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 .
Response to Amendment
Applicant’s amendment has been entered. As of entry, claims 1-4 and 9-12 are pending. Claims 5-8 and 13-16 are canceled. Replacement drawing sheet has overcome the objection to the drawings. Amendment has overcome the objection to claim 1 for minor informalities. Claiming “a cooling of the second forged body after the second forging step is performed for the second forged body to maintain the same posture as during the second forging step so that the second forged body is naturally cooled and then cooled to room temperature using air cooling through blowing air, a solution treatment temperature in the solution treatment step is within a range of 500°C or higher and 530°C or lower, and a water temperature of the cooling water in the quenching step is within the range of 60°C or higher and 65°C or lower” has overcome rejections under 35 USC 103.
Claim Interpretation
Claim 1 claims “a first upper die having an upper molding part and a first lower die having a lower molding part, which are shaped in a shape of a forged product; a second forging step of obtaining a second forged body by forging the first forged body between a second upper die having an upper molding part and a second lower die having a lower molding part”. The specification states “lower molding part 12a may be a concave part which is open on the side of a surface facing the first upper die 11” [0033]; “upper molding part11a may be a concave part which is open on the side of a surface facing the first lower die12” [0034]; “lower molding part 22a may be a concave part which is open on the side of a surface facing the second upper die 21” [0039], and “upper molding part 21 a may be a concave part which is open on the side of a surface facing the second lower die 22”. Fig. 3 further shows that the first and second lower molding parts on the side of the lower die facing the respective first and second upper dies, and first and second upper molding parts on the side of the upper die facing the respective first and second lower dies. As the side of the lower die which faces the upper die is the upper surface of the lower die, and the side of the upper die which faces the lower die is the lower surface of the upper die, the designation “upper” in upper molding part associates the upper molding part with the upper molding die and does not claim a part on an upper surface of an upper die. Similarly, the designation “lower” in lower molding part associates the lower molding part with the lower molding die and does not claim a part on a lower surface of a lower die. This statement of claim interpretation is necessary to avoid improperly limiting upper and lower molding parts to a specific position on respective upper and lower dies.
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 1-4 and 9-12 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.
Claim 1 as amended claims “a cooling of the second forged body after the second forging step is performed for the second forged body to maintain the same posture as during the second forging step so that the second forged body is naturally cooled and then cooled to room temperature using air cooling through blowing air”. In the specification, paragraph [0044] states “After the second forged body is naturally cooled to 300°C through standing to cool in a room temperature environment, the second forged body is cooled from 300°C to room temperature using air cooling through blowing air. During this cooling, it is preferable that the second forged body maintain the same posture as when the second forged body is forged”. Paragraph [0055] of the specification states “the second forged body which has reached about 350°C after the second forging step was cooled to 300°C through standing to cool, and then cooled to 50°C through air cooling using a fan from 300°C or lower.”
Paragraphs [0044], and [0055] of the specification as filed appear to be the only portions of the disclosure as filed which support cooling of the second forged body after the second forging step so that the second forged body is naturally cooled and then cooled to room temperature using air cooling through blowing air. Both paragraph [0044] and [0055] indicate the natural cooling/cooling by standing cools to 300°C. As worded, claim 1 is open to any degree of natural cooling and then cooled to room temperature by air cooling. This breadth encompasses a minimal degree of natural cooling which would necessarily occur when second upper die and second lower die are separated and the second forged body is exposed to ambient conditions.
While the disclosure as filed showed that applicant was in possession of a method wherein a cooling of the second forged body after the second forging step is performed for the second forged body so that the second forged body is naturally cooled to 300°C [emphasis added] and then cooled to room temperature using air cooling through blowing air, the disclosure as filed does not reasonably convey to one of skill in the art that an inventor or joint inventor was in possession of the method of claim 1 wherein a method wherein a cooling of the second forged body after the second forging step is performed for the second forged body so that the second forged body is naturally cooled [without limits on the degree of natural cooling] and then cooled to room temperature using air cooling through blowing air.
See MPEP 2163.05(II) for a discussion of how narrowing the claims by introducing elements or limitations which are not supported by the as-filed disclosure raise issues with respect to 35 USC 112(a).
Claims 2-4 and 9-12 depend on claim 1. Claims 2-4 and 9-12 do not limit the cooling to that described in the disclosure as filed. Claims 2-4 and 9-12, are therefore rejected under 35 USC 112(a) for the reasons stated above with respect to claim 1.
Response to Arguments
Applicant’s arguments, see section III Rejection of Claims 1-16 under 35 U.S.C. §103, filed November 10, 2025, with respect to claim 1 have been fully considered and are persuasive. The rejection of claims 1-4 and 9-12 u under 35 USC 103 has been withdrawn.
Though applicant’s submission has overcome rejections under 35 USC 103, the amendment to claim 1 introduces subject matter which was not described in the disclosure as filed to reasonably convey to one of skill in the art that an inventor or joint inventor at the time of filing was in possession of the claimed invention. See the above rejection under 35 USC 112(a).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738