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
Upon reconsideration, the requirement for restriction between the inventions of Group I and Group II, set forth March 23, 2026 is herein reconsidered by the examiner presently assigned to the application. In view of the reconsideration, the requirement for restriction set forth set forth March 23, 2026 is withdrawn and all pending claims are herein examined on their merits.
Claim Interpretation
The limitation “the positions in claim 5 line 6 will be interpreted as the previously-introduced “first position” and “second position” because these limitations were explicitly introduced as “positions”, “positions” requires a plurality, and claim 5 only introduces two “positions”.
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 1-9 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.
The term “large-diameter part” in claim 1 line 6, claim 1 line 7, claim 1 lines 11-12, claim 1 line 12, claim 1 lines 12-13, claim 2 line 6, claim 2 line 7, claim 2 lines 9-10, claim 2 line 10, claim 2 lines 10-11, claim 4 lines 3-4, claim 4 lines 4-5, claim 4 lines 5-6, claim 5 lines 3-4, claim 5 line 5,claim 7 line 3, claim 7 line 4, claim 9 lines 3-4, and claim 9 lines 4-5 is a relative term which renders the claim indefinite. The term “large-diameter part” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear how large the diameter of a part must be in order for that part to be considered a large-diameter part. The limitations of claim 3 or claim 8 would resolve this source of uncertainty as claims 3 and 8 introduce a shaft part and establish the shaft part as the basis for what is or is not considered large diameter.
Claim 1 recites the limitation "the first step" in line 10. There is insufficient antecedent basis for this limitation in the claim. As claim 1 does not designate a step as a first step, it is not clear from claim 1, as worded to which step “the first step” refers.
Claim 1 recites the limitation "the second step" in line 12. There is insufficient antecedent basis for this limitation in the claim. The claimed “second” step appears intended to refer to the cooling step, but the reference is uncertain in claim 1, as worded.
It is not clear to which directions the limitation “both directions” in the last line of claim 1, and in the last line of claim 2, refers. Even if the claimed shaft were limited to a cylindrical shaft, a cylindrical shaft has two axial directions, two radial directions and two rotational directions.
Claims 3-6 are rejected under 35 USC 112(b) because they depend on claim 1.
Claim 2 recites the limitation "the first step" in line 12. There is insufficient antecedent basis for this limitation in the claim. As claim 2 does not designate a step as a first step, it is not clear from claim 2, as worded to which step “the first step” refers.
Claims 7-9 are rejected under 35 USC 112(b) because they depend on claim 2.
Regarding claims 3 and 8, it is not clear, particularly in view of the specification, to which portions of the shaft “both end portions” refer. The specification particularly compounds the uncertainty of claims 3 and 8 because paragraph [0018] states “third large-diameter part 104 is formed in each of both end portions of the constant velocity drive shaft”, and Fig. 1 shows that the third large-diameter parts (104) are the ends of the shaft; therefore, it is not clear what can physically meet the limitation “the first large-diameter part, the second large-diameter part, and the third large-diameter part [emphasis added] respectively having larger diameters than the diameter of the shaft part toward both end portions from the center of the shaft part.”
Claim 3 recites “the first large-diameter part, the second large-diameter part”. It is not clear if the first large-diameter part and the second large-diameter part recited in claim 3 are the first and second large-diameter parts introduced in the annealing step of claim 1, the first and second large-diameter parts introduced in the molding step of claim 1 or if the first and second large-diameter parts introduced in the annealing step are the same first and second parts introduced in the molding step.
Claim 4 refers to the first large-diameter part, and to the second large-diameter part. It is not clear if the first large-diameter part and the second large-diameter part recited in claim 4 are the first and second large-diameter parts introduced in the annealing step of claim 1, the first and second large-diameter parts introduced in the molding step of claim 1 or if the first and second large-diameter parts introduced in the annealing step are the same first and second parts introduced in the molding step.
Claim 5 refers to the first large-diameter part, and to the second large-diameter part. It is not clear if the first large-diameter part and the second large-diameter part recited in claim 5 are the first and second large-diameter parts introduced in the annealing step of claim 1, the first and second large-diameter parts introduced in the molding step of claim 1 or if the first and second large-diameter parts introduced in the annealing step are the same first and second parts introduced in the molding step.
The term “substantially the same temperature” in claim 5 line 7 is a relative term which renders the claim indefinite. The term “substantially the same temperature” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear, in view of the specification how close the temperatures must be in order to be considered “substantially” the same temperature.
Claim 6 is rejected under 35 USC 112(b) because it depends on claim 5.
Claim 6 claims “one of the positions is cooled for a longer cooling time period than the other position while being repeatedly cooled and heated”. As claim 6 claims a cooling time period while being heated, it is not clear what steps the time period of claim 6 limits.
Each of claim 7, 8, and 9 refers to the first large-diameter part, and to the second large-diameter part. It is not clear if the first large-diameter part and the second large-diameter part recited in claims 7, 8, and 9 are the first and second large-diameter parts introduced in the heating step of claim 2, the first and second large-diameter parts introduced in the molding step of claim 2 or if the first and second large-diameter parts introduced in the heating step are the same first and second parts introduced in the molding step.
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.
Claim(s) 2 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cambuzat (EP0044783A1) in view of Sudou (JP-S5636357-A). References to Cambuzat and Sudou are directed to the examiner-supplied English language translations.
Regarding claim 2, Cambuzat discloses a method for manufacturing a shaft (claim 1, [0001], [0010]) by full enclosed die forging (Figs. 12-14) including a metal mold pair including an upper metal mold and a lower metal mold (die halves 18 and 19) (Figs. 12-14, [0001], [0047], [0053]). Cambuzat discloses embodiments of a heating step of subjecting a molding material as a whole to heat treatment [0013-15] and discloses embodiments wherein portions to be forged are heat treated, whereas parts of the blank which are not forged are not heat treated [0015-17]. Cambuzat discloses and shows that the parts of the shaft that are respectively molded comprise at least a first large-diameter part and a second large-diameter part (Figs. 1-4, 12-14, [0004], [0010]); therefore, in disclosing both heat treating the blank as a whole [0013-15] and heat treating the portions of the blank to be forged [0015-17], wherein the portions to be forged are large-diameter parts (Figs. 1-4, 12-14, [0004], [0010]), Cambuzat discloses heat treating at positions where a first large-diameter part and a second large-diameter part included in the shaft are respectively molded. Cambuzat discloses a molding step of molding in one step a first large-diameter part, a second large-diameter part, and a third large-diameter part in the molding material (Figs. 1-4 and 12-14 show at least three larger diameter portions) subjected to the heat treatment, by pressing with the metal mold pair and pressing from both directions (Figures show pressing from the axial ends, and the disclosure repeatedly indicates that the forging mechanism is upset forging) of the molding material (Figs. 12-14, [0021], [0024], [0047]).
Cambuzat does not disclose that the forging is a cold forging process.
Sudou teaches a method for manufacturing a constant velocity drive shaft (shaft for constant velocity joints [0002]) by full enclosed die cold forging including a mold pair including an upper metal mold and a lower metal mold (invention makes it possible to easily manufacture stepped shafts by cold upsetting [0002-03], Fixed die 2, Moving die 3). Sudou teaches molding in one step a first large-diameter part, a second large-diameter part, and a third large-diameter part (1-3, 1-2, 1-2, 1-3 in Fig. 2) by pressing with the metal mold pair and pressing from both directions of the molding material (Fig. 2, press the pressed and clamped material axially from both ends with a pusher to cause the spline portion and projection at both ends of the material to bulge out. [0002]). Sudou teaches that the cold method allows for the easy manufacture of stepped shafts using only radial and axial compression molding of the material, resulting in a higher yield compared to conventional machining methods [0002] and that the method allows a thin minimum diameter of the product shaft, which allows the product to be made lighter [0002].
Both Cambuzat and Sudou teach methods of manufacturing stepped shafts by upset forging.
It would have been obvious to one of ordinary skill in the art, at the time of filing to perform the forging disclosed by Cambuzat under cold forging conditions because Sudou teaches that a cold upset forging for stepped shafts, such as the shaft disclosed by Cambuzat, allows for the easy manufacture of stepped shafts using only radial and axial compression molding of the material, resulting in a higher yield compared to conventional machining methods (Sudou [0002]) and that the method allows a thin minimum diameter of the product shaft, which allows the product to be made lighter (Sudou [0002]). Cambuzat discloses that the forging process is applicable to metallic axes of a shape similar to that of axles [0001]. Considering the similarities in the form of the product shafts taught by both Cambuzat and Sudou (Cambuzat Figs. 1-4, 12-14, Sudou Fig. 2), and considering Sudou teaches that the forging technique is effective at producing a constant velocity drive shaft [0002], it would have been obvious to one of ordinary skill in the art, at the time of filing to apply the method disclosed by Cambuzat in view of Sudou to manufacture of a constant velocity drive shaft.
Regarding claim 7, Cambuzat discloses embodiments wherein the heating, and therefore the temperatures at which positions to be molded differ from each other in the heating step [0015-17], [0038].
Regarding claim 8, Cambuzat shows that the shaft includes a shaft part and the first large-diameter part, the second large-diameter part, and the third large-diameter part respectively have larger diameters than the diameter of the shaft at end portions from the center of the shaft part (Figs. 1-4, 12-14). Sudou further shows that the shaft comprises a shaft part and at least three large-diameter parts with diameters larger than that of the shaft part (Fig. 2).
Regarding claim 9, Cambuzat shows that the mold pair includes a first cavity for molding the first large-diameter part, a second cavity for molding the second large-diameter part, and a third cavity for molding the third large-diameter part (Figs. 12-14).
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cambuzat (EP0044783A1) in view of Sudou (JP-S5636357-A) and Benedyk (US 5911844).
Regarding claim 1, Cambuzat discloses a method for manufacturing a shaft (claim 1, [0001], [0010]) by full enclosed die forging (Figs. 12-14) including a metal mold pair including an upper metal mold and a lower metal mold (die halves 18 and 19) (Figs. 12-14, [0001], [0047], [0053]). Cambuzat discloses embodiments of a heating step of subjecting a molding material as a whole to heat treatment [0013-15] and discloses embodiments wherein portions to be forged are heat treated, whereas parts of the blank which are not forged are not heat treated [0015-17]. Cambuzat discloses and shows that the parts of the shaft that are respectively molded comprise at least a first large-diameter part and a second large-diameter part (Figs. 1-4, 12-14, [0004], [0010]); therefore, in disclosing heat treating the portions of the blank to be forged [0015-17], wherein the portions to be forged are large-diameter parts (Figs. 1-4, 12-14, [0004], [0010]), Cambuzat discloses at least partial annealing at positions where a first large-diameter part and a second large-diameter part included in the shaft are respectively molded. Cambuzat discloses a molding step of molding in one step a first large-diameter part, a second large-diameter part, and a third large-diameter part in the molding material (Figs. 1-4 and 12-14 show at least three larger diameter portions) subjected to annealing by pressing with the metal mold pair and pressing from both directions (Figures show pressing from the axial ends, and the disclosure repeatedly indicates that the forging mechanism is upset forging) of the molding material (Figs. 12-14, [0021], [0024], [0047]).
Cambuzat does not disclose that the forging is a cold forging process.
Sudou teaches a method for manufacturing a constant velocity drive shaft (shaft for constant velocity joints [0002]) by full enclosed die cold forging including a mold pair including an upper metal mold and a lower metal mold (invention makes it possible to easily manufacture stepped shafts by cold upsetting [0002-03], Fixed die 2, Moving die 3). Sudou teaches molding in one step a first large-diameter part, a second large-diameter part, and a third large-diameter part (1-3, 1-2, 1-2, 1-3 in Fig. 2) by pressing with the metal mold pair and pressing from both directions of the molding material (Fig. 2, press the pressed and clamped material axially from both ends with a pusher to cause the spline portion and projection at both ends of the material to bulge out. [0002]). Sudou teaches that the cold method allows for the easy manufacture of stepped shafts using only radial and axial compression molding of the material, resulting in a higher yield compared to conventional machining methods [0002] and that the method allows a thin minimum diameter of the product shaft, which allows the product to be made lighter [0002].
Both Cambuzat and Sudou teach methods of manufacturing stepped shafts by upset forging.
It would have been obvious to one of ordinary skill in the art, at the time of filing to perform the forging disclosed by Cambuzat under cold forging conditions because Sudou teaches that a cold upset forging for stepped shafts, such as the shaft disclosed by Cambuzat, allows for the easy manufacture of stepped shafts using only radial and axial compression molding of the material, resulting in a higher yield compared to conventional machining methods (Sudou [0002]) and that the method allows a thin minimum diameter of the product shaft, which allows the product to be made lighter (Sudou [0002]). Cambuzat discloses that the forging process is applicable to metallic axes of a shape similar to that of axles [0001]. Considering the similarities in the form of the product shafts taught by both Cambuzat and Sudou (Cambuzat Figs. 1-4, 12-14, Sudou Fig. 2), and considering Sudou teaches that the forging technique is effective at producing a constant velocity drive shaft [0002], it would have been obvious to one of ordinary skill in the art, at the time of filing to apply the method disclosed by Cambuzat in view of Sudou to manufacture of a constant velocity drive shaft.
Cambuzat in view of Sudou does not disclose a cooling step of cooling the molding material partially annealed.
Benedyk teaches a method comprising press forging (column 3 lines 57-67). Benedyk teaches partially annealing a molding material at positions of material (column 2 line lines 6-21, column 3 lines 42-56). Benedyk teaches that the positions which are annealed are the positions which are molded in the forging (column 2 lines 11-14, column 3 lines 59-61). Benedyk teaches a cooling step of cooling the partially annealed, molding material (column 2 lines 22-25, column 3 lines 49-56).Benedyk teaches a molding step of shaping the heat treated and cooled the material (column 3 lines 49-61, claim 1). Benedyk teaches that the process forms metallic materials without the formation of any visually observable cracking in the stretched/drawn areas (column 1 lines 62-67), and attributes the suitability in mechanical properties in the locally treated regions to the cooling (column 3 lines 49-56).
Both Cambuzat in view of Sudou, and Benedyk teach method comprising heat treating material to be molded and forging the heat treated material.
It would have been obvious to one of ordinary skill in the art, at the time of filing to cool the heat treated portions of the shaft in the process disclosed by Cambuzat in view of Sudou, applied above because Benedyk teaches that cooling locally annealed portions of a material which has been heat treated attains mechanical properties favorable for shaping those locally heat treated portions without the formation of cracks (column 1 lines 62-67, column 2 lines 6-25, column 3 lines 42-61).
Regarding claim 3, Cambuzat shows that the shaft includes a shaft part and the first large-diameter part, the second large-diameter part, and the third large-diameter part respectively have larger diameters than the diameter of the shaft at end portions from the center of the shaft part (Figs. 1-4, 12-14). Sudou further shows that the shaft comprises a shaft part and at least three large-diameter parts with diameters larger than that of the shaft part (Fig. 2).
Regarding claim 4, Cambuzat shows that the mold pair includes a first cavity for molding the first large-diameter part, a second cavity for molding the second large-diameter part, and a third cavity for molding the third large-diameter part (Figs. 12-14).
Regarding claim 5, Cambuzat discloses embodiments wherein the annealing step includes subjecting a first position where the first large-diameter part is molded and a second position where the second large-diameter part is molded of the molding material to annealing treatment while holding the positions, respectively, at substantially the same temperatures for a predetermined time period [0013-15].
Allowable Subject Matter
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Independent claim 1 claims a method for manufacturing a constant velocity drive shaft, thereby claiming a method of manufacturing a product that is at least capable of use as a shaft component of a CV-drive. Claim 1 claims manufacturing by full enclosed die cold forging including a metal mold pair including an upper metal mold and a lower metal mold. Note that the preamble recites limitations which invoke a manipulative difference beyond the body of the claim; therefore, the statements in the preamble of independent claim 1 are considered as limitations of the claim. See MPEP 2111.02(II). Claim 1 claims the method comprises an annealing step of partially annealing a molding material at positions where a first large-diameter part and a second large-diameter part included in the constant velocity drive shaft are respectively molded. Claim 1 claims a cooling step of cooling the molding material partially annealed in the first step. Claim 1 claims a molding step of molding in one step a first large-diameter part, a second large-diameter part, and a third large-diameter part in the molding material by pressing with the metal mold pair and pressing. Claim 5 depends on claim 1. Claim 5 claims the annealing step includes subjecting a first position where the first large-diameter part is molded and a second position where the second large-diameter part is molded of the molding material to annealing treatment while holding the positions, respectively, at substantially the same temperatures for a predetermined time period. Claim 6 depends on claim 5. Claim 6 claims that respective timings at which cooling is started at the first position and the second position are simultaneous in the cooling step, but one of the positions is cooled for a longer cooling time period than the other position (the one of the positions which is not cooled for a longer time period).
The present office action rejects claim 5 under 35 USC 103 over Cambuzat (EP0044783A1) in view of Sudou (JP-S5636357-A) and Benedyk (US 5911844). Cambuzat in view of Sudou and Benedyk is the combination of prior art of record closest to claim 6. The rejection relies on Benedyk to teach localized heat treatment comprising cooling to render obvious annealing in positions to be molded. Benedyk does not teach cooling two positions simultaneously starting for a common temperature at different cooling rates. The cooling process taught by Benedyk of quenching (column 3 lines 42-61) likely would cool at the same or nearly the same rate. Claim 6 defines over Cambuzat in view of Sudou and Benedyk at least in claiming subjecting a first position where the first large-diameter part is molded and a second position where the second large-diameter part is molded of the molding material to annealing treatment while holding the positions, respectively, at substantially the same temperatures (from the dependence of claim 6 on claim 5) and claiming that respective timings at which cooling is started at the first position and the second position are simultaneous in the cooling step, but one of the positions is cooled for a longer cooling time period than the other position.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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