DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in response to the claims filed 1/17/2025.
Claims 1-20 are presented for examination.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 1/17/2025 and 2/26/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12203384. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-20, these claims are merely broader than the allowed claims of application 18/468,404, now US Patent 12203384.
Instant claim 1 is identical to claim 1 of the ‘384 patent, except lacks recitation of disposition of a top coat on the bond coat. The other instant independent claims broaden scope of the claims of the ‘384 patent by expanding the claimed method to fan blade, a turbine vane, or a blade outer air seal instead of just an airfoil, as well as the apparatus having the particularly claimed depletion and diffusion regions.
In essence, once the applicant has received a patent for a species or a more specific embodiment, he is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent. This is because the more specific “anticipates” the broader. Drawing a helpful analogy, if an Examiner has a broad claim to examine, and finds a reference, which discloses every element of the claim, that reference anticipates. The same is true in an obviousness-type double patenting analysis where the claim being examined is merely broader than the claim patented before. The patented claim “anticipates” the application claim. That is, in a nutshell, the rationale for why the two claims are not patentably distinct.
Allowable Subject Matter
Claims 1-20 would be allowed upon the filing of a terminal disclaimer.
The following is an examiner’s statement of reasons for allowance: the prior art of record, either alone or in combination, is silent to each and every limitation required of claim 1. The prior art of record demonstrates various analogous airfoil coating and cooling hole machining methods for cooling holes in gas turbine airfoils, but not the method having every limitation set forth in claim 1.
US2018/0297156 discloses a method of forming a coating system on a surface of a superalloy component having film holes defined therein. The method may include applying NiCoCrAlY on the surface of the superalloy component to form a NiCoCrAlY layer while keeping the film holes open (e.g., wherein the NiCoCrAlY layer has a chromium content that is higher than the superalloy component), then heating the NiCoCrAlY layer to a treatment temperature of about 900° C. to about 1200° C., then forming a platinum-group metal layer on the NiCoCrAlY layer, and then forming an aluminide coating over platinum-group metal layer. The NiCoCrAlY may be applied onto an existing coating system on the surface of the superalloy component, wherein the existing coating system is a Co-based coating system that is substantially free from Ni. However, the reference lacks the particularly claimed machining and depletion and diffusion steps of claim 1.
US2024/0133040 to Nagarajet al. discloses methods of forming a coating system on a surface of a cobalt-based superalloy component. The method includes forming a nickel-based primer layer on the surface of the cobalt-based superalloy component; forming an intermediate nickel-containing layer on the nickel-based primer layer; and heat treating the cobalt-based superalloy component to form a diffusion coating on the surface of the cobalt-based superalloy component. Nagaraj, however, is silent to the specifically laid out method of instant claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELDON T BROCKMAN whose telephone number is (571)270-3263. The examiner can normally be reached Mon-Fri 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Court Heinle can be reached at (571) 270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELDON T BROCKMAN/Primary Examiner, Art Unit 3799