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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Election/Restrictions
Claims 16-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/4/25.
Applicant’s election without traverse of Group II, Claims 27-35 and Species A-3, B-2 and C-2 in the reply filed on 12/4/25 is acknowledged.
Double Patenting
Examiner’s Note
The instant application invokes a situation where the prohibition against nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply. The claims of the application under examination and claims of the other application/patent are not consonant with the restriction requirement made by the examiner, since the claims have been changed in material respects from the claims at the time the requirement was made. For example, the divisional application filed includes additional claims not consonant in scope with the original claims subject to restriction in the parent. Symbol Technologies, Inc. v.Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991); Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990). In order for consonance to exist, the line of demarcation between the independent and distinct inventions identified by the examiner in the requirement for restriction must be maintained. 916 F.2d at 688, 16 USPQ2d at 1440. See MPEP 804.01 (B)
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 27 and 29-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-12 of U.S. Patent No. 12247492. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding Claim 27, claim 1 of U.S. Patent No. 12247492 recites all of the limitations of claim 27 of the instant application.
Regarding Claim 29, claim 6 of U.S. Patent No. 12247492 recites all of the limitations of claim 29 of the instant application.
Regarding Claim 30, claim 7 of U.S. Patent No. 12247492 recites all of the limitations of claim 30 of the instant application.
Regarding Claim 31, claim 8 of U.S. Patent No. 12247492 recites all of the limitations of claim 31 of the instant application.
Regarding Claim 32, claim 9 of U.S. Patent No. 12247492 recites all of the limitations of claim 32 of the instant application.
Regarding Claim 33, claim 10 of U.S. Patent No. 12247492 recites all of the limitations of claim 33 of the instant application.
Regarding Claim 34, claims 11-12 of U.S. Patent No. 12247492 recites all of the limitations of claim 34 of the instant application.
As such, it is apparent that the more specific reference application claims 1 and/or 6-12 encompasses application claims 27 and 29-34. Following the rationale in In re Goodman cited above, where the applicant has once been granted a patent containing a claim for a 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. Note that since application claims 27 and 29-34 are anticipated by reference patent claims 1 and/or 6-12 and since anticipation is the epitome of obviousness, then application claims 27 and 29-34 are obvious over reference patent claims 1 and/or 6-12.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 27-35 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Backhouse et al. (US 12084987), hereinafter: “Backhouse”.
In Regard to Claim 27
Backhouse teaches:
A composite component(50) for a gas turbine engine(intended use; Fig 10-11), the composite component including (a) an outer shell(54) extending circumferentially about a centerline axis(9), (b) an inner hub(52) extending circumferentially about the centerline axis(Fig 5), and (c) a plurality of circumferentially spaced apart struts(56) connecting the outer shell and the inner hub(Fig 5)
Regarding the limitations,
“the composite component being manufactured by:
installing an outer shell hoop preform on a mold tooling structure, the outer shell hoop preform being constructed of a woven fabric and including a plurality of outer shell strut slots therethrough;
installing an inner hub hoop preform on the mold tooling structure, the inner hub hoop preform being constructed of a woven fabric and including a plurality of inner hub strut slots therethrough;
inserting a strut preform through at least one of the plurality of outer shell strut slots, and through at least one of the plurality of inner hub strut slots, the strut preform being constructed of a woven fabric and including a first end and a second end;
overlaying the first end of the strut preform over one of the outer shell hoop preform or the inner hub hoop preform, and overlaying the second end of the strut preform over one of the outer shell hoop preform or the inner hub hoop preform;
injecting a matrix material into the mold tooling structure; and
applying a curing process to the mold tooling structure to obtain a molded composite component”;
these are product-by-process limitations.
In accordance with MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product (in this case the composite component), does not depend on its method of production (i.e. the specific installation, insertion, overlaying, injecting and applying steps), In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985). Further, where a product by process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the two. See In re Marosi, 218 USPQ 289 (Fed. Cir. 1983)
Additionally, it has been held in re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). “[I]t is the patentability of the product claimed (in this case the composite component) and not of the recited process steps (in this case the specific installation, insertion, overlaying, injecting and applying steps) which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” (see MPEP 2113).
As such, the claimed manufacturing process steps do not appear to impart distinctive structural characteristics to the final product, the final composite component of Backhouse appears to be identical, and is therefore anticipated by Backhouse, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the two.
In Regard to Claims 28-35
Backhouse teaches:
The composite component according to claim 27(see rejection of claim 27 above)
Since the specific limitations of dependent claims 28-35 recite additional product-by-process limitations, they are interpreted and treated in the same manner as above for independent claim 27.
In accordance with MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product (in this case the composite component), does not depend on its method of production (i.e. the specific manufacturing steps recited in claims 28-35), In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985). Further, where a product by process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the two. See In re Marosi, 218 USPQ 289 (Fed. Cir. 1983)
Additionally, it has been held in re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). “[I]t is the patentability of the product claimed (in this case the composite component) and not of the recited process steps (in this case the specific installation, insertion, overlaying, injecting and applying steps) which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” (see MPEP 2113).
Regarding Claims 28-35, since the claimed manufacturing process steps do not appear to impart distinctive structural characteristics to the final product, the final composite component of Backhouse appears to be identical, and is therefore anticipated by Backhouse, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the two.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 9605543 B2
Nunez; Romain et al.
US 11415008 B2
Backhouse; Robert C. et al.
US 9777585 B2
Drane; Andrew James
US 3718952 A
Palfreyman; Jack et al.
US 8905719 B2
Kray; Nicholas Joseph et al.
The above reference are cited for teaching similar methods for manufacturing composite components used in gas turbine engines.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P WOLCOTT whose telephone number is (571)272-9837. The examiner can normally be reached M-F 8:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN P WOLCOTT/Primary Examiner, Art Unit 3711