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 .
Election/Restrictions
Claims 6-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 6, 2026.
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 1-5 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.
The subject matter of claims 1-5 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 "heating" or "rolling" or some other -ing ending word that provides the active step.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation “having a final thickness comprised between 0.6 mm and 25 mm”, and the claim also recites “having a final thickness smaller than 4.0 mm” which is the narrower statement of the range/limitation.
In the present instance, claim 1 recites the broad recitation “operating mode selected from a group comprising coil-to-coil mode, semi-endless mode and endless mode”, and the claim also recites “in the coil-to-coil or semi-endless mode” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
With regards to claim 5, there is insufficient antecedent basis for “the electrical power supply of said rapid heating device;” “the risk of blockage of said intermediate rolled product” and the poor quality of the strip.
Examiner notes that no art has been applied to claim 5; however, the claims as currently presented are not deemed allowable and Applicant is required to clarify in compliance with 35 USC 112 so as to facilitate a clear understanding of the claimed invention and the protection sought.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benedetti et al. (hereafter “Benedetti”)(US Patent 8,087,449).
With regards to claim 1, as best understood, Benedetti discloses a rolling method to produce a metal strip having a final thickness comprised between 0.6 mm and 25 mm, in a rolling plant configured to operate in an operating mode selected from a group comprising coil-to-coil mode, semi-endless mode and endless mode, and which comprises at least:
- a continuous casting device (11) configured to produce thin slabs, having an initial thickness comprised between 50 mm and 160 mm [ Column 10, lines 15-25];
- a furnace (15) configured to maintain said slabs at a certain temperature and/or to heat said slabs;
- at least one roughing stand (18a, 18b) configured to reduce the thickness of at least one of said slabs in order to produce an intermediate rolled product, and a plurality of finishing stands (21a-e) configured to reduce the thickness of said intermediate rolled product in order to obtain said metal strip;
- a rapid heating device (20), consisting of selectively activatable elements, which is interposed between said at least one roughing stand and said plurality of finishing stands and is configured to heat said intermediate rolled product, as seen in at least Figure 2;
and (being) wherein said rapid heating device is always kept active in the coil-to-coil or semi-endless mode to produce a strip having a final thickness smaller than 4.0 mm [at least claim 1), to heat said intermediate rolled product so that the temperature of said metal strip in correspondence with the outlet of the last finishing stand is comprised between 830 °C and 860 °C Column 10, lines 5-10].
With regards to claim 2, Benedetti discloses said operating mode is said coil-to-coil mode or said semi-endless mode, wherein a rolling speed of said intermediate rolled product in correspondence with said plurality of finishing stands is lower than or equal to about 12 m/s [Column 10, lines 20-25].
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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Benedetti.
Benedetti discloses the invention substantially as claimed except for wherein said rolling speed is substantially constant. Benedetti discloses the invention substantially as claimed except for wherein for the same final thickness, said rolling speed is substantially the same between said coil-to-coil mode and said semi-endless mode.
Benedetti does discloses a control unit that control the rolling speed [Column 6, lines 55-60]. It is considered to be well-known that rolling speed can be varied or constant. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have the rolling speed be constant since it would have been obvious to try this technique when choosing from a finite number of identified, predictable solutions for rolling, with a reasonable expectation of success. [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 2014/0072824.
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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