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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/6/25 and 12/4/2025 has been entered.
Claim Rejections - 35 USC § 103
3. 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.
4. Claim(s) 1-7 and 14-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Effects of Brushing and Shot-Peening Residual Stresses on the Fatigue Resistance of Machined Metal Surfaces: Experimental and predicting approaches” by Naziha Sidhom et al. in view of Eberl et al. (US 2013/0092294) and YouTube Video “Abracs Wire Brushes” (https://www.youtube.com/watch?v=NlEV4O6qXV4).
5. Regarding to claim 1, Sidhom et al. discloses a method for manufacturing a brushed rolled product (notched part, as described on page 291 lines 12-13 and can be seen from Figure 1 in Sidhom) comprising obtaining a rolled product (final product obtained after rolling, as can be seen from Figure 1 in Sidhom et al.), brushing (as can be seen from Figure 1 in Sidhom et al.) the rolled product (notched part, as can be seen from Figure 1 in Sidhom et al.) with a brushing tool (wire brush roller, as can be seen from Figure 1 in Sidhom et al.), wherein the brushing tool generates residual compression stresses [as described in the abstract of Sidhom et al.] at a surface of the rolled product (notched part, as can be seen from Figure 1 in Sidhom et al.); wherein the brushing is of the circular type (wire brush roller, as can be seen from Figure 1 in Sidhom et al.).
However, Sidhom et al. does not explicitly disclose the product being made of an Al-Cu-Li alloy having a thickness of less than 12mm. Eberl et al., however, discloses a method of manufacturing a product by rolling having a product made of an Al-Cu-Li alloy having a thickness of less than 12mm [as described in paragraphs 0017-0023 and 0060-0062 in Eberl et al.]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the product in Sidhom et al. to include a product being made of an Al-Cu-Li alloy having a thickness of less than 12mm, as taught by Eberl et al., to obtain a desired material property and desired sheet thickness required for manufacturing a component [as described in paragraph 0002-0017 in Eberl et al.].
However, the combination of Sidhom et al. and Eberl et al. does not explicitly disclose brushing the rolled product with a brushing tool until the brushing tool eliminates a thickness of the surface of the non-brushed rolled product. However, YouTube Video “Abracs Wire Brushes” further discloses a step of using a brushing tool to eliminate a thickness of a surface [as can be seen from Figures 1a-1b below] . Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method disclose by Sidhom et al. and Eberl et al. to include a step of brushing a rolled product with a brushing tool until the brushing tool eliminates a thickness of the surface, as taught by YouTube Video “Abracs Wire Brushes”, as a known technique used for removing material from a workpiece, which would yield predictable results.
However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly disclose brushing the rolled product with a brushing tool until the brushing tool eliminates a thickness at least equal to 9 µm of the surface of the non-brushed rolled product. However, these limitations are directed solely to the change in size and thickness of the product. One having ordinary skill in the art at the time of the invention would have selected the appropriate sized product required for manufacturing. Furthermore, it has been held that "where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device." Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, changing the size of the thickness does not change how the product in the combination of Sidhom et al., Eberl et. and YouTube Video “Abracs Wire Brushes” would perform any differently.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the thickness removed in the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” to include various thicknesses, including the instance of having a thickness equal to at least equal to 9 µm, as an obvious to try thickness dimension, which would yield predictable solutions with a reasonable expectation of success.
The combination of Sidhom et al. and Eberl et al. discloses a brush tool that rotates about an axis parallel to a brushed plane rather than a brushing tool that rotates about an axis of rotation that is perpendicular to a brushed plane. However, YouTube Video “Abracs Wire Brushes”, furthermore discloses a brushing tool that is rotated about an axis of rotation that is perpendicular to a brushed plane [as can be seen at the time interval of 39 seconds of the YouTube video and as displayed in Figure 1c below, which is a screenshot of the YouTube Video displaying elements for clarity]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the brushing tool in the combination of Sidhom et al. and Eberl et al. to include an alternate brushing tool, as taught by the YouTube video, as a subsequent step for performing finishing operations.
Furthermore, it would have been obvious to one of ordinary skill in the art to modify the brushing tool in the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” to include various brushing tools having various brushes which can be operated in various directions as a known technique used to obtain a desired finish.
The combination of Sidhom et al., Ebert et al., and the YouTube video discloses a brush that follows a circular path which is therefore interpreted as being of the orbital and circular type [note that as defined by Merriam-Webster “orbit” is defined as “a circular path”]. However, the combination of Sidhom et al., Ebert et al., and the YouTube video does not explicitly disclose the brushing being of the orbital type. However, it would have been obvious to one of ordinary skill in the art to include brushing of the orbital and circular type, as a known technique used during brushing and manufacture of a product, which would yield predictable results. Furthermore, it would have been obvious to one of ordinary skill in the art to try various brushing techniques, including brushing of the orbital and circular type, in order to achieve a desired finish with a reasonable expectation of success.
Figure 1a: Screenshot of YouTube Video Displaying Brush for Removal of Material.
PNG
media_image1.png
756
1346
media_image1.png
Greyscale
Figure 1b: Screenshot of YouTube Video Displaying Material being Removed.
PNG
media_image2.png
774
1350
media_image2.png
Greyscale
Figure 1c: Screenshot of YouTube Video Displaying Alternate Brushing Tool Rotating Perpendicular to a Brushed Plane.
PNG
media_image3.png
1040
1363
media_image3.png
Greyscale
6. Regarding to claim 2, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 1.
Eberl et al. further discloses a process of solution heat treatment, quenching, stress relief (stretching), and aging [as described in the abstract, paragraph 0009, 0029-0035, 0041, 0061, 0068, 0084 in Eberl et al.]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Sidhom et al., Eberl et al., and the YouTube Video to include a preliminary step of providing a sheet which has been subjected to solution heat treating, quenching, and stress relief by stretching, and aging, as further taught by Eberl et al., as known techniques used for manufacturing to provide a preliminary sheet product, which can then be subsequently finished in a finishing step, such as by brushing the rolled product, which would yield predictable results [as described in the abstract, paragraph 0029-0035, 0041, 0084 in Eberl et al.].
7. Regarding to claim 3, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 1, wherein a force applied to the rolled product during the brushing generates residual compression stresses [as described in the abstract of Sidhom et al. and can be seen from Figures 1-3 and Table 2]. However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly disclose generating residual compression stresses up to a thickness of at least 5 µm from an extreme surface of the rolled product after the brushing. However, it would have been obvious to one of ordinary skill in the art to try applying various forces which would distribute various compressive residual stresses, including the instance of generating residual compression stresses up to a thickness of at least 5 µm, which would yield predictable solutions with a reasonable expectation of success.
8. Regarding to claim 4, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 3, such that a force is applied onto the rolled product during the brushing and having residual compression stresses. However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly disclose at the extreme surface, L.I. (brushed)-L.I.(non-brushed) being greater than 0.2 degrees, at -5 µm from the extreme surface L.I. (brushed)-L.I.(non-brushed) being greater than 0.05 degrees, and residual compression stress in the direction T at the extreme surface of the rolled product in the brushed state is at least equal to -25MPa. However, it would have been obvious to one of ordinary skill in the art to try applying various forces which would distribute various compressive residual stresses, including the instance of having the extreme surface, L.I. (brushed)-L.I.(non-brushed) being greater than 0.2 degrees, at -5 µm from the extreme surface L.I. (brushed)-L.I.(non-brushed) being greater than 0.05 degrees, and residual compression stress in the direction T at the extreme surface of the rolled product in the brushed state is at least equal to -25MPa., which would yield a predictable solution with a reasonable expectation of success.
9. Regarding to claims 5, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 1, wherein the brushing tool eliminates a thickness.
However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly disclose eliminating a thickness at least equal to 10 µm of the surface of the non-brushed rolled product. However, these limitations are directed solely to the change in size and thickness of the product. One having ordinary skill in the art at the time of the invention would have selected the appropriate sized product required for manufacturing. Furthermore, it has been held that "where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device." Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, changing the size of the thickness does not change how the product in the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” would perform any differently.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the thickness removed in the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” to include various thicknesses, including the instance of having a thickness equal to at least equal to 10 µm or 15 µm, which would yield predictable solutions with a reasonable expectation of success.
10. Regarding to claims 6, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 1, wherein a surface of the brushed rolled product has characteristics [Figure 1 in Sidhom et al.].
However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly disclose the roughness Ra in the two directions (L) and (T) of the brushed rolled product is less than or equal to 1.5 µm; and the roughness Rz in the two directions (L) and (T) of the brushed rolled product is less than 8 µm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try various surface roughness’s, including the instance of having the roughness Ra in the two directions (L) and (T) of the brushed rolled product is less than or equal to 1.5 µm; the roughness Rz in the two directions (L) and (T) of the brushed rolled product is less than 8 µm, which would yield predictable results with a reasonably expectation of success.
11. Regarding to claims 7, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 1, wherein a surface of the brushed rolled product has characteristics [Figure 1 in Sidhom et al.].
However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly disclose the roughness Ra in the two directions (L) and (T) of the brushed rolled product is less than or equal to 4 µm; the roughness Rz in the two directions (L) and (T) of the brushed rolled product is less than 17 µm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try various surface roughness’s, including the instance of having the roughness Ra in the two directions (L) and (T) of the brushed rolled product is less than or equal to 4 µm; and the roughness Rz in the two directions (L) and (T) of the brushed rolled product is less than 17 µm, which would yield predictable results with a reasonably expectation of success.
12. Regarding to claim 14 and 15, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 2. Eberl et al. further discloses a process of solution heat treatment, quenching, stress relief (stretching), and aging [as described in the abstract, paragraph 0009, 0029-0035, 0041, 0061, 0068, 0084 in Eberl et al.]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Sidhom et al., Eberl et al., and the YouTube Video to include a preliminary step of providing a sheet which has been subjected to solution heat treating, quenching, and stress relief by stretching, and aging, as further taught by Eberl et al., as known techniques used for manufacturing to provide a preliminary sheet product, which can then be subsequently finished in a finishing step, such as by brushing the rolled product, which would yield predictable results [as described in the abstract, paragraph 0029-0035, 0041, 0084 in Eberl et al.].
13. Regarding to claims 16, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 5, wherein the brushing tool eliminates a thickness.
However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly disclose eliminating a thickness at least equal to 15 µm of the surface of the non-brushed rolled product. However, these limitations are directed solely to the change in size and thickness of the product. One having ordinary skill in the art at the time of the invention would have selected the appropriate sized product required for manufacturing. Furthermore, it has been held that "where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device." Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, changing the size of the thickness does not change how the product in the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” would perform any differently.
14. Regarding to claims 17 and 18, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 6, wherein a surface of the brushed rolled product has characteristics [Figure 1 in Sidhom et al.].
However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly disclose the roughness Ra in the two directions (L) and (T) of the brushed rolled product is between 0.2 and 1.2 µm; and the roughness Rz in the two directions (L) and (T) of the brushed rolled product is between 1.3 and 8 µm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try various surface roughness’s, including the instance of the roughness Ra in the two directions (L) and (T) of the brushed rolled product is between 0.2 and 1.2 µm; and the roughness Rz in the two directions (L) and (T) of the brushed rolled product is between 1.3 and 8 µm, which would yield predictable results with a reasonably expectation of success.
15. Regarding to claims 19, and 20, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” discloses the method according to claim 7, wherein a surface of the brushed rolled product has characteristics [Figure 1 in Sidhom et al.].
However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly the roughness Ra in the two directions (L) and (T) of the brushed rolled product is between 0.5 and 3.5 µm; and the roughness Rz in the two directions (L) and (T) of the brushed rolled product is between 8 and 16 µm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try various surface roughness’s, including the instance of having the roughness Ra in the two directions (L) and (T) of the brushed rolled product is between 0.5 and 3.5 µm; the roughness Rz in the two directions (L) and (T) of the brushed rolled product is between 8 and 16 µm, which would yield predictable results with a reasonably expectation of success.
16. Regarding to claim 21, the combination of Sidhom et al., Eberl et al.,
and YouTube Video “Abracs Wire Brushes” discloses the method according to 1, having a brush that follows a circular path, which is therefore interpreted as being of the orbital and circular type [note that as defined by Merriam-Webster “orbit” is defined as “a circular path”]. Furthermore, it would have been obvious to one of ordinary skill in the art to include brushing of the orbital and circular type, as a known technique used during brushing and manufacture of a product, which would yield predictable results. Also, it would have been obvious to one of ordinary skill in the art to try various brushing techniques, including brushing of the orbital and circular type, in order to achieve a desired finish with a reasonable expectation of success. However, the combination of Sidhom et al., Eberl et al., and YouTube Video “Abracs Wire Brushes” does not explicitly disclose the orbital and circular brushing improves fatigue properties of the rolled product, compared with linear circular brushing of the rolled product. However, it would have been obvious to one or ordinary skill in the to try various brushing techniques, including brushing of the orbital, circular and linear type, on various materials and finishes, which would yield predicable results, such as improved fatigue properties for orbital and circular brushing when compared to the linear brushing, depending on various factors and conditions, such as workpiece material and size and speed of brushing.
Response to Arguments
17. Applicant's arguments filed 12/4/25 have been fully considered but they are not persuasive.
Applicant argues Examiner has failed to show that Sidhom would disclose or suggest the feature of “wherein the brushing tool eliminates a thickness […] of the surface of a non-brushed rolled product. However, this is moot in view of the new grounds of rejection, as rejected above. Youtube video “Abracs Wire Brushes” disclose a brush for eliminating a thickness by removal of material, as rejected above.
Applicant argues the rejection under 103 regarding the thickness dimensions being obvious. Applicant argues that Gardner v. TED Syst. Inc cannot be applied in the present case. This is not found to be persuasive. The recited thickness is rejected as an obvious to try dimension, as well as Gardner v. TEC Syst since the only difference is a relative dimension.
Applicant has provided a Declaration Under 37 CFR 1.132 filed 12/4/25.
The Declaration Under 37 CFR 1.132 is insufficient to overcome the rejection of claims 1-7 and 14-21 based upon 103 as set forth in the last Office action because: Applicant fails to provide sufficient evidence of unexpected results. Applicant does not include a comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. Applicant has not included a description of precisely what was tested, including both the invention as claimed AND the closest prior art, a description of all of the test conditions, the test results for both the test performed on the invention as claimed and the results of test performed on the closest prior art, and analysis of the test results. There is no evidence showing the comparison of the claimed invention and the closest prior art being in the same test conditions. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. Applicant states that the prior art discloses a random circular brushing that is not representative of the claimed orbital circular brushing. This random movement includes components of linear circular brushing, which are detrimental to the isotropy of fatigue performance. However, the prior art of record discloses the method having the recited orbital and circular type brushing. Applicant has failed to amend the claims to add sufficient structure defining the method, including the orbital and circular type brushing, to overcome the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIRVANA DEONAUTH whose telephone number is (571)270-5949. The examiner can normally be reached Monday-Friday 9am-5pm.
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, Thomas Hong can be reached on 5712720993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NIRVANA DEONAUTH/Primary Examiner, Art Unit 3726
Prosecution Insights