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 .
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 1-20 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 1 and 11 each appear to lack a transitional phrase (e.g. “comprising”). A transitional phrase defines the scope of the claim in terms of what unrecited elements or method steps, if any, are excluded from the scope of the claim, as well as clearly separating the preamble of the claim from the body of claim. Accordingly, the lack of a transitional phrase renders the claim indefinite because the scope of the claim is not clearly defined. For the purposes of examination this will be interpreted as an open transitional phrase (i.e. equivalent to “comprising”). Please see MPEP 2111.03.
The subject matter of claims 1-8 and 12-20 is couched in a narrative format which does not lend itself to a clear understanding of the essential steps of the method. Positively setting forth the method as a series of steps with the essential features of each step being distinctly claimed would overcome the indefiniteness with regard to the inferential claimed provision. Applicant is respectfully reminded that to be entitled to patentable weight in method claims, the structural limitations recited therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure. See Ex parte Pfeiffer, 135 USPQ 31 (1961). A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced, e.g. it doesn't begin a step with "bending" or some other -ing ending word that provides the active step.
It is further noted that claim 1 recites “wherein plastic deformation is imparted to at least a part of the sheared end face of the metal sheet.” Wherein statements are used to further define previously set forth elements/methods. In this case, a wherein statement is used to further define a step that was not previously, positively set forth, which makes it unclear if the recited element is required by the claimed apparatus. For purposes of examination, the limitation will be interpreted as follows: “imparting plastic deformation to at least a part of the sheared end face of the metal sheet.”
Claims 9 and 10 recites: “performing shearing on a metal sheet” – it is unclear if this is meant to refer the metal sheet in claim 1 or introduce an additional metal sheet.
Claims 9 and 10 recites: “imparting plastic deformation to a sheared end face by the method for improving delayed fracture characteristics according to claim 1, which is a step after the performing of shearing.” It is unclear what the metes and bounds of this method step encompasses. For purposes of examination, it is understood that both claims 9 and 10 depend from claim 1 and includes the following step “wherein the imparting plastic deformation is performed after the performing of shearing.”
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.
Claims 1-5 and 7-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujii et al. (hereafter “Fujii”) (WO 2020/184711) see US 2022/0234089 for citations, as best understood.
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].
With regards to claim 2, Fujii discloses wherein the plastic deformation imparts 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 3, 12 and 15, Fujii discloses wherein the plastic deformation is imparted by bending and unbending [at least paragraph 0038, 0045]
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 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].
Claim 11 is considered to be a product-by-process claim. It is noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695,698,227 USPQ 964, 966 (Fed. Cir. 1985). Therefore, the only structure claimed is a press-formed article having a sheared end face on at least a part of a sheet end portion and made of high-strength steel sheet. Fujii discloses a press-formed article (4) having a sheared end face on at least a part of a sheet end portion and made of high-strength steel sheet [as described in at least paragraph 0005].
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 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and further show the state of the art: US 4,353,235.
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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/TERESA M EKIERT/Primary Examiner, Art Unit 3725