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 .
Response to Arguments
Applicant's amendments filed on June 18, 2026 did not alleviate all 35 U.S.C. 112 issues, and in some cases these amendments introduced new 35 U.S.C. 112 issues, please see below for current rejections.
Applicant argues that Fuji does not disclose repeated bending and unbending as currently recited in claim 1 i.e. “bending and unbending a plurality of times.” Examiner notes that this is a newly presented limitation, therefore, the previous 102 rejection has been withdrawn and a 103 rejection is presented below.
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 9 and 10 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.
Claims 9 and 10 recites: “improving the delayed fracture characteristics of the metal sheet according to claim 1, wherein the improving the delayed fracture characteristics is performed after the performing of the shearing.” It is unclear what the metes and bounds of this method step encompasses. Claim 1 sets forth in the preamble “a method for improving delayed fracture characteristics of a metal sheet,” but does not set forth an additional step of “improving.” For purpose of examination, only a shearing step is the additional requirement and the rest of the claim is meant to describe that this “shearing” step occurs prior to the method step set forth in claim 1.
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 1-2, 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii et al. (hereafter “Fujii”) (WO 2020/184711) see US 2022/0234089 for citations.
With regards to claim 1, Fujii discloses a method for improving delayed fracture characteristics of a metal sheet (4), the metal sheet having a sheared end face on at least a part of a sheet end portion and being made of a high-strength steel sheet [paragraph 0031], comprising:
imparting plastic deformation to at least a part of the sheared end face of the metal sheet [completed via punch and die set, as seen in Figures 4A-B and described in paragraphs 0036-0038, 0067, 0072-0073].
Fujii discloses the invention substantially as claimed except for wherein the imparting the plastic deformation is imparted by bending and unbending a plurality of times. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to perform the method steps repeatedly, since it has been held that mere duplication of the essential working steps involves only routine skill in the art. In re Harza, 219 F.2d 669, 124 USPQ 378 70 (CCPA 1950) MPEP 2144.01 IV.
With regards to claim 2, Fujii discloses wherein the imparting the plastic deformation including imparting plastic strain greater than 0 in a direction along an extending direction of the end face to at least a part of the sheared end face [at least paragraph 0091].
With regards to claims 4 and 13, Fujii discloses wherein each bending angle in the bending and unbending is set to less than 90 degrees [at least paragraph 0001].
With regards to claims 5 and 14-16, Fujii discloses wherein the bending and unbending is performed by bending by press forming [at least paragraphs 0038, 0045, 0089].
With regards to claim 7, Fujii discloses wherein a final bend in the bending and unbending is set such that an outside of the bend is on a burr side of the sheared end face [at least paragraph 0091].
With regards to claim 8, Fujii discloses wherein the metal sheet is a steel sheet having a tensile strength of 980 MPa or more [paragraph 00031].
With regards to claim 9 and 10, Fujii discloses performing shearing on the metal sheet and imparting plastic deformation is performed after the performing of shearing [at least paragraph 0089].
Claims 6 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over in view of Fujii in view of Obata (JPH09122756).
Fujii discloses the invention substantially as claimed except for wherein the bending and unbending is performed by leveling using a plurality of rolls. Obata is relied upon to teach bending and unbending is performed by leveling using a plurality of rolls [Abstract and Figure 1]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute Fujii’s bending apparatus (punch and die) with Obata’s benign apparatus (leveling rollers) because simple substitution of one known element for another yield predictable results requiring only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Templeton can be reached at 571-270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TERESA M EKIERT/Primary Examiner, Art Unit 3725
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