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 with traverse of Species 1 in the reply filed on 04/29/2026 is acknowledged. The traversal is on the ground(s) that that there is no search and examination burden with regards to the species because there are generic claims that read on two or more species. This is not found persuasive because the mutually exclusive characteristics among the species, such as the different type of biasing member structurally shown in Species 1 and 3 as well as the structurally different inserted pin 202 and groove 29 configuration shown in Fig. 7 of Species 2, the prior art applicable to one species would not likely be applicable to another species. Therein, multiple and different prior art would be required to capture the different and mutually exclusive characteristics among the three species. This establishes a serious time and examination burden because multiple searches with different search queries would be required to examine all three species.
The restriction/election requirement is therefore deemed proper and is made FINAL. Claims 1-4, 7-14, and 17-19 are examined. Claims 5-6, 15-16, and 20 are withdrawn.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretations
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a. Claims 11 and 12 - “biasing member” read as a member [means] for biasing.
has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because they use generic placeholders:
a. Claims 11 and 12 – “member”
coupled with functional language:
a. “for biasing”
without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
a. Corresponding structure is found in [0026].
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-4, 7-14, and 17-19 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 pre-AIA the applicant regards as the invention.
Claims 1, 13, and 18 each recite of a radially inner surface of the inner ring. Based on the disclosure, it is unclear how surface (18, Applicant’s Fig. 3) for example, is a radially inner surface because the surface thereof does not face the radial direction (i.e., vertical direction). As a suggestion to overcome the rejection, the limitation may be amended as follows: “a radially-extending inner surface”.
Regarding claims 1 and 13, the term "approximately" is a relative term which renders the claim indefinite. The term "approximately" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Paragraph [0022] of the specification does not specify the associated degree with regards to “similarity” of axial widths. For instance, it is unclear of the degree or the extent of “approximately” in terms of the widths being the same. As an example, it is unclear whether or how or much the tolerances or ranges would the widths have to be comparable to one another in order to classify the widths as being the “same”. Therefore, since the Applicant has not specified a definition of the term “approximately” with regard to the extent or degree of the widths being the same, the metes and bounds of the claim cannot be determined, which renders the claim indefinite.
Regarding claim 3, the term "about" is a relative term which renders the claim indefinite. The term "about" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For instance, in paragraph [0022] of the specification, it is unclear of the degree or the extent of “about” in terms of the precision of the width with respect to the range recited by the claim. As an example, it is unclear whether 0.1445 or 0.505 would fall within the range recited in claim 5. The end points of the recited ranges are therefore unclear and ambiguous due to the term “about”. Therefore, since the Applicant has not specified a definition of the term “about”, the metes and bounds of the claim cannot be determined, which renders the claim indefinite.
Dependent claims are also rejected due to their dependency of a rejected independent claim.
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 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 1-2, 4, 7-9, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Araki et al. (JP 2013167221A, with citations from translation cited as NPL in PTO-892).
Regarding claim 1, the structure disclosed by Araki et al. discloses a method for selectively positioning an inserted ring (i.e., 3b or 3c which together form seal ring 2, [0025], i.e., in the selected positions shown in Fig. 1) relative to a turbine assembly (steam turbine [0001]) that includes an inner ring (5, Fig. 1) and a packing segment (4) positioned relative to the inner ring (5, as shown in Fig. 1) such that the inner ring and the packing segment (4) define a steam joint therebetween (i.e., between adjacent facing surfaces of the inner ring 5 and the packing segment 4), the method comprising:
Identifying a seal position required at a packing seal location (i.e., the position in which the seal ring 2 is located in Fig. 1) and identifying an axial width defined by a first seal face of the packing segment (“p1”, Fig. 1’ below) and a radially inner surface (“f1”) of the inner ring (i.e., axial width is the lateral distance between the faces p1 and f1 shown in Fig. 1’);
selecting an inserted ring (3c or 3b) having an axial width (defined between f2 and f1, Fig. 1’) that is approximately the same as the axial width identified between the first seal face (p1) of the packing segment (4) and the radially inner surface (f1) of the inner ring (5, as shown in Fig. 1, the width of the inserted ring is approximately the same as the axial width between the first seal face and the radially inner surface as the ring is located between the region defined between the two surfaces);
inserting the inserted ring (3b or 3c) at least partially within a groove (i.e., groove located at p1) defined circumferentially (i.e., the packing segment extends in the circumferential direction, [0026]) within the packing segment (4); and
fixedly securing the inserted ring (3b or 3c) within the groove of the packing segment (p1 of 4) to facilitate improving an operating efficiency of the turbine assembly (as shown in Fig. 1, [0002]).
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Fig. 1’
Regarding claim 2, Araki et al. discloses wherein the selecting of the inserted ring (3b or 3c) further includes selecting the inserted ring that comprises a body (i.e., body structure of 3b or 3c shown in Fig. 1) that is positioned relative to the radially inner surface of the inner ring (i.e., the body of 3c is positioned relative to the radially inner surface f1 of the inner ring 5, as shown in Fig. 1’).
Regarding claim 4, Araki et al. discloses wherein the selecting of the inserted ring further includes selecting the inserted ring that comprises a first face (“f2”, Fig. 1’), a second face (“f3”) adjacent to the first face (f3 is adjacent to f2), wherein the first face (f2) of the inserted ring is positioned in close proximity to the first seal face of the packing segment (i.e., first face p1 of packing segment 4 as shown in Fig. 1’) and the second face (f3) of the inserted ring is positioned in close proximity to a third seal face (“p2” of 4, Fig. 1’) adjacent to the first seal face (p1) of the packing segment (segment 4, as shown in Fig. 1’), the first (f2) and second (f3) faces of the inserted ring combine to produce a seal relative to the packing segment (i.e., as shown in Fig. 1, the structure forms a seal [0003], [0004]).
Regarding claim 7, Araki et al. discloses sizing the inserted ring to be inserted within the groove (i.e., as shown in Fig. 1’, the inserted ring (3c) has been sized to be inserted within the groove at location p1), wherein the groove opens towards the steam joint (i.e., groove opens towards the steam joint between adjacent facing surfaces of the inner ring 5 and the packing segment 4).
Regarding claim 8, Araki et al. discloses wherein the groove is a first groove (i.e., at location proximate f2, Fig. 1’), and the packing segment further comprises a second groove oppositely positioned from the first groove (as shown in Fig. 1’, second groove g2 is oppositely positioned from the first groove), the second groove opening towards a second steam joint (“s2”) defined between the inner ring (5) and the packing segment (4).
Regarding claim 9, Araki et al. discloses at least partially receiving a second inserted ring within the second groove (i.e., second ring 3b is positioned in second groove g2, as shown in Fig. 1’).
Regarding claim 18, the structure disclosed by Araki et al. discloses a method for selectively positioning two inserted rings (i.e., 3b and 3c which together form seal ring 2, [0025], i.e., in the selected positions shown in Fig. 1) relative to a turbine assembly (steam turbine [0001]) that includes an inner ring (5, Fig. 1) and a packing segment (4) positioned relative to the inner ring, the method comprising:
identifying a first seal position (i.e., the first seal position of ring 3c) required between the packing segment (4) and the inner ring (5), the first seal position axially adjacent a first groove (i.e., location of p1, Fig. 1’) formed in the packing segment (4) and a first radially inner surface (f1) of the inner ring (5), axially opposite the first groove (as shown in Fig. 1’, the surface f1 is axially opposite the first groove);
inserting a first inserted ring (3c) at least partially within the first groove (i.e., at location of p1, as shown in Fig. 1’), the first inserted ring sized to contact a surface of the first groove (i.e., the ring 3c contacts bottom and top surfaces of the first groove, as shown in Fig. 1’) and the first radially inner surface of the inner ring (ring 3c also contacts surface f1);
fixedly securing the first inserted ring (3c) within the first groove (location of p1) of the packing segment (4) to facilitate improving an operating efficiency of the turbine assembly (as shown in Fig. 1, [0002]);
identifying a second seal position (i.e., the second seal position of ring 3b) required between the packing segment (4) and the inner ring (5), axially opposite the first seal position (i.e., as shown in Fig. 1’, the second seal position is axially opposite the first seal position), the second seal position axially adjacent a second groove (i.e., second groove “g2”, Fig. 1’) formed in the packing segment (4) and a second radially inner surface of the inner ring (second radially inner surface s2), axially opposite the second groove (as shown in Fig. 1’, the second radially inner surface s2 is axially opposite the second groove g2);
inserting a second inserted ring (ring 3b) at least partially within the second groove (groove g2), the second inserted ring sized to contact a surface of the second groove (i.e., ring 3b contacts the top and bottom surfaces of the groove g2) and the second radially inner surface of the inner ring (ring 3b also contacts the radially inner surface s2 of the inner ring 5, as shown in Fig. 1’); and
fixedly securing the second inserted ring (3b) within the second groove (g2) of the packing segment (4) to facilitate improving the operating efficiency of the turbine assembly (as shown in Fig. 1, [0002]).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Araki et al. (JP 2013167221A, with citations from translation cited as NPL in PTO-892).
Regarding claim 3, Araki et al. fails to discloses or suggest wherein the selecting of the inserted ring further includes selecting the inserted ring (3b or 3c) that comprises a body that has an axial width (i.e., distance from f1 to f2 in Fig. 1’) that is in a range between about 0.15 inches and about 0.50 inches.
However, the Applicant has not disclosed that having the axial width be within the claimed recited range solves any stated problem or is for any particular purpose (see paragraph [0051] of Applicant’s specification, which recites the same limitation without specific reasoning or criticality for the claimed range). Applicant’s specification, in [0051], additionally states that the axial width may vary and depend on the overall size of the steam turbine assembly. Araki et al. discloses of a steam turbine assembly ([0001]) and discusses of potential axial displacement and fine tuning of the axial position of the seal rings (3b, 3c, 2) in [0007] and [0009], wherein the width of the seal ring portions 3b and 3c would influence the axial position of the fins 4 along with shims 7a and 7b and thus it appears that the width disclosed and taught in Fig. 1 of Araki et al. would perform equally well with the specified width range as claimed by applicant, and it would have been an obvious matter of design choice to modify the width to within the recited claimed range as claimed and one of ordinary skill in the art would be motivated to do so as a design choice depending on the size and specification of the functional requirements of the steam turbine assembly.
Allowable Subject Matter
Claims 10-12 and 19 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.
Regarding claim 10, Araki et al. fails to disclose or suggest peening a portion of the packing segment toward the second inserted ring along with deforming the portion of the packing segment to retain the second inserted ring within the second groove.
Regarding claim 11, Araki et al. fails to disclose or suggest positioning a biasing member of the turbine assembly between the inner ring and the packing segment.
Claim 12 would be allowable due to its dependency on claim 11.
Claim 19 would be allowable for the same reasons set forth in claim 10 above.
Claim 13 would be allowable if rewritten or amended 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.
Regarding claim 13, Araki et al. fails discloses all of the limitations found in claim 1 as stated above but fails to disclose or suggest wherein the inserted ring is radially spaced apart from the base segment and the hook base segment of the packing segment.
Claims 14 and 17 would be allowable due to their dependency on claim 13.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC J ZAMORA ALVAREZ whose telephone number is (571)272-7928. The examiner can normally be reached Monday-Friday 7:30 am- 5:00 pm EST alternating Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, COURTNEY 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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/ERIC J ZAMORA ALVAREZ/Primary Examiner, Art Unit 3745 05/26/2026
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