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 .
Indication the instant Claims are Free of Prior Art is presented below.
Applicant amended Claims 1, 7-8, 11, 17, 19-20, 25, and 28. As established below, Claim 8 was improperly amended. Applicant added Claim 30. A New Matter Rejection is presented below.
EXAMINER’S NOTE
Claim 8 was improperly amended. The limitations previously present in the Claim “wherein the support elements are in the form of found bars” received 01/30/2026 were not retained. See MPEP 714 II F. Appropriate correction is required.
Continued Examination Under 37 CFR 1.114
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on 08/25/2026.
Election/Restrictions
Claims 12-16 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/13/2022.
Information Disclosure Statements
The information disclosure statements (IDS) submitted on 08/10/2020 and 03/14/2025 have been considered by the examiner.
Claim Objections
Claim 25 is objected to because of the following informalities: Claim 25 ends with the word “and” which appears to be a typographical error requiring deletion. Appropriate correction is required.
Drawings
Figures 5 and 6 are objected to under 37 CFR 1.83(a).
Regarding Figures 5 and 6, the limitation “[t]he device as claimed in claim 1, wherein said device further comprises a workpiece” in Claim 30 must be shown or the feature(s) canceled from the claim(s). The drawings must show every feature of the invention specified in the claims. No new matter should be entered. As established in the 35 U.SC. 112 rejections below, neither figure provides sufficient detail to support the incorporation of a workpiece with the device of Claim 1.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Regarding Figure 6, the image features an erasure of detail in the center of the figure. Applicant is required to send new Application documents (Drawings) that comply with the sheet size/margin and quality requirements of 37 CFR 1.52 and 1.84(f) and (g). See MPEP 608.01 § 6.32.01.
If application papers are filed that do not meet sheet size/margin and quality requirements, the USPTO will require the applicant to file substitute papers that do comply with the requirements of 37 CFR 1.52 and 1.84(e), (f) and (g). The substitute papers submitted in reply to the above-mentioned requirement will provide the USPTO with an image- and OCR-scannable copy of the application for printing the application as a patent publication or patent. However, the USPTO will not treat application papers submitted after the filing date of an application as the original disclosure of the application for making a certified copy of the application-as-filed or any other purpose. That is, even if an applicant subsequently files substitute application papers that comply with 37 CFR 1.52 and then requests that the USPTO provide a certified copy of an application-as-filed, paying the fee set forth in 37 CFR 1.19(b)(1), the USPTO will still make a copy of the application-as-filed rather than a copy of the subsequently filed substitute papers.
Further Regarding Figure 6, characters: r, _;vv’L/t and ‘’’ do not appear to reference any specific component of the drawing. Therefore, Figure 6 fails to comply with 37 CFR 1.84(p)(5) because it includes reference character(s) not mentioned in the description. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 30 is 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 30 recites “The device as claimed in claim 2, wherein said device further comprises a workpiece (Emphasis added).” There is no support for this recitation in the original disclosure. The instant Specification details at Page 3 the object of present in invention is to provide a device “for the reduction in changes in dimensions and shape or warpage of metallic workpieces in thermochemical treatment (Emphasis added).” However, this does not impart that the claimed device comprises a workpiece, or incorporates the workpiece, as part of the structure of the device. The instant Specification recites methods at Page 27 Line 31 to Page 29 Line 21 that describe the support elements on which a gearwheel is disposed. These methods detail using the claimed device to cool a workpiece which may be in the form of a gearwheel. While gearwheel (10) is depicted in Figures 5 and 6, these figures do not show sufficient detail of how the claimed device “comprises” a workpiece. 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.
Claim 30 is 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 30 recites “The device as claimed in claim 2, wherein said device further comprises a workpiece (Emphasis added).” In addition to the issue above, it is unclear how a device can comprise a workpiece. It is unclear what tangible and physical structure this recitation imparts. The metes and bounds of a device comprising a workpiece are unclear. While persons of ordinary skill in the art would understand the use of a device for cooling a workpiece, it is unclear how the claimed device “comprises a workpiece.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 19, 28, and 30 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19 recites “the device consists of a single circular or polygonal ring” in Lines 1-2. As Claim 17 on which Claim 19 depends recites “A device…consisting of a single ring having a first and second face…wherein the ring has a circular or polygonal outer contour,” the recitation in Claim 19 does not further limit the subject matter of Claim 17. Appropriate correction is required.
Claim 28 recites “said support elements comprise flat support surfaces” in Lines 1-2. As Claim 1 on which Claim 28 ultimately depends recites “A device…consisting of a single ring having a first and second face, wherein the second face is equipped with support elements… and the support elements comprise support surfaces that bound a support plane; and…the support surfaces are all flat relative to the second face…,” the recitation in Claim 28 does not further limit the subject matter of Claim 1 as it pertains to the limitation “said support elements comprise flat support surfaces.” Appropriate correction is required.
Claim 30 recites “The device as claimed in claim 2, wherein said device further comprises a workpiece (Emphasis added).” As Claim 1 on which Claim 30 depends recites “a device…consisting of” in Lines 1-2, it may not comprise additional components. Appropriate correction is required.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims Free of Prior Art
The closest prior art to the amended claims is Kolb US 20130249171 A1 which teaches a corrugated metal gasket (meeting the limitation for a single ring having a first and second face), wherein the second face is equipped with “substantially uniform and generally concentric corrugations” (meeting the limitation for support elements defining a concentric circular pattern).
Regarding Claims 1-3, 9-11, 17-23, and 25, a Flat Gasket patent, US 5932098 A is cited herein to make of record that single-sided profiling on a metal gasket consisting of a single ring is well-known. However, even if a first face of the gasket of Kolb ‘171 were flat, Kolb ‘171 in light of additional prior art does not provide sufficient motivation for one of ordinary skill in the art to form the entire outer contour of the second face to be defined by support surfaces and radial recesses or grooves therebetween and arrive at the claimed invention. The prior art therefore does not teach or fairly suggest the claimed invention and the claims are presently free of prior art.
Regarding Claims 7-8 and 24, the presence of round bar support elements disposed radially relative to the ring is a feature patentably distinct from a flat kammprofile gasket, a flat corrugated gasket, and the cited prior art.
However, in accordance with the 35 U.S.C. 112 rejections above, none of the instant claims are presently in condition for allowance.
Response to Arguments
Applicant's amendments received 08/25/2026 have overcome the prior art rejections. However, new Claim 30 remains subject to a new matter rejection under 35 U.S.C. 112(a), and an indefiniteness rejection under 35 U.S.C. 112(b), as there is no recitation of the device comprising a workpiece in the original disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
GB 2278651 A teaches a sealing gasket device with rounded support struts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORIAH S. SMOOT whose telephone number is (571)272-2634. The examiner can normally be reached M-F 8:30am - 5pm EDT.
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/M.S.S./Examiner, Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
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