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
The amendment filed 11/25/2025 has been fully considered and made of record. As such, the rejection of claims objection and rejection of claims 6-11 as set forth in the Office action mailed on 08/27/2025 have been withdrawn.
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.
Claim 11 is 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.
Claim 11, line 3 recites the limitation of “before the quenching step” which refers back to claim 8 (which claim 11 directly depends from) reciting a quenching step. However, claim 11, line 4 recites the limitation “after quenching using a refining test material” which is unclear as to what quenching is being referred to. Is it a quenching step recited in claim 8 or a different quenching. If the quenching step and quenching using a refining test material are two distinct steps then it is further confusing as what the temporal order between these two quenching step and quenching are. In addition, claim 11, line 6 further recites “the method further comprises a refining testing step” which appears to occur before the quenching step and after the quenching. It appears that claim 11 should be amended to depend directly from claim 9 and not claim 8.
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.
Claim(s) 6 s/are rejected under 35 U.S.C. 103 as being unpatentable over Ishizuka Tetsuo et al. (JP2006274315A, hereinafter “Tetsuo”) in view of Fukui et al. (US 5,310,432, hereinafter “Fukui”).
As applied to claim 6, Tetsuo teaches a method of manufacturing a mechanical structural member (ring gear, paragraphs [0001] and [0002]) wherein the outer surface of gear teeth were hardened to have a hardness of 210-260 HV (equivalent to 13 to 24 Rockwell C) and having a ferrite + pearlite structure (paragraphs [0015], [0038]). Tetsuo further teaches in sample 20 (Table 2) that after subjecting the gear to quenching and tempering, a region radially inward by 1 mm from the outer surface has a tempered martensite structure (widely known in the field as sorbite structure) having a hardness range of 229 to 230 HV (equivalent to 17 to 18 HRC) which means a variation of 1 HRC which is within the claimed range of 13 to 28 HRC and variation of within 6 HRC (which reads on the claim limitation of between a maximum Rockwell hardness and a minimum Rockwell hardness across the material portion within 6 HRC). Tesuo teaches the step of forming grooves and teeth on a surface of the refined material by cutting and that no annealing is performed between the steps of refining of the steel material and forming the grooves and teeth. However, Tesuo fails to explicitly teach the step of forming the grooves and teeth is done by plastic working.
Fukui teaches that it is well-known in the art of gear manufacturing to shape gear teeth by a variety of different techniques including use of a toothed die, roll forming, cutting, and the like (col. 2, lines 43-51). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the conventional cutting technique of shaping the groove/teeth of Tesuo with another conventional plastic working technique (i.e., roll forming), such as one taught by Fukui, as a matter of simple substitution of one known method for another to obtain predictable results (see MPEP 2143, KSR, Rationale “B”). The resulting method would predictably produce a mechanical structural member (i.e., gear) having the claimed microstructure and hardness in a conventional manner without modification of the principles of operation of Tesuo.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tetsuo et al. (JP2006274315A, hereinafter “Tetsuo”) in view of Fukui et al. (US 5,310,432, hereinafter “Fukui”) as applied to claim 6 above, and further in view of Bajraszewski et al. (US 5,528,917, hereinafter “Bajraszewski”).
As applied to claim 7, the combination of Tetsuo and Fukui teaches the invention cited including plastic working the grooves and teeth by roll forming but the combination is silent about the roll forming being infeed rolling process.
Bajraszewski teaches that it is well-known in the art of gear manufacturing to shape gear teeth by an infeed rolling process in order to reduce the possibility of reaching excessive force conditions on the rolling dies during the shaping process thus resulting in prolonging the operational lives of the rolling dies ( col. 2, lines 23-28, 37-40). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to employed an infeed rolling technique for the roll forming process of Tesuo/Fukui, as taught by Bajraszewski, as an effective means of controlling the rolling force during the formation of the gear teeth thus reducing the possibility of reaching excessive force conditions on the rolling dies that may prematurely shorten the operational lives of the dies.
Allowable Subject Matter
Claims 8-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim11 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive. Applicant presents arguments similar to the ones discussed during the telephonic interview conducted between the examiner and Applicant’s attorney Ms. Kalen on 11/21/2025. The main argument is that:
“Cited reference Tetsuo merely suggests that, for Sample 20, the hardness at the outer surface of the test tube (excl. 1mm) was measured to be 230 and the hardness of the inner surface of the test tube (excl. 1mm) was measured to be 229. However, Tetsuo does not consider the hardness of any portion of the tube between the outer surface and the inner surface (i.e. along the remaining 10mm of the 12mm wall thickness).” (see Remarks, page 2, last paragraph).
The examiner respectfully disagrees with such arguments. Tetsuo teaches that member is in a shape of a steel tube or a steel pipe (paragraph [0001]) with a wall thickness of 5 mm or more and 22 mm or less (paragraph [0015]). The hardnesses disclosed for the materials of Table 2 are directed to a portion of the thickness of the steel pipe material “excluding a region 1 mm inward from the inner surface and the outer surface, respectively” (see paragraph [0015] of English Machine Translation provided in the IDS filed by Applicant on 05/05/2025). As such, contrary to the Applciant’s assertion, the examiner considers the hardness values cited by Tetsuo to be of the material portion of the tube/pipe stretched between 1 mm from outer surface to 1 mm from inner surface which means all of the wall thickness except for the 1 mm margins on either inner and outer surfaces.
Examiner notes that a telephone call was made to the Applciant’s attorneys Ms. Kalin and Mr. Psihountas on 02/18/2026 suggesting the incorporation of the previously indicated allowable subject matter of claim 8 into claim 6 in order to place the application in condition for allowance. However, in a follow-up telephonic conversation on 02/25/2026, Mr. Psihountas indicated that his client would prefer to receive a formal Final office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 SARANG AFZALI whose telephone number is (571)272-8412. The examiner can normally be reached M-F 7 am - 4 pm EST.
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/SARANG AFZALI/Primary Examiner, Art Unit 3726 02/25/2026