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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11644012. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the present application is generic to or fully encompasses claim 1 of USP 11644012.
Claim 1 – 18908919:
A wind turbine gearbox having at least one gear which is mounted on an axle, wherein a sliding surface is arranged between the gear and the axle or between the axle and an axle holder, wherein the sliding surface is arranged on at least one layer of a deposition welded material made of a sliding bearing material, and wherein the layer of the deposition welded material is applied directly to an outer shell surface of the axle.
Claim 1 – USP 11644012:
A wind turbine gearbox having at least one gear which is mounted on an axle, wherein a sliding surface is arranged between the gear and the axle or between the axle and an axle holder, wherein the sliding surface is arranged on at least one layer of a deposition welded material made of a sliding bearing material, wherein the layer of the deposition welded material is applied directly to an outer shell surface of the axle, and wherein an offset is arranged on the axle and the layer of the deposition welded material is applied directly to the end face of the offset.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11644012. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the present application is generic to or fully encompasses claim 2 of USP 11644012.
Claim 4 - 18908919:
The wind turbine gearbox according to claim 1, wherein the gear is designed as a planetary gear.
Claim 2 – 11644012:
The wind turbine gearbox according to claim 1, wherein the gear is designed as a planetary gear.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11644012. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the present application is generic to or fully encompasses claim 3 of USP 11644012.
Claim 5 - 18908919:
The wind turbine gearbox according to claim 1, wherein the deposition welded material consists of or comprises a material selected from a group comprising aluminum base alloys, tin base alloys, bronze base alloys, brass base alloys.
Claim 3 – 11644012:
The wind turbine gearbox according to claim 1, wherein the deposition welded material consists of or comprises a material selected from a group comprising aluminum base alloys, tin base alloys, bronze base alloys, brass base alloys.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 18908919. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of the present application is generic to or fully encompasses claim 4 of USP 11644012.
Claim 6 – 18908919:
The wind turbine gearbox according to claim 1, wherein the deposition welded material consists of or comprises a material which comprises at least two materials selected from a group comprising aluminum, tin, bronze, brass.
Claim 4 – 11644012:
The wind turbine gearbox according to claim 1, wherein the deposition welded material consists of or comprises a material which comprises at least two materials selected from a group comprising aluminum, tin, bronze, brass.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11644012. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the present application is generic to or fully encompasses claim 5 of USP 11644012.
Claim 7 – 18908919:
A wind turbine having a rotor and a generator, wherein a wind turbine gearbox, which is operatively connected to the rotor and the generator is arranged between the rotor and the generator, wherein the wind turbine gearbox is designed according to claim 1.
Claim 5 – 11644012:
A wind turbine having a rotor and a generator, wherein a wind turbine gearbox, which is operatively connected to the rotor and the generator is arranged between the rotor and the generator, wherein the wind turbine gearbox is designed according to claim 1.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11644012. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the present application is generic to or fully encompasses claim 15 of USP 11644012.
Claim 8 – 18908919:
A method for producing a wind turbine gearbox, having at least one gear which is mounted on an axle, wherein a sliding surface is arranged between the gear and the axle, wherein the method comprises the following steps: providing the axle; deposition welding of a sliding bearing material and with that, depositing a layer of a deposition welded material directly onto the axle; forming the sliding surface on the layer.
Claim 15 – 11644012:
A method for producing a wind turbine gearbox having at least one gear which is mounted on an axle, wherein a sliding surface is arranged between the gear and the axle, wherein the method comprises the following steps: providing the gear or the axle or a sliding bearing bushing; deposition welding of a sliding bearing material and with that, depositing a layer of a deposition welded material directly onto the gear or the axle or a sliding bearing; forming the sliding surface on the layer; wherein when deposition welding, the layer is applied having a raw layer thickness of between 1 mm and 5 mm, and wherein the layer of the deposition welded material is removed, in a subsequent processing step by machining, to a layer thickness of between 0.5 mm and 1.5 mm.
Allowable Subject Matter
Claims 9 – 12 and 16 – 21 are allowed.
Claims 3 and 13 – 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record, including Dinter et al. USPGPUB 20120108380 and Mittendorf et al USPGPUB 20090062159, taken as a whole neither teaches nor makes obvious the claimed combination of a wind turbine gearbox as set forth in claim(s) 9 and 10.
With respect to claim 9, Dinter discloses a wind turbine gearbox including a planetary gear arrangement (see, e.g., Fig. 1) and further discloses, in Fig. 2, an embodiment in which a planet gear is rotatably supported on an axle via a sliding bearing (108). Mittendorf discloses sliding bearing interfaces and coating layers applied to bearing components (see, e.g., Figs. 1–3). However, even in view of Dinter’s sliding bearing embodiment (Fig. 2; sliding bearing 108 between the gear and the axle) and Mittendorf’s coated bearing layers, neither reference teaches or suggests a sliding surface (26) formed on a layer (25) of deposition welded material directly applied to a gearbox structural component, such as the axle (19), gear (14), or axle holder (24), as shown, for example, in Figs. 3 and 9 of the present application. In particular:
Dinter’s sliding bearing (108) is a separate bearing element or bushing arranged between the gear and axle, rather than a deposition welded layer integrated directly onto the component surface; and
Mittendorf’s coating layers (Figs. 1–3) are applied by conventional coating techniques and are not disclosed as being formed by deposition welding, nor as forming the bearing interface directly on structural gearbox components in a planetary gear arrangement.
Accordingly, the combination of Dinter and Mittendorf fails to teach or suggest the claimed configuration in which the sliding surface (26) is defined by a deposition welded layer (25) directly on the component forming the bearing interface.
With respect to claim 10, while Mittendorf may disclose bearing or coating materials suitable for sliding applications, neither Dinter nor Mittendorf teaches or suggests that a deposition welded layer (25) forming the sliding surface consists of or comprises materials selected from aluminum base alloys, tin base alloys, bronze base alloys, or brass base alloys, nor do they teach such materials in the context of a deposition-welded sliding layer integrated into gearbox components.
Accordingly, the claimed combinations of claims 9 and 10 represent a non-obvious advance over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILLIP A JOHNSON whose telephone number is (571)270-5216. The examiner can normally be reached M-F 9am - 5pm.
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/PHILLIP A JOHNSON/Primary Examiner, Art Unit 3617