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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “A” (see paragraph [0063] of specification). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
“212”, “214”, “216”, “218”, “220”, “275”, “276”, and “277” (see Figure 5A);
“212”, “214”, “275”, “276”, and “277” (see Figure 5B);
“534” (see Figure 13); and
“634” (see Figure 14).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
In paragraph [0001], the status of parent application 17/898,751 should be updated as “U.S. Patent No. 11,998,974”.
In paragraph [0107], 3rd line, replace “likes” with “like” before “parts”.
In paragraph [0126], 4th line, replace “eh” with “the” before “complex”.
In paragraph [0162], 13th line, replace “plan” with “plane” after “second”.
In paragraph [0164], 21st line, replace “are” with “area” after “second”.
In paragraph [0165], 20th line, replace “are” with “area” after “second”.
In paragraph [0183], 12th line, delete “,” after “turn,”.
In paragraph [0217], 14th line, replace “are” with “area” after “second”.
Appropriate correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,998,974. Although the claims at issue are not identical, they are not patentably distinct from each other because the casting cores share at least the following structural features:
a first core corresponding to at least one of the first area or the second area of a cast engine component; and
a second core corresponding to a connecting fluid passage of the cast engine component, the second core further defining the following:
a first leg of the connecting fluid passage extending in a first direction;
a second leg of the connecting fluid passage extending in a second direction non-parallel to the first direction; and
a turn of the connecting fluid passage formed along an intersection between the first leg and the second leg and extending along at least a portion of the first leg or the second leg,
wherein at least a portion of the first core and an entirety of the second core is provided within a geometric boundary defined by a set of geometric characteristics of the first core and the second core within the geometric boundary, the set of geometric characteristics having:
a first minimum equivalent diameter of the first core that is representative of a minimum hydraulic diameter of at least one of the first area or the second area within the geometric boundary, the first minimum equivalent diameter being greater than or equal to 0.015 inches and less than or equal to 1 inch, and
a second minimum equivalent diameter of the second core that is representative of a minimum hydraulic diameter of the connecting fluid passage within the geometric boundary, the second minimum equivalent diameter being greater than or equal to 0.005 inches and less than or equal to 0.2 inches.
Independent claim 1 of the present application is substantially similar to independent claim 1 of US 11,998,972, with an exception of the claimed flexible geometry factor (FGF) limitation of the present application being greater than or equal to 0.286 and being less than or equal to 200 (0.286 ≤ FGF ≤ 200). On the other hand, independent claim 1 of US 11,998,972 recites that the claimed flexible geometry factor (FGF) is greater than or equal to 0.024 and less than or equal to 1000 (0.024 ≤ FGF ≤ 1000). With regard to the comparative ranges of FGF in each set of claims, these ranges would be obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges of FGF in view of independent claim 1 (and dependent claims thereof) of US 11,998,972, as set forth in MPEP 2144.05. “In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980). In addition, the dependent claims of the present application substantially overlap with those of US 11,998,972, and would depend on mere rearrangement of the claim numbering and limitations thereof in each set of claims. Moreover, one of ordinary skill in the art would recognized the overlapping scope of the claims, and exclusion of any additional features from the claims of US 11,998,972 would have been obvious, as open-ended “comprising” language exists in both sets of claims of the present application and US 11,998,972.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the double patenting rejections set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to teach or suggest a casting core that includes the following structural features:
a first core corresponding to at least one of the first area or the second area of a cast engine component; and
a second core corresponding to a connecting fluid passage of the cast engine component, the second core further defining the following:
a first leg of the connecting fluid passage extending in a first direction;
a second leg of the connecting fluid passage extending in a second direction non-parallel to the first direction; and
a turn of the connecting fluid passage formed along an intersection between the first leg and the second leg and extending along at least a portion of the first leg or the second leg,
wherein at least a portion of the first core and an entirety of the second core is provided within a geometric boundary defined by a set of geometric characteristics of the first core and the second core within the geometric boundary, the set of geometric characteristics having:
a first minimum equivalent diameter (D1eqmin) of the first core that is representative of a minimum hydraulic diameter of at least one of the first area or the second area within the geometric boundary, the first minimum equivalent diameter (D1eqmin) being greater than or equal to 0.015 inches and less than or equal to 1 inch, and
a second minimum equivalent diameter (D2eqmin) of the second core that is representative of a minimum hydraulic diameter of the connecting fluid passage within the geometric boundary, the second minimum equivalent diameter (D2eqmin) being greater than or equal to 0.005 inches and less than or equal to 0.2 inches, wherein
a flexible geometry factor (FGF) is equal to (D1eqmin)/(D2eqmin), and the flexible geometry factor (FGF) is greater than or equal to 0.286 and less than or equal to 200 (0.286 ≤ FGF ≤ 200).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicants' disclosure. US 11,998,974 (issued from parent application 17/898,751) is cited in PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 August 15, 2026
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