DETAILED ACTION
Status of Claims
Claims 1-8 are pending. Of the pending claims, claims 1-5 are presented for examination on the merits, and claims 6-8 are withdrawn from examination.
Status of Previous Claim Rejections Under 35 USC § 112
The previous rejections of claims 1-5 under 35 U.S.C. § 112(b) for the reasons described in the Office action dated 09/30/2025 are withdrawn in view of the amendments to claims 1-3.
Objection to the Specification
The amendments to the specification are objected to under 35 U.S.C. 132(a) because they introduce new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. See MPEP § 608.04.
The added material which is not supported by the original disclosure is as follows: “predetermined time period.” The added material was included in the amended specification filed on 11/13/2025 and was used to replace the phrase “cooling time period,” which was also deleted (para. [0007], [0019], [0026]).
Applicant is required to cancel the new matter in the reply to this Office Action.
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 1-5 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.
Regarding claim 1, the phrase “predetermined time period” is new matter because it is not disclosed in the specification as originally filed. The phrase does not appear anywhere in the original specification, original claims, or original drawings.
Additionally, the phrase is new matter because it broadens the scope of the claim without support from the specification as originally filed. See MPEP § 2163.05. The phrase “predetermined time period” replaces the original limitation of “cooling time period,” suggesting that Applicant believes that they are equivalent limitations. However, they are not equivalents because “predetermined time period” is broader than “cooling time period.” “Predetermined time period” refers to any action taking place during a time period, whereas “cooling time period” describes the particular act of cooling during a time period.
Claim 1 recites a step of leaving the aluminum alloy workpiece alone for a predetermined time period after the heating by calendering shaping. Leaving the workpiece alone for a predetermined period of time is a step broad enough to encompass leaving the workpiece alone in any state. For example, the workpiece could be left alone but still heated or maintained in a heated state. This breadth is misaligned with the original specification, which states that the workpiece is left alone for a cooling time period (para. [0019]), i.e., the workpiece is left alone such that it cools down for a time period. Given that the original specification is specific regarding the cooling at this step of the method, the amended claim limitation is not supported by the disclosure as originally filed.
Regarding claims 2 and 3, the claims are likewise rejected, as they depend on claim 1 and also incorporate the phrase “predetermined time period.”
Regarding claims 4 and 5, the claims are likewise rejected, as they depend directly or indirectly on claim 1.
Response to Arguments
As an initial matter, Applicant is notified that claims 1-5 are free from prior art rejections, but are rejected under 35 U.S.C. § 112(a) for the reasons presented above.
Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive.
Applicant argues that the technical feature “predetermined time period” is implicitly supported by the specification (para. [0007], [0019], [0026]) and is not new matter.
In response, the Examiner respectfully disagrees. “Predetermined time period” is broader than “cooling time period” because “predetermined time period” refers to any action taking place during that time period, whereas “cooling time period” describes the specific act of cooling during that time period. Leaving the workpiece alone for a predetermined period of time is broad enough to encompass an act of leaving the workpiece alone in any state. For instance, the workpiece could be left alone but still heated or maintained in a heated state from the calendering shaping step. This is inconsistent with the original specification, which states that the workpiece is left alone for a cooling time period (para. [0019]), meaning that the workpiece is left alone such that it cools down for a time period.
Applicant argues that the claim limitation reciting heating the workpiece again by calendering shaping before leaving the workpiece alone clearly and expressly states that cooling occurs only upon completion of heating.
In response, the Examiner respectfully disagrees. The claim recites, in part, the following: “heating the aluminum alloy workpiece again by the calendering shaping before leaving the aluminum alloy workpiece alone for a predetermined time period.” The term “cooling” (or variations thereof) does not appear anywhere in the aforementioned phrase. And it cannot be implied that cooling must take place in this phrase because leaving a workpiece alone does not necessarily mean cooling the workpiece. The workpiece could be left alone but still heated or maintained in a heated state. Thus, the claims and specification introduce new matter to the application.
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 VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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, Keith D. Hendricks, can be reached at 571-272-1401. 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.
/VANESSA T. LUK/Primary Examiner, Art Unit 1733
December 20, 2025
Prosecution Insights