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
Claims 1-2, 4-5, 9-11 and 16-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups I-II and IV-VIII there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 14, 2021.
Claim Objections
Claim 12 is objected to because of the following informalities: Claim 12, line 10 should be corrected as follows, “machining the end to form a cone Appropriate correction is required.
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 6, 8, 12 and 14-15 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 6, lines 8-9 recite, “machining the groove portions to form a land area having an inwardly tapered angle of 0.5° to 3° relative to the hex portion.” As currently written, the angular orientation of the hex portion is undefined with respect to the punch. It is unclear what can or cannot be included within the scope of "machining the groove portions to form a land area between the hex portion and the end and having an inwardly tapered angle of 0.5° to 3° relative to the hex portion" because the angular orientation of the hex portion with respect to the punch and/or groove portions is undefined within the scope of the claim. Claim 12, line 10 recites, “machining the end to form a cone type point.” The addition of the word “type” extends the scope of the expression “cone point” so as the render it indefinite. In other words, the recitation of “type” renders the scope of the claim indefinite because it is unclear what “type” is intended to convey. For example, the narrower end of a truncated cone reads on “cone type point.” Claim 12, lines 11-13 recite, “machining the groove portions to form a land area having an inwardly tapered angle of 0.5° to 3° relative to the hex portion adjacent to the cone type point.” See 112 rejection for claim 12, line 10 regarding the word “type.” Additionally, the angular orientation of the hex portion is undefined with respect to the punch. It is unclear what can or cannot be included within the scope of "machining the groove portions to form a land area between the hex portion and the end and having an inwardly tapered angle of 0.5° to 3° relative to the hex portion" because the angular orientation of the hex portion with respect to the punch and/or groove portions is undefined within the scope of the claim.
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.
As best understood, claims 6, 8, 12, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Cui (CN103252409) in view of Brooks (US Publication 2003/0053887) and Pacheco (US Publication 2006/0266168) and further in view of Choi (KR 20120052720) and Hughes et al (US Publication 2011/0217143), herein referred to as Hughes, Furukawa et al (US Patent 5,841,091), herein referred to as Furukawa, Tongsheng (CN106563858), and Rahmen et al (US Publication 2004/0168288), herein referred to as Rahmen. Regarding claim 6, Cui discloses a punch (i.e., inner hexagonal through-hole punch 6) for performing a punching operation in a cold forming process (translation paragraph 0009, lines 1-8 and paragraph 0042) having the resultant structure of a method of manufacturing the punch, including: a base portion (annotated fig. 6) adapted to be a structural component for the punch (see, e.g., figs. 3, 11, 12) and an end (“end of working portion,” annotated fig. 6) that has been formed in a blank having the base portion (annotated fig. 6) adapted to be a structural component for the punch (i.e., to be held by punch upper fixed plate 5 in upper template 3 for reciprocating movement during the cold forming process); a hex portion (annotated fig. 6) that has been formed in the work portion proximal to the end (“a regular hexagonal prism punch is formed on the outer wall of the rod” [emphasis added], translation paragraph 0007, lines 6-7), a land area (annotated fig. 6) between the hex portion and the end having a land area length (annotated fig. 6) that is tapered inwardly (to pre-form the inner hexagonal through-hole in hollow workpiece 2, as described in translation paragraph 0037, lines 1-3; see also paragraph 0009, lines 5-8, paragraph 0037 and paragraph 0042, lines 1-11) relative to the hex portion at an angle Ɵ (annotated fig. 6), and the land area and at least a portion of the hex portion are adapted to be inserted into a work piece (2) to perform a punching operation (fig. 12; translation paragraph 0037, lines 1-3), and the inwardly tapered angle of the land area is adapted to assist in removal of the hex portion from the work piece when the punching operation is complete (the tapered land area helps punch 6 to initially preform the circular bore of the workpiece 2 into the hexagonal shape of the hex portion, as described in translation paragraphs 0037 and 0042, see also fig. 16; on the upward return stroke of the punch, the tapered land area allows the workpiece 2 to slide off the first end of punch 6, as described in translation paragraph 0039, see also fig. 14).
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● Cui fails to disclose the punch includes grooves formed in the blank, wherein respective groove portions of the grooves remain proximal to the end after forming the hex portion. However, the following prior art of pertinent to this limitation: A. Brooks teaches it is known in the art of manufacturing screw heads to use a process referred to as “cold heading.” According to para. 0005, Brooks describes this process as using “[a] punch, being the mirror of the recess desired, is driven into the unformed head of the screw. Momentarily, the metal is fluidized and flows around the shape of the punch” [emphasis added]. This suggests a punch utilized in “cold heading” (i.e., a cold forming process) will utilize a punch formed with the particular shape to be formed in the workpiece. B. Pacheco teaches it is known in the art of drivers for fastening elements to profile a tool with a plurality of grooves (flutes 20) formed at a working end (16) of tool (10). Pacheco also teaches a hex portion (formed by side surfaces 32, 34 of each respective crest formed between adjacent flutes 20) is formed over the flutes by machining material to the desired size (para. 0047, lines 6-8). The shape and configuration of the tool taught by Pacheco represents the form of a recess to be formed in the head of a fastener, wherein a punch with the same or similar shape will have been used to form the desired recess, as taught by Brooks. It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the punch of Cui substantially disclosed above such that the punch includes grooves formed in the blank, wherein respective groove portions of the grooves remain proximal to the end after forming the hex portion because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results. ● The modified punch of Cui substantially disclosed above fails to disclose and a land area having an inwardly tapered angle of 0.5° to 3° relative to the hex portion. However, the following prior art of pertinent to this limitation: A. Choi teaches it is known in the art of punches for forging a workpiece (e.g., fasteners with a forged through hole (as described in translation paragraph 0009, lines 29-37) to provide the punch (100) with a working portion (120) that extends from a base portion (support part 130 with fixing part 110) adapted to be a structural component for the punch (translation paragraph 0031, lines 1-3) to an opposite end (120a) of the punch (see, e.g., fig. 3), wherein a hex portion (124; fig. 4b) is formed in the working portion (120) proximal to the end (120a) of the punch (fig. 3). Choi provides a land area (122) formed between hex portion (124) and the end of the punch (figs. 3 and 4a). Choi teaches the land area (122) is contiguous with the hex portion (translation paragraph 0034, lines 1-3) and has an inwardly tapered relative to the hex portion (translation paragraph 0034, lines 3-7 and paragraph 0035, lines 1-6) and longitudinal axis of the punch (i.e., the direction of travel of the punch with respect to the workpiece depicted in figs. 2 and 3) by an angle (Ɵ) of approximately 0.4°. The value of Ɵ = 0.4° is calculated according to an example set forth in translation paragraph 0035, i.e., an example punch has an inclined surface (122) that is 5mm in the length along the longitudinal direction from a front end (120a) with a diameter of 5.20mm to a rear end that is contiguous with guide surface (124) with a diameter of 5.27mm. While Ɵ = 0.4° is outside the claimed angular range of 0.5° to 3°, Choi’s value for Ɵ deviates from the claimed range by 0.1º, or 4% of the difference between the upper and lower values of the claimed range (i.e., 3º - 0.5º = 2.5º; wherein (0.1º/2.5º) x 100 = 4%). Therefore, Choi’s value of Ɵ = 0.4° teaches it is known to have very small values for Ɵ that are relatively close to the lower limit of the claimed range because the difference (i.e., 0.1º) between the calculated value of Choi (i.e., 0.4º) and the lower limit of the claimed range (i.e., 0.5º). Choi notes in paragraph 0037 of the translation that the tapered surface helps to expand the material of the workpiece evenly. B. Hughes teaches it is known in the art of tools with hexagonal shaped (fig. 7) to provide tapered surfaces (13) at an end thereof which are formed at an angle (ϴ) with respect to a central longitudinal axis (x) of the tool (11). Hughes states, “[t] he angle ϴ preferably may be in the range of about 1° to about 3° depending on the angle of the recess interference surface (or wedge) 15.” The shape and configuration of the tool taught by Hughes is formed so as to correspond to a recess (10) formed in the head of a fastener (fig. 7), wherein a punch with the same or similar shape will have been used to form the desired recess, as taught by Brooks. It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the punch of Cui with the teaching of Choi and Hughes such that the inward tapered angle of Cui’s land area is formed with any reasonable amount of inward taper relative to Cui’s hex portion (the sides of which each extending parallel to the longitudinal axis of the punch), including an angle of 0.5° to 3° relative to the hex portion, in order to facilitate guiding of the punch into the hollow through hole of the workpiece for preforming thereof (Cui, translation, para. 0037, lines 1-3). Moreover, the aforementioned modification would have been obvious to one having an ordinary skill in the art before the effective filing of the invention since it has been held that where the general conditions of a claim are disclosed in the prior art (i.e., the relatively small inwardly tapered angle ϴ of the land area contiguous with the adjacent hex portion) discovering the optimum or workable ranges (i.e., an optimum taper angle ϴ) involves only routine skill in the art. In re Aller, 105 USPQ 233. ● The modified punch of Cui substantially disclosed above fails to disclose the specific method for the manufacture of the punch including forming the grooves in the blank. However, the following references provide teaching pertinent to this limitation:
Furukawa discloses a method of manufacturing a punch (col. 1, lines 29-31; see, e.g., figs. 8A and 8B) formed from a “hard” workpiece (i.e., “[e]lectrical discharge machining is appropriate for the precision forming of a hard workpiece into the punch 1,” col. 1, lines 29-30) including the steps of: forming (as described in col. 3, lines 14-31 and col. 4, lines 4-7) a working portion (sections 1a and 1b, as shown in fig. 8A) in a blank (i.e., rod-shaped workpiece 3) having a base portion (portion of workpiece 3 held in chuck 33) adapted to be a structural component for the punch (base portion of workpiece 3 ultimately becomes shank 1c, as shown in fig. 8A) and an end, the working portion extends from the base portion to the end. Additionally, Furukawa teaches the electrical discharge machining apparatus (fig. 1) is provided with a head (32) to which chuck (33) is attached for holding the blank (3) and configured to adjust the position of the blank (3) with respect to the combination guide/electrode (60) for performing the aforementioned forming step. According to col. 3, lines 19-22, “[t]he head 32 is able to move in a horizontal plane X-Y, and in the direction of the Z axis which is perpendicular to that plane, and to rotate about an axis W, which is also perpendicular to that plane.” Furukawa’s apparatus is configured to perform forming operations on workpiece blanks made from hard materials intended to become punching tools having a shape similar to that of the claimed invention. Moreover, Furukawa states in col. 3, lines 30-32, “the workpiece 3 moves relative to guide 60 in the X-Y plane, but guide 60 may also be moved relative to workpiece 3 in the X-Y plane by the table 34 [of the EDM apparatus].” This statement provides additional evidence indicating Furukawa is capable of manufacturing punches that are round (fig. 8A) and polygonal (fig. 8B), wherein a working portion (i.e., blade portion) of the punch is formed in a blank having a base portion (i.e., shank) and an end (i.e., distal tip of blade portion), the working portion extending from the base portion to the end (col. 1, lines 12-16; fig. 8A). It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the method of manufacturing the punch of Cui, which is configured to perform a punching operation in a cold forming process, with the teaching of Furukawa, such that the punch is manufactured using an electrical discharge machining apparatus to form the grooves of the working portion in the blank because Furukawa teaches a manufacturing technique that is known in the art of manufacturing punches and applying this technique to manufacture the punch disclosed by Cui would have yielded predictable results and resulted in an improved manufacturing process. In this case, Furukawa states in col. 1, lines 29-30, “[e]lectrical discharge machining is appropriate for the precision forming of a hard workpiece into the punch 1,” and further in col. 2, lines 9-10, Furukawa describes how the EDM facilitates “high material removal speed.” Additional benefits include the flexibility of the EDM device to adjust the desired contour of surface machined on the workpiece due to the adjustability of the workpiece holding element and the wire guiding elements (Furukawa, fig. 1).
● The method of manufacturing the punch for cold forming of Cui substantially disclosed above fails to include the additional steps of machining the grooves to form the hex portion, wherein respective groove portions of the grooves remain proximal to the end after forming the hex portion, and machining the groove portions to form the land area having the inwardly tapered angle relative to the hex portion. However, the following references are pertinent to the aforementioned limitation: A. Furukawa teaches it is known to use an electrical discharge machining apparatus (fig. 1) to form punches that are circular (fig. 8A) and punches that have sides (fig. 8B). B. Tongsheng teaches it is known in the art of manufacturing a punch to use EDM to form a hex portion (polygonal shaped portion), a tapered portion between the hex portion and the end of the punch and to use the EDM to form a round contour on the punch (see sequential manufacturing figures of Tongsheng). The sequential manufacturing steps taught by Tongsheng suggest it is known in the art for the final form of the punch to be achieved after multiple, distinct forming and machining steps. C. Rahmen teaches it is known in the art of methods for manufacturing products to provide an apparatus configured to perform both EDM and milling. Rahmen states in paragraph 0011, “[t]ypically the conventional mechanical machining operation [i.e., turning, milling, drilling shaping polishing and grinding as set forth in paragraph 0008, lines 2-4] will be performed on the workpiece first followed by the second machining operation involving ECM or EDM, but in principle the order of these operations could be reversed” [emphasis added]. It would have been obvious to one having an ordinary skill in the art of manufacturing punches to modify the method of manufacturing the punch of Cui substantially disclosed above with the teaching of Furukawa, Tongsheng and Rahmen such that the method of manufacturing the punch includes the additional steps of machining the grooves to form the hex portion, wherein respective groove portions of the grooves remain proximal to the end after forming the hex portion, and machining the groove portions to form the land area having the inwardly tapered angle relative to the hex portion in order to facilitate accurate machining of the complex shape of Cui’s punch by utilizing strategies that are known in the art of manufacturing tools from hard materials and would have yielded predictable results and resulted in an improved manufacturing process.
Regarding claims 8 and 14, the modified method of Cui substantially disclosed above includes wherein the tapered angle is 1.2° to 2.2° (as taught by Choi and Hughes). As previously noted, the teaching of Choi also suggests the shape of the tapered portion (i.e., the diameter and angle of the taper) can be adjusted depending upon the material from which the workpiece is made or its intended use (translation paragraphs 0034-0035).
Regarding claim 12, the modified method of manufacturing the punch for performing a punching operation in a cold forming process of Cui substantially disclosed above, as set forth in the 103 rejection for claim 6, includes: a method of manufacturing a punch for a cold forming process, the method comprising:
machining, with an electric discharge machining (“EDM”) machine (as taught by Furukawa, col. 3, lines 14-32), grooves (e.g., flutes 20, as taught by Pacheco) in a blank having a base portion (Cui annotated fig. 6) that is adapted to be a structural component for the punch (i.e., to be held by punch upper fixed plate 5 in upper template 3 for reciprocating movement during the cold forming process) and an end (Cui annotated fig. 6); machining the grooves (Pachico 20) to form a hex portion (Pechico 32, 34), wherein respective groove portions of the grooves remain proximal to the end (Pachico, fig. 5) after forming the hex portion (Id.);
milling a hex portion in the working portion to obtain a final hex portion size (as taught by Tongsheng and Rahmen);
machining the end (as taught by Choi; i.e., forming protruding portion 120b projecting frontward from end 120a of working portion 120 [or any reasonable end shape depending upon the intended use of the punch] utilizing manufacturing techniques taught by Furukawa, Tongsheng and Rahmen); and
machining the groove portions to form a land area (forming the modified structure of Cui set forth above with the techniques taught by Furukawa, Tongsheng and Rahmen) having an inwardly tapered angle of 0.5° to 3° relative to the hex portion (in view of the teaching set forth by Choi and Hughes) and the land area and at least a portion of the hex portion are adapted to be inserted into a work piece to perform a punching operation (Cui, figs. 3 and 12), and the inwardly tapered angle of the land area is adapted to assist in removal of the hex portion from the work piece when the punching operation is complete (as disclosed by Cui and additionally taught by Lowe).
Regarding claim 15, the modified method of Cui substantially disclosed above fails to specifically disclose wherein the step of machining the groove portions to form the land area includes forming the land area having a land area length of 0.013 inches to 0.017 inches. However, Choi states in translation paragraph 0035, lines 6-8, “the exemplified numerical limit can be selectively applied to the hole processing part 120 of an appropriate shape depending on the material of the material 200 or the use of the fastening member 300, various numerical values can be applied” [emphasis added]. In the disclosure of Choi, “exemplified numerical limitation” refers to the numerical values for length (i.e., 5mm) and diameter (i.e., 5.20mm and 5.27mm, respectively) of inclined portion (122) in the aforementioned example selected to provide “an appropriate shape” for the specific workpiece being formed. Examiner interprets “various numerical values can be applied” to suggest the shape and angle of the tapered portion (i.e., determined by the respective diameters, the length of the tapered portion and the resulting angle of the taper of a given inclined portion) can be adjusted relative to the disclosed example to another “appropriate shape” depending upon the material properties of the material from which the workpiece is made, the intended use of the final product, and desired structural characteristics of the final product based upon the material characteristics. Therefore, it is within the skill of one having an ordinary skill in the art to select specific dimensions of the tapered land portion when forming the shape of the land area on the end of the hex portion of the punch that correspond to an appropriate shape defined by a land area length and taper angle thereof required for a given workpiece.
Importantly, Applicant’s disclosure does not appear to provide criticality for the land area having a length in the specific range of being 0.013 inches to 0.017 inches. Applicant’s disclosure does not appear to provide any criticality for defining the median range value for land area length as 0.015 inches with a tolerance of 0.002 inches.
It would have been obvious to one having an ordinary skill in the art before the effective filing of the invention to modify the punch of Cui substantially disclosed above with the teaching of Choi such that the land area has any reasonable length, including a length of 0.013 inches to 0.017 inches depending upon the material properties of the workpiece being formed in the cold forming process. Moreover, the aforementioned modification would have been obvious to one having an ordinary skill in the art before the effective filing of the invention since it has been held that where the general conditions of a claim are disclosed in the prior art (i.e., a relatively short land area length), discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Response to Arguments
Applicant's arguments filed December 12, 2025 have been fully considered but they are at least partially persuasive. Examiner notes the previous 112(a) rejections for new matter are partially withdrawn. On page 7, lines 3-4 of the Remarks, Applicant states, “respective groove portions of the grooves remain proximal to the end after forming the hex portion, as claimed in amended claim 6 and similarly claimed in amended claim 12.” In light of Applicant’s amendments and arguments, Examiner agrees Applicant’s disclosure provides support for “wherein respective groove portions of the grooves remain proximal to the end after forming the hex portion.”
Applicant’s arguments with respect to the prior art rejections of the claims (see Remarks dated November 20, 2024) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jackman (US Patent 1,798,944) discloses a tapered punch for removing broken stud bolts. Harris et al (US Patent 2,369,896) discloses a punch for metal bars. McClellan (US Patent 3,245,098) discloses a method for forming hollow articles utilizing a punch (22) with a land (85) that facilitates extrusion of the material being worked in the punching process. Larson (US Patent 4,269,246) discloses a punch with a tapered hex portion (42) angled at 2.5 degrees to 3.5 degrees (angle 44). Spengler (US Patent 4,345,492) discloses a method of forming a punch including heat treating the material from which the punch is formed and machining a taper into the punch. Anderson (US Patent 5,960,681) discloses a socket driver and method of manufacturing the same. Ling et al (US Publication 2002/0148329) discloses a punch with grooves. Putney et al (US Patent 7,311,022) discloses a retention socket. Kukucha (US Publication 2019/0152033) discloses a fastener extractor device. 小松 竹彦 (JPS60-44145) punch with forming land (1e)
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL ALLEN DAVIES whose telephone number is (571)270-1511. The examiner can normally be reached Monday-Friday; 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571)272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMUEL A DAVIES/Patent Examiner, Art Unit 3724 May 16, 2026
/BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
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