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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 11/05/2025 has been entered.
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.
Claims 1, 6-10, 13-14, 18-19, 26, 23-33, and 38-41 are rejected under 35 U.S.C. 103 as being unpatentable over Perkins (GB 1,113,208 A) in view of Bolender et al. (US 4,233,011).
Claim 1: Perkins discloses a roller (10) that includes a roller core (14) consisting of a core material; a roller shell (20) consisting of a shell material, the roller shell surrounding the roller core at least in sections; wherein the shell material has a greater hardness than the core material (Page 4, Lines 3-29); and wherein the roller core has a device for tempering the roller shell (18; Page 4, Lines 75-93), but fails to disclose that the device provides a plurality of individually addressable tempering zones in the axial direction of the roller, wherein individual temperatures can be set in each tempering zone.
However, Bolender et al. teaches a roller (1,2a,2b,3,3a) that includes a device for tempering a roller shell (3,3a) that includes a plurality of individually addressable tempering zones (Z1,Z2,Z3) in the axial direction of the roller, wherein individual temperatures can be set in each tempering zone (Col. 3, Line 3 to Col. 4, Line 52).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the device for tempering the roller shell of Bolender et al. for that of Perkins because it is prima facie obvious to substitute one known prior art element for another in order to achieve predictable results (MPEP 2143(B)). This substitution would have provided the roller of Perkins with the additional capability of being able to control not only the temperature of the roller, but also individual sections of the roller. This modification would have allowed the roller of Perkins to be useful in additional applications other than that originally intended for the roller.
The remainder of the claim has been treated as the intended use of the claimed apparatus. Since the apparatus of Perkins/Bolender et al. is capable of performing the stated intended use, the apparatus of Perkins/Bolender et al. meets the limitations of the claim. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim 6: Perkins fails to explicitly disclose that that the roller shell has a hardness of at least 53 HRC.
However, Perkins does disclose that the roller shell is formed of steel having a hardness of HRC 50 or higher. Further there are known in the art steels having a hardness of HRC 53 or higher such as heat treated 420HC steel.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to form the roller shell of Perkins from another steel such as heat treated 420HC steel, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 7 and 26: Perkins further discloses that the roller shell and the roller core are designed as separate components and the roller shell is attached to the roller core (Page 4, Line 5-29).
The remainder of the claim has been treated as product by process limitations. 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). In the instant case the product of Perkins is the same product as that claimed, and therefore meets the limitations of the claim.
Claims 8-9: The limitations of these claims have been treated as product by process limitations. 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). In the instant case the product of Perkins is the same product as that claimed, and therefore meets the limitations of the claims.
Claim 10: Bolender et al. further teaches that the roller shell has a wall thickness (D) of at least 10 mm (Col. 4, Lines 53-59).
Claim 13: Perkins further discloses that the roller core consists of an easily machinable steel or a case-hardening steel (Page 4, Lines 21-29).
Claim 14: Bolender et al. further teaches the device for tempering the roller shell comprises at least one heating and/or cooling element integrated in the roller core (Col. 3, Line 3 to Col. 4, Line 52).
Claim 16: Bolender et al. further teaches the roller core has an axial bore, in which the heating and/or cooling element is accommodated (bore depicted inside of 1 of Figure 1).
Claim 18: Bolender et al. further teaches the device for tempering the roller shell is a temperature radiator received in the axial bore of the roller core (the heating strips 6a-6f are considered temperature radiator Col. 4, Lines 35-52).
Claim 19: Perkins further discloses that the roller core has functional bores formed as fluid channels (218), which extend at least in sections on the outer surface of the roller core.
Claims 32-33: Neither Perkins et al. nor Bolender et al. disclose or reasonably suggest that the roller shell has a wall thickness (D) of at least 20 mm.
However, Bolender et al. does teach that the roller shell has a wall thickness (D) of at least 10 mm (Col. 4, Lines 53-59).
Therefore, it would have been obvious to one of ordinary skill in the art to change the size of the roller shell such that it had a wall thickness (D) of at least 20 mm, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim 38: Bolender et al. further teaches that the device is configured for localized control of thermal expansion along different points across a width of the roller (Col. 4, Lines 52).
Claim 39: Bolender et al. further teaches that the device is further configured for adjustment of a roller gap between two consecutive rollers (Col. 4, Lines 52 refers to controlling the nip pressure between the rollers).
Claim 40: Bolender et al. further teaches a temperature sensor assigned to each tempering zone (Col. 3, Line 65 to Col. 4, Line 16), wherein a recorded temperature of the tempering zone is transmitted to a control unit configured for comparing the recorded temperature to a target value and accordingly regulating a temperature of the tempering zone (Col. 3, Line 65 to Col. 4, Line 16).
Claim 41: Perkins further discloses that the roller shell is tubular in shape (as depicted in Figure 1).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Perkins (GB 1,113,208 A) in view of Bolender et al. (US 4,233,011) and Fuchs et al. (US 5,257,965).
Claim 4: Perkins fails to disclose a shell material that is applied as a coating to the roller core or the roller shell.
However, Fuchs et al. teaches a shell material applied as coating to a roller shell (Col. 2, Lines 4-9).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the shell material of Fuchs et al. with that of Perkins because it is prima facie obvious to combine prior art elements by known methods in order to achieve predictable results (MPEP 2143(A)). This modification would have strengthened the outer surface of the roller of Perkins and allowed it to be useful in additional applications other than that originally intended for the roller.
Claim 5: Fuchs et al. further teaches that the coating comprises chromium, diamond-like carbon, tungsten carbide or a metal matrix composite (Col. 2, Lines 4-9).
Claims 1-12, 27, and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Perkins (GB 1,113,208 A) in view of Bolender et al. (US 4,233,011) and Severing et al. (US 8,684,895 B2)
Claims 11 and 27: Perkins further disclose that the roller shell consists of a curable steel that is treated to harden (Page 4, Lines 102-129) using a generic treatment process. While Perkins et al. discloses a portion of the limitations recited in claim 11, Perkins et al. fails to explicitly disclose that the roller shell is through-hardened on its surface to a depth of at least 5 mm.
However, Severing et al. teaches a roller (1) roll shell is through-hardened on its surface to a depth of at least 5 mm (Col. 9, Lines 16-51).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the more specific heat treatment process for the generic one of Perkins et al. in order to arrive at a roller shell hardened on its surface to a depth of at least 5mm. This modification would have been obvious to and well within the ability of one of ordinary skill in the art to make because it is prima facie obvious to substitute one known prior art element for another in order to achieve predictable results (MPEP 2143(B)).
Claim 12: Neither Perkins et al. nor Severing et al. explicitly disclose that the roller shell is through-hardened across the entire tube wall cross-section.
However, Severing et al. does teach that the hardening is effective to a depth of 10mm which is also the thickness of the claimed roller shell.
Therefore, it would have been obvious to one of ordinary skill in the art to attempt to harden the roller shell to different depths including across its entire tube wall cross-section since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 34-35: Perkins further discloses that the curable steel comprises a cold work steel (Page 3, Lines 52-60).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Perkins (GB 1,113,208 A) in view of Bolender et al. (US 4,233,011) and Kitano et al. (US 5,895,598).
Claim 17: Neither Perkins nor Bolender et al. disclose or reasonably suggest that the device for tempering the roller shell is an inductive heating element.
However, Kitano et al. teaches that it is known in the art to temper a roller shell using an inductive heating element (Col. 5, Lines 9-16; Col. 6, Lines 40-54).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute induction heating for the heating of Perkins/Bolender et al. because induction heating is a fast and easily controllable means for heating a roller.
Claims 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Perkins (GB 1,113,208 A) in view of Bolender et al. (US 4,233,011) and Kijima et al. (US 2020155934 A1).
Claim 29: Neither Perkins nor Bolender et al. disclose or reasonably suggest that the shell material is a metal matrix composite comprises a tungsten carbide/cobalt alloy or a chromium carbide/nickel-chromium composite.
However, Kijima et al. teaches a roller having a shell material made of tungsten carbide/cobalt alloy (paragraphs [0053]-[0055]).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the tungsten carbide/cobalt alloy for the shell material of Perkins/Bolender et al. because it is prima facie obvious to substitute one known prior art element for another to obtain predictable results (MPEP 2143(B)).
Claims 30-31: Neither Perkins nor Bolender et al. disclose or reasonably suggest that the roller shell has a hardness of at least 62 HRC.
However, Kijima et al. teaches a roller having a shell material made of tungsten carbide/cobalt alloy (paragraphs [0053]-[0055]) which is known to have a hardness of at least 62 HRC.
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the tungsten carbide/cobalt alloy for the shell material of Perkins/Bolender et al. because it is prima facie obvious to substitute one known prior art element for another to obtain predictable results (MPEP 2143(B)).
Claims 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Perkins (GB 1,113,208 A) in view of Bolender et al. (US 4,233,011) and Talvitie (US 2022/0032351 A1)
Claims 36-37: Neither Perkins nor Bolender et al. disclose or reasonably suggest that the easily machinable steel comprises a heat-treatable steel, 42CrMo4.
However, Talvitie teaches that it is known in the art to form roller cores from 42CrMo4 (paragraph [0023] and [0101]).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the 42CrMo4 steel for the steel of Perkins/Bolender et al. because it is prima facie obvious to substitute one known prior art element for another in order to achieve predictable results (MPEP 2143(B)).
Conclusion
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/JASON L VAUGHAN/Primary Examiner, Art Unit 3726