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 .
Election/Restrictions
Claims 3-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 25, 2025.
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 and 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 aid of the forging dies driven by the eccentric drive” – it is unclear how the eccentric drive can drive the forging dies since claim 1 previously set forth that the outer die part is driven by eccentric drive while the inner die part is driven by the hydraulic drive. Therefore, for purposes of examination, it is understood that this limitation should read: “with the aid of the outer die parts are driven by the eccentric drive.
Claim 1 recites:
“initially forming the forging ingot under a heat with the aid of the forging dies driven by the eccentric drive, in near-surface forge processing with a degree of deformation which is above a critical degree of deformation and which excludes the formation of cracks,”
It is unclear what the metes and bounds of “near-surface forging processing” encompasses. Is this term meant to further define the initial forming step or is it an additional, separate method step? It is unclear what the metes and bounds of “critical degree of deformation” encompasses. It is unclear how one of ordinary skill in the art know if they met such criteria as it is considered to be an ambiguous term.
Claim 2 recites: “using the forging dies driven by the eccentric drive” - it is unclear how the eccentric drive can drive the forging dies since claim 1 previously set forth that the outer die part is driven by eccentric drive while the inner die part is driven by the hydraulic drive. Therefore for purposes of examination, it is understood that this limitation should read: “using the outer die parts driven by the eccentric drive.”
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 two die parts (7, 8) which can be radially moved relative to one another and of which an inner die part (7) of the two die parts bearing a forging tool is drive-connected by a hydraulic cylinder (hydraulic system 11) to an outer die part (8) of the two die parts which can be driven by an eccentric drive (eccentric drive 3), the method comprising:
initially forming the forging ingot with the aid of the outer die parts driven by the eccentric drive [as described in at least paragraph 11],
following 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 in near-surface forge processing 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 >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
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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/TERESA M EKIERT/Primary Examiner, Art Unit 3725