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 .
Status of the Claims
In the reply of 9/9/2025, the following has occurred:
Claim(s) 12 is/are amended
Claim(s) 19-20 is/are canceled
Claim(s) 22-26 is/are new
Claim(s) 12-13, 15, 18, and 21-26 is/are pending, with claim(s) 21 being withdrawn
Response to Arguments
Applicant’s arguments, see Remarks, filed 9/9/2025, with respect to the rejection(s) of claim(s) 12-13, 15, and 18-19 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the Applicant’s Admitted Prior Art of DE 102011051270 A1 to Hoffman, see Applicant’s PGPUB paras. 4-5. Additionally, the latest amendment introduces a new rejection under 35 USC § 112(a), as detailed below.
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.
Claims 12-13, 15, 18, and 23-25 are 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.
Regarding claim 12. The claim has been amended to recite, “… the outer coating of the roller body consists of aluminum oxide Al2O3 …” Previous claim 19, which is canceled in the latest amendment, recited limitations substantially similar to para. 25 of the Applicant’s PGPUB, in which the coating “comprises at least one oxide selected from the group consisting of …” or the coating “includes an oxide selected from the group of …”, respectively. Further, para. 51 of the Applicant’s PGPUB describes “The coating 6 comprises a mixture of zirconium oxide, aluminum oxide, boron nitride, and/or silicate.”
To clarify, the claim to a coating consisting of aluminum oxide is not properly described in the application as filed, which at best describes a coating comprising or including aluminum oxide.
See MPEP 2111.03 for a detailed explanation of transitional phrases. It appears the Applicant’s selection of “consists of” in the claim was intentional to overcome the prior art to Jonnard in view of Dorst, see p. 7 of the Remarks filed 9/9/2025.
Claim Rejections - 35 USC § 103
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) 12-13, 15, 18, and 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over FR 2749378 A1 to Jonnard in view of US 20190241477 A1 to Dorst, DE 102011051270 A1 to Hoffman, US 5833455 A to Carr, and US 20150037531 A1 to Pyzik.
Note: Reference is made to the attached translations of Jonnard and Hoffman.
Regarding claim 12. Jonnard teaches a furnace roller, the furnace roller comprising:
a roller body (fig. 2a, roller 1), the roller body has outer longitudinal fins (fig. 2b, portion labeled 1c) and longitudinal grooves (fig. 2b, portion labeled 1d) both extending linearly in a longitudinal direction of the roller body (fig. 2b is understood to be a cross section of the roller 1 shown in fig. 2a, therefore the features 1c and 1d extend longitudinally), and the roller body has a hollow cylinder shape (fig. 2b, the roller can be seen to have a generally circular cross section, thus having an overall hollow cylinder shape),
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wherein each of the longitudinal fins has a rounded end face (fig. 2c, the end face of the portion labeled 1c is seen to be rounded following the arc of the circumference of the roller 1 at the surface), and each of the longitudinal grooves has a rounded groove base (fig. 2c, similarly, the base of the portion labeled 1d is seen to be rounded following the arc of the circumference of the roller 1 at the surface),
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wherein each of the longitudinal fins has a fin height (fig. 2c, fin height from base of portion 1d to end face of portion 1c), the roller body has a wall thickness measured between the rounded groove base and an inner circumference of an interior of the roller body (fig. 2c, wall thickness from base of portion 1d to interior surface of the roller 1), and a ratio of the fin height to the wall thickness of the roller body is between 1:1 and 1:2 (from fig. 2c, this ratio appears to be about 1:2 based on what one of ordinary skill in the art would infer from the figures).
But fails to teach wherein the roller body has an outer coating;
a ratio of the fin height to the wall thickness of the roller body is explicitly between 1:1 and 1:2; and
wherein the roller body has a middle length section and terminal end sections, the middle length section has an external diameter greater than an external diameter of the terminal end sections, the outer coating of the roller body consists of aluminum oxide Al-2O3, and each terminal end section of the terminal end sections comprises a geopolymer plug.
Dorst teaches a roller body having a middle length section (fig., coated roller 1 having base body 2) and terminal end sections (fig., taper 4), the middle length section having an external diameter greater than an external diameter of the terminal end sections (para. 88, “The roller 1 has a taper 4 on both ends for attaching the drive sleeve.” Where a taper is understood to be an area having a reduced diameter, as shown in the figure).
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It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply a suitable taper to the ends of Jonnard’s roller, as taught by Dorst. This would provide the predictable result and benefit of attaching a drive sleeve to the roller, as suggested by Dorst in para. 88, “The roller 1 has a taper 4 on both ends for attaching the drive sleeve.”
Applicant’s PGPUB describes the prior art with reference to Hoffman in paras. 4-5; in particular, Hoffman teaches a roller coated with aluminum oxide (description “Particularly preferably, the airfoil coating contains at least one oxide selected from the group aluminum oxide (Al .sub.2 O .sub.3 ) …” Therefore, the coating could be only Al2O3).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the device of Jonnard to implement a suitable roller coating, as taught by Hoffman. This would provide the predictable result and benefit of providing a long service life, among other benefits as suggested by Hoffman in the description, “The roller according to the invention for a roller kiln is characterized by a long service life with low susceptibility to repair. The transport properties of the rollers according to the invention and of a roller furnace with a roller conveyor of such rollers are improved. In addition, an increase in quality or optimization is achieved because adverse effects on the coating of a steel sheet are reduced by the wings of the rollers.”
Finally, the device of modified Jonnard teaches wherein the roller body comprises an interior and terminal end sections (Jonnard fig. 2a, the roller 1 can be seen to have an interior and terminal end sections),
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But fails to teach in each terminal end section of the terminal end sections comprises a geopolymer plug.
Carr teaches a roller body (fig. 2, roll sleeve 50) comprising an interior space (fig. 2) and end side length portions (fig. 2, roll bells 52) with a stopper (fig. 2, ceramic fiber material 66) in each of the end side length portions (col. 4 ll. 40-45, “A filling of ceramic fiber material 66 having a density, for example, of 6 pounds per cubic foot, is sandwiched between two alloy discs 68 and 70 to maintain the ceramic fiber material within the hollow of the bell so that the ceramic material underlies a weld area 72 joining the roll sleeve to the roll bell.”).
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It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to implement a suitable stopper in the terminal end sections of Jonnard’s roller, as done in Carr. This would provide the predictable result and benefit of preventing radiant heat loss from within the roller, as suggested by Carr in col. 4 ll. 45-47, “The ceramic material prevents radiant heating from within the hollow of the hole sleeve 50.”
Pyzik teaches a geopolymer material (para. 18, alkali aluminosilicates including the so called “geopolymer” materials)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to implement a geopolymer as the material of the suitable stopper of Carr. This would provide the predictable result and benefit of providing a thermally and chemically stable stopper material, as suggested by Pyzik in para. 2, “more thermally and chemically stable than other types of porous materials such as organic polymers, and therefore are materials of choice for use in many high-temperature and/or corrosive environments.”
Regarding the limitations to, “a ratio of the fin height to the wall thickness of the roller body is explicitly between 1:1 and 1:2”, to the extent that the Applicant disagrees with the Examiner’s characterization of the references, as explained in the mapping to Jonnard above, the following rejection is provided:
The device of modified Jonnard teaches the above detailed features, with the exception of explicitly disclosing wherein a ratio of the fin height to the wall thickness of the roller body is explicitly between 1:1 and 1:2.
With regards to the limitation of “a ratio of the fin height to the wall thickness of the roller body is explicitly between 1:1 and 1:2”, it is the examiner’s position that choosing a ratio of fin height to wall thickness has predictable and expected results. For example, this ratio could be optimized by balancing the depth of the groove 1d to allow for sufficient material accumulation while providing structural support from the wall thickness, the result of this optimization would have predictable and expected results. Since a specific ratio is a results effective variable which could be achieved through routine experimentation, the ratio is selected expectedly based on the desired application. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the height of the fin and the thickness of the wall such that the ratio between the two is between 1:1 and 1:2, since 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. See MPEP 2144.05 Section II A and B.
Regarding claim 13. The device of modified Jonnard teaches the furnace roller according to claim 12,
But fails to teach wherein the roller body comprises a ceramic material.
However, Dorst further teaches ceramic rollers (para. 5, “For roller ovens that are operated at temperatures >600° C., ceramic rollers are necessary …”).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select ceramic as the material of Jonnard’s rollers, as taught by Dorst. This would provide the predictable result and benefit of providing temperature resistance, creep resistance, and thermal shock resistance at temperatures over 600°C, as suggested by Dorst in para. 5, “For roller ovens that are operated at temperatures >600° C., ceramic rollers are necessary because of temperature resistance, creep resistance, and thermal shock resistance.”
Regarding claim 15. The device of modified Jonnard teaches the furnace roller according to claim 12, wherein the rounded end face has a first radius (Jonnard fig. 2b, surface 1c has first radius as shown below) and the rounded groove base has a second radius (Jonnard fig. 2b, surface 1d has second radius as shown below), and the first radius is greater than the second radius (as shown below, the first radius is greater than the second radius).
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Regarding claim 18. The device of modified Jonnard teaches the furnace roller according to claim 12, wherein the roller body comprises an extrudate (regarding this limitation, para. 23 of the Applicant’s PGPUB states, “The roller body is an extrudate, i.e. has been produced by extrusion. In the case of production by extrusion, the roller body receives its geometric configuration with longitudinal fins and longitudinal grooves. The outer surfaces require only minor reprocessing, such as of the grinding type. Reworking by grinding is able to be effected in the end sections, i.e. the terminal longitudinal sections of the roller body.” Therefore, the claim limitation towards, “the roller body comprises an extrudate” is being interpreted as a product-by-process limitation, see MPEP 2113. In particular, “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”).
Regarding claim 23. The device of modified Jonnard teaches the furnace roller according to claim 12, wherein the geopolymer plugs of the terminal end sections seal and insulate the interior of the roller body (Carr fig. 2, the suitable ceramic fiber material 66 prevents heat radiant heat loss from within the roller by sealing and insulating the interior of the roller body), and the geopolymer plugs are gas permeable (Pyzik para. 2, the geopolymer materials are described as porous, “more thermally and chemically stable than other types of porous materials” where “other types of porous materials” implies that the geopolymers are similarly porous, which is understood to read on “gas permeable”).
Regarding claim 24. The claim is rejected using substantially the same rationale as applied to claim 15.
Regarding claim 25. The device of modified Jonnard teaches the furnace roller according to claim 24, wherein the furnace roller is configured to be incorporated and operated in a roller hearth furnace of a hot forming line for press hardening coated steel sheets (Intended use which the device of modified Jonnard is capable of).
Claim(s) 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jonnard in view of Dorst, Carr, and Pyzik.
Regarding claim 22. Jonnard teaches a furnace roller as described in the rejection to claim 12, in addition to the following:
Regarding the limitation to “the rounded end face has a first radius and the rounded groove face has a second radius, and the first radius is greater than the second radius” Jonnard teaches this limitation as detailed in the rejection to claim 15, above.
But fails to teach wherein the roller body has an outer coating;
a ratio of the fin height to the wall thickness of the roller body is explicitly between 1:1 and 1:2; and
wherein the roller body has a middle length section and terminal end sections, the middle length section has an external diameter greater than an external diameter of the terminal end sections,
and each terminal end section of the terminal end sections comprises a geopolymer plug, the geopolymer plugs of the terminal end sections seal and insulate the interior of the roller body, and the geopolymer plugs are gas permeable.
Dorst teaches a roller body having an outer coating (para. 15, “The object of the present invention is accomplished by a roller for a roller furnace having an improved coating according to claim 1.”); and
A roller body having a middle length section (fig., coated roller 1 having base body 2) and terminal end sections (fig., taper 4), the middle length section having an external diameter greater than an external diameter of the terminal end sections (para. 88, “The roller 1 has a taper 4 on both ends for attaching the drive sleeve.” Where a taper is understood to be an area having a reduced diameter, as shown in the figure).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply a suitable coating to the outside of Jonnard’s roller, as taught by Dorst. This would provide the predictable result and benefit of providing a roller furnace with longer durability and service life when processing AlSi coated metal parts, as suggested by Dorst in paras. 13-15, “The object of the present invention consists in providing a roller for a roller furnace for hot forming with AlSi-coated metal parts that has significantly longer durability and a longer service life than known rollers. A further object of the present invention is to provide an improved roller furnace for the heating of coated steel sheets. The object of the present invention is accomplished by a roller for a roller furnace having an improved coating according to claim 1.” Furthermore, it would have been obvious to apply a suitable taper to the ends of Jonnard’s roller, as taught by Dorst. This would provide the predictable result and benefit of attaching a drive sleeve to the roller, as suggested by Dorst in para. 88, “The roller 1 has a taper 4 on both ends for attaching the drive sleeve.”
Finally, the device of modified Jonnard teaches wherein the roller body comprises an interior and terminal end sections (Jonnard fig. 2a, the roller 1 can be seen to have an interior and terminal end sections),
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But fails to teach in each terminal end section of the terminal end sections comprises a geopolymer plug.
Carr teaches a roller body (fig. 2, roll sleeve 50) comprising an interior space (fig. 2) and end side length portions (fig. 2, roll bells 52) with a stopper (fig. 2, ceramic fiber material 66) in each of the end side length portions (col. 4 ll. 40-45, “A filling of ceramic fiber material 66 having a density, for example, of 6 pounds per cubic foot, is sandwiched between two alloy discs 68 and 70 to maintain the ceramic fiber material within the hollow of the bell so that the ceramic material underlies a weld area 72 joining the roll sleeve to the roll bell.”).
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It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to implement a suitable stopper in the terminal end sections of Jonnard’s roller, as done in Carr. This would provide the predictable result and benefit of preventing radiant heat loss from within the roller, as suggested by Carr in col. 4 ll. 45-47, “The ceramic material prevents radiant heating from within the hollow of the hole sleeve 50.”
Pyzik teaches a geopolymer material (para. 18, alkali aluminosilicates including the so called “geopolymer” materials)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to implement a geopolymer as the material of the suitable stopper of Carr. This would provide the predictable result and benefit of providing a thermally and chemically stable stopper material, as suggested by Pyzik in para. 2, “more thermally and chemically stable than other types of porous materials such as organic polymers, and therefore are materials of choice for use in many high-temperature and/or corrosive environments.”
Therefore, the device of modified Jonnard teaches wherein the geopolymer plugs of the terminal end sections seal and insulate the interior of the roller body (Carr fig. 2, the suitable ceramic fiber material 66 prevents heat radiant heat loss from within the roller by sealing and insulating the interior of the roller body), and the geopolymer plugs are gas permeable (Pyzik para. 2, the geopolymer materials are described as porous, “more thermally and chemically stable than other types of porous materials” where “other types of porous materials” implies that the geopolymers are similarly porous, which is understood to read on “gas permeable”).
Regarding the limitations to, “a ratio of the fin height to the wall thickness of the roller body is explicitly between 1:1 and 1:2”, to the extent that the Applicant disagrees with the Examiner’s characterization of the references, as detailed in the mapping to Jonnard in the rejection of claim 12 above, the following rejection is provided:
The device of modified Jonnard teaches the above detailed features, with the exception of explicitly disclosing wherein a ratio of the fin height to the wall thickness of the roller body is explicitly between 1:1 and 1:2.
With regards to the limitation of “a ratio of the fin height to the wall thickness of the roller body is explicitly between 1:1 and 1:2”, it is the examiner’s position that choosing a ratio of fin height to wall thickness has predictable and expected results. For example, this ratio could be optimized by balancing the depth of the groove 1d to allow for sufficient material accumulation while providing structural support from the wall thickness, the result of this optimization would have predictable and expected results. Since a specific ratio is a results effective variable which could be achieved through routine experimentation, the ratio is selected expectedly based on the desired application. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the height of the fin and the thickness of the wall such that the ratio between the two is between 1:1 and 1:2, since 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. See MPEP 2144.05 Section II A and B.
Regarding claim 26. The device of modified Jonnard teaches the furnace roller according to claim 22, wherein the furnace roller is configured to be incorporated and operated in a roller hearth furnace of a hot forming line for press hardening coated steel sheets (Intended use which the device of modified Jonnard is capable of).
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 Kurt Wolford whose telephone number is (571)272-9945. The examiner can normally be reached 7:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G Hoang can be reached at (571)272-6460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KURT WOLFORD/Examiner, Art Unit 3762
/STEVEN S ANDERSON II/Primary Examiner, Art Unit 3762