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 .
Information Disclosure Statement
It is noted that the present application has at least five (5) related foreign filings or publications in other countries. Applicant is reminded of the duty under 37 CFR 1.56(a) to disclose information material to patentability, such as (a) Office Actions and prior art related to the claimed invention which have been cited during prosecution of related filings, (b) prior foreign or domestic filings by Applicant(s) which are related to the claimed or disclosed invention and which constitute prior art, (c) related brochures, dissertations, or other research publications, including that which has been authored by one or more inventors listed under this application or by other individuals under which or along which one or more inventors may have been working, and (d) any other relevant prior art Applicant may be aware of, including since the filing of any previous information disclosure statement (IDS).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f): (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: the claim 2 temperature measurement unit and the claim 6 supply mechanism.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Objections
Claim 6 is objected to because of the following informalities:
A colon “:” should be added after “includes” ending line 2 of claim 6.
Absent persuasive argument contesting this issue, appropriate correction by amendment is required.
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.
Claims 1-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In particular:
Because claim 1 at lines 4 and 5 refers back to “the” metal material, which is first set forth at line 1 as being a “heated” metal material, the line 4-5 metal material presently corresponds to this line 1 heated metal material. As a result, it is unclear which of the presently claimed forming die and temperature control unit, if any, in fact “form” a heated metal material as recited in the claim preamble if the only metal material presently acted upon thereby is already heated.
Since antecedent basis is not clearly conveyed, it is unclear at line 3 of claim 1, in the recitation of a forming die “that performs forming”, exactly what this forming is performed on. If this refers to a metal material such as that recited previously in the claim preamble, then a fully supported amendment should be made to this effect.
Since antecedent basis is not clearly conveyed, it is unclear in the last two lines of claim 1 whether “such that warpage in the non-quenching area is reduced” is directed to an actual configuration of the temperature control unit, or whether this may be construed more broadly as directed to an intended result that does not necessarily limit the control unit’s configuration.
The phrase beginning with “such that” beginning at line 5 of claim 2 and line 3 of claim 3 is considered indefinite for these same or similar reasons.
Since antecedent basis is not clearly conveyed, it is unclear in the last line of claim 1 with respect to what the recited reduction takes place.
This same corresponding issue exists also for the reduction recited in the 2nd to last line of claim 2.
It is unclear at lines 6-8 of claim 5 whether the first and second temperature control mechanisms are each formed with multiple of the recited flow paths or with a respective one of the flow paths.
Since antecedent basis is not clearly conveyed, it is unclear in claims 8 and 10 exactly what the recited “forming surface side” and “side opposite to the forming surface side” are of (e.g. the recited die block(s), forming die, forming device, or some other recited or unrecited component).
Claim 10 recites “third” and “fourth” die blocks without first reciting “first” and “second” die blocks, which is confusing. If it is intended for claim 10 to depend from claim 8 which recites first and second die blocks, then a fully supported amendment should be made to this effect.
It is unclear in claim 10 exactly what the recited “past actual results of the forming” is performed on, and/or exactly how this item or material differs or is similar to the heated metal material recited in claim 1.
It is unclear in claim 12 exactly what the recited “past actual results” entail.
Absent persuasive argument contesting these issues, appropriate correction by amendment is required.
Claim Rejections - 35 USC § 102/103
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.
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 1-7 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tang et al. (CN 102304612, first made of record via IDS on 28 April 2025). The machine translation of Tang made of record herewith is cited herein.
As to claim 1, Tang teaches a forming device that comprises a forming die (e.g. figs. 1-6) comprising portions 2, 4 and 9, 11 capable of performing the claimed quenching and non-quenching (see the corresponding description of the above figures), in addition to a temperature control unit that provides uniformly distributed temperatures in a manner believed to correspond to the claimed warpage reduction (see at least [0010], [0059], and [0065], in addition to the explicit [0028] reference to controlling temperature such that no warpage occurs).
Tang further teaches the claim 2 use of a temperature measurement unit for temperature control ([0010], [0012], [0038]-[0040], etc.), provides the claim 3 temperature control ([0013], etc.), comprises the claim 4-5 dies and temperature control mechanisms (see at least the above citations), comprises the claim 6 supply mechanism and control unit (see the corresponding recitations pertaining to at least the fig. 1-6 flow paths 3, 7), comprises the claim 7 temperature control mechanisms and heater 13 (figs. 4, 6), and comprises the claim 12 control based on feedback information on past actual results (note the [0041] use of PID control).
It is noted, with respect to the pending claims, that an apparatus claim is generally not believed to be further limited by an intended material or article worked upon thereby (MPEP § 2115) or by an intended manner of its operation (MPEP § 2114(II)), and must instead distinguish over prior art in terms of structure rather than function. Any such limitations as they appear in the pending claims are thus not believed to further limit the claimed apparatus or its structure.
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tang as applied to at least claim 5 above, and further in view of Chen et al. (CN 105195628, made of record via IDS on 28 April 2025).
Tang teaches the claim 9 and 11 insulating member 8, but is not believed to disclose the claim 8 and 10 die blocks on a forming surface side and side opposite thereto configured in the manner claimed. However, for a similar forming device, Chen teaches a fig. 2-5 configuration believed to comprise such a forming surface side and side opposite thereto for what may be construed as a first die block 131, second die block 132, third die block 151, and fourth die block 152, with flow paths running in the second and fourth die blocks in the manner claimed. It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Chen into Tang as providing an art-recognized interchangeable flow path configuration capable of accomplishing the same or similar function as that of Tang, and/or as providing an improvement whereby temperature could be more closely controlled within individual segments of the forming die(s).
Conclusion
See at least the abstract and figures of the additional prior art hereby made of record, which additional prior art is considered pertinent to Applicant’s disclosure and may be relied upon in subsequent rejections against claimed subject matter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Atul P. Khare whose telephone number is (571)270-7608. The examiner can normally be reached Monday-Friday 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A. Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Atul P. Khare/Primary Examiner, Art Unit 1742