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 .
Response to Arguments
Applicant's arguments filed 1/5/2026 have been fully considered but they are not persuasive. The applicant argues that Hesse does not recognize the elastically deformable and plastically deformable ranges as result effective variables. The claim language includes “wherein the surface is coated in such a way that, in the forming tool during the forming process, the coating is elastically deformable…” (emphasis added). As this claim currently reads, the elastically deformable and plastically deformable ranges are a result of a coating process that is not claimed. As such, as Hesse et al. desires low defect coatings, it would be obvious to apply the correct material/coating technique that achieves this result by routine experimentation absent clarification on the coating technique with the claimed elasticity in order to achieve this result in para 0065-0067, 0095-0099, 0134-0137. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). The motivation to provide elasticity and plasticity is given in Hesse desiring low defect coatings.
More importantly, the instant specification provides that the coating is zinc applied by either galvanized methods or electrolytic methods (instant paragraphs 0020-0022, 0031). As claimed, these are conceivably the method the applicant intends as “coated such a way” and the elastic and plastic deformation loads naturally flow from this claimed method as claimed, though the specification is not very clear on what exactly in these coating methods causes the claimed deformation. Hesse coats its sheet with galvanization and zinc in para 0022. Therefore, as the claim language includes that the coating process produces the deformability and Hesse teaches the same coating process, it is obvious that Hesse will have the same deformability that results from the coating process. It is noted although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). If the applicant wishes to have a more specific coating method that produces the claimed result, it must be amended into the claim.
As to the new dependent claims, the depth/volume of the depressions are shown in the Figures of Hesse, particularly Figure 8b and discussed in para 0102 and Claim 1. The depth/volume and angle/shape is modified to hold lubricant in para 0102 and thus is result effective. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). However, it is noted by the examiner, that the shape limitations in claim 4 in combination with one or more of the angle, depth/volume limitations would no longer make the shape nor the depth/volume/angle obvious as the shape would be claimed to perform a function over an obvious design choice.
Therefore, for at least these reasons, the rejections are maintained. New grounds of rejection are due to amendments.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-10 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hesse et al. (US 2011/0165430 A1)
As to claim 1, Hesse et al. teaches a method for producing a sheet metal product from a sheet metal preliminary product (abstract), wherein at least one surface of the sheet metal preliminary product is coated with a coating (para 0022), wherein the sheet metal preliminary product is rolled, wherein depressions are rolled into the surface during the rolling operation (para 0024-0025), wherein after the coating and rolling operations lubricant is introduced into the depressions (para 0033), wherein after the introduction of lubricant the sheet metal preliminary product is mechanically formed by a forming tool (flattened or smoothed in para 0046-0047). Hesse further teaches that in the even of high loads, lubricating materials are released by deformation of the depressants in paras 0033, 0046, 0090, 0099-0102.
It is noted that the particular coating method is not disclosed, but only the result. As such, as Hesse et al. desires low defect coatings, it would be obvious to apply the correct material by routine experimentation absent clarification on the coating technique with the claimed elasticity in order to achieve this result in para 0065-0067, 0095-0099, 0134-0137. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
Alternately, the instant specification provides that the coating is zinc applied by either galvanized methods or electrolytic methods (instant paragraphs 0020-0022, 0031). As claimed, these are conceivably the method the applicant intends as “coated such a way” and the elastic and plastic deformation loads naturally flow from this claimed method as claimed. Hesse coats its sheet with galvanization and zinc in para 0022. Therefore, as the claim language includes that the coating process produces the deformability and Hesse teaches the same coating process, it is obvious that Hesse will have the same deformability that results from the coating processes at least as broadly claimed.
As to claims 3-4, the shape of the depressions are shown in Figure 8a, for example. The depressions are considered ‘closed’ as lubricant rests within the depressions in para 0090, 0099-0102. As for the shapes in claim 4, it would have been an obvious matter of design choice to include the claimed shape, since such a modification would have involved a mere change in the shape of a component. A change of shape is generally recognized as being within the ordinary level of skill in the art. In re Dailey, 357 F.2nd 669, 149 USPQ 1966.
As to claims 5-6, 8-9, 14-20, the depth/volume of the depressions are shown in the Figures, particularly Figure 8b and discussed in para 0102. The depth/volume and angle/shape is modified to hold lubricant in para 0102 and thus is result effective. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As to claim 7, the depressions are rolled to at least 30% in para 0010-0011 and 0067.
As to claim 10, a zinc coating is used in para 0022.
Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hesse et al. (US 2011/0165430 A1) in view of Buresch et al. (US 2012/0301740 A1)
As to claims 11-12, Hesse et al. teaches the limitations of the claims as discussed above, but does not include hot-dip galvanizing coating or electrolytic coating. Buresch et al. teaches a similar process (abstract) where the metal is coated with zinc (para 0018) before or after a rolling operation by hot-dip galvanizing coating or electrolytic coating (para 0019). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Hesse et al. to include hot-dip galvanizing coating or electrolytic coating as taught by Buresch et al. as Buresch et al. teaches the art recognized suitability and utility of such.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718
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