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 .
Response to Arguments
Applicant's amendments filed on May 1, 2026 did not alleviate all 35 U.S.C. 112 issues and in some cases these amendments introduced new 35 U.S.C. 112 issues, please see below for current rejections.
Applicant's arguments filed May 1, 2026 have been fully considered but they are not persuasive. Applicant argues that “Blaimschein does not suggest the claimed method, although it does describe a system that has structural components that can be used in the claimed method…The Examiner incorrectly reads the Blaimschein disclosure as describing the separate forging steps of the method of claim 1.” Examiner respectfully maintains that the claim does not clearly set forth separate forging steps, please see currently 112 rejections below. Additionally, Examiner respectfully maintains that Blaimschein discloses a second, separate forging step in paragraph 11: “when the eccentric drive 3 is topped or has no lifting movement, by applying hydraulic fluid to the hydraulic cushions 9 and thus forging processes with any low allow deformation speeds to be carried out.” It is further noted that Applicant appears to provide a piecemeal analysis of the references, it has been held that one cannot show non-obviously by attacking reference individually where, as here, the rejections are based on combination of the references. In re Keller, 208 USPQ 871 (CCPA 1981).
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 applicant regards as his invention.
Claims 1-2 are 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 1 recites: “initially forming the forging ingot under a heat with the forging dies driven by the eccentric drive with a degree of deformation that is great enough to provide recrystallization and that is low enough to avoid formation of cracks” – it is unclear what the means and bounds of this limitation are since a particular material is not set forth in it unknown at what point recrystallization and/or cracks would occur - one of ordinary skill in the art would not be able to duplicate the desired resultant of this method.
Claim 1 also recites: “using the inner die parts driven by the hydraulic cylinders to forge press the ingot with a bite ratio that is greater than 0.5 with the outer die parts are stopped.” It is not clear that a second, separate and subsequent forging/pressing step is occurring.
Claim 2 recites: “subjecting the forging ingot to a finishing operation after forge pressing using the forging dies with the outer die parts driven by the eccentric drive.” The present amendment has removed “fore pressing” from claim 1; therefore it is unclear in claim 2 when the finishing operation is to occur. Furthermore “using the forging die with the outer die parts driven by the eccentric drive” makes it still unclear when the finishing operation occurs.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Blaimschein et al. (hereafter “Blaimschein”)(EP1093871A2) in view of Kirchhoff (US 2005/0247092), as best understood.
With regards to claim 1, Blaimschein discloses a method for forming of a cast forging ingot using a forging device (forging machine 1) having radially guided forging dies (forging punches 2),
each have having an inner die part (7) and an outer die part (8) that are supported to be radially moved relative to one another and wherein the inner die part (7) supports a forging tool that is drive-connected by a hydraulic cylinder (hydraulic system 11) to the outer die part (8) and wherein the outer die part is supported to be driven by an eccentric drive (eccentric drive 3), the method comprising:
initially forming the forging ingot with the forging dies driven by the eccentric drive [as described in at least paragraph 11],
following said initially forming the forging ingot, stopping the outer die parts [as described in at least paragraph 11]; and
using the inner die parts driven by the hydraulic cylinders to forge press the ingot while the outer die parts are stopped [as described in at least paragraph 11].
Please note that the following limitation was addressed under 112b above and as best understood, Blaimschein is considered to disclose forging with a degree of deformation which is above a critical degree of deformation and which excludes the formation of cracks [as described in at least paragraph 11].
Blaimschein discloses the invention substantially as claimed except for wherein the forming is under heat. It is considered to be well-known that forging is classified according to the temperature at which it is performed; that is, cold forging, warm forging or hot forging. It would have been obvious for one of ordinary skill in the art to performing Blaimschein’s forging under heat, since it would have been obvious to try this technique when choosing from a finite number of identified, predictable solutions for forging, with a reasonable expectation of success. SR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP 2143(I)(E).
Blaimschein discloses the invention substantially as claimed except for wherein the ingot has a bite ratio that is greater than 0.5. Kirchhoff is relied upon to teach a forging process producing a workpiece with a bite ratio of at least 0.5 to obtain a suitable consolidation effect [paragraph 0029]. 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 Blaimschein’s forging with the particular bite ratio because combining prior art elements according to known methods to yield predictable results require only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
With regards to claim 2, the combination of Blaimschein and Kirchhoff discloses the invention substantially as claimed except for further comprising: subjecting the forging ingot to a finishing operation after forge pressing using the outer die parts driven by the eccentric drive. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide an additional forming step with the outer die parts driven by the eccentric drive, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v Bemis Co., 193 USPQ 8.
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.
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, 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.
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.
/TERESA M EKIERT/Primary Examiner, Art Unit 3725
Prosecution Insights