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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 January 2026 has been entered.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 6-7, 9, and 22-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gress (US 5,890,852).
Regarding claim 1, Gress discloses a die 10 for a pipe threading operation (can be used on pipes, see column 2, lines 53-57), the die comprising: a body portion (non-tooth portion of the die) formed of a first material (high speed stainless steel, see column 1, lines 53-58), the body portion having a first face 12, a second face 14 opposite the first face, a first lateral edge 16 between the first face and the second face, and a second lateral edge 18 opposite the first lateral edge and between the first face and the second face; and a tooth portion 22 (including the coating formed on the tooth portion) coupled (as the claim does not require that the tooth portion be removably coupled or permanently coupled by a joint, the tooth portion is seen to be coupled to the body portion) to an end of the body portion such that the tooth portion covers the end, a first side of the tooth portion is generally aligned with the first face, and a second side of the tooth portion is generally aligned with the second face (as seen in the figure), the tooth portion formed of a second material (the coating on the tooth portion) that is different than the first material (disclosed as a titanium nitride or other ultra hard material), the tooth portion having a plurality of teeth 22 formed along an edge of the tooth portion opposite from the end of the body portion, wherein the tooth portion extends from the first lateral edge to the second lateral edge of the body portion (as seen in the figure, the tooth portion includes outer end faces 32 and 34).
Regarding claim 6, Gress discloses wherein the body portion includes a recess 24 formed in the first lateral edge 16 of the body portion, and wherein the recess is configured to permit the die to be secured to a die head (see column 2, lines 29-38).
Regarding claim 7, Gress discloses wherein the plurality of teeth 22 progressively increases in size from a first tooth portion end of the tooth portion to a second tooth portion end of the tooth portion (as seen in the figure).
Regarding claim 9, Gress discloses further comprising a chip breaker 26 formed on a rake face 28 of the tooth portion 22 adjacent the plurality of teeth.
Regarding the intended use limitation “chip breaker”, it is noted that the groove 26 of the prior art used in the rejection is capable of being used for this function, as it has the form of commonly known chip breakers on threading dies. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex part Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Regarding claim 22, Gress discloses wherein the rake face 28 tapers inwardly such that a thickness of the tooth portion 22 decreases from the plurality of teeth (as seen in the figure).
Regarding claims 23-25, the “wherein the chip breaker is formed by metal injection molding or 3D printing”, “wherein the body portion and the tooth portion are formed by an additive manufacturing process”, and “wherein the body portion and the tooth portion are formed by metal injection molding” limitations in the claims are being treated as product-by-process limitations and as such do not further limit the claims beyond the structural limitations cited in the claims. As stated in MPEP 2113 [R-1], “Even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
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 of this title, 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 2, 21, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Gress.
Regarding claims 2 and 21, Gress discloses wherein the first material is steel. Gress does not disclose that the second material is carbide, or wherein the first material is a low-grade carbon steel. However, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have selected a carbide for the second material for the purpose of providing a desired hardness to the coating, and a low-grade carbon steel for the first material for the purpose of reducing overall costs to the die, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)
Regarding claim 26, Gress discloses the invention substantially as claimed, except Gress does not distinctly disclose wherein the tooth portion has the same thickness as the body portion, although these thicknesses appear to the same from the figure. It would have been an obvious matter of design choice to make the tooth portion and body portion to have the same thickness for the purpose of optimizing the overall strength of the die, since such a modification would have involved a mere change in the proportions of components. A change in proportion is generally recognized as being within the level of ordinary skill in the art. In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Allowable Subject Matter
Claim 27 is allowed for the reasons set forth in the office action mailed 31 October 2025.
Claims 3-5 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 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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/ERIC A. GATES/Primary Examiner, Art Unit 3722 11 March 2026