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Claims 6-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 5th, 2026.
Applicant’s election without traverse of Group I (claims 1-5) in the reply filed on February 5th, 2026, is acknowledged.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Masahiro et al (JP2003119518A). Masahiro is read from an English machine translation, which has been placed in the application file (please note, a new translation is enclosed with the present Office Action – this new translation replaces the translation cited in the Requirement for Restriction mailed December 10th, 2025, as this new translation is of increased accuracy).
With regards to claim 1, Masahiro discloses a ball screw shaft having a spiral groove formed on its outer peripheral surface by plastic working via rolling (i.e., a mechanical structural member including a groove and a tooth formed by plastic working), wherein the ball screw shaft is formed of steel which is hardened and undergoes martensite conversion on its surface (i.e., includes a hardened layer having a martensite structure formed on a surface by induction hardening), and further wherein the overall material prior to induction hardening has a hardness HRC (i.e., Rockwell hardness) of 25 to 35, overlapping the claimed range of 18 to 28 (i.e., as best understood, the core region hardness is the same as the initial hardness) (Masahiro, hereinafter with reference to its translation: abstract; para. [0001] [0006]-[0009], and [0019]). Regarding the claimed inclusion of a core structure having a sorbite structure, a boundary region including a mixture of a martensite structure and a sorbite structure, and a variation of Rockwell hardness of within 6, it is noted that the structure of Masahiro is formed by a process which is substantially identical to that which is used to form the structure of claim 1. In both cases, a ball screw shaft is formed via casting a steel material (with overlapping hardness ranges) into a round bar, quenching and tempering the steel bar, removing strain within the steel bar via annealing, and then subjecting the steel bar to induction heating, such that a tempered portion is left as a core portion, an annealing layer is formed on an outer periphery of the tempered portion, and a hardened layer is formed on a surface of the annealing layer (Masahiro para. [0009]-[0010], and [0019]; claims 2-5). Therefore, a person of ordinary skill in the art would have expected the claimed sorbite structure, boundary region including a mixture of a martensite and sorbite structure, and variation of Rockwell hardness within 6, as a material’s structure and properties are inseparable from its method of manufacturing (see above discussion). See MPEP 2112.
With regards to claim 2, the phrase “the groove and tooth are formed by infeed rolling” constitutes product-by-process language. Such language does not limit the present product claim to the recited process step, but rather, only the structure implied, per MPEP 2113. In the present case, the claim requires the claimed mechanical structural member to include a groove and a tooth, and Masahiro suggests such a product (see above discussion). In addition, the claimed step of infeed rolling, as best understood, does not affect the properties of present claim 1 (i.e., infeed rolling does not influence hardness or the formation of a martensite structure, sorbite structure, or mixed region, and instead, the step of infeed rolling occurs after these structures are formed).
With regards to claim 3, the structure of Masahiro is a ball screw shaft (i.e., a type of screw shaft) (Masahiro: abstract; para. [0001]).
With regards to claim 4, Masahiro teaches a ball screw shaft which is substantially identical to that of the claimed machine structural member (see above discussion). Therefore, Masahiro is expected to teach the claimed variation of Rockwell hardness, the claimed maximum and minimum value difference, and the claimed maximum and minimum values. In further support, Masahiro requires a Rockwell hardness of 25 to 35 throughout its material (i.e., its core), and therefore, the maximum and minimum values would be expected to be within this range (i.e., essentially, Masahiro is conserved to implicitly disclose maximum and minimum ranges which overlap the claimed maximum and minimum range of 13 to 28) (see above discussion).
With regards to claim 5, Masahiro teaches a ball screw shaft which is substantially identical to that of the claimed machine structural member (see above discussion). Therefore, Masahiro is expected to teach the claimed differences and maximum and minimum values (i.e., it is noted that claim 5 is essentially directed to a specific measurement method for such values) (see above discussion). In further support, Masahiro requires a Rockwell hardness of 25 to 35 throughout its material (i.e., its core), and therefore, the maximum and minimum values would be expected to be within this range (i.e., essentially, Masahiro is conserved to implicitly disclose maximum and minimum ranges which overlap the claimed maximum and minimum range of 13 to 28, which, as best understood, occur at every location, and therefore, occur within the claimed five radial measurement positions on the three axial measurement surfaces) (see above discussion).
Conclusion
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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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