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 II, claims 8-22, in the reply filed on 10 July 2026 is acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Claims 1-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 10 July 2026.
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 8, 11-15, and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 29 of copending Application No. 19/266745 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 8 and 15 recite a structure having integrated passages produced by an additive manufacturing process comprising a base part comprising a plurality of grooves, a cap at least partially positioned in the groove, and an additional layer of material securing the cap. This is patentably indistinct of claim 29 of the ‘745 application which recites a nozzle for a rocket engine comprising integrated passages produced by an additive manufacturing process comprising machining grooves in a curved surface, positioning tubes/wires into the grooves, and depositing an additional layer on material over the tubes to secure the tubes in the grooves and machining the additional layer. As both the instant claims and those of the ‘745 application recite overlapping structures with grooves having caps (i.e. tubes/wires) secured therein with additional material they are patentably indistinct from one another.
Instant claims 11-12 recite shapes of the groove necessary to accommodate the tube overlapping claim 29 of the ‘745 application. Instant claim 13 recites cap and groove sidewalls contacting which is necessarily present in the tube/groove combination recited in claim 29 of the ‘745 application. Instant claims 14 and 22 recite a nozzle of a rocket engine overlapping the rocket nozzle of claim 29 of the ‘745 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
It is noted that Notice of Allowance is in the file wrapper of the ‘745 application, but the application has not issued as of the writing of this Office action.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 8, 11-17, and 20-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hiroaki et al. (GB 2501413).
Considering claims 8 and 15, Hiroaki teaches a heat exchanger (abstract) including an embodiment taught in Fig 2 (reproduced below) comprising stacked units A having grooves (4a) and (4b) formed therein (i.e. a base with a plurality of layers comprising a plurality of grooves) with heat transfer pipes (2) therein (i.e. caps positioned within the grooves) with a further unit A thereon (i.e. an addition layer of material securing the layer below) (Paragraph 12) where the further unit A has grooves (4a) and/or (4b) thereon (i.e. machined to a predetermined shape) where each groove and tube combine to form a plurality of passages. As such, the disclosure of Hiroaki anticipates that which is claimed. Further the recitation of ‘produced by an additive manufacturing process’ is considered a product-by-process limitation and is not considered to render a patentable distinction over the prior art, absent an objective showing. See MPEP 2113.
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Considering claim 11, Hiroaki teaches an embodiment where the grooves have a bottom (i.e. first region having a base wall) and slopes connecting to the bottom (i.e. sidewalls tapered at an angle) (Fig 2) as no particular angle is recited. See MPEP 2111.01.
Considering claim 12, Hiroaki teaches where the grooves have a bottom portion (i.e. a first region) and where the upper portion of the groove (i.e. second region) is wider than the bottom (Fig 2). See MPEP 2111.01.
Considering claim 13, Hiroaki teaches the groove and tube each comprise a sidewall and where they contact one another (Fig.2; Paragraph 13).
Considering claim 14, Hiroaki teaches where the structure is a heat exchanger (Paragraph 12).
Considering claim 16, Fig 2 of Hiroaki above teaches where the groove comprises an inner region to receive the tube and where the groove terminates at a flat portion to receive the next unit A.
Considering clam 17, Fig 1 of Hiroaki teaches where the units A comprise flat sections between the grooves and is considered ‘a smooth surface’ as no particular degree of smoothness is recited. See MPEP 2111.01.
Considering claim 20, Fig 2 of Hiroaki above depicts where the passages are defined by the tube on the bottom of the groove and where the tube is a square cross-section (Fig 6) defining sides and top surfaces (Paragraph 31) and meets the claimed configuration due to the recitation of the open-language transitional phrase ‘comprising’. See MPEP 2111.03.
Considering claim 21, Hiroaki teaches where the tube is a square cross-section (Fig 6; Paragraph 31).
Considering claim 22, Hiroaki teaches where the structure is a heat exchanger (Paragraph 12).
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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8-22 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (US 2010/0101768).
Considering claims 8 and 15, Seo teaches a heat transfer plate (abstract). The plate comprises a groove (8) formed therein with a pipe (16) (i.e. cap) inserted in the groove and secured by lid plate (10) (i.e. additional layer of material) (Paragraphs 40 and 77-78; Figs. 4A, 4D, 4E) where (10) is joined to the body by friction stir joining to form a shape (Paragraph 87). An embodiment taught in Fig.14 (reproduced below) depicts where plural grooves and pipes are used to form the heat transfer plate (Paragraph 143). The grooves and pipes are considered to combine to define passages in the base.
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While not expressly teaching a singular example of the claimed structure this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Seo as this is considered a combination of conventionally known grooves and pipes (i.e. cap materials) known to form heat transfer plates and one would have had a reasonable expectation of success. While not teaching where the base is formed by an additive manufacturing process to deposit layers of material, this is considered a product-by-process limitation and is not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the claimed article. See MPEP 2113.
Considering claim 9, in addition to the disclosure as outlined in claim 8 above, Seo teaches where the groove comprises a rectangular upper portion and tapered lower portion (Fig.4A – reproduced below) and where this configuration is formed with the pipe therein and where material from (10) is plasticized and moves into areas (P) around the pipe (Fig. 10) during joining such that the material is within the tapered portion of the groove and the upper rectangular portion (Paragraph 110; Fig.11) and (10) is considered the cap material as claimed.
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Considering claim 10, Fig.8 of Seo depicts where lid material (10) is U-shaped contacting (16) underneath upper lid plate (40) (Paragraph 102).
Considering claims 11-12, Fig.4a (reproduced above) of Seo depicts where the groove has an upper rectangular portion with a base wall and a second portion below having tapered side walls where the upper portion is wider than the bottom portion (Paragraph 80).
Considering claim 13, Seo teaches where the pipe (i.e. cap) and groove comprise sidewalls which contact one another (Fig.4C).
Considering claim 14, Seo teaches where the device is a heat exchanger (Paragraph 1).
Considering claim 16, Fig.4a of Seo above depicts where the groove comprises an upper region to receive (10) (e.g. a second region) and a lower region to receive the pipe (i.e. a first region) (Paragraph 80).
Considering claim 17, Fig.14 of Seo above depicts where (10) is smoothed.
Considering claim 18, Fig.8 of Seo depicts where lid material (10) is U-shaped contacting (16) underneath upper lid plate (40) (Paragraph 102).
Considering claim 19, Fig.4a of Seo above depicts where the groove comprises an upper rectangular region which receives (10) and a lower tapered region to receive the pipe (Paragraph 80).
Considering claim 20, Figs. 4B and 4E of Seo above depict where the passages are defined by the tube on the bottom of the groove and where the tube is a near-rectangular cross-section (Fig. 18C) defining sides and top surfaces (Paragraph 181) and meets the claimed configuration due to the recitation of the open-language transitional phrase ‘comprising’. See MPEP 2111.03.
Considering claim 21, Fig.18C of Seo depicts where the pipe is compressed and deformed into a near-rectangular shape (Paragraph 181). Further, the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04 (IV)(A) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Considering claim 22, Seo teaches where the device is a heat exchanger (Paragraph 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sugimoto et al. (US 2014/0274726), Phelan et al. (US 9,233,438), Cox et al. (US 2022/0080522), and Guy et al. (US 2022/0196330) teach structures similar to that which is claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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, Humera 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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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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