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
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/4/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 7-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The dependent claims do not cure the deficiencies.
Claim 4 recites the limitation "the PSR surface" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be treated as “the surface”.
Claim 7 recites the limitation "the region" in line 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be treated as “the portion”.
Claim 9 recites the limitation "the location" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be treated as “a location”.
Claim 11 recites the limitation "the PSR" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be treated as “the piston seal ring”.
Claim 12 recites the limitation "the respective end portions" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be treated as “the end portions”.
Allowable Subject Matter
Claims 7-13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The closest prior art is discussed below. The prior art does not teach the deforming comprises applying pressure to a second surface opposite the portion and applying pressure to the first surface at two locations wherein the laser treating is between the two locations. The prior art also does not teach restraining circumferential end portions of the PSR at the shiplap joint while applying pressure to the second surface and to the first surface opposite from the shiplap joint relative to the location of force application to the second surface.
Claim Rejections - 35 USC § 103
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.
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.
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.
Claim(s) 1-6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Han (KR 101677169 B1) in view of Wu (Wu, Stress relaxation test analysis for gray cast iron, euspen’s 15th International Conference and Exhibition, Leuven Belgium, June 2015). A machine translation of Han is attached as an English equivalent and is used in the citations below.
Regarding Claims 1 and 15, Han teaches a method for laser treating a substrate (pg. 5 1st-3rd full para.).
Han does not explicitly teach the method comprising: deforming the substrate during the heat treatment; however, Wu teaches a annealing treatment for gray cast iron wherein the work pieces are annealed under tensile stress for the purpose of relieving residual stress which can cause cracking (2. Experimental method and Abstract). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the heating of Han to include tensile stress, as suggested in Wu, in order to relieve residual stresses and reduce cracking.
Regarding Claims 2, The laser treating forms an oxide coating on the substrate (laser annealing, pg. 5 1st-3rd full para.). Wu teaches the stress relief treatment at an annealing temperature (2. Experimental method).
Regarding Claim 3, Wu teaches tension maintained while performing the heating and does not teach further maintaining tension after the process.
Regarding Claim 4, Wu teaches the tensile stress reduced by the treatment (abstract). Wu is silent as to the measurement of the applied tensile stress; however, "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II A. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the tension of the combined references in order to achieve the desired stress in the plastic range of the work piece and residual stress relief, as suggested by the reference, and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed tensile stress.
Regarding Claim 5, Han does not teach shot peening before the laser treating.
Regarding Claim 6, Han does not teach the laser treating welds, shock peens, or deposits metal.
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Han (KR 101677169 B1) in view of Wu (Wu, Stress relaxation test analysis for gray cast iron, euspen’s 15th International Conference and Exhibition, Leuven Belgium, June 2015) as applied to claims 1-6 and 15 above, and further in view of Webb (US 20130051993).
Regarding Claim 14, Han teaches a piston seal ring substrate ([0023]) and the first surface is an outer diameter (OD) surface ([0044]).
Han does not explicitly teach the piston seal ring having a shiplap joint or installing the substrate as a piston seal ring (PSR) in a gas turbine engine between a shaft of a spool and a disk of the spool; and running the engine to produce non-continuous motion between the PSR and the disk; however, Webb teaches a piston seal ring with a shiplap joint for a gas turbine engine between the shaft and disk which experiences non-continuous movement (Fig. 2, [0037], fretting wear [0004]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the seal ring of Han to include a shiplap joint and gas turbine engine operation, as taught in Webb, because it is a known joint and method of use in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the abrasion resistant piston ring of Han with a shiplap joint and use in a gas turbine engine.
Claim(s) 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Han (KR 101677169 B1) in view of Wu (Wu, Stress relaxation test analysis for gray cast iron, euspen’s 15th International Conference and Exhibition, Leuven Belgium, June 2015) as applied to claims 1-6 and 15 above, and further in view of Webb (US 20130051993) and Yamazaki (JP 2002-176006). A machine translation of Yamazaki is attached as an English equivalent and is used in the citations below.
Regarding Claims 16-17, Webb teaches a piston seal ring with a shiplap joint as discussed with regards to Claim 14 above.
The combined references do not explicitly teach stepwise indexing or restraining the joint; however, Yamazaki teaches stepwise indexing is a known method in laser processing using a stage for holding and moving the work during laser annealing (i.e. contacting and restraining movement of the joint, Yamazaki Fig. 6 and discussion thereof). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the laser treatment of the combined references to include stepwise treatment using a stage for holding and moving the work, as taught in Yamazaki, because it is a known method of laser treatment of a worksurface in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the treated surface of the combined references with stepwise indexing with a stage as in Yamazaki.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TABATHA L PENNY whose telephone number is (571)270-5512. The examiner can normally be reached M-F 8:00-5:00.
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/TABATHA L PENNY/Primary Examiner, Art Unit 1712
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