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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/6/2026 has been entered.
Response to Arguments
Applicant's arguments filed 7/6/2026 have been fully considered but they are not persuasive.
With regard to the arguments on pages 6-8 directed towards the previous 112(a) rejections,
Issue (1),
As to Claim 1,
Feature i)
The Examiner acknowledges applicant’s arguments, but respectfully notes that these arguments do not reasonably completely overcome the previous rejection of this claim. The Examiner acknowledges that the written description requirement does not require large levels of details or details of any particular equation. However, the written description does require that applicant provide a sufficient level of explanation such that a person of ordinary skill in the art would understand what applicant is doing and recognize the manner in which any particular claim feature is implemented.
MPEP 2163.03(V) explains that “While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved.
Here, the issue is that applicant’s original disclosure is completely silent as to what applicant does to perform any calibration, and is completely silent as to what applicant does to make the values from the different sensors to be equal, which as best understood is a critical aspect of the invention.
Whether a person of ordinary skill in the art could use ordinary calibration techniques as argued is an issue of enablement and not written description per se. In order to rely upon that which is well-known, such as ordinary calibration techniques, applicant must reasonably make it clear that applicant intends to rely upon such techniques by, for example, referencing any one of these techniques. However, when the original disclosure is completely silent on such a feature, and instead merely states that a relationship or formula can be used with no further explanation, applicant does not reasonably demonstrate any intent to rely upon any well-known technique, nor reasonably identify any such technique to make clear what applicant is doing to implement a claim feature.
To that point, the Examiner respectfully notes that all of the argued calibration techniques would be new matter to the instant application if added, as none are originally disclosed. The Examiner further respectfully notes that none of the argued ordinary calibration techniques have been establishes as such, because such argument is attorney argument that is, respectfully, not supported by evidence as is required (see MPEP 2145(I)).
Proper written description is presumed, but can be rebutted when it can be shown that a person of ordinary skill in the art would not reasonable recognize the manner in which applicant is implementing a claim feature. Here, such a person would not reasonably know what applicant is doing to cause sensor values to be the same as applicant merely states that a relationship or formula can be used, with no further explanation. Generically stating that some formula or some relationship can be used without any further details would not reasonably let a person of ordinary skill in the art know what applicant is doing to implement such a feature, which is necessary for any calibration as best understood.
Furthermore, without sufficient guidance for some type of calibration, a person of ordinary skill in the art would not reasonably recognize the manner in which applicant is implementing such a calibration. In the instant case, such a person would not recognize what applicant is doing to implement a calibration, and the Examiner respectfully disagrees.
Feature ii)
The Examiner acknowledges applicant’s amendment, and the related 112(a) rejection previous presented is withdraw. However, the currently recited feature raises new issues as presented below.
Feature iii)
The Examiner acknowledges the removal of the processor, and any specific rejection related to this issue is withdrawn.
As to the arguments for Claim 6, he Examiner notes, similar to what was noted above, that applicant does not reasonably disclose a complete example as to the manner in which applicant performs a calibration. None of the cited paragraphs reasonably describe the actual calibration processor or reasonably apprise a person of ordinary skill in the art as to what applicant is doing when performing a calibration. Paragraph [0075] states that a conversion formula or correspondence relationship is used, but applicant does not provide any explanation as to what the relationship or formula are to reasonably demonstrate possession. The Examiner respectfully notes that merely stating that a “formula” is used, for example, would not reasonably cause a person of ordinary skill in the art to understand what formula or type of formula is used, or even if applicant intended to rely upon some well-known formula or one that applicant had created.
While a detailed explanation is not necessary when applicant is relying upon a well-known process, applicant must still reasonably either explain the process or identify one that what well-known for the claimed purpose. The original disclosure does not reasonably provide such an explanation.
Issue (2),
Features (i) and (ii),
The Examiner acknowledges applicant’s amendments, and those amendments that overcome the previously raised issues are withdrawn, and those that have not or raise new issues are rejected below.
Response to Advisory Action,
First, the Examiner respectfully notes that the instant amendments presented are not the same as those the advisory action responded to, and thus the arguments pertaining that the other amendment are respectfully moot.
Second, that stated, with regard to the issue pertaining to the conversion formula or correspondence relationship, the Examiner respectfully disagrees. Applicant is not required to claim the specific manner that applicant implements a claim feature from the disclosure, and thus if applicant discloses a specific formula in the disclosure, then it would be proper to more broadly recite such a formula in the claims, such as even merely claiming that some processing unit is configure to use a formula to determine a feature. However, from a 112(a) perspective, claim limitations are still read in light of the disclosure for an understanding of the invention.
As explained above, MPEP 2163.03(V) explains that “While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved.
Here, when applicant claims that a function of a calibration is performed, a person of ordinary skill would look to the disclosure for an understanding of what applicant is doing to implement such a calibration. When the disclosure does not provide any reasonable guidance to demonstrate the manner in which calibration is made, the disclosure fails to provide proper written description, because a person of ordinary skill in the art would not understand what applicant is doing to achieve a calibration. Merely stating that some formula can be used, without provide any guidance as to what that formula is or even if that formula was intended to be a well-known formula, would not reasonably allow a person of ordinary skill to recognize what applicant is doing to achieve the claim feature. Stating that “a formula” is used is the same as stating that “math” is used, and such an explanation does not reasonably demonstrate possession. Had applicant provided some guidance, such as mentioning any well-known equation or concept that was well-known to be used, then such an explanation would likely be sufficient. However, without such guidance, a person of ordinary skill would not know what applicant is doing, including the manner that applicant even wanted to perform a calibration and to what level that calibration needed to achieve a calibrated value sufficient for use in the invention, and such a person would not reasonably even recognize whether applicant even intended to rely upon anything well-known.
The original disclosure must provide sufficient guidance to demonstrate the manner in which such a feature is implemented, and the argued calibration feature is, respectfully, not reasonably explained such that a person of ordinary skill would recognize that applicant had possession of the claim feature.
With regard to the arguments on pages 8-13 directed towards the previous 102(a) rejections,
With regard to Matsui et al. (Matsui) (JP2019042807A),
Applicant argues that the prior art does not disclose the argued features, but the Examiner respectfully disagrees. What Matsui discloses is the use of arc strikes to create different areas of hardness on a calibration steel plate, and where such strikes would cause the phase differences argued by applicant. This is because the arc strikes are of a temperature that would cause a gamma phase (austenite) to occur, and thus the first and second portions must have a phase transformed from the austenite grains as claimed. It is a property of the system that when subjecting steel to the temperature of an arc strike, that the harder and less hard portions expressly disclosed in Matsui must have respective higher ferrite and bainite fractions, because such a feature is property of heating the steel in light of applicant’s disclosure.
Applicant argues that the hard spots in Matsui are localized discrete spot-like regions and not continuous band-shaped first and second portions extending in the longitudinal direction of the calibration steel sheet. However, the Examiner respectfully notes that such features are not claimed. Applicant does claim that the first and second portions are disposed in different positions in a width direction of the calibration sheet and extend in a longitudinal direction of the sheet. However, any extension in the longitudinal direction would meet such a feature when also spaced in the width direction. No bands of any kind are recited in the claim, and the figure show from applicant’s disclosure is, respectfully, not claimed. 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 Examiner further notes that while a hard spot 91 and calibration area 90 is shown, the Examiner respectfully note that any area that does not have a hard spot 91 will have a different hardness than 91 because no arc strike was made at that location. As such, the areas above and below 91 in the width direction. These locations, and the hard spot 91, are separated in the width direction, and extend in the longitudinal direction. There is no requirement that they extend end to end of the steel plate as shown and argued.
Applicant the agues that the present calibration steel plate is designed to simulate the continuous temperature gradient and indistinct structure boundary caused by local supercooling as described in paragraph [0044], but the Examiner respectfully notes that these features are not claimed, and as noted above, limitations from the disclosure are not read into the claims.
With regard to the arguments on pages 12-14 directed towards the previous 103 rejections,
Applicant argues that Matsui fails to disclose argued claim features, but the Examiner respectfully disagrees as such an explanation has been presented. While arc strikes are different than the actual manner used to obtain different hardnesses from applicant’s disclosure, such specific features of how the different hardnesses are obtained from the disclosure are not claimed. Even further, Claim 1 is an apparatus claim, and thus product-by-process features, which are claim features that claim a process of forming a feature in an apparatus claim, are only given patentable weight when such processes can be demonstrated to cause “non-obvious” differences in the final product (see MPEP 2113). Here, applicant, respectfully, neither claims any product-by-process feature nor explains why any difference would exist in the final product with an explanation demonstrating non-obviousness.
Applicant argues that Matsui is directed towards a different technical problem, but the Examiner respectfully notes there is no requirement that Matsui solve the same problem as applicant. Furthermore, the argued calibration bands are, respectfully, not claimed.
As to Schwinghammer et al. (Schwinghammer) (US 2014/0020795), the Examiner respectfully notes that this reference is merely relied upon for the idea that three hardness regions can be used. Nothing in the combination relies upon hindsight, and applicant, respectfully, does not explain why hindsight was relied upon, such as where any motivation relied upon is found in the instant application. Furthermore, whether Schwinghammer is directed to different fields, problems, or structures as argued does not preclude the combination. A person of ordinary skill in the art would look to any reasonably relevant prior art, including Schwinghammer, when looking to perform calibration, and applicant has not demonstrated why such a person would not look to Schwinghammer for the argued feature.
Applicant then argues that Matsui or Mastui in view of Schwinghammer fail to disclose the features from Claims 4, 5, 6, 8, and 9, but no specific arguments are presented except to argued that these features provide accurate calibration. However, no accurate calibration feature is recited in the claims, and it is further reasonable to conclude that when the prior art discloses those features actually claimed, then it would also provide accurate calibration. Accurate calibration is also, respectfully, a subjective concept as the level of accuracy depends on the need of the user. The prior art discloses the actual claim features for the reasons explained below, and the Examiner respectfully disagrees.
Applicant then argues that the Office Action’s suggestion that additional hardness points would be an obvious finite option does not address the claimed invention, but the Examiner respectfully disagrees. The prior art discloses much of the argued features for the reasons stated above. Applicant further argues a calibration unit for “per-sensor eddy-current-to-hardness” correspondence, but no such feature is claimed in Claim 1. That stated, Matsui expressly uses eddy current sensors, and each sensor will have its own respective output which must correspond to what was detected, including any hardness detected (see paragraphs [0003],[0007]). Furthermore, the prior art would reasonably disclose such a feature, as the sensors used must provide such a feature when one sensor is scanning over an area of one hardness while another sensor scans over an area of different hardness. While applicant makes this argument, applicant, respectfully, does not explain why the prior art fails to disclose such a feature.
As such, the Examiner respectfully disagrees.
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.
Claim 6 is 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.
As to Claim 6,
The phrase “wherein each of the plurality of electromagnetic sensors are configured to measure an eddy current signal value for the first portion and the second portion while the sensor body moves on the calibration steel sheet” on lines 6-8 introduces new matter.
Applicant is now claiming that the sensor body moves “on the calibration steel sheet,” but the original disclosure does not disclose such a feature. Nowhere in the original disclosure does it state that the sensor body moves “on” the calibration steel sheet. Paragraph [0068] explains “The moving unit is configured to move the sensor body 100 in the X direction or in the X and Y directions while maintaining the same distance with respect to the surface of the steel plate.” Maintaining a same distance reasonably means that some non-zero distance exists between the surface of any steel plate and the sensor body, and this is the only disclosure that reasonably relates to what is now being claimed. Any non-zero distance between the sensor body and any steel sheet would prevent the sensor body from being “on” the steel sheet, thus raising an issue of new matter.
The phrase “the calibration unit is configured to calibrate the plurality of electromagnetic sensors, by converting the eddy current signal value into hardness value to coincide the hardness value of the actual hardness value of the calibration steel sheet, and establishing the correspondence relationship between the measured eddy current signal value and the actual hardness value of the calibration steel sheet for each of the plurality of electromagnetic sensor” on in the last paragraph introduces new matter and lacks proper written description.
1) As to new matter, applicant is distinctly claiming the coinciding of the converted hardness value from the establishing of a relationship between the measured eddy current signal value and the actual hardness, but where, as best understood, these feature recite the same feature in two different ways, but where both are distinct features reciting two distinct functions. Applicant does not both convert a value to hardness to have it coincide with a calibration hardness separately from any established relationship between the two hardness values as claimed. This phrase therefore introduces new matter.
2) As to lacking proper written description, the original disclosure is completely silent as to what applicant does to coincide the actual and calibration hardness values, and is completely silent as to any established correspondence relationship as claimed. Applicant explains in paragraph [0075] “In the present disclosure, the signal value is converted to match the actual hardness value through a calibration unit connected to the sensor, and the conversion formula or correspondence relationship for each sensor is set so that the actual hardness and the converted hardness value always coincide. In this manner, by setting the conversion formula or correspondence relationship for each sensor, calibration of each sensor is completed, and the sensor body 100 including the sensor of which calibration has been completed is sent to the measurement area Z1 to measure the steel sheet P to be measured.” Here, applicant is disclosing that a conversion formula or correspondence relationship is used to convert the signal value to match the actual hardness value in the calibration process. However, the original disclosure is completely silent as to what this formula or relationship. Applicant does not reasonably disclose the manner in which the signal values are converted in order to correct any sensor measurement. The Examiner respectfully notes that by stating that a formula or specific relationship is being used, applicant is not merely setting the signal value to an actual hardness value, as such a process would not need any specific relationship or formula. Meaning, if the sensor value was 5V and the hardness value equivalent was 10V, then no relationship or formula is needed to change 5V to 10V. Instead, applicant is using, as best understood, a specific formula or relationship to change the signal value, but where such a formula or relationship is not reasonably disclosed. As such, this phrase lacks proper written description.
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.
Claims 1-6, 8, and 9 are 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.
As to Claim 1,
The phrase “the same width” on lines 8-9 is indefinite. No width for either the steel sheet or calibration steel sheet were previously recited, and it is unclear what width or same width this phrase is referencing. Furthermore, applicant does previously recited “a width direction” of the steel sheet on lines 2-3, thereby implying a width is present but without positively reciting one.
The phrase “wherein the first portion and the second portion are disposed in different positions in a width direction of the calibration sheet, and are formed extending in a longitudinal direction of the calibration sheet, and wherein the first portion and the second portion are formed of the same composition, and the fractions of the phases transformed in the austenite grains of the first portion and the second portion are different, wherein the first portion having a higher ferrite fraction, and the second portion having a higher bainite fraction” in the second to last paragraph is indefinite.
1) The phrase “a width direction” is indefinite, because it is distinctly recited from the width of the calibration sheet already recited, but where, as best understood, it is not distinct. The relationship between this width direction and the width previously recited is therefore unclear.
2) The phrase “the same composition” is indefinite. No composition was previously recited, and it is therefore unclear what composition this phrase is referencing. Each sheet was recited to be made of steel, thus reciting a composition, but it is unclear how this relates to the above phrase in that it is unclear if merely being made of steel meets this claim requirement.
3) The phrase “the fractions of the phases transformed in the austenite grains of the first portion and the second portion are different” is indefinite. No fractions, no phases transformed, and no austenite grains were previously recited. It is unclear what fractions, phases, and austenite grains are being referenced. Furthermore, it is unclear whether any transformation process is being recited or relied upon, as the claim is directed towards the final product and not any use thereof. Meaning, phases either exist or do not exist in the final product, regardless of how they were formed. As such, it is unclear what weight should be given to the term “transformed,” as it is unclear whether such a feature is intended as a product-by-process feature or is merely intended to differentiate phases from those of the original steel sheet. Lastly, no austenite grains was previously recited, and it is unclear what grains from these portions are being referenced. For the purpose of compact prosecution, the above phrase is being interpreted to mean that the final product calibration steel must have portions of any size, located and extending in the claimed manner, that are both formed from steel (same composition), and have different phases in these portions, with respective higher ferrite or bainite.
As to Claim 5,
The phrase “on the calibration steel sheet, a moving unit is configured to have a movement distance equal to or greater than a sum of a maximum distance between the plurality of electromagnetic sensors and a width of the calibration steel sheet” on lines 2-6 is indefinite.
2) The moving unit was not previously claimed to be “on the calibration steel sheet.” Instead, the moving unit is connected to the sensor body to move the sensor body. This phrase is therefore unclear because it is unclear if applicant is referring to the moving body of Claim 1. It is further unclear what applicant means by this phrase, as the moving unit is not on the calibration sheet, and it is therefore unclear what is “on the calibration sheet” and how such a feature should be interpreted.
As to Claim 6,
The phrase “the calibration unit is configured to calibrate the plurality of electromagnetic sensors, by converting the eddy current signal value into hardness value to coincide the hardness value of the actual hardness value of the calibration steel sheet, and establishing the correspondence relationship between the measured eddy current signal value and the actual hardness value of the calibration steel sheet for each of the plurality of electromagnetic sensor” on in the last paragraph is indefinite.
1) Applicant is distinctly claiming the coinciding of the converted hardness value from the establishing of a relationship between the measured eddy current signal value and the actual hardness, but where, as best understood, these feature recite the same feature in two different ways, but where both are distinct features reciting two distinct functions. Applicant does not both convert a value to hardness to have it coincide with a calibration hardness separately from any established relationship between the two hardness values as claimed. As such, the relationship between the established relationship and the hardness values that coincide with each other is unclear.
2) The phrase “to coincide the hardness value” is indefinite, because it is unclear how to interpret such a phrase. It is unclear, for example, if applicant means to recite “to coincide with the hardness value,” or intends some other relationship.
As to Claims 2-6, 8, and 9,
These claims stand rejected for incorporating and reciting the above rejected subject matter of their respective parent claim(s), and therefore stand rejected for the same reasons.
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 1-3, 5, 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al. (Matsui) (JP2019042807A).
Note that the cited paragraphs for Matsui come from the provide English machine translation.
As to Claim 1,
Matsui discloses An electromagnetic inspection device capable of calibration comprising:
a sensor body (70) including a plurality of electromagnetic sensors (note hardness sensors 78 within sensor heads 71,72) disposed in a width direction of a steel sheet to be measured (Figures 3,4), (Paragraphs [0036]-[0039]);
a moving unit (74,75) connected to the sensor body and is configured to move the sensor body (Paragraph [0042]), (Figure 3);
a calibration steel sheet (77) disposed in a different position to that of the steel sheet (S2) to be measured (Figure 3), (Paragraph [0051]),
a calibration unit (the device used to calibrate the sensors based on their measurements) connected to the plurality of electromagnetic sensors (Paragraph [0051]), wherein the calibration steel sheet having a long side and a short side (Figure 3), (Paragraph [0051]), comprising:
a first portion (each 91) having a first hardness and a second portion (areas other than 91 such as 90) having a second hardness higher than the first hardness (Paragraph [0051]),
wherein the first portion and the second portion are disposed in different positions in a width direction of the calibration sheet (Figure 5),(Paragraph [0051] / note that portions/regions other than 91 have a different hardness, and those areas above or below 91 in the width direction can be selected to meet one of the portions with lower hardness), wherein the first portion and the second portion are disposed in different positions in a width direction of the calibration sheet, and are formed extending in a longitudinal direction of the calibration sheet, and wherein the first portion and the second portion are formed of the same composition, and the fractions of the phases transformed in the austenite grains of the first portion and the second portion are different, wherein the first portion having a higher ferrite fraction, and the second portion having a higher bainite fraction (Paragraph [0051] / note arc strikes are of a temperature that would cause a gamma phase (austenite) to occur, and thus the first and second portions must have a phase transformed from the austenite grains and include the respective higher ferrite or bainite fractions as claimed, as best understood.).
Matsui does not disclose the calibration steel sheet has the same width as the steel sheet to be measured.
However, Matsui discloses that it is known to use different measurement widths for the sensor heads (Paragraphs [0045]-[0046], thereby demonstrating that width selection for the elements in the sensing process, which reasonably includes any device used to calibrate the sensors, is a result effective variable.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Matsui to optimize the dimension of the calibration steel sheet to therefore include the calibration steel sheet has the same width as the steel sheet to be measured given the above disclosure and teaching of Matsui in order to advantageously have the calibration steel sheet matching the steel sheet under test in dimension, thereby helping to ensure that the sensors are properly calibrated across the same distance they must travel to properly inspect the steel sheet under test.
Also, it would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Matsui to change the relative size of the sheets to match each other to therefore include the calibration steel sheet has the same width as the steel sheet to be measured given the above disclosure and teaching of Matsui in order to advantageously allow the sensors heads to perfect correlate positions on a steel sheet under test with that of a calibration sheet without any wasted material, and because it has been 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” (Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)), (MPEP 2144.05(IV)(A).
As to Claim 2,
Matsui discloses the second portion has a hardness higher than the first portion by 50 Hv or more (Paragraphs [0030],[0051] / note steel plate S3 is S2, S2 has a hardness of 230Hv or more, and the arc strike artificial hard spots in calibration plate 77 are set to be the same as the surface layer of steel plate S2).
As to Claim 3,
Matsui discloses the second portion has a hardness of 250Hv or more (Paragraphs [0030],[0051] / note steel plate S3 is S2, S2 has a hardness of 230Hv or more, and the arc strike artificial hard spots in calibration plate 77 are set to be the same as the surface layer of steel plate S2 / also note 230Hv is so close to 250Hv, anything “more” than 230Hv would reasonably include 250Hv).
As to Claim 5,
Matsui discloses on the calibration steel sheet, the moving unit is configured to have a movement distance equal to or greater than a sum of a maximum distance between the plurality of electromagnetic sensors and a width of the calibration steel sheet (Figures 3,4 / note the movement distance of either sensor head is greater than a sum of the distance between the sensors within each head and a width of the calibration steel sheet, because the movement distance also must include the movement across the ensure steel sheet to be measured).
As to Claim 6,
Matsui discloses wherein each of the plurality of electromagnetic sensors are configured to measure an eddy current signal value for the first portion and the second portion while the sensor body moves on the calibration steel sheet (Paragraphs [0003],[0007]), (Figure 3 / note that what is shown is substantially the same as applicant, and thus if applicant’s sensor body can be considered to be on the steel sheet, the prior art can likewise be interpreted in the same manner), and the calibration unit is configured to calibrate the plurality of electromagnetic sensors, by converting the eddy current signal value into hardness value to coincide the hardness value of the actual hardness value of the calibration steel sheet, and establishing the correspondence relationship between the measured eddy current signal value and the actual hardness value of the calibration steel sheet for each of the plurality of electromagnetic sensor (Paragraph [0051] note/ any eddy current signal must be converted into a hardness value that corresponds and has a relationship with a calibration value as the application discloses hardness measurements correlated to a calibration hardness measurement).
As to Claim 8,
Matsui reasonably discloses the steel sheet to be measured and the calibration steel sheet have approximately the same length and thickness (Figure 3), (Paragraph [0051]).
Matsui does not disclose the steel sheet to be measured and the calibration steel sheet have the same length and thickness.
However, Matsui discloses that it is known to use different measurement widths for the sensor heads (Paragraphs [0045]-[0046], thereby demonstrating that width selection for the elements in the sensing process, which reasonably includes any device used to calibrate the sensors, is a result effective variable.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Matsui to optimize the dimension of the calibration steel sheet to therefore include the steel sheet to be measured and the calibration steel sheet have the same length and thickness given the above disclosure and teaching of Matsui in order to advantageously have the calibration steel sheet matching the steel sheet under test in dimension, thereby helping to ensure that the sensors are properly calibrated across the same distance they must travel to properly inspect the steel sheet under test.
As to Claim 9,
Matsui discloses a measurement area in which the steel sheet to be measured is disposed and a calibration area in which the calibration steel sheet is disposed are disposed side by side (Figure 3).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al. (Matsui) (JP2019042807A) in view of Schwinghammer et al. (Schwinghammer) (US 2014/0020795).
As to Claim 4,
Matsui discloses a plurality of portions have different harnesses (Paragraph [0051] / note austenite will have a different hardness than other portions of steel), the plurality of portions are disposed in different positions to those of the first and second portions in the short side direction (Figure 3), and the plurality of portions portion have a phase transformed from austenite grains (Paragraph [0051] / note the arc strike).
Matsui does not disclose more than two portions having different harnesses, and thus does not disclose a third portion having a third hardness, wherein the third hardness is greater than the first hardness and less than the second hardness, the third portion is disposed in a different position to those of the first and second portions in the short side direction, and the third portion has a phase transformed from austenite grains.
However, there was a recognized need in the art to use a calibration steel sheet to provide proper measurements of a steel sheet under test for hardness measurements (see for example paragraphs [0006]-[0008] of Matsui. There are only a finite number of identified, predicable solutions to the recognized need, where a number of spots of different hardness are artificially formed in a calibration steel sheet (Paragraph [0051] of Matsui). The finite number of solutions is reasonably therefore the small number of spots of different hardness in the calibration steel sheet that is used to ensure proper hardness measurements of the steel sheet under test. A person of ordinary skill in the art, knowing that spots of different hardness can be used for calibration purposes of a steel sheet, would reasonably have recognized that one more spot of different hardness could be used, thus including three spots of different hardness in the calibration steel sheet for the purpose of ensuring proper measurements of the steel sheet under test.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date to modify Matsui to include one additional spot of different hardness in the calibration steel sheet, to therefore include a third portion having a third hardness, wherein the third hardness is greater than the first hardness and less than the second hardness, the third portion is disposed in a different position to those of the first and second portions in the short side direction, and the third portion has a phase transformed from austenite grains given the above explanation and disclosure of Matsui in order to advantageously further help ensure proper measurement of the hardness of the steel sheet under test by providing additional test points on the calibration steel sheet to further ensure that hardness sensors are properly calibrated.
Furthermore, Schwinghammer discloses a third portion having a third hardness, wherein the third hardness is greater than the first hardness and less than the second hardness, the third portion is disposed in a different position to those of the first and second portions in the short side direction, and the third portion has a phase transformed from austenite grains (Figure 1), (Paragraph [0042] / note the various points of hardening, any three of which can be the first, second, and third portions).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Matsui to disclose a third portion having a third hardness, wherein the third hardness is greater than the first hardness and less than the second hardness, the third portion is disposed in a different position to those of the first and second portions in the short side direction, and the third portion has a phase transformed from austenite grains as taught by Schwinghammer in order to advantageously further help ensure proper measurement of the hardness of the steel sheet under test by providing additional test points on the calibration steel sheet to further ensure that hardness sensors are properly calibrated.
Conclusion
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DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858
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