DETAILED ACTION
1. The Amendment filed 03/30/2026 has been entered. Claims 1-15 in the application remain pending. Claims 1-2 were amended. Claims 7-15 remain withdrawn from consideration.
2. The text of those sections of Title 35, U.S.C. code not included in this action can be found in a prior Office Action.
Notice of Pre-AIA or AIA Status
3. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
4. Claim objections on claim 2 are rendered moot per amendments.
Claim Rejections
5. The claim rejections under AIA 35 U.S.C. 112(b), of claims 1-6 are withdrawn per amendments of claim 1.
Claim Rejections - 35 USC § 103
6. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 207154055 U) hereinafter Li (the terminology of the claims in the application is used, but the references of Li are included between parentheses).
Regarding claim 1, the recitation “for forming an abradable coating in an aircraft turbomachine module, the module comprising an annular stator casing and a central rotor which can move inside the casing about an axis… in order to rotate the tooling and the rotor inside the casing… capable of spreading a resin”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Li since Li meets all the structural elements of the claim and is capable of forming an abradable coating in an aircraft turbomachine module, the module comprising an annular stator casing and a central rotor which can move inside the casing about an axis and rotate the tooling and the rotor inside the casing and capable of spreading a resin, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Li discloses a tooling for forming an abradable coating in an aircraft turbomachine module, the module comprising an annular stator casing and a central rotor which can move inside the casing about an axis ([0009]-[0010]; fig 1-11), comprising:
a first portion (111+112) which is capable of being centered and secured to the rotor ([0044]-[0047]; fig 1-3),
a second portion (21+22+23) which comprises at least a first transverse arm (21+22) extending radially outwards and which carries a spreading roller (24) ([0053]-[0055]; fig 1, 4, 7), and
a flywheel (213) centered on the axis (A) and configured to be rotated manually by an operator in order to rotate the tooling and the rotor inside the casing, so that the spreading roller (24) is capable of spreading a resin in order to form the coating ([0010]; [0028]; [0054]; [0058]-[0060]; fig 1, 7, 10-11), however Li does not disclose multiple rollers.
Although the figures of Li only depict a singular roller, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the system of Li to have additional rollers as recited in the claim to accommodate additional substrates or as needed for an intended coating method and therefore is not expected to alter the operation of the device in a patentably distinct way.
Therefore before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have incorporated more than one roller since It is held that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B.
As regards to claim 2, Li discloses a tooling ([0009]-[0010]; fig 1-11), wherein the first portion (111+112) comprises centering lugs (14) which are distributed around the axis (A) and which are configured to cooperate with the rotor in order to ensure that the tooling is centered on the rotor ([0047]; [0060]; fig 1-3, 9).
As regards to claim 3, Li discloses a tooling ([0009]-[0010]; fig 1-11), wherein the lugs (14) are located on a circumference (12) centered on the axis (A), which has a first diameter (see fig 1, 9-11), and the flywheel (213) has a second diameter (see fig 1, 9-11) which is greater than the first diameter ([0045]; [0047]; [0060]; fig 1-3, 9-11).
As regards to claim 4, Li discloses a tooling ([0009]-[0010]; fig 1-11), wherein the first portion (111+112) comprises support pins (1121) which are parallel to the axis (A) ([0044]-[0047]; [0052]; fig 1-4).
As regards to claim 5, Li discloses a tooling ([0009]-[0010]; fig 1-11), wherein the tooling comprises a first transverse arm (21+22) extending radially outwards and which carries a spreading roller/counterweight (24) ([0053]-[0055]; fig 1, 4, 7), however Li does not disclose multiple transverse arms, the second diametrically opposed the first arm with respect to the axis.
Although the figures of Li only depict a singular transverse arm extending radially outwards and which carries a spreading roller/counterweight, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the system of Li to have additional transverse arms extending radially outwards diametrically opposed to each other and carrying a spreading roller/counterweight as recited in the claim to accommodate additional substrates or as needed for an intended coating method and therefore is not expected to alter the operation of the device in a patentably distinct way.
Therefore before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have incorporated more than one transverse arms extending radially outwards diametrically opposed to each other and carrying a spreading roller/counterweight since It is held that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B.
As regards to claim 6, Li discloses a tooling ([0009]-[0010]; fig 1-11), wherein the tooling further comprises a lever (25+26) for adjusting the radial position of the roller (24) with respect to the axis (A) ([0057]-[0062]; fig 1, 4, 7, 10-11), however Li does not disclose multiple rollers.
Although the figures of Li only depict a singular roller, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the system of Li to have additional rollers as recited in the claim to accommodate additional substrates or as needed for an intended coating method and therefore is not expected to alter the operation of the device in a patentably distinct way.
Therefore before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have incorporated more than one roller since It is held that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B.
Response to Arguments
7. Applicant's arguments filed 03/30/2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
(a) Li does not disclose the following limitations:
- Li does not include a part suitable for being fixed on a rotor. The anti-slip plate 14, for example, is not fixed to the tube.
- The second part of the device does not include several spreading rollers, necessary for
spreading the abradable resin;
- a flywheel centered on said axis and configured to be rotated manually by an operator in order to rotate the tooling and the rotor inside the casing. Indeed, in Li, only the arm 2 equipped with the roller is rotated and the tube remains in a fixed position. The wheel 213 is only configured to rotate the arm 2 carrying the roller 24 as can be observed on figures 4 and 7. There is no disclosure of a rotation of the tube (nor a rotor).
(b) Consequently claim 1 is new and inventive compared to Li. Claims 2-6 which are related to claim 1 are also new and inventive compared to Li.
8. In response to applicant’s arguments, please consider the following comments.
(a) Initially, as already discussed above in detail in regards to claim 1, Li teaches a first portion (111+112) which is capable of being centered and secured to the rotor. As acknowledged by Applicant, “The device includes extendable arms 11/111 having an anti-slip plate 14 at one end, the plate 14 bearing on the inner surface of the tube 6” (pg 6 of Remarks), thus satisfying centered and secured. Further, Applicants arguments are not commensurate with the breadth of the currently amended claims. In response to applicant's argument that the references fail to show certain features of applicant’s invention, it is noted that the features upon which applicant relies (i.e., being fixed) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further, as already discussed above in detail in regards to claim 1, Li teaches a second portion (21+22+23) which comprises at least a first transverse arm (21+22) extending radially outwards and which carries a spreading roller (24), however Li does not disclose multiple rollers. Although the figures of Li only depict a singular roller, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the system of Li to have additional rollers as recited in the claim to accommodate additional substrates or as needed for an intended coating method and therefore is not expected to alter the operation of the device in a patentably distinct way. Therefore before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have incorporated more than one roller since It is held that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B.
Even further, as already discussed above in detail in regards to claim 1, Li teaches a flywheel (213) centered on the axis (A) and configured to be rotated manually by an operator in order to rotate the tooling and the rotor inside the casing, so that the spreading roller (24) is capable of spreading a resin in order to form the coating. Examiner contends the second portion (21+22+23) which comprises at least a first transverse arm (21+22) extending radially outwards and which carries the spreading roller (24) would qualify as the tooling which is being rotated by the flywheel (213) being rotated by an operator. As already discussed above in detail in regards to claim 1, the recitation “the module comprising an annular stator casing and a central rotor which can move inside the casing about an axis… in order to rotate the tooling and the rotor inside the casing” merely refers to the location and intended use of the claimed tooling and thus has not been interpreted to further structurally limit the claimed apparatus. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on location and process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
(b) In view of the foregoing, Examiner respectfully contends the limitations of claim 1 are indeed satisfied. Claims 2-6 are rejected at least based on their dependency from claim 1, as well as for their own rejections on the merits, respectively.
Conclusion
9. 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 extension fee 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 date of this final action.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights