear plate, the masking system comprising: a first piece; a second piece having a first channel and a second channel, the first channel opposing the second channel; and a third piece having a first wall, a second wall, a first sidewall, and a second sidewall, the first sidewall having a first notch; wherein: the first piece is configured to be connected to the second piece in an end-to-end configuration; and the second wall of the third piece is configured to be insertably received by the first channel and the second channel such that the first notch corresponds to the wear plate when the third piece is on the post, classified in C23C14/564
Inventions I and II are related as subcombination and combination. 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 (claim 13) does not require the masking system comprising: the second wall of the third piece is configured to be insertably received by the first channel and the second channel such that a portion of the component is accessible via the first notch. The subcombination has separate utility such as for masking a golf club.
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 continuation or 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.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply: the inventions have acquired a separate status in the art in view of their different classification, and the inventions require a different field of search for example, searching different classes/subclasses or electronic resources, or employing different search queries.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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(a) of the other invention.
In addition, an election of species is required in this application. The species are independent or distinct because they contain configuration which are structurally different (i.e. non-overlapping). In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, none of the claims is generic.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them 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 species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
A provisional election without traverse was made in phone conversation with Hissan Anis Reg. Num. 65,943, on May 29, 2026 to elect Group I, Claims 1-12 and 17-20. Claims 13-16 are withdrawn. A written confirmation of the election of Group I is requested in Applicant’s response to this Office Action.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 1-3, 6-7, 12, 17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. Pub. No. 9,249,490 B2 to Trzcinski et al (hereinafter Trzcinski).
Regarding claim 1, Trzcinski teaches a masking system (30) for selectively masking a component (10), the masking system comprising: a first piece (42, 50) having a groove (portion between 46 and 47 in Fig . 5) ; a second piece (44) having a projection (end of 47 in Fig. 5 facing groove), a first channel (left side of 46) , and a second channel ( right side of 46) ; and a third piece (20) having a first wall (front wall, see Fig. 2) , a second wall (circumferential wall, see Fig. 2) , a first sidewall (top wall, see Fig. 2) , and a second sidewall (bottom wall, not visible in Fig. 2) , the first sidewall (top wall, see Fig. 2) having a first notch (see opening of mask as depicted in Fig. 2) ; wherein: the groove is configured to receive the projection to connect the first piece (42, 50 in Fig. 5) and the second piece (44 in Fig. 5); and the second wall (circumferential wall) of the third piece (20) is configured to be insertably received by the first channel and the second channel such that a portion of the component (10) is accessible via the first notch (portion above first notch in Fig. 2. (See Trzcinski, Abstract, Figs. 2, 4-5, and col. 3, lines 12 to col. 4, line 5.) Regarding claim 2, Trzcinski teaches the second piece (44) has a top wall that includes a cutout ( middle and open portion of 46). (See Trzcinski, Fig. 5.) Regarding claim 3, Trzcinski teaches the first channel (left side of 46) , and the second channel (right side of 46) , are accessible via the cutout (46) . (See Trzcinski, Fig. 5.) Regarding claim 6, Trzcinski teaches including a fourth piece (frame in Fig. 4) , the fourth piece having a first wall (small side wall at end of triangular under 44 in Fig. 4) and a second wall (vertical side directly under 44 in Fig. 4) connected by an angled wall (slanted piece between the two walls in Fig. 4) . (See Trzcinski, Fig. 4.) Regarding claim 7, Trzcinski teaches component is a gas turbine component. (See Trzcinski, Figs. 1-10.) Regarding claim 12, Trzcinski teaches the masking system is toolless. (See Trzcinski, col. 4, lines 26-40.)
Regarding claim 17, Trzcinski teaches a masking system (30) for selectively masking a component (10), the masking system comprising:
a first piece (42, 50);
a second piece (44) having a first channel (left side of 46) , and a second channel ( right side of 46) ; and a third piece (20) having a first wall (front wall, see Fig. 2) , a second wall (circumferential wall, see Fig. 2) , a first sidewall (top wall, see Fig. 2) , and a second sidewall (bottom wall, not visible in Fig. 2) , the first sidewall (top wall, see Fig. 2) having a first notch (see opening of mask as depicted in Fig. 2) ; wherein: the first piece (42, 50 in Fig. 5) is configured to be connected to the the second piece (44 in Fig. 5); and the second wall (circumferential wall) of the third piece (20) is configured to be insertably received by the first channel and the second channel such that a portion of the component (10) is accessible via the first notch (portion above first notch in Fig. 2. (See Trzcinski, Abstract, Figs. 2, 4-5, and col. 3, lines 12 to col. 4, line 5.)
Regarding claim 19, Trzcinski teaches the first piece and the second piece are connected in an end-to-end configuration. (See Trzcinski, Abstract, Figs. 2, 4-5, and col. 3, lines 12 to col. 4, line 5.)
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 (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 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.
Claims 4-5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Num. 9,249,490 B2 to Trzcinski et al (hereinafter Trzcinski) as applied to claims 1 and 17, respectively, and further in view of US Pat. Pub. No. 3,709,163 A1 to Smedley et al (hereinafter Smedley).
Regarding claim 4, Trzcinski does not explicitly teaches the groove is a frusto-rectangular groove.
Smedley teaches the first piece has a frusto-rectangular groove (43). (See Smedley, Abstract, col. 4, lines 19-50. )
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the groove is a frusto-rectangular groove, because Smedley teaches this structure provides a secure connection. (See Smedley, Abstract, lines 4-17. )
Regarding claim 5, Trzcinski does not explicitly teaches the projection is a frusto-rectangular projection.
Smedley teaches the second piece has a frusto-rectangular projection (38). (See Smedley, Abstract, col. 4, lines 19-50. )
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the projection as a frusto-rectangular projection, because Smedley teaches this structure provides a secure connection. (See Smedley, Abstract, lines 4-17. )
Regarding claim 18, Trzcinski does not explicitly teaches the first piece has a frusto-rectangular groove and the second piece has a frusto-rectangular projection.
Smedley teaches the first piece has a frusto-rectangular groove (43) and the second piece has a frusto-rectangular projection (38). (See Smedley, Abstract, col. 4, lines 19-50. )
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the first piece has a frusto-rectangular groove and the second piece has a frusto-rectangular projection , because Smedley teaches this structure provides a secure connection. (See Smedley, Abstract, lines 4-17. )
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Num. 9,249,490 B2 to Trzcinski et al (hereinafter Trzcinski) in view of US Pat. Pub. No. 20120100299 A1 to Zajchowski et al (hereinafter Zajchowski).
Regarding claim 8, Trzcinski does not explicitly teaches the component is a fan disc.
Trzcinski teaches other turbine components may be masked. (See Trzcinski, col. 2, lines 54-67, col. 3 lines 1-11. )
Zajchowski teaches a fan disc is a known component of a turbine. (See paragraph 13 and Figs. 1-4.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include where the component is a fan disk, because Trzcinski teaches turbine components benefit from shielding to prevent from plating process. (See Trzcinski, col. 2, lines 54-67, col. 3 lines 1-11. )
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Num. 9,249,490 B2 to Trzcinski et al (hereinafter Trzcinski) in view of US Pat. Pub. No. 20120100299 A1 to Zajchowski et al (hereinafter Zajchowski) as applied to claim 8 and further in view of US Pat. Pub. No. 20170267328 A1 to Mark R. Plickys (hereinafter Plickys).
Regarding claim 9, Trzcinski does not explicitly teach the fan disc includes a post having a wear plate.
Trzcinski teaches other turbine components may be masked. (See Trzcinski, col. 2, lines 54-67, col. 3 lines 1-11. )
Plickys teaches the fan disc includes a post having a wear plate is a known component of a turbine. (See Plickys, Abstract paragraph 31, Fig. 3B)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include where the component is the fan disc includes a post having a wear plate, because Trzcinski teaches turbine components benefit from shielding to prevent from plating process. (See Trzcinski, col. 2, lines 54-67, col. 3 lines 1-11. )
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Num. 9,249,490 B2 to Trzcinski et al (hereinafter Trzcinski) in view of US Pat. Pub. No. 20190264746 A1 to Adams et al (hereinafter Adams) and US Pat. Pub. No. 20040247946 A1 to Seitz et al (hereinafter Seitz).
Regarding claim 10, Trzcinski does not explicitly teaches the portion is a wear plate.
Trzcinski teaches other turbine components may be masked. (See Trzcinski, col. 2, lines 54-67, col. 3 lines 1-11. )
Adams teaches a wear plate is a known component of a turbine. (See Adams, paragraph 45.)
Seitz teaches wear plates are designed for wear and corrosion. (See Seitz, Abstract, paragraph 17.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to the portion is a wear plate, because Seitz teaches this component may benefit from coating to provide resistance to wear. (See Seitz, Abstract, paragraph 17.)
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Num. 9,249,490 B2 to Trzcinski et al (hereinafter Trzcinski).
Regarding claim 11, Trzcinski does not explicitly teach a height of the second wall is greater than a height of the first wall.
Trzcinski teaches other turbine components may be accommodate movement between the mask and mask support. (See Trzcinski, col. 1, lines 34-43, col. 5, lines 5-43, and Figs. 1-10.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have a height of the second wall is greater than a height of the first wall, because slight difference in height may result from wear, dimensional tolerances, or wiggle to accommodate the mask and mask support. (See Trzcinski, col. 1, lines 34-43, col. 5, lines 5-43, and Figs. 1-10.)
It has been held that the shape or configuration is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape (orientation, alignment, dimensions, or configuration) is significant. In this case, no evidence to the significance of the shape (orientation, alignment, dimensions, or configuration) is provided and the shape (orientation, alignment, dimensions, or configuration) is considered an obvious matter of design choice based on other known (orientation, alignment, or configuration) in the art. (See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) )
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Num. 9,249,490 B2 to Trzcinski et al (hereinafter Trzcinski) as applied to claim 17 and further in view of US Pat. Pub. No. 2016033706 A1 to Uihlein et al (hereinafter Uihlein) and US Pat. Pub. No. 20120132138 A1 to Beaudoin et al (hereinafter Beaudoin).
Regarding claim 20, Trzcinski does not explicitly teaches each of the first piece, the second piece, and the third piece is manufactured using a high-temperature material.
Beaudoin teaches nickel or Inconel are known materials to make masks. (See Beaudoin, Abstract, paragraph 2. )
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the mask additively manufactured, because Beaudoin teaches this material is useful for a high heat process. (See Beaudoin, Abstract, paragraph 2. )
Regarding claim 20, Trzcinski does not explicitly teaches each of the first piece, the second piece, and the third piece is additively manufactured using a high-temperature material.
Uihlein teaches the mask is additively manufactured. (See Uihlein, Abstract, paragraph 17. )
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the mask additively manufactured, because Uihlein teaches this enable simple manufacture of a complicated structure. (See Uihlein, Abstract, paragraph 17. )
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pat. Pub. No. 20200056484 A1 to Breen teaches a windage shield. US Pat. Pub. No. 20140165376 A1 to Soucy teaches a part holding apparatus.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARL V KURPLE whose telephone number is (571)270-3477. The examiner can normally be reached Monday-Friday 8 AM-5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARL KURPLE/
Primary Examiner
Art Unit 1717
Prosecution Insights