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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/16/2026 has been entered.
Note: Applicant has not made any substantive amendments to the application, and instead, with the exception of one amendment to fix an antecedent issue, applicant has solely presented arguments to the previous Office Action. Because the currently presented claims are substantially the exact same as those previously examined, a final rejection on first action is proper.
Response to Arguments
Applicant's arguments filed 1/16/2026 have been fully considered but they are not persuasive.
With regard to the arguments on pages 4-7 directed towards the previous 112(a) rejections,
As to Claim 1,
On page 4,
Applicant first argues that for the phrase the prior Office Action stated on page 8 to lack proper written description, that the specification explains in paragraphs [0013]-[0014] how the device includes a calibration unit connected to the electromagnetic sensors that calibrates based on measured values and converts the measured values into hardness, along with figures shown the post-calibration conversion.
The Examiner respectfully notes that what applicant is citing is disclosure that explains the desired end result, but without any reasonable explanation as to the manner in which applicant achieves such a result. As explained in MPEP 2163.03(V), “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 or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed” (emphasis added).
What the above sections are explaining is that it is not sufficient to claim and end result or a function of achieving such a result without providing a reasonable explanation as to the manner in which applicant implements or otherwise achieves this end result. Meaning, it is not sufficient to state that a device performs a calibration but not provide any reasonable explanation as to the manner in which that calibration is implemented when such feature is necessary for an understanding of what applicant is doing to implement the feature. None of the cited sections reasonably provide such an explanation, and thus, respectfully, do not reasonably overcome this issue.
On pages 4-5,
Applicant then argues that the specification describes the manner in which the calibration steel is used to correct a hardness measurement sensor, but the Examiner respectfully notes that none of the cited sections provide such an explanation. An explanation as to the manner in which a calibration steel is used to correct a sensor must reasonably include 1) a recognition of what needs to be corrected within the sensor, and 2) a reasonably complete explanation as to the process by which applicant achieves this correction. Merely discloses components that are part of such a process, such as the sensor body and moving unit, do not reasonable describe what specific part of the sensor needs correcting and the manner in which applicant makes such a correction.
On page 5,
Applicant notes that the specification describes how the calibration steel provides a reference hardness, but the Examiner respectfully notes that this does not reasonably explain what applicant does with the reference hardness to correct the hardness measurement sensor.
On pages 5-6
Applicant argues that the cited sections describe the actual correction of the sensor and how signals are converted into hardness. The Examiner respectfully disagrees. Respectfully, none of the cited sections reasonably explain the manner that applicant implements the claim feature. What applicant cites, at most, provides an explanation as to the manner in which it is identified that the sensor contains an issue that must be calibrated. For example, using a matching an output of a sensor to an expected output may provide an indication of whether an issue does or does not exist. However, when an issue is identified such that the sensor needs correction, the cited sections do not reasonably explain the manner in which applicant achieves such a feature. No cited section of the disclosure reasonably explains what applicant does to the sensor one an issue is identified in order to correct the sensor as explained. As such, the Examiner respectfully disagrees.
As to Claim 6,
On page 6, applicant argues that the claimed processor is supported in paragraphs [0009]-[0019] with how the calibration unit is connected to the sensors. The Examiner respectfully disagrees, and respectfully notes that the issue here is with the specific use of the term “processor.” A calibration unit is not necessarily a processor, and such a term has a well-known meaning. A processor is defined to mean “2. Computers a. A computer. b. A central processing unit. c. A program that translates another program or a data file into a form acceptable by the computer being used” per https://www.ahdictionary.com/word/search.html?q=processor, and thus claiming a processor is reasonably including claim scope directed towards this definition. However, applicant does not originally disclose a processor, such as a computer, and thus adding such a device after the application has been filed introduces new matter.
Furthermore, the 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. 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.
As to Claim 7,
On pages 6-7,
The arguments for this claim are similar to those for above claim 6, and the Examiner therefore respectfully directs applicant’s attention to the above response.
With regard to the arguments on pages 7-8 directed towards the previous 112(b) rejections,
As to Claim 1,
Applicant first argues that the phrase “the calibration steel sheet having a long side and a short side are used for correcting a hardness measurement sensor” is described in paragraphs [0009][0019]. However, the Examiner respectfully disagrees that this overcomes the previously raised issues. The first issue is that applicant already claimed an electromagnetic sensor earlier in the claim, and as best understood, the above hardness sensor is the same as that previously claimed. However, these two sensors are being distinctly recited but where they are not distinct, in light of the disclosure. As previously explained, paragraph [0067] explains that the electromagnetic sensor measured hardness, and applicant does not reasonably disclose the simultaneous use of different types of electromagnetic sensors. As such, the hardness measurement sensor will be of the same type as any other electromagnetic sensor used, making the claim indefinite because applicant is claiming the same type of sensor using two different designations, rendering the metes and bounds for the hardness sensor and electromagnetic sensor unclear. It is unclear if all electromagnetic sensors, including the electromagnetic sensor of the claim, are hardness sensors, or if they can be more broadly considered including electromagnetic sensors that do not measure hardness. As such, the difference and relationship between these two distinctly recited sensors are unclear.
The second issue was that one reasonable interpretation of the use of the calibration steel was one used in a method step, given the current claim language. It is indefinite to recite a method of using a claim feature in an apparatus claim.
The third issue is that applicant is claiming a hardness sensor “connecting to” the electromagnetic sensor, but as best understood, the hardness sensor is the electromagnetic sensor (see paragraph [0067]). As such, it is unclear how such a phrase should be interpreted. For the purpose of compact prosecution, the Examiner is interpreting that having a hardness sensor and electromagnetic sensor used together reasonably discloses the claim feature.
Applicant, respectfully, does not reasonably explain why the cited sections reasonably address the above noted issues.
For each remaining claim feature issue, applicant cites the same sections of the disclosure and merely states that the specification describes the claim feature without any further explanation. For similar reasons noted above, applicant does not reasonably explain why any of the sections cited reasonably address the rejections made in the previous (and instant) Office Action. The Examiner has previously provided a detailed explanation as to what the issues are for each of those noted by applicant, and the Examiner respectfully directs applicant’s attention to each of these rejections regarding these issues. In a similar manner to that noted above, the sections cited by applicant do not reasonably overcome these rejections, which are repeated below.
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 presently claimed invention achieves the phase differences between first and second portions by transforming austenite of identical composition under different cooling rates while maintaining the original grain structure, and that Matsui employs arcing and cannot realize the same sensitivity achieved by the claimed differential-cooling methodology. The Examiner respectfully disagrees.
First, the Examiner respectfully notes that nothing about cooling is mentioned in the claims. 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). As such, no cooling is required in the claims.
Second, what applicant is arguing is the process of achieving a phase difference. Claim 13, however, is an apparatus claim. An apparatus claim is only directed towards the final product, and not any process or method of using it. As such, there is no requirement that the apparatus achieve the end result of any process in the same manner as applicant, when such a process is directed towards an actual use of the device. What is required is that the prior art disclose the actual structural features of the claim and what they are actually claimed to be configured to implement, and the prior art does reasonably meet this requirement for the reasons stated below.
Applicant argues that this reference does not disclose “a first portion having a first hardness and a second portion having a second hardness higher than the first hardness, wherein the first portion and the second portion are disposed in different positions in a short side left/right direction, and the first portion and the second portion have transformed phases while maintaining the grain structure from austenite grains of the same composition.” The Examiner respectfully disagrees. No specific arguments are presented, applicant is therefore directed to the rejections found below explaining how the prior art discloses the claim features.
Applicant then argues the references relied upon for the 103 rejections with regard to the feature of “the first portion and the second portion have transformed phases while maintaining the grain structure from austenite grains of the same composition.” However, the Examiner is not relying upon this references for this feature, as the prior art reasonably discloses the claim feature.
Applicant argues the manner in which different regions are formed in Matsui, but the Examiner respectfully notes that the manner in which regions are formed are not claimed, and the prior art is only required to disclose the claim features.
Applicant argues that sufficient sensitivity cannot be achieved regarding the use of arcing, but the Examiner respectfully notes that no sensitivity features are claimed. Applicant argues that the above first and second portion feature is only possible when austenite grains are transformed at different cooling rates and cannot be achieved in Matsui, but the Examiner respectfully notes that this is not stated in the original disclosure, and applicant has not presented any evidence to support this argument. Instead, this argument is attorney argument, and therefore does not reasonably overcome the prior art rejection where evidence is necessary (see MPEP 2145(I)). Applicant argues that Matsui cannot achieve the different hardness regions feature, but the Examiner respectfully notes that applicant does not reasonably present evidence to support such an argument. That stated, applicant expressly admits that Matsui does disclose a sample of different hardness, and thus Matsui must disclose the argued claim feature. It does not matter whether Matsui discloses a concept, as all that is required is the recognition of such a feature and the disclosure of such a feature.
Applicant argues there is no recognition that the sensor signal will vary depending on how the high-hardness region is produced, but such a feature is, respectfully not claimed. Furthermore, Claim 1 is an apparatus claim, and thus the manner in which the hardness region is produced is not reasonably part of the claim, unless applicant can demonstrate that the final product would result in non-obvious differences (see MPEP 2113). Because Matsui discloses regions of different hardness, as expressly admitted by applicant, then any sensor signal measuring such hardnesses must vary depending on the hardness.
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.
Claims 1-9 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.
As to Claim 1,
The phrase “the calibration steel sheet having a long side and a short side and used for correcting a hardness measurement sensor connected to the electromagnetic sensor” on lines 7-8 lacks proper written description and introduces new matter.
1) The first issue is that the original disclosure is completely silent as to the manner in which the calibration steel is used to correct a hardness measurement sensor. 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.
2) Applicant is claiming that the steel is used for correcting the sensor. While the calibration steel may be used in such a process, it alone is not sufficient to reasonably be able to perform the intended use of correcting the sensor. Processing by way of a processing device, among other features, are necessary to carry out the claimed intended use. By claiming that the calibration steel has the intended use of correcting the sensor, applicant is claiming that the steel itself can perform such a feature, but the steel is not reasonably capable, by itself, or this intended use. As such, this phrase lacks proper written description.
3) The original disclosure does not reasonably disclose a hardness sensor “connected to” the electromagnetic sensor. Instead, the hardness sensor is the electromagnetic sensor (see paragraph [0067]). This phrase introduces new matter as a hardness sensor is not reasonably originally disclosed to be connected to an electromagnetic sensor.
The phrase “the first portion and the second portion have transformed phases while maintaining the grain structure from austenite grains of the same composition” on the last line introduces new matter. The originally disclose reasonably disclose that the grain structure is maintained as claimed. The original disclosure is completely silent regarding this feature, and such feature, as best understood, is not originally disclosed. This phrase therefore introduces new matter.
As to Claim 5,
The phrase “a moving unit” on line 4 introduces new matter. Claim 1 already recites a moving unit, and thus the combination of Claim 1 and Claim 5 is two moving units. The original disclosure does not reasonably disclose two moving units, and as such, this phrase introduces new matter.
As to Claim 6,
The phrase “a processor connected to the plurality of electromagnetic sensors, wherein the processor calibrates the plurality of electromagnetic sensors based on a measurement value obtained by measuring the first portion and a measurement value obtained by measuring the second portion in the plurality of electromagnetic sensors” on lines 2-7 introduces new matter and lacks proper written description.
1) Applicant has replaced the calibration unit with a processor, but the original disclosure never discloses a processor or any other device that would reasonably be recognized as a processor by a person of ordinary skill in the art. A calibration unit is not a well-known device, and does not reasonably require a processor. The introduction of a “processor” in the claim therefore introduces new matter.
2) Applicant further claims that the processor “calibrates the plurality of electromagnetic sensors based on a measurement value obtained by measuring the first portion and a measurement value obtained by measuring the second portion in the plurality of electromagnetic sensors.” However, applicant provides no explanation as to the manner in which the calibration is implemented. The original disclosure is completely silent as to the manner in which any calibration process is performed. While applicant does state that a formula or relationship can be used in paragraph [0075], the original disclosure is completely silent as to the relationship or formula implemented by applicant. The original disclosure is completely silent as to the manner in which applicant actually calibrates the sensors based on any measurement value, especially the two measurement values claimed above for the two different portions. As such, this phrase lacks proper written description.
As to Claim 7,
The phrase “when the processor converts the measured value measured by the electromagnetic sensors into hardness, the processor performs calibration, to be converted equally to hardness of the measured portion” on lines 2-4 lacks proper written description and introduces new matter.
1) Applicant does not originally disclose a processor that converts the measured value or performs a calibration as claimed, as no processor is reasonably originally disclosed. This phrase therefore introduces new matter.
2) Similar to what was explained above, the original disclosure is completely silent as to the manner in which the processor performs calibration. The original disclosure does not reasonably disclose any formula, flow chart, or other reasonable explanation as to the manner in which any calibration is performed. The original disclosure is further completely silent as to the manner in which any measured value is converted into hardness, or converted equally to hardness of the measured portion. Applicant does not reasonably provide any details as to the manner in which any of these conversions are implemented. The original disclosure is completely silent on these conversions. As such, a person of ordinary skill in the art would not reasonably recognize the manner in which the calibration of the conversions are being implemented to reasonably demonstrate possession of the claim features.
As to Claims 2-9,
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.
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 1-9 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 calibration steel sheet having a long side and a short side and used for correcting a hardness measurement sensor connected to the electromagnetic sensor” on lines 7-8 is indefinite.
1) Applicant is claiming “a hardness measurement sensor,” but where such a sensor is, as best understood, an electromagnetic sensor, and was one of the plurality of electromagnetic sensors previously recited lines 3-4 of the claim. Paragraph [0067] explains that the electromagnetic sensor measured hardness, and applicant does not reasonably disclose the simultaneous use of different types of electromagnetic sensors. As such, the hardness measurement sensor will be of the same type as any other electromagnetic sensor used, making the claim indefinite because applicant is claiming the same type of sensor using two different designations, rendering the metes and bounds for the hardness sensor and electromagnetic sensor unclear. It is unclear if all electromagnetic sensors, including the electromagnetic sensor of the claim, are hardness sensors, or if they can be more broadly considered including electromagnetic sensors that do not measure hardness.
2) It is unclear whether applicant means that the calibration steel is intended to be used for correcting, or is actually used for correcting in the claim. While an intended use would not raise an indefiniteness issue, an actual use would as it would amount to a method step of using the calibration steel, and where method steps inside an apparatus claim are indefinite as explained in MPEP 2173.05(p)(II). As such, to the extent that the above phrase does require the actual use of the calibration steel, this phrase is indefinite.
3) The original disclosure does not reasonably disclose a hardness sensor “connected to” the electromagnetic sensor. Instead, the hardness sensor is the electromagnetic sensor (see paragraph [0067]). As such, it is unclear how such a phrase should be interpreted. For the purpose of compact prosecution, the Examiner is interpreting that having a hardness sensor and electromagnetic sensor used together reasonably discloses the claim feature.
The phrase “wherein the first portion and the second portion are disposed in different positions in a short side left/right direction” on lines 11-12 is indefinite. At issue here is that it is unclear what a “short side left/right direction” is in the context of the disclosure. For example, a short side left/right direction could a direction along the short side, or it can be a direction extending from one short side to the other. These directions are different from each other, and it is therefore unclear what direction this phrase is referencing. This phrase is further indefinite because it is unclear what a “left/right” direction is in the context of the disclosure. Left and right are two different directions, and do not reasonably represent one direction. As such, it is unclear what “direction” would be with regard to two different directions. For the purpose of compact prosecution, the Examiner is interpreting this phrase to mean that the short side direction is a direction between the short sides, such as the left/right direction in applicant’s Figure 7.
The phrase “the first portion and the second portion have transformed phases while maintaining the grain structure from austenite grains of the same composition” on the last two lines is indefinite. While the use of a high enough temperature will cause a phase change of steel, in this case a gamma phase, it is unclear what applicant means by reciting that the first and second portions have phase transformed from the austenite grans of the same composition. First, it is unclear if applicant means that both the first and second portion have a same composition, such as steel, but where one portion has the gamma phase while the other does not, or if applicant means both portions have the gamma phase. For the purpose of compact prosecution, the Examiner is interpreting that the above phrase means that the two portions are both formed from the same composition (steel), but where one has the gamma phase and the other is different in any other manner, including being in the gamma phase but being different by different cooling. Second, the phrase “the same composition” is indefinite because no composition was previously recited. It is therefore unclear what composition this phrase is referencing.
The phrase “the first portion and the second portion have transformed phases while maintaining the grain structure from austenite grains of the same composition” on the last line is indefinite.
1) No grain structure was previously recited, and it is therefore unclear what grain structure this phrase is referencing.
2) It is further unclear, in light of the disclosure, what applicant means by reciting that the grain structure is maintained. It is unclear if such a phrase means that the grain structure must always remain the same throughout the transformation process, or if such a grain structure is maintained after the transformation. By reciting that the grain structure is maintained for portions that already have transformed phases, it is unclear when the grain structure is maintained. For the purpose of compact prosecution, the Examiner is interpreting that the grain structure is maintained after being transformed.
As to Claim 2,
The phrase “a long side up/down direction” on line 4 is indefinite. At issue here is that it is unclear what a “long side direction” is in the context of the disclosure. For example, a long side direction could a direction along the long side, or it can be a direction extending from one long side to the other. These directions are different from each other, and it is therefore unclear what direction this phrase is referencing. . This phrase is further indefinite because it is unclear what a “up/down” direction is in the context of the disclosure. Up and down are two different directions, and do not reasonably represent one direction. As such, it is unclear what “direction” would be with regard to two different directions. For the purpose of compact prosecution, the Examiner is interpreting this phrase to mean that the long side direction is a direction between the long sides, such as the up/down direction in applicant’s Figure 7.
As to Claim 5,
The phrase “the calibration steel sheet has the same material and width as the steel sheet to be measured, and further comprising 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.
1) A same material or width was not previously recited, and it is therefore unclear what same material and width this phrase is referencing.
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.
3) Applicant is now reciting “a moving unit” but where a moving unit was already recited in Claim 1. As best understood, the above moving unit refers to the same moving unit already recited. As such, in light of the disclosure, the difference and relationship between the moving units are unclear.
As to Claim 6,
The phrase “a processor connected to the plurality of electromagnetic sensors, wherein the processor calibrates the plurality of electromagnetic sensors based on a measurement value obtained by measuring the first portion and a measurement value obtained by measuring the second portion in the plurality of electromagnetic sensors” on lines 2-5 is indefinite.
1) Applicant is positively reciting the use of the processor where it recites that this unit “calibrates” the sensors. Such a recitation amounts to a method step of using the processor in an apparatus claim, which is indefinite as explained in MPEP 2173.05(p)(II). As such, this phrase is indefinite.
2) Claim 1 already recites the use of the calibration steel sheet to correct a hardness of a hardness measurement sensor. As best understood, the correcting of the sensor is the same as the above calibration recited in Claim 6. As such, the difference between these two distinctly recited and distinctly worded recitations is unclear.
As to Claim 7,
The phrase “when the processor converts the measured value measured by the electromagnetic sensors into hardness, the processor performs calibration, to be converted equally to hardness of the measured portion” on lines 2-4 is indefinite.
1) Applicant initially claims “when the processor converts the measured value measured by the electromagnetic sensors into hardness,” but it is unclear what “measured value” this phrase is referencing. Claim 6, for example, discloses two measurement values, one for each portion. It is therefore unclear what measured value this phrase is referencing.
2) Applicant then recites that “the processor performs calibration,” but Claim 1 already recites a correction of a hardness measurement sensor, and Claim 6 already recites that the processor “calibrates” the sensors. As best understood, all three distinctly recited features are referring to the same calibration, and are therefore not distinct. The difference and relationship between the correction of Claim 1, the calibrates feature of Claim 6, and the calibration feature of Claim 7 is therefore unclear.
3) Applicant then recites “to be converted equally to hardness of the measured portion,” but where such a phrase is not reasonably be clear. First, it is unclear what is being converted. It is unclear if some value from the performed calibration, a measured value, or the converted measured value into hardness are then converted equally to the hardness of the measured portion. Second, it is unclear what is meant by “to be converted equally,” in that it is unclear if such a phrase is intended to mean that a previous value is converted to be equal to a hardness of the measured portion, or if previously recited values are converted equally, and thus in a same manner, with some relation to the hardness of the measured portion. Lastly, it is unclear what measured portion this phrase is referencing. More than one previous portion is measured, such as the first and second portion of the calibration steel sheet as seen in Claim 6, and where a steel sheet to be measured may also reasonably have a measured portion. It is unclear what measured portion this phrase is referencing.
As to Claims 2-9,
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 § 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 (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 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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 an electromagnetic sensor (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 (Paragraph [0042]), (Figure 3); and a calibration steel sheet (77) disposed in a different position to that of the steel sheet (S2) to be measured (Figure 3), (Paragraph [0051], wherein the calibration steel sheet having a long side and a short side and used for correcting a hardness measurement sensor connected to the electromagnetic sensor (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 short side left/right direction (Figure 5), and the first portion and the second portion have transformed phases while maintaining the grain structure from austenite grains of the same composition (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 as claimed, as best understood.).
(Note the left/right direction is not reasonably disclosed to be relative to any particular direction. As such, the short side direction, as explained above, is interpreted to be in a left/right direction.)
As to Claim 2,
Matsui discloses the second portion has a hardness higher than the first portion by 50 Hv or more, and the first portion and the second portion are formed extending in a long side up/down direction (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).
(Note the up/down direction is not reasonably disclosed to be relative to any particular direction. As such, the long side direction, as explained above, is interpreted to be in a up/down direction.)
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).
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.
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.
Claims 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al. (Matsui) (JP2019042807A).
As to Claim 5,
Matsui discloses the calibration steel sheet has the same material and approximately the same width as the steel sheet to be measured (Figure 3), (Paragraph [0051] / note both sheets are made of steel), and further comprising 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).
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.
As to Claim 6,
Matsui discloses a processor (the device used to calibrate the sensors based on their measurements) connected to the plurality of electromagnetic sensors, wherein the processor calibrates the plurality of electromagnetic sensors based on a measurement value obtained by measuring the first portion and a measurement value obtained by measuring the second portion in the plurality of electromagnetic sensors (Paragraph [0051]).
As to Claim 7,
Matsui discloses when the processor converts the measured value measured by the electromagnetic sensors into hardness, the processor performs calibration, to be converted equally to hardness of the measured portion (Paragraph [0051] / note this phrase is conditional, and Matsui therefore discloses the feature when no conversion into hardness is made).
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).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 DAVID M. SCHINDLER whose telephone number is (571)272-2112. The examiner can normally be reached 8am-4:30pm.
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DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858