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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: TUBULAR ROTARY COMPONENT.
Drawings
Figures 16A and 17A should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Applicant’s characterization of these figures is that they depict prior art. See Specification (pages 4 and 10).
Claim Objections
Applicant is advised that should claim 2 be found allowable, claim 3 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-3 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.
Regarding Claim 1, it is unclear what is meant by plate thickness of a tubular rotary component. Does this refer to the wall thickness of the tubular component? Does it refer to the plate that is used to make the tubular component? If the latter, do the quantities of inclusion refer to inclusions of the plate before it is formed into a tubular component or only once in the form of tubular component?
Regarding Claim 1, it is unclear what is meant by inclusions in any context in which the component is not made of steel.
Regarding Claim 1, it is unclear what defines “quantity of the inclusions”. Quantity could mean absolute number, a particular areal density in a particular cross-section, or other measures. The Specification appears to refer to areal densities of specific cuboid sections. See Specification (Figure 12; and pages 26 and 27). It is unclear whether this Specification definition necessarily applies to what is claimed, or not.
Regarding Claims 2 and 3, while the wording is slightly different, it is unclear whether the claim scope is nevertheless identical. If not, it is unclear what makes the claim scope different.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugama JP 2009-226422 in view of Applicant’s Admissions (Background Section). Sugama teaches forming cylindrical steel structure that are relatively small (paragraph 2) wherein the steel is formed from stainless steel (paragraph 15). Being relatively small, they would be suitable as tubular rotary component. Furthermore, Applicant’s Admissions teach that Sugama’s formed tubes are of the size useful as claimed article (pages 2 and 3). Applicant’s Admissions teach that conventional steel sheet has inclusions with maximum in center of sheet (pages 2 and 3). It would have been obvious to one of ordinary skill in the art before the time of filing to use such conventional sheet to make articles in Sugama since Sugama teaches that tubular articles can be formed from steel sheet. In doing so, it would be expected that claimed distribution results since center of sheet becomes center of wall in resulting tubular product. This is confirmed by applicant’s characterization (pages 2 and 3). Regarding Claims 2 and 3, Applicant’s Admissions teach that inclusions includes those claimed (page 2).
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugama JP 2009-226422 in view of Scheller USPA 2008/0247902. Sugama teaches forming cylindrical steel structure that are relatively small (paragraph 2) wherein the steel is formed from stainless steel (paragraph 15). Being relatively small, they would be suitable as tubular rotary component. Sugama teaches using martensitic stainless steel of high tensile strength (paragraph 19). Sugama may not mention presence or distribution of inclusions. Scheller teaches making sheets and tubular products (Abstract; Claims 5 and 6) wherein the steel can be martensitic stainless steel of high tensile strength (Claim 1) which contains inclusions (paragraph 8). It would have been obvious to one of ordinary skill in the art before the time of filing to use such sheet to make articles in Sugama since Sugama teaches that effective tubular articles can be formed from high strength steel sheet (paragraph 6). In doing so, it would be expected that claimed distribution results since there would be inclusions in the wall of formed tubular product. The required quantity relationship would be obtained by taking necessary volume or surface areas in respective locations that leads to claimed relationship being present, noting that these may not be the same volumes or surface areas; however, the claim only refers to “quantity”. Regarding Claims 2 and 3, Scheller teaches aluminum and silicon oxides (paragraph 8), which quintessentially would be expected to include claimed SiO2 and/or Al2O3 or would render the claimed compounds as obvious as being quintessential representatives of mentioned compounds in Scheller.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera N. Sheikh, can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784 26 September 2025