Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Content of Specification
(a) TITLE OF THE INVENTION: See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters.
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT: See MPEP § 310.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT. See 37 CFR 1.71(g).
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM: The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.77(b)(5) and MPEP § 608.05. See also the Legal Framework for Patent Electronic System posted on the USPTO website (https://www.uspto.gov/sites/default/files/documents/2019LegalFrameworkPES.pdf) and MPEP § 502.05
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b) and 37 CFR 1.77.
(g) BACKGROUND OF THE INVENTION: See MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled “Technical Field.”
(2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”
(h) BRIEF SUMMARY OF THE INVENTION: See MPEP § 608.01(d). A brief summary or general statement of the invention as set forth in 37 CFR 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S): See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74.
(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g). A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i) - (p).
(l) ABSTRACT OF THE DISCLOSURE: See 37 CFR 1.72 (b) and MPEP § 608.01(b). The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims. In an international application which has entered the national stage (37 CFR 1.491(b)), the applicant need not submit an abstract commencing on a separate sheet if an abstract was published with the international application under PCT Article 21. The abstract that appears on the cover page of the pamphlet published by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e).
(m) SEQUENCE LISTING: See 37 CFR 1.821 - 1.825 and MPEP §§ 2421 - 2431. The requirement for a sequence listing applies to all sequences disclosed in a given application, whether the sequences are claimed or not. See MPEP § 2422.01.
Claim Objections
Claim 1 is objected to because of an informality: no claim number is used. The claim should begin with the claim number and status identifier (i.e. “Claim 1 (Original)). In addition, the claim should begin with “A method” instead of “The method”. Appropriate correction is required.
Rejections under 35 USC 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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
Claim 1 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
MPEP 2164.08 states that the scope of enablement provided to one skilled in the art by the disclosure must be commensurate with the scope of protection sought by the claims. In this case, Applicant’s disclosure teaches its process being performed with low alloy steels. However, claim 1 is directed to “metal products”. The enablement provided by Applicant’s disclosure (i.e. for low alloy steels) is not commensurate with “metals” as claimed. As further discussed below, the MPEP lays out eight factors to consider whether the level of experimentation would be undue. MPEP 2164.01(a).
(A) The breadth of the claims. The first analytical step requires that the examiner determine exactly what subject matter is encompassed by the claims. In the instant application, claim 1 recites a method for use with “metal products”.
(B) The nature of the invention i.e., the subject matter to which the claimed invention pertains. The instant application pertains to a heat treatment of low alloy steels with specific heating/cooling/tempering temperatures.
(C) The state of the prior art. The current state of the prior art discloses many ways to heat treat steels.
(D) The level of one of ordinary skill. Applicant’s disclosure must be sufficient to enable a metalworker having three-to-five years of experience to use the invention.
(E) The level of predictability in the art. The predictability or lack thereof in the art refers to the ability of one skilled in the art to extrapolate the disclosed or known results to the claimed invention. The instant invention is within the mechanical arts. The mechanical arts are typically considered predictable (as compared to pharmaceutical arts). However, this predictability does not cure the lack of direction provided by the inventor, or lack of working examples, that would allow one of ordinary skill to understand how the claimed process can be adequately performed on non-steel metals.
(F) The amount of direction provided by the inventor. The amount of guidance or direction refers to that information in the application, as originally filed, that teaches exactly how to make or use the invention. Upon reviewing the instant application, the originally filed disclosure explicitly teaches the invention capable of use on low alloy steels.
(G) The existence of working examples. As described in factor (F), above, Applicant’s originally filed application explicitly teaches the invention capable of use on low alloy steels.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Since one of ordinary skill in the art would understand that heat treatment processes for steels cannot reasonably be used on many other kinds of metals with satisfactory results, it would be impossible to use the claimed heat treatment method on many kinds of metals.
After considering all of the above factors, claim 1 is not enabled by the originally filed disclosure since the enablement provided by Applicant’s disclosure (i.e. for low alloy steels) is not commensurate with “metal products”.
Claim 1 is 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 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claims drawn to a genus (in this case “metal products”), the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species sufficient to show the inventor was in possession of the claimed genus. See MPEP 2163(II)(3)(a)(ii). While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See MPEP 2163.03(v).
In this case, Applicant’s originally filed disclosure only teaches its heat treatment method being used on low alloy steels. In addition, one of skill in the art appreciates that heat treatments for steels are not capable of being adequately used with many other kinds of metals. Thus, one of skill in the art would not believe Applicant was in possession of a method that can be used for the broad genus of “metal products”.
The following is a quotation of 35 U.S.C. 112:
(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 1 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 applicant regards as the invention.
Regarding claim 1, it is unclear where the preamble ends and the body of the claim begins. For example, does the body of the claim begin after “which involves” in line 1? Or as detailed immediately below, does the preamble extend to the phrase “which differs from known ones in that”?
Claim 1 recites and which differs from known ones in that. This phrase is confusingly written. Is this phrase attempting to imply that the previous limitations are part of the preamble and reciting known prior (as in a Jepson claim)? If so, the examiner recommends using the more conventional phrase of “the improvement comprising”.
Claim 1 also recites appropriate size in line 2. The term “appropriate size” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 1 also recites the containers in line 4. There is insufficient antecedent basis for this limitation.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s Admitted Prior Art (“AAPA”) in view of WO-2020/153874 (“Titov”) and USPGPub No. 2014/0363115 (“Yamada”).
Regarding claim 1, AAPA teaches the method for manufacturing ball-shaped metal products (third full paragraph on page 1 of Applicant’s originally filed specification), which involves through heating of round billets made in appropriate size in a mid-frequency induction unit, and rolling such billets into balls in a cross rolling mill at 950° C-1070° C (third full paragraph on page 1, wherein since the steel is rolled one of skill in the art will reasonably infer the billets are through heated), quenching the balls to 125° C-160° C in a quenching drum where they are cooled by running water (third full paragraph on page 1, wherein the tempering drum is interpreted as the quenching drum since the balls are quenched with running water), and allowing the balls to self-temper in the containers (third full paragraph on page 1), and after the rolling treatment, the balls are cooled … in a cooling drum with forced air cooling (third full paragraph on page 1, wherein one of skill in the art will reasonably infer that “additional air supply” reads on “forced air cooling”).
Assuming arguendo that one of skill in the art would not infer “additional air supply” to read on “forced air cooling”, the examiner is taking Official Notice that forced air cooling is a well known cooling technique when processing steel. Thus, it would be obvious and predictable to provide “additional air supply” via forced air cooling.
AAPA fails to explicitly teach the balls being cooled down to 620° C-700° C, and the surface of the balls is subsequently heated up to 850° C-930° C. However, this would have been obvious in view of Yamada.
Yamada is directed to manufacturing steel balls 3 (fig. 1, ¶ [0001]-[0002] & [0038]-[0039]). The process includes heating the product to 900-980° C, cooling to 620-700° C, then hardening the product via quenching by heating to 840-880° C, and tempering at a temperature of 160-200° C (¶ [0095]-[0107). Yamada teaches the cooling temperature can extend rolling fatigue life and provide high fracture toughness (¶ [0101]).
In this case, each of AAPA and Yamada are directed to manufacturing spherical objects with similar heating/cooling processes (i.e. both initially heat to around 950° C, cooling the object, then perform hardening via quenching at similar temperatures, and tempering at similar temperatures. While AAPA teaches cooling the balls to the quenching temperature of 840-900° C, Yamada teaches that it is known to cool balls to a lower temperature (i.e. 620-700° C) to extend rolling fatigue life and provide high fracture toughness, and during a hardening/quenching step to reheat the balls to the quenching temperature. Thus, to improve the properties of the balls of AAPA, it would be obvious to cool the balls to 620-700° C and to reheat the balls to 840-900° C during the subsequent quenching step (wherein 840-900° C is the quenching temperature taught by AAPA).
Given the above modifications, the cooling temperature range is the exact same range as in the claim, and the subsequent heating temperature range overlaps with the claimed range. Thus, a prima facie case of obviousness exists.
AAPA et al. fails to explicitly teach reheating the balls in a high-frequency induction unit containing a rotating transport tube and multiple inductor sections. However, this would have been obvious in view of Titov.
Titov is directed to an apparatus for surface hardening balls (page 1, wherein all references to the Titov specification refer to the machine translation submitted herewith). Titov teaches the apparatus having a rotating transport tube and multiple inductor sections to ensure symmetrical heating (page 2). Titov teaches that it is known to use high frequency for the induction current (page 1).
In this case, each of AAPA et al. and Titov are directed to manufacturing spherical objects that are hardened (wherein AAPA teaches hardening the objects via quenching). Titov teaches an apparatus for surface hardening the balls. Thus, in order to uniformly surface harden the balls of AAPA et al., it would be obvious to (after the hot rolling and cooling) heat the balls in the apparatus of Titov wherein the apparatus is at least capable of providing high frequency induction current.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over AAPA in view of Titov and USPGPub No. 2014/0209214 (“Lund”), and as evidenced by RU-2596737-C1 (“RU737”).
As detailed in the previous rejection to claim 1, above, AAPA fails to explicitly teach the balls being cooled down to 620° C-700° C, and the surface of the balls is subsequently heated up to 850° C-930° C. However, this would have been obvious in view of Lund as evidenced by RU737.
Lund is directed to a method of making a steel component, for example a steel ball (figs. 6 & 7, ¶ [0001], [0028] & [0050]). Lund teaches heating the component to 930-970° C (¶ [0041]), cooling the component to below the A1 transformation temperature (¶ [0043]), hardening the component by reheating the component to a temperature between the A1 transformation temperature and the first heating temperature, followed by quenching and tempering (¶ [0043] & [0044]). Lund teaches that its method is an improved method for heat treating steel that can increase fatigue strength and provide high wear resistance (¶ [0004], [0032] & [0060]).
In this case, each of AAPA and Lund are directed to manufacturing spherical objects with similar heating/cooling processes (i.e. both initially heat to around 950° C, cooling the object, then perform hardening by subsequent quenching of the object, and tempering). While AAPA teaches cooling the balls to the quenching temperature of 840-900° C, Lund teaches that it is known to cool balls to below the A1 transformation temperature, and during a hardening/quenching step to reheat the balls to a temperature between the A1 transformation temperature and the first heating temperature. Thus, to improve the properties of the balls of AAPA et al. (e.g. fatigue strength or wear resistance), it would be obvious to cool the balls to below the A1 transformation temperature and to heat the balls to a temperature between the A1 transformation temperature and the first heating temperature during the subsequent heating/quenching step. It would be predictable that the method of Lund will provide a satisfactory steel component since the composition of the steel of Lund is similar to the composition of the steel of the method of AAPA (see ¶ [0052]-[0058] of Lund; compare to last 3 paragraphs on page 2 – first paragraph on page 3 of RU737, wherein AAPA is discussing the method of RU737, and wherein all references to the RU737 specification refer to the machine translation submitted herewith).
One of skill in the art would reasonably infer the A1 transformation temperature being between 725-750° C since the A1 transformation temperature of steels having a composition similar to that of AAPA are generally within this range. While Lund fails to explicitly teach a specific temperature range to cool the component to, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (see MPEP 2144.05(II)(A)). One of skill in the art appreciates that heating and cooling steel to different temperatures affects the final properties of the steel. Further, there is a reasonable expectation of success that one of skill in the art could determine a workable cooling range overlapping with the claimed range because determining the properties of steel components cooled to different temperatures is routine and relatively simple for one of skill in the art. Thus, the cooling temperature range of 620-700° C is not inventive since the range is below the A1 transformation temperature and one of skill in the art could find this range through routine experimentation.
With respect to the subsequent heating/quenching temperature, AAPA teaches a specific quenching temperature range at 840-900° C (see third full paragraph of Applicant’s originally filed specification; this is further evidenced by the second to last paragraph on page 3 & first paragraph on page 5 of RU737, wherein AAPA is discussing the method of RU737). Since this range (840-900° C) is between the A1 transformation temperature and the first heating temperature, it would be obvious and predictable to perform the hardening and quenching step by reheating the component to 840-900° C.
AAPA et al. fails to explicitly teach reheating the balls in a high-frequency induction unit containing a rotating transport tube and multiple inductor sections. However, this would have been obvious in view of Titov for the same reasons detailed in the previous rejection of claim 1, above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”