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 .
Election/Restrictions
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 17, 2026.
Claim Rejections - 35 USC § 112
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.
With regards to claim 1, the claim states “an ironing punch to be used for metal ironing, wherein…”, this renders the claim indefinite since it is not clear what the transitional phrase is for the claim. A transitional phrase defines the scope of the claim in terms of what unrecited elements or method step, if any, are excluded from the scope of the claim, as well as clearly separating the preamble from the body of the claim. Accordingly, the lack of a transitional phrase renders the claim indefinite because the scope of the claim is not clearly defined [see MPEP 2111.03]. It is further noted that the “wherein” phrase appears to server the same purpose as the transitional phrase to further limit the structure of the apparatus, however wherein clauses are used to further define elements that have been positively recited previously within the claim, thus the wherein clause cannot be considered to be the transitional phrase of the claim. For purposes of examination the claim is being interpreted as having “comprising” as the transitional phrase.
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.
Claim(s) 1-4 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Motoi et al (JP 2818314B2).
In reference to claim 1, Motoi et al discloses an ironing punch to be used for metal ironing, the punch comprising
a dot-shaped recess (13) is distributed on an outer peripheral surface of the ironing punch [see paragraph 0008; figure 2], and
a raised portion (15) is formed on at least part of a peripheral edge portion of the dot-shaped recess [see figure 2; paragraph 0010].
In reference to claim 2, Motoi et al further discloses the raised portion is formed over an entire periphery of the peripheral edge portion of the dot-shaped recess, as seen in figure 2 [see paragraph 0010].
In reference to claim 3, Motoi et al further discloses the raised portion is formed on part of the peripheral edge portion of the dot shaped recess, as seen in figure 2 [it is noted that the raised portion is formed along the perimeter of the recess therefore it meets being formed on part of the edge portion].
In reference to claim 4, Motoi et al further discloses the raised portion is formed on part of the peripheral edge portion of the dot shaped recess on a side opposite to a punch tip side, as seen in figure 2 [it is noted that the raised portion is formed along the entire edge portion of the recess therefore it meets being formed on part of the edge portion].
In reference to claim 7, Motoi et al discloses an ironing method comprising
inserting an ironing punch (3), as set forth in claim 1 above, into a metal cylinder (2),
performing ironing by passing the metal cylinder through an annular die (5), and
thinning the metal cylinder by pulling out the punch after the ironing is completed [see figured 5; paragraph 0003].
Claim Rejections - 35 USC § 103
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.
1. Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Motoi et al.
In reference to claims 5 and 6, Motoi et al discloses the invention substantially as claimed except for wherein the dot shaped recess has a deepest portion disproportionately located on the side opposite to the punch tip side with an eccentricity ration of between 30% to 100%..
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the dot shaped recess to have a disproportionately deep portion with an eccentricity ratio of between 30% to 100%, since it has been held to be within the general skill of a worker in the art to select a known structure on the basis of its suitability for the intended use as a matter of mechanical efficiency [see In re Leshin, 125 USOQ 416].
2. Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Motoi et al in view of Sato et al (JP 3327137; cited in paragraph 0004 of Applicant’s specification).
In reference to claim 8, Motoi et al further discloses the metal cylinder is a tin-plated steel plate or an aluminum alloy thin plate. Motoi et al discloses the invention substantially as claimed except for wherein the metal cylinder comprises an organic resin layer on an inner surface.
However, Sato et al teaches that it is commonly known in DI manufacturing to performing an ironing on a metal cylinder with an organic resin film therein [see paragraph 0004 of Background of Applicant Specification].
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the metal cylinder of Motoi et al with the metal cylinder with an organic resin layer, as taught by Sato et al, in order to obtain the predictable results of reducing the wall thickness of the cylinder to a desired thickness.
In reference to claim 9, Sato et al further disclose the organic resin later is formed of a thermoplastic resin.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725
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