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 .
Claim Objections
Claim 18 is objected to because of the following informalities: it is suggested to amend the limitation “detecting an actual distance of the inductor to the rolling product” to read as “detecting an actual distance between the inductor and the rolling product” to clearly define the actual distance is the distance between the two elements and to maintain consistency between both independent claims (claim 26 recites an actual distance between the rolling product and the induction coil). Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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 26-30 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.
With regards to claim 26, the claim has been amended to recite “at least two spacers configured to…specify a defined spacing of an induction coil with respect to the outer circumference of the rolling product during rolling”, this limitation appears to be new matter not supported in the originally filed disclosure. The specification fails to support the spacers having the ability to be configured to specify a defined spacing as now required by the claim. It is noted that previously the claim recited that the engagement of the spacers with the outer circumference of the rolling product resulted in them specifying a defined spacing which is not the same as now being configured to specify. The phrase “configured to specify” sets forth the spacers are performing a function “to specify” rather than just a resultant as initially set forth in the claims. Therefore absent any disclosure of this function the limitation is deemed to be new matter.
It is noted that the 103 art rejection has been removed based on the newly added limitations and the new matter rejection however should the limitation in question be removed from the claim the previous 103 rejection based on the combination of Han, Loveless et al and Verhagen could be reapplied to the claims.
Claim Rejections - 35 USC § 112(b)
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 18-30 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.
With regards to claims 18 and 23, claim 18 states “coupling an alternating magnetic field into the rolling product” and claim 23 states “coupling a further alternating magnetic field into the rolling product”, this renders the claim indefinite since it is unclear how a magnetic field is to be able to be coupled to an object. Specifically, the term coupled is defined as to fasten together, therefore based on the general definition of the term coupled it is unclear how to magnetic field is to be fastened into the rolling product as set forth in the claim. For examination purposes the claim is being interpreted as: applying an [a further] alternating magnetic field into the rolling product.
With regards to claim 26, there appears to be insufficient antecedent basis for the limitation “the induction coil” found in line 10. It is further noted that should the limitation be amended to read as “an induction coil” it is suggested to amend the limitation “an induction coil” in line 11 to read as “the induction coil” for proper antecedent basis.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance.
It is the opinion of the examiner that the art of record (considered as a whole) neither anticipates nor renders obvious “detecting an actual distance of the inductor to the rolling product by tactile sensing during the rolling using at least two sensing rollers or at least two spacers that are in engagement with an outer circumference of the rolling product” in combination with the rest of the claimed limitations set forth in claim 18.
Based on Applicant’s arguments and the examiner’s review of Office Action mailed October 1, 2025, the claimed subject matter is deemed to be allowable. Further clarification/explanation can be reviewed in applicant’s arguments filed November 27, 2025 starting on page 8.
Claims 18-25 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725