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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 5/13/26 is acknowledged.
Claims 14-19 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/13/26.
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 1-4 and 6-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-14 of U.S. Patent No. 11,946,146. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘146 Patent claims the same subject matter as the instant claims.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-14 of U.S. Patent No. 11,946,146 in view of Burns et al. (US 2007/0172676). The ‘146 Patent claims the same subject matter as instant claim 5 except for the columnar width. Burns is directed to a thermal barrier coating (Abst.) and explains that the size of columnar grains can be selected based on the desired properties of the material by control of deposition parameters (¶ 0017). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected columnar widths of 4-12 µm with the predictable expectation of success.
Allowable Subject Matter
Gorman et al. (US 2007/0116883) teaches a turbine component (Abst.; ¶ 0001) comprising: a thermal barrier coating on the surface (Abst.); and an infiltration coating which is integral with the barrier comprising alumina particles and a liquid alumina precursor (¶ 0021-0025). With respect to the alumina particles being formed by an aluminum nitrate, product claims are defined by the product itself and not the process used to form the product. MPEP § 2113. In this case, the alumina particles infiltrated into the thermal barrier coating meets the claim limitation of solid oxide particles. Gorman, however, fails to teach that an additional protective coating is applied.
Stowell et al. (US 6,465,090) teaches a protective coating on a thermal barrier coating (Abst.) wherein a reactive spray coating having base ceramic material and a ceramic binder is applied on the thermal barrier coating which is capable of reacting with dust deposits on the thermal barrier coating (4:3-39; 5:32-45), the reactive spray coating remaining on the surface of the thermal barrier coating (4:4-11). Stowell further teaches that the reactive spray coating includes YSZ (i.e. claimed earth oxide comprising yttrium and zirconium) (3:31-33). Stowell explains that applying this type of coating to the outer surface of a thermal barrier coating prevents spallation attributable to CMAS (2:8-10, 2:33-46). Stowell, however, fails to teach that each of the base ceramic and ceramic binder include an earth oxide comprising yttrium, gadolinium or zirconium.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571) 270-1034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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