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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 6, 2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 currently recites:
“wherein in the processing apparatus, in each step of…a pressing slide is lowered…” should read
“wherein, in each step of…a pressing slide of the processing apparatus is lowered…” Appropriate correction is required.
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 1-10 and 12-15 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.
Claims 1, 5, 6, 9 and 13-15 all newly recite the phrase “consisting of.” There is no support in the specification as originally filed for this particular transitional phrase. In fact the drawings show an additional mold a piercing or flanging mold in at least Figure 11.
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.
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.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Martin Gonzalez et al. (hereafter “Martin”)(US 2016/0263640), newly presented.
With regards to claim 13, Martin discloses an apparatus for manufacturing a hot press formed member for a multistage process, the apparatus comprising:
a heating unit for heating the strip material [furnace system, paragraph 0009];
a processing unit (system 1) including a processing apparatus in which a plurality of molds including a forming mold (press tool 20, paragraph 0039) and a trimming mold (trimming tool 30, paragraph 0043) are mounted on one press, as seen in at least Figure 1; and
a transfer unit for transferring the strip material heated in the heating unit to the processing unit [transferring device, paragraph 0009];
wherein the one press includes a pressing slide (mobile upper body 3) and a press bolster (fixed lower body 2), and a material position control unit is provided on a surface on which the plurality of molds on the press bolster are disposed [ paragraph 0025].
Martin discloses the invention substantially as claimed except for a supply unit for continuously supplying a strip material. Martin discloses that a plurality of blanks undergo manufacturing steps simultaneously [paragraph 0008]. It is considered to be well-known to provide a supply unit or manually feed material. 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 supply unit since it would have been obvious to try this technique when choosing from a finite number of identified, predictable solutions for forming, with a reasonable expectation of success. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
Martin discloses the invention substantially as claimed except for wherein the plurality of molds including (a) one or more molds selected from the group consisting of a notching mold and a blanking mold. Martin discloses another mold that can perform further trimming and/or piercing operations [tool 40, paragraph 0049]. It is considered to be well-known that forming stations can perform stamping, bending, blanking, flanging, stretching, hemming, piercing, trimming, pressing, drawing, roll forming, hydroforming, or any other metal forming operations 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 blanking or notching instead of trimming or piercing since it would have been obvious to try this technique when choosing from a finite number of identified, predictable solutions for forming, with a reasonable expectation of success. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
Martin discloses the invention substantially as claimed except for wherein a material position control unit in the form of a cylinder. It is considered to be well-known that a material position control unit includes cylinders, clutches or brakes. 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 cylinder since it would have been obvious to try this technique when choosing from a finite number of identified, predictable solutions for control, with a reasonable expectation of success. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
With regards to claim 14, Martin discloses wherein the processing apparatus further includes a temperature control unit for of any of the molds/tools [paragraph 0062]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the temperature control unit between the press and the one or more molds since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Karlson, 136 USPQ 184.
Allowable Subject Matter
Claims 1-10 and 12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA M EKIERT whose telephone number is (571)272-1901. The examiner can normally be reached Monday-Friday 8AM-4:30PM EST.
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/TERESA M EKIERT/Primary Examiner, Art Unit 3725