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 .
Status of Claims
Claims 1-4 are amended in view of preliminary amendment filed 2/23/2024. Therefore, claims 1-4 are currently under examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,290,853 in view of JP 6136625 (JP625).
Claims 1-3 of U.S. Patent No. 12,290,853 teaches a method of manufacturing a hot-forged member comprising the same heating, glass particles lubricant coating applying, heat-resistant insulating bonding, and die forging steps as claimed.
However, claims 1-3 of U.S. Patent No. 12,290,853 do not explicitly teach that the glass lubricant has a viscosity of 102 to 107 Pa-s as claimed.
JP625 teaches a lubricating coating for hot forging (abstract), wherein glass lubricant is used due to its high viscosity in order to prevent seizure and wear of the forging tool[0020]. JP625 further teaches that the viscosity of the glass powder is 100 Pa·s[0021].
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN101332484(CN484), and further in view of JP 6136625(JP625).
CN484 teaches a method for manufacturing a hot-forged member(abstract, page 5 steps a)-d)), comprising:
Heating a forging black made of superalloy to a die forging temperature;
Applying an insulating cotton to a surface of the forging black; and
Hot forging the forging blank by compression using a die
The process of CN484 further teaches that the insulating cotton comprises glass powder for good lubrication(page 8, under item 2.; page 9, under item 8.)
However, CN484 does not explicitly teach that the glass lubricant has a viscosity of 102 to 107 Pa-s as claimed.
JP625 teaches a lubricating coating for hot forging (abstract), wherein glass lubricant is used due to its high viscosity in order to prevent seizure and wear of the forging tool[0020]. JP625 further teaches that the viscosity of the glass powder is 100 Pa·s[0021].
Regarding claim 1, it would have been obvious to one of ordinary skill in the art to have incorporated the glass powder having a viscosity of 100 Pa·s as taught by JP625 into the glass powder of CN484 in order to prevent seizure and wear of the forging tool as taught by JP625.
Regarding claim 2, CN484 further teaches that he hot forging step comprises an open-die forcing step(page 5 last line), and the insulating cotton is applied to the open area of the forging blank(i.e. a free deformation portion).
Regarding claim 3, since the insulating cotton as taught by CN484 comprises glass powder to increase lubrication, the examiner concludes that at least some of the glass powder as taught by CN484 would have been adhered to a surface of the insulating cotton, which meets the limitations of the instant claim.
Regarding claim 4, the insulating cotton as taught by CN484 reads on the claimed inorganic fiber.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/ Primary Examiner, Art Unit 1733
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