DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 10/28/2025 without traverse of Group I, claims 1-6 for further examination. Claims 7-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on 04/16/2024 & 04/25/2024 are being considered by the examiner.
Claim Objections
5. Claim 2 is objected to because of the following informalities: line 5 recites “centring” which is misspelled and should recite “centering”.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1-6 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, lines 1-2 recite “an aircraft turbomachine module”, then line 2 recites “this module” wherein it is unclear whether they are the same module or different. For examination purposes, examiner is interpreting “this module” in line 2 as “the module”. To correct this problem, amend line 2 to recite “the module”.
Claims 2-6 are rejected at least based on their dependency from claim 1.
Claim Rejections
8. 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.
9. 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 Rejections - 35 USC § 103
10. 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 of this title, 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.
11. The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
12. 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 configured to be 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.
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
14. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei D. Yuan can be reached on 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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/Jethro M. Pence/
Primary Examiner
Art Unit 1717