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. Status of Claims Claims 1 - 5 are examined in this office action based on the claims submitted 1/4/24 . 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 appl icant regards as his invention. Claim 5 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 5 recites the limitation “having iron as a main component” in line 2. It is not clear what is meant by “main component”. It is not clear if this means that iron must be the largest component, whether it must be greater than 50% of the metal member, whether it merely exists as one of the larger components in the metal member, or some other meaning. 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. Claim s 1-5 are rejected under 35 U.S.C. 102 FILLIN "Insert either \“(a)(1)\” or \“(a)(2)\” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable." \d "[ 2 ]" (a)(1) as being FILLIN "Insert either—clearly anticipated—or—anticipated—with an explanation at the end of the paragraph." \d "[ 3 ]" anticipated by FILLIN "Insert the prior art relied upon." \d "[ 4 ]" JP H01-8136 A with reference to its English machine translation of Shibata . As to claim s 1 -2 , Shibata discloses a method of manufacturing a mechanical component (Shibata, paragraph [0012]), meeting the limitation of manufacturing a reference piece. Shibata discloses where the machine part according to the invention has an amount of retained austenite in the surface layer portion of 15 to 20 vol % (Shibata, paragraph [0006]). While claim 1 also recites that this is “for measuring retained austenite”, the claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "'extraneous' limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), see MPEP § 2111.02(II) . In the instant case, this invocation that the piece is for measuring retained austenite does not add any structure other than there must be retained austenite in the piece that is capable of being measured. As Shibata discloses where the structure of the machine part contains retained austenite, it meets the claim limitations . Shibata discloses where a material made of steel is austenitized, followed by shot peening in a hot temperature range, followed by quenching the material and finally quenching is followed by tempering the material (Shibata, paragraph [0012]), meeting the limitation of t he method comprising performing quenching and tempering a metal member after performing nano-crystallization on at least a portion of a surface of the metal member and the claim 2 limitation of wherein the nano-crystallization is performed by shot peening . As to claim s 3 -4 , while Shibata does not explicitly disclose an orientation of the metal member is cancelled by the shot peening as required by claim 3, nor wherein crystal grains sufficient to withstand measurement of residual stress by X-ray are left in the metal member by the shot peening as required by claim 4, as noted above Shibata discloses the same starting material of steel, applies the same method thereto of shot peening followed by quenching and tempering, and results in the same finished structure incorporating retained austenite. As such, the same method applied to the same materials would naturally produce the same properties of an orientation of the metal member is cancelled by the shot peening as required by claim 3, and wherein crystal grains sufficient to withstand measurement of residual stress by X-ray are left in the metal member by the shot peening as required by claim 4. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes , a prima facie case of either anticipation or obviousness has been established.” In re Best , 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I) . As to claim 5 , it is not clear what is meant by having iron as a main component, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring iron to be a component in the claimed metal member. Shibata discloses where the material making up the mechanical component is steel (Shibata, paragraph [0012]), meeting the claim limitation as steel is an iron-based alloy and therefore contains iron. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT Joshua S Carpenter whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-2724 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday - Friday 8:00 am - 5:30 pm . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Keith Hendricks can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 272-1401 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOSHUA S CARPENTER/ Examiner, Art Unit 1733 /JOPHY S. KOSHY/ Primary Examiner, Art Unit 1733