3DETAILED 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 .
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Miyasaka (JP3150048, cited in IDS, with reference to translation) in view of Miyasaka (JP2005002457, with reference to translation).
Claim 4: Miyasaka (‘048) discloses a method for surface treatment of a food product contact member (implied in paragraphs 67-68 and 76), the food product contact member being configured from a stainless steel or a substance including a stainless steel (paragraph 38); performing: instantaneous (noting that “instantaneous” as used herein is interpreted as referring to heating resulting from impact by shot peening) heat treatment (paragraphs 53-56, 58) on the food product contact member by ejecting and colliding substantially spherical shot of alumina-silica beads (e.g. spherical beads of various materials including alumina-silica - paragraphs 39-41) against the contact surface of the food product contact member so as to micronize a structure of the contact surface making contact with the food product (paragraph 42-44) and so as to form multiple smooth circular arc shaped depressions over the contact surface entirely (implied by shot peening using spherical beads, paragraph 56 - it is expected that impacts by spherical shot harder than the substrate would result in some degree of smooth circular arc shaped, e.g. hemispherical, depressions in the substrate surface) to reduce a contact area of the contact surface with the food product (forming depressions in the surface would result in high spots which could contact the food with the low spots sitting below and thus not contacting and effectively reducing the contact area compared to a flat smooth surface, at least depending on the nature of the food product), the substantially spherical shot having a hardness equal to or more than a surface hardness of the contact surface (paragraph 42), a size of from 300 grit to 400 grit (JIS R6001-1973) (20-200 µm, which equates to roughly 80 to 700 grit using standard conversion charts - paragraph 40), and being ejected at an ejection pressure of 0.3 to 0.4 MPa (0.29 MPa or more - e.g. abstract and paragraph 42) so as to cause a local and instantaneous rise in temperature at portions collided by the substantially spherical shot (paragraphs 54-56 and 58); further, ejecting a powder made from titanium or a titanium alloy (paragraph 45) of a particle diameter from 150µm to 45µm (20-300 µm - paragraph 46) against the contact surface of the food product contact member subjected to instantaneous heat treatment (paragraph 45) at an ejection pressure of not less than 0.4 MPa (0.29 MPa or more) so as to cause titanium oxide to diffuse and penetrate at a proximity to a surface of the food product contact member, and forming a surface layer containing the diffused and penetrated titanium oxide (paragraph 63).
Regarding the above, it is noted that a prima facie case of obviousness exists where the claimed ranges (or amounts) overlap or lie inside ranges disclosed by the prior art (MPEP 2144.05 I.). In this case, the claimed range of 300-400 grit falls within the disclosed range of 20-200 µm (80 to 700 grit), the claimed range of 150µm to 45µm falls within the disclosed range of 20-300 µm, the claimed range of 0.3 to 0.4 MPa falls within the disclosed range of 0.29 MPa or more, and the claimed amount of 0.4 MPa falls within the disclosed range of 0.29 MPa or more. All claimed ranges are thus prima facie obvious in view of the prior art.
Miyasaka (‘048) teaches a method substantially as claimed except for a preliminary carbide powder treatment step as claimed. However, Miyasaka (‘457) teaches a preliminary treatment step performed prior to subsequent surface treatment steps of a metal substrate of various products (e.g. [0002]) and by ejecting a carbide powder ([0027]) having a size of from 220 grit to 800 grit (JIS R6001-1973) (220 grit or less, preferably 400 grit - Id.) against at least a portion of a surface of the product at an ejection pressure of not less than 0.2 MPa (Id.) so as to cause carbon element in the carbide powder to diffuse into a surface of the food product contact member ([0042]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed a preliminary treatment step as taught by Miyasaka (‘457) because it helps to increase the hardness of the substrate surface.
Regarding the surface layer “having a tilting structure in which the amount of bonding to oxygen is greatest at a proximity to the surface of the food product contact member, and the amount of bonding to oxygen gradually decreases on progression inward from the surface, and exhibiting a catalytic action with heat in an environment not irradiated with light, and pressing and collapsing tips of pointed protrusions formed between the circular arc shaped depressions for smoothing the contact surface to a surface roughness Ra of 0.2 µm to 0.3 µm to reduce the contact area of the surface layer with the food product”, it is noted that these properties and results are presumed to be inherent to the product resulting from the claimed method (e.g. see instant application, paragraphs 19-23 and 89-92). Referring to MPEP 2112.01 I., “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established”, and that “when the structure recited in the reference is substantially identical to that of the claims, [the] claimed properties or functions are presumed to be inherent”. In this case, the combination of Miyasaka ‘048 and ‘457 results in the process substantially as claimed or at least renders it obvious, including substantially the same materials, steps, and parameters. One must then assume that the resulting product is substantially the same and would inherently have the same properties as claimed. Additionally, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Claim 6: Referring to Miyasaka (‘457), the carbide powder ejected in the preliminary treatment step is a powder of silicon carbide (paragraph 27).
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered.
Applicant asserts that Miyasaka fails to disclose an ejection pressure of 0.3 to 0.4 MPa in the case of alumina-silica as shot, citing paragraph 53 and Tables 1 and 2. However, the examiner submits that while these represent specific examples, Miyasaka appears to more broadly support pressures of “0.29 MPa or more” in this shot step (e.g. abstract and paragraph 42). Thus, an example of 0.5 MPa in conjunction with alumina-silica does not necessarily serve as a lower bound of acceptable pressure range for this material, and Miyasaka does not expressly set this bound as a requirement. The prior art range of “0.29 MPa or more” overlaps with and is close to the currently claimed range of 0.3 to 0.4 MPa and is thus prima facie obvious. Furthermore, there is no indication from the instant application that 0.3 to 0.4 MPa provides any benefits beyond what the previously claimed and generally disclosed range of “not less than 0.2 MPa” would have. As has been explained by the examiner in previous Office Actions, because Miyasaka ‘048 (in combination with Miyasaka ‘457) uses substantially the same process parameters such as pressure, it would be expected to produce the same results for lack of evidence to the contrary. While Applicant has speculated potential differences in the results in the instant remarks, Applicant has provided no evidence to support these speculations.
Regarding factors such as surface roughness, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Again, the surface roughness would be presumed to result from the combined teachings of the references for lack of evidence to the contrary. The issue of pressure is addressed above. Applicant further asserts that “[t]he particle diameter [of the titanium powder] is more than twice as large as ‘a particle diameter of from 150 μm to 45 μm’ of the present invention”, citing a particle diameter of 300 μm in Miyasaka’s Example 1. However, this ignores Miyasaka’s broader guidance of setting the particle size to 10 to 800 μm, preferably 20 to 300 μm (paragraph 46). For similar reasons as with the discussion about pressure, the examiner maintains that Miyasaka is not limited to the narrow example cited by Applicant.
Regarding reducing a contact area with the food, again, this is a result that is presumed inherent to the prior art process. As had been explained in prior Office Actions, shot peening the surface is expected to form the claimed depression structures. This would also result in high spots and low spots, where the high spots would contact an object resting upon the surface while the low spots would not necessarily, depending on the food. This would effectively reduce the contact area.
Applicant asserts that “it is not clearly stated that the ‘alumina-silica beads’ of Example 1 of Miyasaka ('048) are ‘substantially spherical’". However, Miyasaka clearly shows preference for spherical shot in general at paragraph 40. Spherical shot would be expected to form spherical depressions.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/Matthew P Travers/Primary Examiner, Art Unit 3726