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 Amendment
The Amendment filed on December 9th, 2025 has been entered. Claims 1-4 are pending in the application.
The rejection of claims 1-3 under 35 U.S.C. 103 as obvious over Vigneau (US 20070107807 A1) and Tamada (US 20190119523 A1) is maintained.
The rejection of claim 4 under 35 U.S.C. 103 as obvious over Vigneau (US 20070107807 A1), Tamada (US 20190119523 A1), and Scremin (EP 3272913 A1) is maintained.
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 1 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.
The term “the composition of the cleaning paste being soft and having a viscosity between a solid and a liquid so as to be malleable” in claim 1 and claim 5 is a relative term which renders the claim indefinite. The term “the composition of the cleaning paste being soft and having a viscosity between a solid and a liquid so as to be malleable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. No viscosity parameters have been set.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Vigneau (US 20070107807 A1) and Ochiai (JP 2012035400 A).
With regard to claim 1, Vigneau discloses a metal component treated by shot peening and the metal component may be a turbomachine blade (see Abstract). Vigneau further discloses a method of shot peening a TA6V titanium allow (see [0035]) and further teaches the shot peening treatment followed by polishing with an abrasive paste (see [0051]).
However, Vigneau fails to disclose a magnetic cleaning paste comprising at least one polymer and a magnetic powder.
Ochiai discloses a paste material and ferromagnetic particles (see page 1 paragraph 3). Ochiai further discloses the magnetic paste material comprises at least one component of four components of magnetic particles, ferrite particles, abrasive particles, and resin particles, and a solvent (see page 2 paragraph 2). Ochiai further teaches the processing object may be resin or metal (see page 2 paragraph 3). Ochiai further teaches the treatment surface as stainless steel (see page 3 paragraph 4). As the paste is magnetic, it stands to reason that it would be capable of attracting and trapping residues of metallic beads.
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the paste of Ochiai, with the polishing step of Vigneau, as Vigneau discloses an abrasive paste and Ochiai discloses a magnetic paste material comprising abrasive particles.
Further, it would have been obvious to utilize the magnetic paste of Ochiai to clean a titanium part as Ochiai discloses the paste may be utilized in metal cleaning and titanium is a metal. Applicant is directed toward MPEP 2143(I)(D). The base device may be a magnetic cleaning paste. The claimed invention discloses the magnetic paste attracting and trapping metallic beads. Ochiai discloses a cleaning method in which a magnetic field generating source is brought into contact with a processing object in a non-contact manner, and a magnetic paste existing in the periphery is interlocked to perform a surface treatment by a fine shaving action of a particle population generated by the magnetic field (see page 2 paragraph 2). It would have been obvious to conclude that the magnetic paste of Ochiai is capable of attracting and trapping metallic beads.
With regard to claim 2, Vigneau discloses a TA6V titanium alloy as a surface.
With regard to claim 3, Vigneau discloses the shots as 100C6 steel shot at a diameter of 1.5mm (see [0035]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Vigneau (US 20070107807 A1) and Ochiai (JP 2012035400 A), and in further view of Scremin (EP 3272913 A1).
With regard to claim 4, Vigneau and Ochiai disclose all of the limitations of claim 1.
However, Vigneau and Ochiai fail to disclose a degreasing step subsequent to the cleaning step.
Scremin discloses a method of surface treatment comprising shot peening with beads comprising stainless steel (see Abstract). Scremin further discloses degreasing as an additional, optional step (see [0010]). Scremin further teaches degreasing as almost always advisable as it removes all greases and contaminating oils that normally deposit during the preceding processes (see [0010]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to add a degreasing step to the method of Scremin for the purpose of removing all greases and contaminating oils that normally deposit during the preceding processes (see [0010]).
Response to Arguments
Applicant's arguments filed December 9th, 2025 have been fully considered but they are not persuasive.
Applicant argues that claim 1 recites a cleaning paste being soft and having a viscosity between a solid and a liquid. Applicant further argues that the composition of Tamada would not attract and trap metallic particles. Applicant further argues that Tamada discloses an example composition comprising 0.25% by weight of antioxidant, 59.75% by weight of water, and 40% by weight of metallic particles. Applicant further argues that the large amount of water indicates that the composition is a liquid.
As Tamada is no longer relied upon as prior art, Applicant’s arguments regarding Tamada are moot.
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.
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/B.S.H./ Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/ Supervisory Patent Examiner, Art Unit 1761