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
Applicant’s election with traverse of Group I (claims 22 and 23) and Species I
(Fig 1) in a reply filed on 07/23/2026 is acknowledged. Applicant traverses the restriction requirement, arguing that the differences among the groups would not impose a serious burden on the Examiner if the groups were examined together. Applicant further asserts that Species II–III are non-limiting embodiments of the elected Species I (Fig. 1) and, therefore, that examining all of the embodiments together would not impose a serious burden on the Examiner.
Applicant’s arguments are not persuasive. As explained in the Restriction Requirement, each subgroup includes at least one feature that is not present in the other groups. Although the searches for the various groups may overlap to some extent, the searches do not coincide. A search directed to elected Group I would not be sufficient to encompass the distinct features of the nonelected groups.
Furthermore, the text and classification searches necessary to locate the specific features of the elected group would not necessarily identify the distinct features of the nonelected groups. Because each group includes at least one distinguishing feature and occupies a separate status with respect to the prior art, each group requires a different field of search. Likewise, examination of the different species or embodiments may require different fields of search. If Applicant admits that the different species are obvious variants of one another, the Examiner may examine the species together based on Applicant’s admission. In the absence of such an admission, however, the different species may require separate searches and examination. Accordingly, examination of all of the groups and species in a single application would impose a serious search and examination burden on the Examiner and could adversely affect the quality and efficiency of examination in view of the time constraints applicable to examination.
The requirement is therefore still deemed proper and is made FINAL.
2. Claims 24-33 are withdrawn from further consideration pursuant to
37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 21-23 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 21, “the rolling step” lacks antecedent basis.
Claim 21 initially recites “a plastic forming step for forming a second surface having a plurality of protrusions,” but subsequently recites that “the cutting step is performed while the rolling step is performed” and further refers to “in the rolling step.” The claim does not previously introduce a “rolling step” as a claimed step separate from or synonymous with the “plastic forming step.
Regarding claim 21, the claim initially recites “a plastic forming step for forming a second surface having a plurality of protrusions on a first surface of the workpiece,” suggesting that the plurality of protrusions are associated with the second surface. However, the claim subsequently recites that the rolling tool is pressed against “the first surface of the workpiece” to “form a spiral groove on the first surface, so that the plurality of the protrusions … is formed.” Thus, the claim appears to require the plurality of protrusions to be formed on the second surface while also requiring the plurality of protrusions to be formed on the first surface. Because the claim does not clearly establish the relationship between the first surface and the second surface or identify on which surface the plurality of protrusions are formed, the scope of the claimed invention cannot be determined with reasonable certainty.
Claim Rejections - 35 USC § 103
5. 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.64
6. Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Nels (4,104,900), provided with the IDS submitted on 06/18/2025, in view of Hoopman et al. (5,975,987), hereinafter Hoopman. Regarding claim 21, as best understood, Nels teaches a metal powder forming method for forming metal powder by cutting a surface of a metal workpiece (metal fibers 38 formed from billet/workpiece 10 by shaving tool 34; abstract; col. 2, lines 30-45; Fig. 3; claim 1), thereby teaching the claimed method of forming metal particulate material by cutting a surface of a metal workpiece. Nels further discloses a plastic forming step for forming a second surface having a plurality of protrusions on a first surface of the workpiece with a rolling tool (knurling tool 16, billet/workpiece 10, ridges 26 and depressions 24; Nels, col. 2, lines 1-20; Figs. 1–2), wherein the knurling tool 16 is pressed against the surface 14 of the rotating billet 10 and impresses depressions 24 and corresponding ridges 26 on the surface 14. Nels further discloses a cutting step for forming metal powder by cutting the plurality of protrusions with a cutting tool (shaving tool 34 and cutting edge 36; col. 2, lines 30-45; Fig. 3), wherein the cutting edge 36 of shaving tool 34 cuts the ridges 26 from the knurled surface to form metal fibers 38. Nels further discloses that the first surface of the workpiece has an axisymmetric shape around a first axis (generally cylindrical billet 10 having cylindrical axis 12 and cylindrical surface 14; col. 2, lines 1-10; Fig. 1), and that the cutting step is performed while the rolling step is performed and the workpiece is rotated around the first axis (billet 10 rotating about axis 12 while knurling tool 16 and shaving tool 34 operate on surface 14; continuous knurling and shaving; col. 2, lines 40-60). Nels further teaches that the knurling and shaving steps can be carried out continuously by rotating the workpiece and advancing the knurling and shaving tools (billet 10, axis 12, knurling tool 16, shaving tool 34; col. 2, lines 40-60), thereby teaching the claimed concurrent performance of the forming and cutting operations. See Figs. 1-5 in Nels.
Nels does not expressly disclose that the rolling tool is moved in a feed direction while being pressed against the first surface of the rotating workpiece to form a spiral groove on the first surface. Hoopman addresses this limitation by disclosing a cylindrical workpiece having a longitudinal axis and an outer cylindrical surface (workpiece 30, longitudinal axis 36, outer cylindrical surface 34; Figs. 1-3), wherein the knurling tool is moved/traversed in a feed direction parallel to the longitudinal axis while the workpiece is rotated (knurling tool 10/knurling wheels 12, 14, workpiece 30, longitudinal axis 36, direction B; col. 6, lines 55-65; Figs. 1-3). Hoopman further discloses that the knurling wheel is pressed/forming against the outer surface of the workpiece (knurling wheel 14 and workpiece 30) and that the second wheel 14 presses or cold forms a pattern rather than removing material (col. 7, lines 40-55), thereby corresponding to the claimed plastic forming operation; Hoopman additionally discloses a plurality of grooves having a helix angle with respect to a reference plane and intersecting grooves that produce a knurl pattern on the outer surface (first plurality of grooves, second plurality of grooves, pyramids 60, peaks 62, and workpiece 30; abstract; col. 8-9; Figs. 13-14), and expressly teaches a knurl pattern having an oblique helix angle relative to the longitudinal axis 36 (abstract), thereby supplying the claimed spiral groove and the resulting arrangement of protrusions relative to the longitudinal axis. It would have been obvious to a person of ordinary skill in the art to modify the knurling operation of Nels, including knurling tool 16 and rotating billet 10, using the axial traversing/helical knurling arrangement of Hoopman, including knurling tool 10/wheels 12, 14, rotating workpiece 30, and longitudinal axis 36, since such a modification would merely apply a known knurling technique to the known Nels process for its established purpose of forming a predetermined surface pattern on a rotating workpiece, with a reasonable expectation that the resulting helical/spiral protrusions could subsequently be shaved by Nels’s shaving tool 34 to form the desired metal fibers 38.
Regarding claim 22, Nels, as modified by Hoopman, teaches everything noted above including that in the rolling step, a pitch of the plurality of the protrusions 60 (Fig. 13 in Hoopman) in the direction (B; Fig. 16 in Hoopman) parallel to the first axis (36; Fig. 16 in Hoopman) is controlled by a feed rate of the rolling tool. Hoopman discloses traversing the knurling tool 10 in direction B parallel to the longitudinal axis 36 of the rotating workpiece 30, whereby the knurling wheel forms helical grooves and corresponding protrusions/pyramids 60 on the outer surface 34 of the workpiece. Hoopman further expressly defines the helix lead as the distance that the helix advances in one revolution and discloses selecting the advance rate of the knurling tool per revolution of the workpiece, including a disclosed tool advance rate of 0.13-0.25 mm (0.005-0.010 inch) per revolution, together with a resulting knurl pattern having a predetermined number of pyramids per inch and a predetermined helix angle (description of Figs. 15-20 and Examples in Hoopman), such that the axial spacing/pitch of the resulting protrusions is determined by the relative axial advance of the knurling tool for each revolution of the rotating workpiece. Nels likewise discloses advancing the knurling tool 16 while the cylindrical billet 10 rotates about its axis 12 and subsequently shaving the resulting ridges 26 with shaving tool 34 to form metal fibers 38 (col. 2, lines 1-20, 30-60; Figs. 1-3 in Nels).
7. Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Nels in view of Hoopman and in further view of Saki (WO 2019/230795 A1). Regarding claim 24, Nels in view of Hoopman teaches the metal powder forming method of claim 21, including the use of a rolling/rotating tool to form the plurality of protrusions on the workpiece. Hoopman further teaches that the knurling wheels are brought into engagement with and traverse the workpiece to impart the desired pattern, with the amount of engagement between the knurling teeth and the workpiece being adjustable (knurling wheels 12, 14; wheel holder 16; workpiece 30; Figs. 1-8). Saki teaches that, in a metal forming process in which a pressing tool plastically deforms a metal workpiece to form a solid protrusion, the height of the protrusion is controlled by adjusting the pressing force, pressing speed, and pressing time (Saki, protrusion 6; pressing die/pressing jig; Fig. 1(c)). In particular, Saki expressly explains that “the height of the protrusion 6 can be controlled by adjusting the pressing force” during press forming (Saki, Fig. 1(c)). Accordingly, it would have been obvious to one of ordinary skill in the art to apply Saki’s teaching that the height of a formed protrusion can be controlled by the pressing load to the Nels’s forming process, as modified by Hoopman, such that the height of each of the protrusions is controlled by a pressing load of the rolling tool, because controlling forming depth, material flow, and resulting protrusion height by adjusting the applied forming force is a known and predictable manner of controlling the dimensions of a plastically formed feature. The resulting combination would therefore have yielded the claimed control of protrusion height through the pressing load applied by the rolling tool.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to
applicant’s disclosure.
Woolf (WO 0043148 A1), Giannetti (5,992,199), and Jenkins et al. (2010/0021254 A1) teach a method of forming grooves in a tubular workpiece.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GHASSEM ALIE whose telephone number is (571) 272-4501. The examiner can normally be reached on 8:30 am-5:00 pm EST.
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/GHASSEM ALIE/Primary Examiner, Art Unit 3724
August 19, 2026
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