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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The replacement drawings submitted on January 8, 2026 has not been entered. The brackets around the word “Prior Art” should be deleted and then Figure 1 should be resubmitted.
Response to Arguments
Applicant's arguments filed January 8, 2026 have been fully considered but they are not persuasive. Applicant argues that Staats’ side wall does not “extend at least partially conically or concavely in an embossing direction” because the cited side wall at 106 is merely a diagonal line extending at an angle. Examiner respectfully maintains that Staats discloses a recess having a side wall (106) that extends at least partially conically in an embossing direction, as seen in Figure 1. It is considered, in order to meet the limitation “at least partially conically,” the side wall element needs to taper outwardly as seen in Staats and as seen in the present application Figure 32, side wall 32.
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.
Claims 1-7, 11-12 and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Staats et al. (hereafter “Staats”) (US Patent 4,585,293).
With regards to claim 1, Staats discloses an embossing die (104) for a punching tool, comprising:
a recess (114) into which a component can be introduced for embossing, the recess has a side wall that extends at least partially conically in an embossing direction; and
an embossing bead (116) protruding into the recess and contacting the component, a curved bottom of a base of the recess separates the side wall from the embossing bead, as seen in Figure 1 and paragraph 0015.
With regards to claim 2, Staats discloses wherein the side wall is curved, as seen in Figure 1
With regards to claim 3, Staats discloses wherein the side wall has a circular shape, as seen in Figure 1.
With regards to claim 4, Staats discloses wherein the recess has a cross-section that is w-shaped or ω-shaped, as seen in Figure 1.
With regards to claim 5, Staats discloses wherein the embossing bead is formed on a base of the recess, as seen in Figure 1
With regards to claim 6, Staats discloses wherein the recess (114) extends through an entirety of the embossing die, as seen in Figures 1 and 3.
With regards to claim 11, Staats discloses wherein an end of the embossing bead has a non- flat shape, as described in paragraph 0015.
With regards to claim 12, Staats discloses wherein the non-flat shape of the end of the embossing bead is a semi-circular shape, as described in paragraph 0015.
With regards to claim 7, Staats discloses an embossing processing station, comprising:
an embossing die (104) including a recess (114) into which a component can be introduced for embossing and an embossing bead (116) protruding into the recess and contacting the component, the recess has a side wall that extends at least partially conically in an embossing direction, a curved bottom of a base of the recess separates the side wall from the embossing bead, as seen in Figure 1 and paragraph 0015; and
a holding-down device (108) pressed onto the embossing die (104) to emboss the component.
With regards to claim 14, Staats discloses wherein a portion of the holding- down device contacts a portion of the component that is not embossed [left portion of workpiece 112, as seen in Figure 1].
With regards to claim 15, Staats discloses wherein a surface of the holding- down device contacting the component is planar [left portion of workpiece 112, as seen in Figure 1].
With regards to claim 16, Staats discloses wherein the holding-down device has a rectangular shape, as seen in Figure 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Staats in view of Binder (US 2012/0318032).
With regards to claim 8, Staats discloses a method for producing a blade contact element, comprising:
providing an embossing die (104) including a recess (114) and an embossing bead (116) protruding into the recess, the recess has a side wall that extends at least partially conically or concavely in an embossing direction;
inserting the component into the recess of the embossing die; and
embossing the component, the embossing bead re-shapes the component during the embossing.
With regards to claim 9, Staats discloses wherein the embossing die is a part of an embossing processing station that includes a holding-down device (108).
With regards to claim 10, Staats discloses wherein the embossing step including pressing the holding-down device in a direction of the embossing die to press the component into the recess [ at least paragraph 0014].
Staats discloses the invention substantially as claimed except for punching a component in a punching tool prior to embossing. Binder discloses a method of forming a workpiece including punching a component in a punching tool prior to embossing and then embossing the component in an embossing die [at least claim 1 and Paragraphs 169-172]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide Staats’ method with a punching step prior to embossing, as taught by Binder, since Binder teaches that its commonly known that embossing methods includes prior punching steps.
Allowable Subject Matter
Claim 13 is 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.
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 TERESA M EKIERT whose telephone number is (571)272-1901. 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, Christopher Templeton can be reached at 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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/TERESA M EKIERT/Primary Examiner, Art Unit 3725
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