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 .
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 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 6 of U.S. Patent No. 12,129,554. Although the claims at issue are not identical, they are not patentably distinct from each other. The reference patent claims metallurgically fused first layer as do the claims of the instant application. While the instant application specifies technique to be used and those of the reference patent do not, it would be expected that no matter what technique is specified, the resulting articles would be indistinguishable since both lead to same structural bonding feature. Regarding Claims 17 and 18, the specified oxides and carbides appear to be quintessential examples of those specified in Claim 15, which are claimed in Claim 1 of the reference patent, which examples are rendered obvious as being immediately envisaged.
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 15-18 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.
Regarding Claim 15, the bond coating is to be metallurgically bonded to substrate. However, CVD, one of the claimed methods, would not be expected to lead to such type of bonding since high temperatures required for metallurgical bonding would not be expected to be achieved. It is unclear how therefore CVD could lead to required type of bonding.
Regarding Claim 15, it is unclear whether there is any difference in “chromium” and “chrome”. This issue pertains to Claims 17 and 18 as well and the use of these terms in those claims.
Regarding Claim 16, it is unclear what characterizes and distinguishes “nanometer” and “micrometer” sizes. Any size can be expressed in one or the other of these units of length, and so it is unclear what constitutes the respective sizes.
Regarding Claims 17 and 18, whether the claim is making a distinction or providing an equivalent alternative formulation in the specified group member pairs. For example, for group members “titanium oxide” and “TiOx”, are these to be understood as different expressions of the same type of oxide or to be understood as different scope of types of oxide? Does “titanium oxide” mean TiO2, only, for example? The same indefiniteness applies to other analogous oxide possible pairs in Claim 17 and the carbides of Claim 18.
Regarding Claim 17, it is unclear whether these oxides are necessarily present or whether, if oxides are present, they must be of these types. Analogous rejection applies to carbides of Claim 18.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 15, 17, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Darolia USPN 8,512,874. Darolia teaches metal component substrate having bond coat layer formed of metals including Zr or Ta (col. 5, lines 56-62) wherein the layer is formed by EBPVD and heat treatment so as to interdiffuse the coating with the substrate (col. 7, lines 13-54). Darolia teaches that ceramic TBC layer, such as YSZ, (Figure 2 at 26; col. 9, line 43) can be applied by thermal spraying (col. 4, line 38) wherein the ceramic can be one of many others as well (col. 4, line 33 through col. 5, line 12: [CMAS, which includes silica, i.e., silicon oxide]). In view of the interdiffused nature of the bondcoat, it can be characterized as being metallurgically fused and indistinguishable from one formed by CVD or other methods claimed since no claimed process parameters are specified that would be expected to lead to bonding that would not encompass Darolia. As well, the EBPVD in combination with heat treatment may be considered a type of fusion welding. Nevertheless, these methods arguably also may not be encompassed by the claimed product-by-process steps of this claim. However, the resulting articles in Darolia would be expected to have metallurgical bonding that is the same as or substantially the same as that encompassed by the claims in view of the interdiffusion and integral bonding that results therefrom. Absent evidence to the contrary, there is no expectation of a structural or compositional nature to the bonding formed by the claimed techniques that would necessarily be absent in Darolia’s bonding.
Claim(s) 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Darolia USPN 8,512,874 in view of Huddleston et al. USPA 2007/0098987. Darolia teaches metal component substrate having bond coat layer formed of metals including Zr or Ta (col. 5, lines 56-62) wherein the layer is formed by EBPVD and heat treatment so as to interdiffuse the coating with the substrate (col. 7, lines 13-54). Darolia teaches that ceramic TBC layer, such as YSZ, (Figure 2 at 26; col. 9, line 43) can be applied by thermal spraying (col. 4, line 38) wherein the ceramic can be one of many others as well (col. 4, line 33 through col. 5, line 12: [CMAS, which includes silica, i.e., silicon oxide]). In view of the interdiffused nature of the bondcoat, it can be characterized as being metallurgically fused and indistinguishable from one formed by CVD or other methods claimed since no claimed process parameters are specified that would be expected to lead to bonding that would not encompass Darolia. Darolia may not teach claimed oxide in that CMAS may not be considered oxide of silicon. Huddleston teaches that oxide of titanium incorporated into YSZ is an effective TBC material for gas turbine (paragraph 49) and teaches other ceramics meeting oxide of titanium and silicon requirement (paragraph 21) all which can be in powder form (paragraph 24 [micron sized]) that is thermally sprayed (paragraph 32; and Table 1). It would have been obvious to one of ordinary skill in the art before the time of invention to choose effective ceramic TBC material in Darolia such as those mentioned in Huddleston and to apply such ceramic by thermal spray means suggested by Darolia and Huddleston at particle size taught as effective by Huddleston in order to obtain coating layer that provides expected TBC performance required in gas turbine environment. The EBPVD in combination with heat treatment may be considered a type of fusion welding. Nevertheless, these methods arguably also may not be encompassed by the claimed product-by-process steps of this claim. However, the resulting articles in Darolia would be expected to have metallurgical bonding that is the same as or substantially the same as that encompassed by the claims in view of the interdiffusion and integral bonding that results therefrom. Absent evidence to the contrary, there is no expectation of a structural or compositional nature to the bonding formed by the claimed techniques that would necessarily be absent in Darolia’s bonding.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera N. Sheikh, can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
28 September 2025
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