DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Elections/Restrictions
2. This office action is a response to Applicant's election filed on 11/26/2025 with traverse of Group I, claims 1 & 4-10 for further examination. Claims 2-3 were cancelled. Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The traversal is on the grounds that claim 1 has been revised to recite, inter alia, a sprayer connected to a source of black-oxide fluid, which sprayer is configured to spray the black oxide fluid from the source of black-oxide fluid onto the inductively heated bearing ring. The apparatus of amended claim 1, which includes a sprayer connected to a source of black oxide fluid and configured to spray the black oxide fluid cannot be used to perform a process that is materially different from the process recited in claim 11, and it is therefore respectfully submitted that the above claim amendments obviate the basis for requiring restriction. This is not found persuasive because the recitation “for black oxide finishing a bearing ring… black-oxide fluid,… the bearing ring… to form a black oxide coating”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Choi since Choi meets all the structural elements of the claim and is capable of black oxide finishing a bearing ring using black-oxide fluid to form a black oxide coating, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115. Thus, the apparatus as claimed can indeed be used in a materially different process, such as wherein the sprayer is used to spray a different material (e.g., paint, varnish, adhesive, or another type of coating).
Thus far, applicant has not proved or provided convincing argument that there is no material difference between the two inventions currently on the record. Therefore, the requirement is still deemed proper and is therefore made FINAL.
Priority
3. Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Germany on 08/29/2023. It is noted, however, that applicant has not filed a certified copy of the 102023208230.6 application as required by 35 U.S.C. 119(b).
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 11/20/2024 is being considered by the examiner.
Claim Objections
5. Claim 4 is objected to because of the following informalities: line 2 recites “including a collecting basin is arranged” which should recite “including a collecting basin [[is]] arranged”.
Claim Rejections - 35 USC § 112
6. 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.
7. Claim 5-6 & 8-10 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 5, line 2 recites the limitation “the induction heating device”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the induction heating device” as “the induction heater” recited in claim 1. To correct this problem, amend line 2 to recite “the induction heater”.
As regards to claim 6, line 3 recites the limitation “the entire”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the entire” as “an entire”. To correct this problem, amend line 3 to recite “an entire”.
Claims 8-10 are rejected at least based on their dependency from claim 6.
Claim Rejections
8. 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 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.
9. 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.
Claim Rejections - 35 USC § 103
10. 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 of this title, 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.
11. The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
12. Claims 1 & 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2016/0013079 A1) hereinafter Choi (the terminology of the claims in the application is used, but the references of Choi are included between parentheses).
Regarding claim 1, the recitation “for black oxide finishing a bearing ring… black-oxide fluid,… the bearing ring… to form a black oxide coating”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Choi since Choi meets all the structural elements of the claim and is capable of black oxide finishing a bearing ring using black-oxide fluid to form a black oxide coating, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Choi discloses an apparatus for black oxide finishing a bearing ring (abs; fig 1-5), comprising:
a sprayer (310) connected to a source fluid ([0047]) capable of being black-oxide ([0047]; [0060]; fig 1-3),
a holder (200) configured to support and rotate the substrate (W - capable of being a bearing ring) relative to the sprayer (310) ([0047]-[0048]; [0051]-[0052]; [0060]; [0062]-[0065]; [0070]; [0075]; fig 1-3), and
a heater (280) configured to heat the substrate (W - capable of being a bearing ring) while the substrate (W - capable of being a bearing ring) is held and rotated by the holder (200) ([0048]; [0051]-[0052]; [0062]-[0065]; [0070]; [0075]; fig 1-3), and
wherein the sprayer (310) is configured to spray the fluid capable of being black oxide ([0047]) from the source fluid ([0047]) capable of being black-oxide ([0047]) onto the heated substrate (W - capable of being a bearing ring) while the heated substrate (W - capable of being a bearing ring) is held and rotated by the holder (200) to form a coating capable of being black-oxide ([0047]) on the heated substrate (W - capable of being a bearing ring) ([0047]-[0048]; [0051]-[0053]; [0060]; [0062]-[0068]; [0070]; [0075]; fig 1-3), however Choi does not disclose wherein the heater is induction having at least one inductor, but teaches the heater (280) includes a heating element (250) and a reflection element (260) reflecting a heat from the heating element (250) upward (abs; [0008]; [0070]; fig 2-4). An induction heater having at least one inductor and a heater including a heating element and a reflection element reflecting a heat from the heating element upward are considered functionally equivalent heating methods. Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to substitute an induction heater having at least one inductor for the heater including a heating element and a reflection element reflecting a heat from the heating element upward disclosed by Choi with a reasonable expectation of success.
As regards to claim 4, Choi discloses an apparatus (abs; fig 1-5), including a collecting basin (110, 120, 130) is arranged below the sprayer (310) configured to collect the fluid capable of being black oxide ([0047]) after the fluid capable of being black oxide ([0047]) has been sprayed onto the inductively (see claim 1 above) heated substrate (W - capable of being a bearing ring) ([0050]; [0053]-[0057]; [0061]; [0063]; fig 3).
As regards to claim 5, Choi discloses an apparatus (abs; fig 1-5), wherein the holder (200), the sprayer (310) and the induction (see claim 1 above) heater (280) are arranged above or within a container (100), the container (100) being configured to collect the fluid capable of being black oxide ([0047]) after the fluid capable of being black oxide ([0047]) has been sprayed onto the inductively heated substrate (W - capable of being a bearing ring) ([0048]; [0050]-[0057]; [0060]-[0063]; fig 3).
As regards to claim 6, Choi discloses an apparatus (abs; fig 1-5), wherein the sprayer (310) comprises at least one spray nozzle (311) configured to provide a jet of the fluid capable of being black oxide ([0047]) for wetting the entire substrate (W - capable of being a bearing ring) or for wetting a surface of the substrate (W - capable of being a bearing ring) ([0047]-[0048]; [0050]-[0057]; [0060]-[0063]; fig 3).
As regards to claim 7, Choi discloses an apparatus (abs; fig 1-5), wherein the sprayer (310) is configured to produce a sheet of the fluid capable of being black oxide ([0047]), and wherein the holder (200) is configured to move the substrate (W - capable of being a bearing ring) through the sheet of the fluid capable of being black oxide ([0047]) ([0047]-[0048]; [0050]-[0057]; [0060]-[0063]; fig 3).
As regards to claim 8, Choi discloses an apparatus (abs; fig 1-5), the at least one spray nozzle (311) arranged in a rotation direction of the substrate (W - capable of being a bearing ring) such that the substrate (W - capable of being a bearing ring) is heated before the fluid capable of being black oxide ([0047]) is sprayed onto the substrate (W - capable of being a bearing ring) ([0047]-[0048]; [0051]-[0053]; [0060]; [0062]-[0068]; [0070]; [0075]; fig 1-3), however Choi does not disclose wherein the heater is induction having at least one inductor wherein the at least one inductor is arranged before the at least one spray nozzle, but teaches the heater (280) includes a heating element (250) and a reflection element (260) reflecting a heat from the heating element (250) upward (abs; [0008]; [0070]; fig 2-4). An induction heater having at least one inductor and a heater including a heating element and a reflection element reflecting a heat from the heating element upward are considered functionally equivalent heating methods. Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to substitute an induction heater having at least one inductor for the heater including a heating element and a reflection element reflecting a heat from the heating element upward disclosed by Choi with a reasonable expectation of success, wherein the at least one inductor arranged before the at least one spray nozzle configuration recited in the claim is not expected to alter the operation of the device in a patentably distinct way and so before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to arrange the at least one inductor before the at least one spray nozzle since “the particular placement of structural components was held to be an obvious matter of design choice.” In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
As regards to claim 9, Choi discloses an apparatus (abs; fig 1-5), wherein the at least one spray nozzle (311) comprises a plurality of spray nozzles (311, see fig 1-3) arranged around the substrate (W - capable of being a bearing ring) ([0047]-[0048]; [0050]-[0057]; [0060]-[0063]; fig 1-3).
As regards to claim 10, Choi discloses an apparatus (abs; fig 1-5), however Choi does not disclose wherein the heater is induction having at least one inductor wherein the inductor includes a portion shaped to conform to a portion of the substrate, but teaches the heater (280) includes a heating element (250) and a reflection element (260) reflecting a heat from the heating element (250) upward (abs; [0008]; [0070]; fig 2-4). An induction heater having at least one inductor and a heater including a heating element and a reflection element reflecting a heat from the heating element upward are considered functionally equivalent heating methods. Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to substitute an induction heater having at least one inductor for the heater including a heating element and a reflection element reflecting a heat from the heating element upward disclosed by Choi with a reasonable expectation of success, wherein the inductor includes a portion shaped to conform to a portion of the substrate configuration recited in the claim is not expected to alter the operation of the device in a patentably distinct way and so before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the device of Choi to have the shape & configuration recited in the claim as the shape & configuration is considered engineering aspects of a device, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the shape & configuration. Where the configuration of the claimed subject matter is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed subject matter was significant is not patent eligible subject matter. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717