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 .
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 17/700790 (reference application).
With regards to claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 1 of the current application are to be found in claim 1 of the copending application. The difference between claim 1 of the current application and the copending application lies in the fact that the patent claim includes more elements and is thus more specific. Thus the invention of claim 1 is in effect a “species” of the “generic” invention of claim 1 of the current application. It has been held that the generic invention is anticipated by the species [see In re Goodman, 29 USPQ2d 2010 (fed. Cir.) 1993)]. Since claim 1 is anticipated by claim 1 of the copending application, it is not patentably distinct from claim 1 of the current application.
With regards to claim 2, all the claimed subject matter in claim 2 of the current application are to be found in claim 2 of the copending application.
With regards to claim 3, although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 3 of the current application are to be found in claim 3 of the copending application. The difference between claim 3 of the current application and the copending application lies in the fact that the patent claim includes more elements and is thus more specific. Thus the invention of claim 3 is in effect a “species” of the “generic” invention of claim 3 of the current application. It has been held that the generic invention is anticipated by the species [see In re Goodman, 29 USPQ2d 2010 (fed. Cir.) 1993)]. Since claim 3 is anticipated by claim 3 of the copending application, it is not patentably distinct from claim 3 of the current application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Egawa et al (US 2016/0158914).
In reference to claim 1, Egawa et al discloses a fatigue crack growth suppressing method for a bent portion of a metal sheet for suppressing a growth of a fatigue crack in a bent portion obtained by bending the metal sheet (11), comprising
generating a compressive residual stress by applying plastic strain at least in a range from a bending start point to a bending end point on an inside of a bend of the bent portion [see paragraph 0057; stresses are altered on inner and outer surface by shot peening], at an interval of less than a sheet thickness of the metal sheet in a valley line direction of the bent portion, in a direction orthogonal to the valley line direction [see paragraph 0058; figures 1C & 13].
In reference to claim 3, Egawa et al discloses an automotive part comprising
a bent portion formed by bending a metal sheet (11) [see figure 1A; paragraph 0033], the bent portion being suppressed in growth of a fatigue crack, and
an indentation band including a series of indentations (94) obtained by needle peeing using an impact pin [it is noted that this limitation is a product by process limitation and therefore the patentability lies in the claimed structural components, i.e. indentation path, and not how the component was formed] in a direction orthogonal to a valley line direction, the indentation band being positioned at least within a range from a bending start point to a bending end point on an inside of a bend of the bent portion, and the indentations (94) provided at an interval of less than a sheet thickness of the metal sheet along the valley line direction of the bent portion [see figures 1C & 13; paragraphs 0057-0058].
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Egawa et al in view of Haas et al (US 2014/0007394).
In reference to claim 2, Egawa et al discloses the compressive residual stress is generated by forming an indentation band, which is a series of indentations (94) [see figure 13], on the inside of the bent portion by a shot peening treatment, and
the shot has a radius of curvature thereof, in a cross section orthogonal to the valley line direction, equal to or less than a radius of curvature of the bent portion is used [see figure 13].
Egawa et al discloses the invention substantially as claimed except for wherein the compressive residual stress is generated by needle peening.
However, Haas et al teaches that it is well known in the art that shot peening, laser shock peening, needle peening, ultrasonic peening are all known equivalent peening treatments for forming compression within a workpiece [see paragraph 0007].
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to generate the compressive residual stress by a needle peening treatment instead of by a shot peening treatment since these peening treatments are known equivalents in the art as taught by Haas et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725