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 .
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 1-11 and 14 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 1 recites “is configured to form a heated metal material with a forming die that forms a formed product having a held portion, a formed body portion, and a gradual change portion, the held portion being a cylindrical portion that is held by electrodes of the forming device that heat the metal material, the gradual change portion being provided between the held portion and the formed body portion” in lines 1-5. This is an intended use statement for which the claimed invention does not require, but only needs to be capable of performing the intended function. (see MPEP 2114)
Therefore, it is not clear whether a forming die and electrodes are a part of the claimed invention which is a forming device. For examination purpose, they are interpreted to be a part of the claimed forming device. Applicant is advised to rewrite the claim language to explicitly claim these components as a part of the forming device. One example would be “a forming device comprising a forming die configure to form a heated metal material into a formed product having … and electrodes configured to hold the cylindrical portion and heat …”
Furthermore, it is not clear whether “a formed product having a held portion, a formed body portion, and a gradual change portion” is a part of the claimed invention. For examination purpose, it is not considered as a part of the claimed invention since it is directed to a product which does not belong to the forming device.
Claim 1 further recites “configured to machine the formed product that has been scale-removed and cooled by the first scale removing unit by irradiating the formed product with a laser”. It is not clear whether the claim is directed to a device or a method as the sequence of the steps recited in this claim language can only be applicable to a method. For examination purpose, it is interpreted as a machining unit capable of machining the formed product that has been scale-removed and cooled by the first scaled removing unit.
Claim 1 further recites “wherein the laser head removes the gradual change portion and the held portion of the formed product with the laser beam by cutting both end portions of the formed product” in the last paragraph of the claim. It is not clear whether this claim language is directed to a device or a method as this claim language is directed to a method. For examination purpose, it is interpreted as the laser head capable of removing the gradual change portion and the held portion of the formed product with the laser beam…
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.
Claim(s) 1, 2 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (U.S. Patent Publication No. 2016/0279693) in view of Huaguan et al. (CN107626767) of which attached corresponding English translation is cited.
Regarding Claim 1, Ueno teaches a forming system comprising:
a forming device (Fig. 1, 10) that is configured to form a heated metal material (Fig. 1, 14) ([0021]: heated metal pipe material 14) with a forming die (Fig. 1, 13) that forms a formed product (Fig. 4, 80) having a held portion (Fig. 5A & 5C: a portion held by 17a & 18a), a formed body portion (Fig. 4, 80a & 80b), and a gradual change portion (A portion between a cylindrical portion (17a & 18a) held by electrodes and a formed portion 80a & 80b having a rectangular cross-sectional shape ([0039]) (The formed product is not a part of the claimed invention), the held portion being a cylindrical portion ([0022]: semicircular arc-shaped concave grooves) that is held by electrodes (Fig. 1, 17 & 18) of the forming device (Fig. 1, 10) that heat the metal material ([0034]), the gradual change portion being provided between the held portion and the formed body portion (The gradual change portion is not a part of the claimed invention.) (The gradual change portion is a portion which transitions from a circular held portion to a rectangular formed body portion.).
Ueno does not teach a first scale removing unit that includes a nozzle jetting particles to the formed product and that is configured to remove scales from the formed product removed from the forming die and cool the formed product and a machining unit that includes a laser head and that is configured to machine the formed product that has been scale-removed and cooled by the first scale removing unit by irradiating the formed product with a laser beam,
wherein the laser head removes the gradual change portion and the held portion of the
formed product with the laser beam by cutting both end portions of the formed body portion.
Huaguan et al. teaches performing a surface shot blasting operation to the formed product (Page 3, lines 8-11: surface shot blasting operation) that is configured to remove scales from the formed product (Page 3, lines 8-11: remove the oxide layer) and cool the formed product (It is anticipated that the compressed air used during shot peening would cool the formed product as it blasts over the formed product.); and
laser machining the formed product (page 2, line 42: cutting, punching) (page 4, line 50: laser cutting).
Examiner takes official notice that it is old and well known in the art that a shot blasting operation is commonly performed by shooting pallets from a nozzle and that a laser cutting commonly involves a laser head.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform a shot blasting operation of Huaguan using a jet and the laser cutting of Huaguan using a laser head as they are necessary components in devices (a shot blasting machine and a laser cutting machine) that perform these operations.
The following claims languages in Claim 1 are considered statements of intended use.
“configured to remove scales from the formed product removed from the forming die and cool the formed product,” “configured to machine the formed product that has been scale-removed and cooled by the first scale removing unit by irradiating the formed product with a laser beam” and “wherein the laser head removes the gradual change portion and the held portion of the formed product with the laser beam by cutting both end portions of the formed body portion.”
The first scale removing unit and the machining unit do not quire to perform the functions recited in the above claim language, but merely need to be capable of performing these functions. The Huaguan’s scale removing unit and machining unit are clearly capable of performing these functions.
Regarding Claim 2, Ueno/Huaguan teach the forming system according to claim 1,
wherein the forming device (Ueno Fig. 1, 10) includes
a fluid supply unit (Ueno Fig. 1, 60/42/44) that supplies a fluid (high pressure gas) to a metal pipe material (Ueno Fig. 1, 14) as the metal material (Ueno [0034], lines 1-2), and
the forming die (Ueno Fig. 1, 13) that forms the formed product (Ueno Fig. 4, 80) by bringing an expanded metal pipe material into contact with a forming surface (Ueno Fig. 1, 16/24) (Ueno [0035], [0036]).
Regarding Claim 7, although Ueno/Huaguan do not explicitly teach a wall portion that partitions a space between the forming device and the first scale removing unit or a wall portion that partitions a space between the machining unit and the first scale removing unit is further provided, examiner takes official notice that it is old and well known in the art to place a partition wall between two neighboring machineries or between two workstations. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a wall portion between the forming device of and the first scale removing unit of Ueno/Huaguan and/or between the first scale removing unit and the machining unit of Ueno/Huaguan in order to define a separate physical working zone for each machinery/process, avoid any interference between the two machineries/processes in two different zones and enhance safety by creating a physical barrier between the machineries and workers.
Claim(s) 3-5 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (U.S. Patent Publication No. 2016/0279693) in view of Huaguan et al. (CN107626767) of which attached English translation is cited, as applied Claim 1, further in view of Ruan (CN108262693) of which the attached corresponding English translation is cited.
Regarding Claim 3, Ueno/Huaguan teach the forming system according to claim 1, however, do not explicitly teach wherein the first scale removing unit further includes
an installation portion that installs the formed product at a position facing the nozzle, and
a blockade wall that is disposed to surround peripheries of the installation portion and the nozzle and that blocks the particles.
Ruan teaches the first scale removing unit (see Fig. 1) includes
a nozzle (Fig. 1, 11) that jets particles to the formed product (page 1, Description: products) (page 1, Description lines 5-8) (page 3, line 10: spraying sand process),
an installation portion (Fig. 1, 3 & 12) that installs the formed product at a position facing the nozzle (Fig. 1, 11), and
a blockade wall (Fig. 1, 1) that is disposed to surround peripheries of the installation portion (Fig. 1, 3 & 12) and the nozzle (Fig. 1, 11) and that blocks the particles.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to clean the outer surface of the formed product of Ueno using a scale removing unit of Ruan since it can improve the uniformity of polishing, shorten the overall polishing time and improve the overall polishing efficiency as suggested in Ruan page 2, lines 5-7.
Regarding Claim 4, Ueno/Huaguan/Ruan teach the forming system according to claim 3, wherein the installation portion (Ruan Fig. 1, 3 & 12) suspends the formed product (Ueno Fig. 4, 80) and installs the formed product in a posture that extends in a vertical direction (Ruan [0030]: hang the metal parts on the hanging rod 12) (Since the metal parts are hung on the hanging rods, the formed product of Ueno hanging on the hanging rod 12 of Ruan would be positioned in a vertical direction due to gravity).
Regarding Claim 5, Ueno/Huaguan/Ruan teach the forming system according to claim 4, wherein the nozzle (Ruan Fig. 1, 11) includes a jetting port that is disposed to face an outer peripheral surface of the formed product (Ruan Fig. 1 shows the multiple sand spraying opening (11) pointing at the hanging rods (12). Therefore, the jetting port on the nozzle would face an outer peripheral surface of the formed product when the formed product is hanging on the hanging rod (12)).
Regarding Claim 14, Ueno/Huaguan/Ruan teach the forming system according to claim 3,
wherein the first scale removing unit (Ruan see Fig. 1) is configured to perform air blowing to the formed product with the jetting of the particles (A sanding blasting process typically involves blowing of air with the jetting of the particles (e.g. sand).).
Furthermore, examiner notes that the claim language such as “configured to perform” is a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the structure of the scale removing device of Ruan is clearly capable of performing the intended use. (see MPEP 2114)
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (U.S. Patent Publication No. 2016/0279693) in view of Huaguan et al. (CN107626767) of which attached English translation is cited and Ruan (CN108262693) of which the attached corresponding English translation is cited, as applied to Claim 5, and further in view of Murata (JP2006300404) of which the attached corresponding English translation is cited.
Regarding Claim 6, Ueno/Huaguan/Ruan teach the forming system according to claim 5, but, do not explicitly teach wherein the nozzle jets dry ice as the particles.
Murata teaches a scale removal method by spraying dry ice as the particles (Murata page 4, lines 36-37: dry ice).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use dry ice as particle in the blasting method of Huaguan/Ruan to remove the scale on the formed product of Ueno as taught by Murata since dry ice does not require disposing of blast particles from the formed product as cleaning as suggested in Murata page 4, line 45-46. As a result of using dry ice as blast particles, the formed product would be cooled by the dry ice.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (U.S. Patent Publication No. 2016/0279693) in view of Huaguan et al. (CN107626767) of which attached corresponding English translation is cited, as applied to Claim 1, and further in view of Kipp (EP1035947) of which the attached corresponding English translation is cited.
Regarding Claim 8, Ueno/Huaguan teach the forming system according to claim 1, but do not explicitly teach further comprising:
a second scale removing unit that removes the scales from the formed product machined by the machining unit.
Kipp teaches a second scale removing unit (Fig. 1, 10, 12 & 14) that removes the scales from the formed product (Fig. 1, 20). (page 1, Description line 18: thorough cleaning of the inner surfaces of pipes)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to clean the inside of the formed product (pipe) of Ueno/Huaguan by blasting dry ice as particles as taught by Kipp in addition to cleaning the outside of the formed product, such that, the entire surface including inside and outside of the formed product can be cleaned without having to dispose any blasting particles.
Regarding Claim 9, although Ueno/Huaguan/Kipp do not explicitly teach that the first scale removing unit and the second scale removing unit are constituted by a common device, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the cleaning process of outside and insider of the formed product using the blasting devices of Huaguan and Kipp respectively in a common device in order to save cost by reducing the number of devices (e.g. chambers & air compressor) and time by performing both cleaning processes at the same time.
Regarding Claim 10, Ueno/Huaguan/Kipp teach the forming system according to claim 8, wherein the second scale removing unit (Kipp Fig. 1, 10, 12 & 14) includes a blast hose (Kipp Fig. 1, 12 & 14) that jets particles onto an inner peripheral surface of the formed product (Ueno Fig. 4, 80) (Kipp page 2, lines 16-19).
Regarding Claim 11, Ueno/Huaguan/Kipp teach the forming system according to claim 10, wherein the blast hose jets dry ice (Kipp page 2, line 17: dry ice) as the particles.
Response to Arguments
Applicant’s arguments with respect to “a held portion” and “a gradual change portion” related to electrodes in claim(s) 1 on page 9 of the argument have been considered but are moot because the new ground of rejection does not rely on an old combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Furthermore, “a held portion” and “a gradual change portion” is not a part of the claimed device, but belongs to a product being made by the device. Therefore, the reference does not necessarily need to teach these limitations, but rather, the device merely needs to be capable of making these portions of the formed product as indicated in the above prior art rejection.
Furthermore, applicant arguments with respect to the claimed structural sequence where the machining unit machines the product that has been scale-removed and cooled by the first scale removing unit on pages 9 and 10 of the argument relies on the sequence of steps which is directed to a method. Since the claim is directed to a device, the first scale removing unit and a machining unit merely need to be capable of performing the intended functions on a formed product that has gone through a certain sequence of manufacturing steps, and it does not further limit the structural sequence between the first scale removing unit and a machining unit in any way.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN S YOO whose telephone number is (571)270-7141. The examiner can normally be reached 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SUNIL SINGH can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUN S YOO/Primary Examiner, Art Unit 3726 8/3/2026
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