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 and Status of Claims
Applicant's election with traverse of Invention I, claims 1-3 and 9 in the reply filed on 5/28/26 is acknowledged. The traversal is on the ground(s) that claims 1 and 4 have been amended such that the common technical feature requires an arrangement of rolls under water-cooling and air-cooling conditions. This is not found persuasive because the common technical feature between these inventions is a quenching apparatus and as Kuroda discloses a cooling unit including at least one pair of rolls which are capable of rotating a peripheral speed equal to a running speed of the metal sheet where the rolls are capable of movement where the rolls can cause the metal sheet to run in the bath as well as where the rolls are farther from the metal sheet, Kuroda discloses the common technical feature of the quenching apparatus and the method of operating the apparatus does not differentiate the common technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-8 and 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/28/26.
Thus, claims 1-3 and 9 are examined in this office action of which claim 1 was amended in the reply dated 5/28/26.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-3 and 9 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 the limitation "the bath that does not contain the cooling medium" in the 4th and 5th lines from the end of the claim. There is insufficient antecedent basis for this limitation in the claim. While there is a previous recitation of “a bath that contains a cooling medium” there is no previous recitation of a bath that does not contain the cooling medium. Claims 2-3 and 9 are also rejected as they depend from claim 1 and do not solve the above issue.
Claims 3 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As claims 3 and 9 are directed to the quenching apparatus of claims 1 and 2 respectively and claims 3 and 9 recite that the quenching apparatus is installed on an exit side of a soaking furnace of a continuous annealing facility, where the quenching apparatus is installed does not further limit the structure of the claimed apparatus. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by US 4422623 A of Kuroda.
As to claim 1, Kuroda discloses a cooling unit with water quenching means including a reservoir filled with water for water quenching a steel strip (Kuroda, claim 3), meeting the limitation of a quenching apparatus that cools a metal sheet. Kuroda discloses a cooling unit where a strip is passed between 4 rollers where upper rollers are moved in the vertical direction by a screw or oil pressure cylinder (Kuroda, col 3, lines 52-58 and Figs 5-7), meeting where there are at least one pair of rolls capable of rotating at a peripheral speed higher than or equal to a running speed of the metal sheet, and are capable of achieving distances from each roll of the at least one pair of rolls and the metal sheet are changeable and where there is a movement mechanism that is capable of having the pair of rolls such that the metal sheet is disposed between them or disposed as positions farther from the metal sheet than the positions where they are disposed in the case where quenching is performed. Kuroda discloses a bath that contains a water in which the metal sheet is immersed and runs and at least one pair of rolls disposed such that the metal sheet running in the bath is interposed between the at least one pair of rolls in the bath (Kuroda, Figs 5-7 where the strip 5, goes under the water and is guided between rollers 12a, 32, and 32a under the water).
While Kuroda does not explicitly state that in a case where quenching in which the metal sheet is immersed in the cooling medium is performed: causing the metal sheet to run in the bath that contains the cooling medium, and in the bath, cooling the metal sheet by rotating at least one pair of rolls disposed such that the metal sheet running in the bath is interposed between the at least one pair of rolls at a peripheral speed higher than or equal to a running speed of the metal sheet, and in a case where the quenching in which the metal sheet is immersed in the cooling medium is not performed: causing the metal sheet to run in the bath that does not contain the cooling medium, and disposing the at least one pair of rolls at positions farther from the metal sheet than positions where the at least one pair of rolls are disposed in the case where the quenching is performed, this is functional language that is a description of what the apparatus does rather than its structure. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987), see MPEP § 2114. In this case, Kuroda discloses a bath capable of containing water, pairs of rollers disposed such that the metal sheet runs between the rolls in the bath, and a screw or oil pressure cylinder, meeting the limitation of a movement mechanism which can move the pair of rollers to contact or not contact the metal sheet moving through the bath. Thus, Kuroda discloses an apparatus structure that is capable of carrying out the recited functional language.
As to claim 3, as the claim is directed to the quenching apparatus of claim 1, where this apparatus is installed does not further limit the claimed structure of the quenching apparatus, see 112(d) rejection above. Nevertheless, Kuroda discloses a continuous annealing apparatus where the quenching apparatus is installed on an exit side of a soaking furnace (Kuroda, col 3, lines 52-55 and FIG. 4).
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.
Claims 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over US 4422623 A of Kuroda in view of JP H08-295946 A and its English translation of Yuasa.
As to claim 2, Kuroda discloses the quenching apparatus of claim 1, see claim 1 rejection above. However, Kuroda does not explicitly disclose where the at least one pair of rolls are configured to rotate in a reverse direction to a running direction of the metal sheet.
Yuasa relates to the same field of endeavor of a method and apparatus for cooling steel sheets, and more particularly to a method and apparatus for preventing non-uniform cooling in the width direction of a steel sheet when using an immersion type cooling device in an online controlled cooling process, a direct quenching process, or a reheating process (Yuasa, paragraph [0001]). Yuasa teaches where the roll provided in the immersion tank for moving cooling water in the opposite direction of movement of the steel plate and where the speed of the rollers is independently variable (Yuasa, paragraph [0007]). Yuasa teaches that this makes it more difficult for the vapor film at the width end of the steel plate to escape, extending the boiling time of the film at this location, and preventing supercooling of the width end of the steel plate caused by three-sided cooling (Yuasa, paragraph [0008]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute rollers which can rotate in the opposite direction and independently variable in speed as taught by Yuasa into the quenching apparatus disclosed in Kuroda, thereby making it more difficult for the vapor film at the width end of the steel plate to escape, extending the boiling time of the film at this location, and preventing supercooling of the width end of the steel plate caused by three-sided cooling (Yuasa, paragraph [0008]).
As to claim 9, as the claim is directed to the quenching apparatus of claim 2, where this apparatus is installed does not further limit the claimed structure of the quenching apparatus, see 112(d) rejection above. Nevertheless, Kuroda discloses a continuous annealing apparatus where the quenching apparatus is installed on an exit side of a soaking furnace (Kuroda, col 3, lines 52-55 and FIG. 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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