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 .
Drawings
The drawings were received on 8/5/2026. These drawings are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the drive shaft connecting a motor to a propeller”. Claim 10 similarly recites “said drive shaft extending between a motor and a propeller”. The disclosure makes no mention of a motor or the drive shaft’s connection thereto.
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 10-18 and 20 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.
Claim 10 recites the limitation "the damaged area" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claims 11-18 and 20 are rejected by virtue of their dependency on claim 10.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fritz (4,895,551) in view of Applicant’s Admitted Prior Art (AAPA) and Hood (U.S. PGPub 2011/0265936).
Claim 1: Fritz establishes a drive shaft (1) having a central tubular portion (2 - column 2, lines 50-51) formed of a polymer composite with imbedded fibers (column 2, lines 47-48 and 52-60), and extending between a first end and a second end (ends 3), said central tubular portion having an outer peripheral surface (evident in Figs. 1-2), wherein the drive shaft is cylindrical (tubular as cited above and as evident in Fig. 1); and providing at least a second patch (any of 4), with a location for the second patch being selected to provide balancing of the drive shaft (e.g. abstract; column 2, lines 39-41).
The drive shaft is generically for a vehicle (column 2, lines 41-42), and so it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have connected it to a motor (e.g. engine) of some kind as understood for a driveshaft, but it does not necessarily connect the motor to a propeller. However, Applicant admits (paragraph 3) that driveshafts have multiple known uses, including for driving propellers. It thus would have been additionally obvious to have used the driveshaft in such an application as a matter of applying a known technique (composite driveshaft) to a known product (e.g. helicopter) to yield the predictable result of transferring energy to a helicopter rotor (MPEP 2143 I. D.).
Fritz does not disclose a method repairing as claimed. However, Hood discloses a method of repairing “all types of components”, including cylindrical or tubular components (e.g. 2, 10), which may be made from polymer composites with imbedded fibers (e.g. paragraphs 3, 71), comprising (a) identifying a damaged area (4, 12) on the cylindrical component, and (b) placing a first patch (8, 14) on a surface of the tube and over the damaged area, including a plurality of patch layers (e.g. paragraphs 24, 69) placed to cover the damaged area at an outer peripheral surface of the composite tube, and the first patch extends over a limited circumferential area of the tube (e.g. at least Fig. 5). Since a composite tubular driveshaft as in Fritz may conceivably be damaged at some point, and since Hood teaches a repair technique applicable to any composite product such as tubes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the Hood techniques to a composite drive shaft as taught by Fritz as a matter of applying a known technique to a known product to yield the predictable result of repairing a composite part (MPEP 2143 I. D.). Thus, a composite tube in the form of a driveshaft, having a first repair patch and a second balancing patch at some circumferential location thereon, would result.
The second patch is not necessarily circumferentially spaced, but axially aligned with the first patch over the damaged area. However, given that the location of the first patch would be dependent on the location of the damage to be repaired, and the second patch would be located as necessary to balance the shaft, the examiner submits that the relative locations of the patches would be situationally obvious. Additionally, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Please note that in the instant application, paragraph 34, other than simply to provide the requisite balancing as discussed above, Applicant has not disclosed any criticality for the relative locations of the patches.
Claim 10: Fritz identifies a drive shaft (1) having a central tubular portion (2 - column 2, lines 50-51) formed of a polymer composite with imbedded fibers (column 2, lines 47-48 and 52-60), and extending between a first end and a second end (ends 3), said central tubular portion having an outer peripheral surface (evident in Figs. 1-2), there are a plurality of rings on the outer peripheral surface of said central tubular portion (at least two of the patches 4, noting that as used in the instant specification, “ring” may refer to a partial or full circumferential patch, paragraph 36), wherein the plurality of rings are formed of a polymer material (column 2, lines 65-66); wherein the drive shaft is cylindrical (tubular as cited above and as evident in Fig. 1); and providing at least a second patch (any of 4), with a location for the second patch being selected to provide balancing of the drive shaft (e.g. abstract; column 2, lines 39-41).
The drive shaft is generically for a vehicle (column 2, lines 41-42), and so it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have connected it to a motor (e.g. engine) of some kind as understood for a driveshaft, but it does not necessarily connect the motor to a propeller. However, Applicant admits (paragraph 3) that driveshafts have multiple known uses, including for driving propellers. It thus would have been additionally obvious to have used the driveshaft in such an application as a matter of applying a known technique (composite driveshaft) to a known product (e.g. helicopter) to yield the predictable result of transferring energy to a helicopter rotor (MPEP 2143 I. D.).
Fritz does not disclose a method repairing as claimed. However, Hood discloses a method of repairing “all types of components”, including cylindrical or tubular components (e.g. 2, 10), which may be made from polymer composites with imbedded fibers (e.g. paragraphs 3, 71), comprising (b) placing a first patch (8, 14) on a surface of the tube and over [a] damaged area thereof, including a plurality of patch layers (e.g. paragraphs 24, 69) placed to cover the damaged area at the outer peripheral surface of the composite tube, and the first patch extends over a limited circumferential area of the tube (e.g. at least Fig. 5). Since a composite tubular driveshaft as in Fritz may conceivably be damaged at some point, and since Hood teaches a repair technique applicable to any composite product such as tubes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the Hood techniques to a composite drive shaft as taught by Fritz as a matter of applying a known technique to a known product to yield the predictable result of repairing a composite part (MPEP 2143 I. D.). Thus, a composite tube in the form of a driveshaft, having a first repair patch and a second balancing patch at some circumferential location thereon, would result. The patches would also result in “a plurality of rings formed of a polymer material”, where “rings” are interpreted as noted above.
The second patch is not necessarily circumferentially spaced, but axially aligned with the first patch over the damaged area. However, given that the location of the first patch would be dependent on the location of the damage to be repaired, and the second patch would be located as necessary to balance the shaft, the examiner submits that the relative locations of the patches would be situationally obvious. Additionally, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Please note that in the instant application, paragraph 34, other than simply to provide the requisite balancing as discussed above, Applicant has not disclosed any criticality for the relative locations of the patches.
Claims 2 and 11: The patch of Hood is formed of polymer matrix material with reinforcing fibers (e.g. paragraphs 114-116). The patch of Fritz comprises a polymer matrix but does not necessarily have fibers. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed both with fibers since it has been held to be within the general skill of a worker in the art to select of a known material based on its suitability for its intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Please note that in the instant application, paragraph 33, Applicant has not cited any criticality for the claimed limitation, and even contemplates patches without fibers.
Claims 3, 7, 12, and 16: Fritz and Hood do not necessarily teach that the drive shaft/central tubular portion and both patches are formed of the same composite material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed them from the same composite material since it has been held to be within the general skill of a worker in the art to select of a known material based on its suitability for its intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Please note that in the instant application, paragraph 33, Applicant has not cited any criticality for the claimed limitation.
Claim 4 and 13: Following from the above discussion regarding the situational placement of the patches, the examiner similarly submits that a circumferentially opposed placement would have been obvious based on the location of the damage and the need for balancing the shaft.
Claim 5 and 14: The central tubular portion (of Fritz) and the first (of Hood) and second (of Fritz) patch are formed of a composite material (as cited above).
Claims 6, 8, 9, 15, 17, and 18: Following from the above discussion regarding the situational placement of the patches, the examiner similarly submits that a circumferentially opposed placement would have been obvious based on the location of the damage and the need for balancing the shaft.
Claims 19 and 20: the first patch (of Hood, as cited above) and the second patch (of Fritz, e.g. column 3, lines 46-49) each include a plurality of patch layers.
Response to Arguments
Applicant's arguments filed 8/5/2026 have been fully considered. Each of Applicant’s arguments is listed below in italics and followed by the examiner’s response.
The Examiner rejects the original claims over Fritz in view of Hood. The Examiner points to the patches 4 of Fritz. These patches are placed strategically to provide balancing of the shaft. The shaft does not relate to driving a propeller (claim 1) or having a plurality of layers (claims 19 and 20).
Driving a propeller is a known application of a drive shaft as admitted in the background section of the instant specification and otherwise would be an obvious use case of a drive shaft for a vehicle.
Composites typically comprise layers, as demonstrated in the references (see rejection).
There is no reason that such patches would be circumferentially spaced but axially aligned. There is no showing that this would provide any balancing input into Fritz. Moreover, Fritz relates to the initial construction of a shaft, and not repair.
The examiner already explained that the relative placement of the first (repair) and second (balancing) patches would be dependent on the required locations for balancing and repair, and thus would be situationally obvious. Repair is taught by Hood as noted in the rejection.
The Examiner points to Hood which does place a layer over a defect in a component. However, the layer does not include two patches which are circumferentially spaced. Hood also does not disclose wherein there would be two axially aligned patches.
The two patches would be a result of the presence of both repair and balancing patches resulting from the combination of Fritz and Hood. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
While the patches of Fritz are circumferentially spaced they are not axially aligned. Fritz looks to balance the shaft. Hood is silent as to any concern with balance. Nothing within either of these references relates to providing an adjustment by adding circumferentially spaced and axially aligned patches such that the repaired shaft will be balanced.
Applicant is again using piecemeal analysis to dismiss the result of the combined teachings of Fritz and Hood.
In the Examiner's rejection he points to Applicant's paragraph 36 to argue that the term ring may refer to partial or full circumferential patch. However, this is Applicant's specification, and it is hindsight to look to it.
It is not hindsight for the examiner to turn to Applicant’s disclosure to glean interpretation of claimed terms. In fact, the examiner is required to do so (MPEP 2111-2111.01).
The Examiner also argues that "the second patch is not necessarily circumferentially spaced, but axially aligned with the first patch over the damaged area. However, given that the location of the first patch would be dependent on the location of the damage to be repaired, and the second patch would be located as necessary to balance the shaft, the examiner submits that the relative location of the patches would be situationally obvious. Additionally, it has been held that rearranging parts of an invention involves only routine skill in the art." Citing In re Japikse.
The Examiner again cites to Applicant's specification to support the rejection, citing that other than providing balancing there is no criticality to the relative locations.
Nothing within the prior art discloses repairing a defect in a shaft with a first patch which is circumferentially spaced with an axially aligned second patch such that the second patch does balance the shaft. Simply, the Examiner is relying upon hindsight reconstruction, and has not provided an adequate rationale for this obviousness rejection.
The examiner has already discussed how and why the combination of references is obvious and would result in the claimed rejection. Applicant has not provided an argument supporting why the placement would otherwise be critical. Again, it is not hindsight to turn to the disclosure in determining claim scope or criticality (or lack thereof) of claim elements.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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, Sunil K. Singh can be reached on 571 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
