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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/30/2026 has been entered.
Response to Amendment
Upon consideration of the amended claims, all previous objections and rejections under 35 U.S.C. 112(b) thereto are hereby withdrawn.
Response to Arguments
Applicant's arguments with respect to the rejection of Claim 1 under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/168260 to Lee et al., see pages 8-10 of the Remarks filed 01/30/2026, have been fully considered but they are not persuasive.
Firstly, Applicant argues on page 9 para. 1 that Lee’s process forms metal strips for producing tubes via butt welding, which is different than the claimed invention, which forms metal strips for producing tubes via high frequency welding. Examiner notes that Claim 1 recites in the preamble “An apparatus for preforming a metal strip for the manufacture of roll formed and high frequency welded tubes with inner grooves” (emphasis added). As the high frequency welding is only recited as a process that happens to the finished product (i.e. the pre-formed metal strip) after it is formed by the claimed apparatus and is not itself a part of said claimed apparatus, the underlined limitation is therefore considered to be a recitation 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. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). As the pre-formed metal strip produced by the apparatus of Lee is capable of being formed into a tube via high frequency welding, this limitation of the claim is met.
Regarding Applicant’s arguments on page 9 para. 2 that Lee’s process produces tubes with grooves on both sides, not just the interior with a smooth exterior, it is noted that the tubes manufactured from the pre-formed metal strip having a smooth exterior is not recited in the rejected claim(s). 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). The preamble of Claim 1 recites that the manufactured tubes have inner grooves, but does not exclude tubes which also have outer grooves. Likewise, the body of the claim recites “an embossing roll” and “an embossed side of the strip”, but does not exclude embodiments in which there are multiple embossing rolls and/or both sides of the strip are embossed.
Further, regarding Applicant’s argument on pages 9-10 that Lee does not disclose the embossed side of the metal strip being chamfered, Examiner respectfully disagrees. The Applicant argues: “the embossed side of the metal strip refers to the inside of the tube, as it concerns an inner grooved tube. The claim specifically requires the chamfering to be on the embossed side, which will form the inside of the tube. In contrast, Lee’s process positions the inclined surfaces outward to facilitate fusion welding.” As discussed above, Lee’s apparatus produces strips which are embossed on both sides, so “the embossed side” could refer to either the inside or the outside of the formed tube, and the chamfer is therefore always formed on an embossed side of the strip. As is also discussed above, the claimed apparatus is only used for the production of an embossed strip, and not the finished tube, so whether the chamfered side of the strip ends up on the inside or the outside of the tube is not relevant.
Regarding Applicant’s argument on page 10 that the inclined surfaces of Lee are beveled, not chamfered, it is noted that the two terms are often used interchangeably with each other. Further, based on the configuration shown in Figure 10 with the strip edge being formed, it is clear that different strip geometries will yield different strip edge shapes. For instance, the strip shown in Figure 10 extends the entire width of the rollers 10/20 and thus its edges are formed as a bevel by left/right inclined surface forming portions 107/108. However, if a strip is used which does not extend quite to the outer edges of the rollers, only the innermost parts of portions 107/108 will engage the strip edge and thus a chamfer having the shape discussed by the Applicant will be formed. Accordingly, the apparatus of Lee is capable of forming a chamfer in the strip edge.
The rejection of Claim 1 under 35 U.S.C. 102(a)(1) for being anticipated by Lee is therefore maintained.
Claim Rejections - 35 USC § 102
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, 3, 8, 11-12, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al., hereinafter Lee (WO 2019/168260, provided by Applicant). For text citations of Lee, refer to the corresponding European patent application publication, EP 3760334.
Regarding Claim 1, Lee discloses (Figures 1, 5, and 10) an apparatus (intaglio-relief embossing press roller 1) for pre-forming a metal strip for the manufacture of roll formed and high frequency welded tubes with inner grooves (paras. [0034]-[0035]), comprising an embossing tool and a strip edge chamfering tool wherein the embossing tool comprises an embossing roll (roller body 201) having a cylindrical surface with a central embossing portion (intaglio embossing pattern unit 203) and side portions (left/right ends 205/206), and the strip edge chamfering tool comprises an edge chamfering roll (upper roller 10) comprising a recessed central section (roller body 101) and side sections (left/right inclined surface formation portions 107/108) on each side of the recessed central section, and an anvil roll (lower roller 20), wherein the edge chamfering roll and the anvil roll are configured to receive and pass, in use, the metal strip in a clearance formed between the edge chamfering roll and the anvil roll (clearly seen in Figure 10), wherein the clearance has a reduced height in the side sections, which are located in a position where longitudinal side edges of the metal strip will pass (clearly seen in Figure 10), so that the longitudinal side edges on each side of the metal strip, and on an embossed side of the metal strip become chamfered when being passed between the edge chamfering roll and the anvil roll ([0048] lns 21-25), wherein the embossing tool and the strip edge chamfering tool have parallel axes of rotation (clearly seen in figures), wherein an embossing pattern on the central embossing portion comprises a plurality of grooves arranged in a cylindrical surface of the central embossing portion (Figure 5 clearly shows the pattern made by intaglio embossing pattern unit 203 includes grooves in the cylindrical surface of the roller body 201), and wherein the cylindrical surface of each of the side portions is level with the cylindrical surface of the central embossing portion between the grooves (clearly seen in Figure 5).
Regarding Claim 3, Lee discloses (Figure 5) the embossing tool and the strip edge chamfering tool are integrated so as to comprise one combined embossing and edge chamfering roll (intaglio-relief embossing press roller 1 comprising upper roller 10, i.e. the edge chamfering roll, and lower roller 20, i.e. the combined anvil roll and embossing roll), whereby the central embossing portion (intaglio embossing pattern unit 203) is comprised in a central section (roller body 201) of the clearance ([0048] lns 8-17; clearly seen in Figure 5).
Regarding Claim 8, Lee discloses (Figure 5) the edge chamfering roll (upper roller 10) comprises a recess comprising the recessed central section (roller body 101) and the side sections (left/right inclined surface formation portions 107/108) on each side of the recessed central section, wherein the side sections comprise outwardly inclined side edges ([0048] lns 14-20, clearly seen in figures) on each side of the recess, running along the circumference of a cylindrical surface of the edge chamfering roll.
Regarding Claim 11, Lee discloses (Figures 1, 5, and 10-11) a method of pre-forming a metal strip for the manufacture of roll formed and high frequency welded tubes with inner grooves (paras. [0034]-[0035]), the method comprising using the apparatus of Claim 1 (see discussion above) to perform the steps of: embossing a pattern on a central portion of the metal strip (section of strip corresponding to intaglio embossing pattern unit 203), in a longitudinal direction thereof, while side portions (sections of strip corresponding to left/right ends 205/206 and left/right inclined surface formation portions 107/108) on each side of the central portion of the metal strip are rolled without the pattern ([0065] lns 1-5: left/right ends 205/206 providing “planes” to opposite side surfaces of the strip is interpreted as the side sections of the strip being rolled without the embossing pattern), wherein the pattern comprises protrusions (clearly seen in Figure 11; the downward-facing protrusions correspond to the grooves of intaglio embossing pattern unit 203), and the side portions of the metal strip are rolled during the embossing step to a strip thickness which is level with a strip thickness between the protrusions of the pattern (clearly seen in Figure 11), and chamfering longitudinal side edges of the metal strip on the side of the metal strip which is provided with the pattern ([0048] lns 21-25, para. [0066]).
Regarding Claim 12, Lee discloses (Figure 10) during the chamfering, strip material at the longitudinal side edges of the metal strip (sections of strip corresponding to left/right inclined surface formation portions 107/108) is pressed down to 20-60% of the strip thickness (Figure 10 clearly shows at least some of the strip material at the longitudinal side edges of the strip being pressed down by left/right inclined surface formation portions 107/108 by an amount 20-60% of the total strip thickness), thereby forming an inclined edge surface along the longitudinal side edges of the metal strip ([0048] lns 21-25).
Regarding Claim 14, Lee discloses (Figure 10) the embossing and edge chamfering are performed simultaneously in an integrated embossing and edge chamfering tool (intaglio-relief embossing press roller 1; para. [0067]).
Regarding Claim 16, Lee discloses (Figure 10) during the chamfering, strip material at the longitudinal side edges of the metal strip (sections of strip corresponding to left/right inclined surface formation portions 107/108) is pressed down to 35-40% of the strip thickness (Figure 10 clearly shows at least some of the strip material at the longitudinal side edges of the strip being pressed down by left/right inclined surface formation portions 107/108 by an amount 35-40% of the total strip thickness), thereby forming an inclined edge surface along the longitudinal side edges of the metal strip ([0048] lns 21-25).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to Claim 1 above, and further in view of Takiura et al., hereinafter Takiura (JP 2001-259733, provided by Applicant). For text citations of Takiura, refer to the machine translation provided as Non-Patent Literature with the Office action mailed 10/30/2025.
Regarding Claim 5, Lee does not disclose the embossing roll is comprised of a central embossing pattern roll pack and side rolls the embossing roll disclosed by Lee is one unitary structure. In the same field of endeavor, Takiura teaches (Figures 1-2) an apparatus for pre-forming a metal strip (plate material T) for the manufacture of roll formed and high frequency welded tubes with inner grooves ([0001] lns 1-4), comprising an embossing tool comprising an embossing roll (fin rolling roll 4) having a cylindrical surface with a central embossing portion (center roll 4B) and side portions (side rolls 4A), wherein the embossing roll (fin rolling roll 4) is comprised of a central embossing pattern roll pack (center roll 4B) and side rolls (side rolls 4A), said side rolls being arranged on each side of the central embossing pattern roll pack ([0014] lns 1-3; clearly seen in Figure 2), and wherein the central embossing pattern roll pack has a cylindrical surface forming the central embossing portion and the side rolls have cylindrical surfaces forming the side portions (clearly seen in Figure 2). One skilled in the art would understand that this configuration of embossing roll is beneficial in that it allows the user to interchange different central embossing pattern roll packs, whether to use a different embossing pattern or to replace damaged or worn embossing pattern rolls, without needing to replace the entire embossing roll. As this is a known structure of embossing roll for use in an embossing tool which pre-forms a metal strip for the manufacture of roll formed and high frequency welded tubes with inner grooves, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the embossing roll of the embossing tool in the apparatus disclosed by Lee such that it is comprised of a central embossing pattern roll pack and side rolls, said side rolls being arranged on each side of the central embossing pattern roll pack, and wherein the central embossing pattern roll pack has a cylindrical surface forming the central embossing portion and the side rolls have cylindrical surfaces forming the side portions, as taught by Takiura, in order to perform the same function of imparting an embossed pattern to the metal strip while allowing for easy replaceability of the central embossing portion.
Claims 6-7, 9-10, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to Claim 1 above.
Regarding Claim 6, Lee discloses (Figure 5) the central embossing portion (relief embossing pattern unit 103) of the embossing roll (roller body 101) has a width, which is 85-99% of a total width of the cylindrical surface of the embossing roll (this width ratio is clearly seen in Figure 5), but is silent to the value of the total width itself. However, one skilled in the art would understand that the width of the embossing roll will directly correlate to the size of the desired tubes manufactured from the metal strip being pre-formed by the apparatus, so the selection of the width is entirely dependent on the dimensions of the end product and is therefore not an inventive feature. As the Applicant has not set forth any criticality to the selection of 15 mm or more for the total width of the embossing roll that results in an unexpected benefit, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the apparatus for pre-forming a metal strip disclosed by Lee such that the cylindrical surface of the embossing roll has a total width of 15 mm or more, because such selection or determination would be the result of routine optimization and does not in itself warrant patentability, as one would arrive at such optimization through routine engineering and design practices.
Regarding Claim 7, Lee discloses (Figure 10) a central section of the clearance (section of clearance corresponding to roller body 101) between the edge chamfering roll (upper roller 10) and the anvil roll (lower roller 20) of the strip edge chamfering tool, has a width which is equal to or greater than the width of the central embossing portion (relief embossing pattern unit 103) of the embossing roll (relief embossing pattern unit 103 does not occupy the entire width of roller body 101, so this limitation is met).
Regarding Claims 9 and 15, Lee discloses (Figure 5) that the inclined side edges (left/right inclined surface formation portions 107/108) are inclined at an angle of 45-70˚ ([0072] lns 1-4: the angle θ1 between the inclined surfaces of left/right inclined surface formation portions 107/108 and left/right ends 105/106 is 110-135˚, so the surfaces of 107/108 are inclined at an angle of 45-70˚), which overlaps the claimed ranges of 30-60˚ and 43-47˚. Lee further discloses that the angle of the inclined side edges, which forms the chamfered side sections of the metal strip, correlates to a second angle θ2 of a V-shaped groove 109a at a weld seam portion 109 ([0072] lns 4-10; see Figure 15), at which point a weld is formed to manufacture the roll formed and welded tube ([0073] lns 6-11, see Figure 16). One skilled in the art would understand that the desired dimensions of the weld portion will dictate the required angle range of the inclined side edges, and could therefore easily optimize the inclination angle of the side edges such that it falls within the claimed ranges. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to design the apparatus for pre-forming a metal strip disclosed by Lee such that the inclined side edges of the edge chamfering roll are inclined at an angle of 30-60˚ and/or 43-47˚, for manufacturing roll formed and welded tubes having a weld seam with dimensions that would necessitate such inclination angles.
Regarding Claim 10, Lee is silent to the width of side sections of the clearance (sections of clearance corresponding to left/right inclined surface formation portions 107/108, see Figure 10) between the edge chamfering roll (upper roller 10) and the anvil roll (lower roller 20) relative to the total width of the embossing tool (roller body 101) and the width of the central embossing portion (relief embossing pattern unit 103) of the embossing tool. However, as discussed above, the dimensions of the side sections (left/right inclined surface formation portions 107/108) of the edge chamfering roll (upper roller 10) directly correlate to the dimensions of the weld seam portion of the manufactured roll tubes (see Figures 15-16), so the width of the side sections of the clearance could easily be optimized to achieve a desired shape and/or dimension of the weld seam portion. As the Applicant has not set forth any criticality to the selection of the claimed width of the side sections of the clearance that results in an unexpected benefit, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the apparatus for pre-forming a metal strip disclosed by Lee such that side sections of the clearance between the edge chamfering roll and the anvil roll each have a width which is equal to or greater than half of a difference between the total width of the embossing tool and the width of the central embossing portion of the embossing tool, because such selection or determination would be the result of routine optimization and does not in itself warrant patentability, as one would arrive at such optimization through routine engineering and design practices.
Allowable Subject Matter
Claims 2 and 13 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. The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 2, prior art fails to teach, alone or in combination, an apparatus for pre-forming a metal strip for the manufacture of roll formed and high frequency welded tubes with inner grooves, comprising an embossing tool comprising an embossing roll and a strip edge chamfering tool comprising an edge chamfering roll and an anvil roll, wherein the embossing tool and the strip edge chamfering tool have parallel axes of rotation, and wherein the strip edge chamfering tool is arranged downstream of the embossing tool in a travel direction of the metal strip to be pre-formed, together with the other limitations of the claim. In JP 2001-259733 to Takiura et al., which is considered to be the most relevant prior art to Claim 2, the rotation axes of the embossing tool and the strip edge chamfering tool are perpendicular to each other, not parallel, and one skilled in the art would not be motivated to modify the disclosed configuration to arrive at the claimed invention due to the structure of the edge chamfering roll. Accordingly, Claim 2 is allowable.
Regarding Claim 13, prior art fails to teach, alone or in combination, a method of pre-forming a metal strip for the manufacture of roll formed and high frequency welded tubes with inner grooves using the apparatus of Claim 1, comprising embossing a pattern on a central portion of the metal strip, and chamfering longitudinal side edges of the metal strip, wherein the chamfering of the longitudinal side edges follows the embossing in a subsequent step, together with the other limitations of the claim. The apparatus of Claim 1, which is used for this method, requires the embossing tool and the strip edge chamfering tool have parallel axes of rotation. In JP 2001-259733 to Takiura et al., which is considered to be the most relevant prior art to Claim 13, the rotation axes of the embossing tool and the strip edge chamfering tool are perpendicular to each other, not parallel, and one skilled in the art would not be motivated to modify the disclosed configuration to arrive at the claimed invention due to the structure of the edge chamfering roll. Accordingly, Claim 13 is allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hinako et al. (JP 2002-292411) discloses an apparatus and method for pre-forming a metal strip for the manufacture of roll formed and high frequency welded tubes with inner grooves, comprising an integrated embossing and edge chamfering roll having a cylindrical surface with a central embossing portion and inclined side sections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA A GUTHRIE whose telephone number is (571)270-5042. The examiner can normally be reached M/Tu/Th, 10-6 ET.
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/TERESA A GUTHRIE/Examiner, Art Unit 3725
/Christopher L Templeton/Supervisory Patent Examiner, Art Unit 3725