DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 21-26, 38 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. Claim 21 “a preheater comprising…. combination thereof”. There is no support for a preheater that is combination of the gas oven, combustion oven, convection oven, and/or infrared heater. Claim 22 “the preheater is a payoff station” there is no support for the preheater being the gas oven, combustion oven, convection oven, or infrared heater or combination thereof and also a payoff station.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21, 23 is/are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by JP H02251309.
Regarding claim 21, JPH02251309 discloses a system (Fig. 1) for producing a metal strip (intended use: it is capable of producing a metal strip), the system comprising: a pre-heater (12- translation: “gas jet heating”, “direct flame heating”, “induction heating”) comprising a gas oven, a combustion oven, a convection oven, or an infrared heater, or a combination thereof for pre-heating a metal input (intended use: 1 ) to a warm rolling temperature (150C) that is less than one-half the melting point of the metal input (intended use); and a warm roller (Translation: “rolling mill (not shown)”) for warm rolling the pre-heated metal input to produce the metal strip; wherein the metal input is a metal matrix composite (intended use: examiner notes that further limiting the intended use does not limit the claim structure. The claimed structure is capable of rolling a metal input that is a metal matrix composite).
Regarding claim 23, JPH02251309 discloses wherein the pre-heater is a heated tunnel (Fig. 1: material going through a surrounded heater is a tunnel) located between a payoff station (3) and the warm roller.
Claim(s) 21-22, 24-26 is/are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Masuda (US 5195344).
Regarding claim 21, Masuda discloses a system (Fig. 1) for producing a metal strip (intended use: it is capable of producing a metal strip), the system comprising: a pre-heater (4a) comprising a gas oven (gas furnace), a combustion oven, a convection oven, or an infrared heater, or a combination thereof for pre-heating a metal input (intended use: 2a – rolled up steel sheet) to a warm rolling temperature (200C) that is less than one-half the melting point of the metal input (intended use); and a warm roller (7 – “When a supply device of an oil at high temperature is provided as a heating means of the rolls, the back-up rolls 8 are applied with the oil of more than 200.degree. C. for preheating the rolls 7 via preheating of the back-up rolls.”) for warm rolling the pre-heated metal input to produce the metal strip; wherein the metal input is a metal matrix composite (intended use: examiner notes that further limiting the intended use does not limit the claim structure. The claimed structure is capable of rolling a metal input that is a metal matrix composite).
Regarding claim 22, Masuda discloses wherein the pre-heater is a payoff station (4a) that is configured a) to feed the metal input to the warm roller and (B) to pre-heat the metal input.
Regarding claim 24, Masuda discloses the system of claim 21, wherein the warm rolling temperature ranges from 350F to 600F (200C).
Regarding claim 25, Masuda discloses the system claim 21, wherein the warm roller comprises a set of heated bite rolls. (7 rolls bite the strip between the rolls)
Regarding claim 26, Masuda discloses the system of claim 21, further comprising a take-up reel (2b) downstream of the warm roller.
Regarding claim 38, Masuda discloses the system of claim 21, wherein the MMC comprises a metal alloy and ceramic particles dispersed in the aluminum alloy. (Intended use: examiner notes that further limiting the intended use does not limit the claim structure.)
Response to Arguments
Applicant’s amendments and arguments/remarks regarding the specific type of ovens have been fully considered but are moot in view of the new grounds of rejection provided above. Specifically, the examiner has provided the JP H02251309 reference to teach the currently amended claim limitations.
Applicant's arguments filed 4/3/2026 have been fully considered but they are not persuasive.
Applicant argues that Masuda does not disclose a system for rolling metal matrix composites. Examiner respectfully disagrees. Examiner notes that metal matrix composites are not required by the claim and are just part of the intended use. If the system is capable of being able to warm and roll a metal matrix composites workpiece, it reads on the claim.
Applicant also argues that Masuda solely roles Si steel sheets by citing Col. 1 lines 31-34. Examiner respectfully disagrees. The citation states “(5) However, ordinarily used rolling facilities could not secure bending deformation of the coil or temperatures of the materials, and are difficult to roll the high Si steel sheets. For example, Japanese Patent Application Laid-Open No.135,407/86 proposed a facility protecting from an uncoiling reel to first rolling stands with a warming wall, but this facility could not prevent cracks by bending at the deflector rolls or by rolling.
(6) This invention has been developed in view of problems involved with the prior art, and is to provide a warm rolling facility which may carry out the rolling efficiently without causing cracks in thin steel sheets with less workability.”
Just because the system works better when rolling the high SI steel sheets, it does not mean that it teaches away other materials from being rolled on the system. Therefore, the rejection is proper.
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 BOBBY YEONJIN KIM whose telephone number is (571)272-1866. The examiner can normally be reached M-F 9 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher 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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/BOBBY YEONJIN KIM/ Examiner, Art Unit 3725
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