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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 5 February 2026, with respect to priority claim and prior art rejections under 35 USC 103 have been fully considered and are persuasive. The prior art rejections under 35 USC 103 have been withdrawn.
Applicant’s arguments, see Remarks, filed 5 February 2026, with respect to the claim rejections under 35 USC 112 have been fully considered and are persuasive. The claim rejections under 35 USC 112 have been withdrawn.
Applicant’s arguments, see Remarks, filed 5 February 2026, with respect to the claim rejections under obviousness double patenting have been fully considered and are not persuasive. As discussed during an interview with the applicant’s representative, the features of the claims, argued as not being present in the cited patents, are included in the cited patent claims. The examiner recommended filing a terminal disclaimer to overcome said pending claim rejections.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of McCune (US 10,227,893 B2) in view of McKibbin (US 5,466,198 A).
Although the claims are not identical, they are not patentably distinct from one another. The application claims are broader in at least one aspect and also recite additional features not claimed in the patent claims.
For claim 1:
Regarding the broadening aspect of the application claims, the following comparison between the patent claims and the application claims highlights (see underlined features in the patent claims) what elements have been excluded in the presentation of the application claims.
Patent claim 21
Application claim 1
A gas turbine engine, comprising:
a fan shaft driving a fan having fan blades;
a fan shaft support that supports said fan shaft;
a gear system connected to said fan shaft, said gear system includes a gear mesh defining a gear mesh lateral stiffness and a gear mesh transverse stiffness;
a flexible support supporting said gear system and defining a flexible support lateral stiffness and a flexible support transverse stiffness; and wherein at least one of said flexible support lateral stiffness and said flexible support transverse stiffness is less than 8% of a respective one of said gear mesh lateral stiffness and said gear mesh transverse stiffness;
further comprising a ring gear defining a ring gear transverse stiffness and said ring gear transverse stiffness is less than 20% of said gear mesh transverse stiffness;
wherein both said flexible support lateral stiffness and said flexible support transverse stiffness are less than 8% of a respective one of said gear mesh lateral stiffness and said gear mesh transverse stiffness;
further comprising a low fan pressure ratio of less than about 1.45, said low fan pressure ratio measured across the fan blades alone, and wherein said gear system includes a reduction ratio greater than 2.3;
wherein said fan shaft support defines a fan shaft support lateral stiffness and said flexible support lateral stiffness is less than 11% of said fan shaft support lateral stiffness;
wherein said flexible support defines a flexible support transverse stiffness and said fan shaft support defines a fan shaft support transverse stiffness and said flexible support transverse stiffness is less than 20% of said fan shaft support transverse stiffness;
wherein said flexible support lateral stiffness is less than 11% of said fan shaft support lateral stiffness and said flexible support transverse stiffness is less than 11% of said fan shaft support transverse stiffness.
A gas turbine engine, comprising:
a propulsor having propulsor blades; a propulsor shaft for driving the propulsor;
a propulsor shaft support that supports said propulsor shaft, said propulsor shaft support defining a propulsor shaft support transverse stiffness;
a gear system connected to said propulsor shaft, said gear system includes a gear mesh defining a gear mesh transverse stiffness; and
a flexible support which supports said gear system relative to a static structure and defines a flexible support transverse stiffness, wherein said flexible support transverse stiffness is less than 11% of said propulsor shaft support transverse stiffness and said flexible support transverse stiffness is less than 8% of said gear mesh transverse stiffness.
Thus, it is apparent, for the broadening aspect, that patent claim 21 includes features that are not in application claim 1. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Since application claim 1 is anticipated by patent claim 21, with respect to the broadening aspect, then application claim 1 is obvious over patent claim 21 with respect to the broadening aspect.
With respect to the additional features recited in application claim 1, patent claim 21 fails to recite the a propulsor and the limitations associated to a propulsor instead of a fan. However, McKibbin
teaches geared drive system employing a planetary gear train conveys torque and rotary motion from a
source thereof to a bladed component (abstract), said component being a propulsor (Fig.1/2) potentially
including a fan (Fig.1, 4) or a propeller (Fig.2, 4). Since the patent claim recites the use of a geared drive
system to convey torque to a fan and McKibbin teach that geared drive systems could be used to convey
torque to a fan or a propeller (i.e., propulsors), it would have been obvious before the effective filing
date of the claimed invention to a person having ordinary skill in the art to modify the fan and
associated fan components and replace them with a propeller and the resulting associated propeller
components as taught by McKibbin as a simple substitution of one known element for another to obtain
predictable results of helping generate a force allowing aircraft to fly.
For claim 13, the recited limitations are contained in patent claim 21 in view of McKibbin.
Claims 1 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of McCune (US 10,301,968 B2) in view of McKibbin (US 5,466,198 A).
For purposes of brevity, a full comparison of the patent claim and the instant application is not included herein, however, the same analysis discussed in Section 8 above applies for claim 2 of McCune (US 10,301,968 B2) in view of McKibbin (US 5,466,198 A).
Claims 1 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of McCune (US 10,590,802 B2) in view of McKibbin (US 5,466,198 A).
For purposes of brevity, a full comparison of the patent claim and the instant application is not included herein, however, the same analysis discussed in Section 8 above applies for claim 1 of McCune (US 10,590,802 B2) in view of McKibbin (US 5,466,198 A).
Claims 1 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of McCune (US 11,021,997 B2) in view of McKibbin (US 5,466,198 A).
For purposes of brevity, a full comparison of the patent claim and the instant application is not included herein, however, the same analysis discussed in Section 8 above applies for claim 5 of McCune (US 11,021,997 B2) in view of McKibbin (US 5,466,198 A).
Claims 1 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of McCune (US 11,021,996 B2) in view of McKibbin (US 5,466,198 A).
For purposes of brevity, a full comparison of the patent claim and the instant application is not included herein, however, the same analysis discussed in Section 8 above applies for claim 8 of McCune (US 11,021,996 B2) in view of McKibbin (US 5,466,198 A).
Claims 1 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of McCune (US 11,111,818 B2) in view of McKibbin (US 5,466,198 A).
For purposes of brevity, a full comparison of the patent claim and the instant application is not included herein, however, the same analysis discussed in Section 8 above applies for claim 1 of McCune (US 11,111,818 B2) in view of McKibbin (US 5,466,198 A).
Claims 1 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of McCune (US 11,698,007 B2) in view of McKibbin (US 5,466,198 A).
For purposes of brevity, a full comparison of the patent claim and the instant application is not included herein, however, the same analysis discussed in Section 8 above applies for claim 2 of McCune (US 11,698,007 B2) in view of McKibbin (US 5,466,198 A).
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN G FLORES whose telephone number is (571)272-3486. The examiner can normally be reached Monday - Friday, 8:30am - 5:30pm Pacific Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan E Wiehe can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUAN G FLORES/Primary Examiner, Art Unit 3745
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