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Claims 7-12 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/09/2026.
Claim Rejections - 35 USC § 102
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 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over Kuboto et. al. (US 20180017190).
Regarding claim 1, Kuboto et. al. teaches: A hollow member having a circumferential hardness difference portion in at least a portion in a longitudinal direction along a central axis, wherein when the circumferential hardness difference portion is viewed in a cross section orthogonal to the central axis (Hollow member 1’ having hardness differential portion E1 along the longitudinal direction [Fig. 2 and Para. 79, lines 4-9]. Circumferential hardness difference portion E1 when viewed in a cross section, is orthogonal [Fig. 3A and B]), a wall thickness difference obtained by subtracting an absolute minimum value of the wall thickness from an absolute maximum value of the wall thickness in a circumferential direction of the cross section is 20% or less of an average value of the wall thickness in a whole circumference of the cross section (the wall thickness in the cross section is defined by T across the whole of the thickened portion and therefore a difference between a maximum and minimum value of thickness across the portion would result in less than 20% of the average [Para. 79, lines 4-9 and Para. 83, lines 1-4]. Furthermore, comparing maximum and minimum thickness in cross section, using the ratio 1.2 of T/t0, along pipe would result in the difference being ~18% [Para. 81, lines 1-6]), and when an average of integration of Vickers hardness in the whole circumference of the cross section is used as a hardness threshold, the cross section includes a low strength range in which the Vickers hardness along the circumferential direction is equal to or less than the hardness threshold and a high strength range in which the Vickers hardness along the circumferential direction is more than the hardness threshold (The hardness in the cross section contains an average which the low hardness range, <95% of Hv as defined by Kuboto et. al., appears equal to or less than and the high hardness range, >95% of HV as defined by Kuboto et. al., appears greater than [Fig. 3c]).
Regarding claim 5, Kuboto et. al. teaches: The hollow member according to claim 1, wherein the circumferential hardness difference portion is formed only in a part of the longitudinal direction (Hollow member 1’ having hardness differential portion E1 along the longitudinal direction [Fig. 2 and Para. 79, lines 4-9]. Circumferential hardness difference portion E1 [Fig. 3A and B]).
Regarding claim 6, Kuboto et. al. fails to teach: The hollow member according to claim 1, wherein the circumferential hardness difference portion is formed over a total length in the longitudinal direction (Circumferential hardness difference is formed in total length of thicker portion E1 in the longitudinal direction [Fig. 3a-3c and Para. 11, lines 9-19]).
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iguchi et. al. (US 20170320116).
Regarding claim 1, Iguchi et. al. teaches: A hollow member having a circumferential hardness difference portion in at least a portion in a longitudinal direction along a central axis, wherein when the circumferential hardness difference portion is viewed in a cross section orthogonal to the central axis (hollow shell 1 with a hardness difference in the circumferential direction along with thickness distribution which is orthogonal [Para. 74, lines 1-7 and Fig. 1b]), a wall thickness difference obtained by subtracting an absolute minimum value of the wall thickness from an absolute maximum value of the wall thickness in a circumferential direction of the cross section is 20% or less of an average value of the wall thickness in a whole circumference of the cross section (Wall thickness difference is 13% of average wall thickness, where minimum thickness is represented by 1a and maximum thickness is 1b [Para. 89]), and when an average of integration of Vickers hardness in the whole circumference of the cross section is used as a hardness threshold, the cross section includes a low strength range in which the Vickers hardness along the circumferential direction is equal to or less than the hardness threshold and a high strength range in which the Vickers hardness along the circumferential direction is more than the hardness threshold (the low strength range is considered less than 95% of the average [Para. 74, lines 7-18]. Furthermore, with respect to the hardness distribution [Fig. 9 and 12], there contains portions of high strength which are greater than average hardness and low strength range which are less than or equal to the average hardness).
Regarding claim 6, Iguchi et. al. teaches: The hollow member according to claim 1, wherein the circumferential hardness difference portion is formed over a total length in the longitudinal direction (Entire hollow shell 1 contains the circumferential hardness difference [Para. 74, lines 1-7 and Fig. 1b]).
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Kuboto et. al. (US 20180017190).
Regarding claim 2, Kuboto et. al. teaches: The hollow member according to claim 1, wherein a ratio of a circumferential length of the low strength range to a whole outer circumferential length of the cross section is within a range of 20% to 80% (Low hardness range, as defined by being equal to or less than average hardness, appears to encompass roughly 50% of the overall circumference [Fig. 3c]).
For the purpose of compact prosecution, if it is seen that Kuboto et. al. does not teach low strength range being 20%-80% of total circumferential length, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the ratio of total length to length of low strength region in order to achieve sufficient structural requirements, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 3, Kuboto et. al. teaches: The hollow member according to claim 1, wherein a whole outer circumferential length in the cross section is Lr (mm), and a hardness maximum position at which the Vickers hardness is an absolute maximum value is within a range of 0.3 x Lr (mm) to 0.7 x Lr (mm) in the circumferential direction with a hardness minimum position at which the Vickers hardness is an absolute minimum value as a reference (The circumferential length is split into 3 portions defining length between hardness maximums, La, Lb and Lc and the difference between maximum and minimum value of each length is 0.2 x Lr [Para. 90, lines 1-7]. This would suggest that a hardness maximum positions are positioned at a maximum of 0.465 x Lr apart and thus would have an absolute minimum hardness within that range).
For the purpose of compact prosecution, if it is seen that Kuboto et. al. does not teach the maximum hardness position within 03 x Lr and 0.7 x Lr from the minimum hardness position, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the range of distance between minimum hardness position and maximum hardness position in order to achieve sufficient structural requirements, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi et. al. (US 20170320116).
Regarding claim 2, Iguchi et. al. teaches: The hollow member according to claim 1, wherein a ratio of a circumferential length of the low strength range to a whole outer circumferential length of the cross section is within a range of 20% to 80% (It appears to have roughly 20% coverage in the circumferential direction containing a low strength range which is equal to or less than the average hardness [Fig. 12]).
For the purpose of compact prosecution, if it is seen that Iguchi et. al. does not teach low strength range being 20%-80% of total circumferential length, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the ratio of total length to length of low strength region in order to achieve sufficient structural requirements, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 3, Iguchi et. al. teaches: The hollow member according to claim 1, wherein a whole outer circumferential length in the cross section is Lr (mm), and a hardness maximum position at which the Vickers hardness is an absolute maximum value is within a range of 0.3 x Lr (mm) to 0.7 x Lr (mm) in the circumferential direction with a hardness minimum position at which the Vickers hardness is an absolute minimum value as a reference (Maximum hardness position appears to be within 0.3 x Lr and 0.7 x Lr [Fig. 9 and 12]).
For the purpose of compact prosecution, if it is seen that Iguchi et. al. does not teach the maximum hardness position within 03 x Lr and 0.7 x Lr from the minimum hardness position, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the range of distance between minimum hardness position and maximum hardness position in order to achieve sufficient structural requirements, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 4, Iguchi et. al. teaches: The hollow member according to claim 1, wherein a difference obtained by subtracting an absolute minimum value of the Vickers hardness from an absolute maximum value of the Vickers hardness in the cross section is 15 HV or more (difference between absolute maximum and minimum values of Vickers hardness is greater than 15 Hv [Fig. 9]).
Iguchi fails to teach: wherein the wall thickness difference in the cross section is 0.10 mm or less
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the range of wall thickness difference to be 0.1 mm or less to meet manufacturing or structural requirements, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 5, Iguchi et. al. fails to teach: wherein the circumferential hardness difference portion is formed only in a part of the longitudinal direction.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form only part of the hollow shell to comprise the circumferential hardness difference portion in order to meet sufficient structural requirements, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Moore et. al. (US 20220040749) teaches: a metallic tubular product comprising varying thickness and yield strength (Abstract and Para. 38).
Wines (US 20160084433) teaches: a structural hollow metallic tube in which diameter and mechanical properties, such as hardness, vary over the length of the tube (Abstract and Para. 16).
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/JOSHUA D LEARY/Examiner, Art Unit 3753
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753
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