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 .
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 13-17 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.
Claim 13 appears to lack a transitional phrase (e.g. “comprising”). A transitional phrase defines the scope of the claim in terms of what unrecited elements or method steps, if any, are excluded from the scope of the claim, as well as clearly separating the preamble of the claim from the body of claim. Accordingly, the lack of a transitional phrase renders the claim indefinite because the scope of the claim is not clearly defined. In claim 13, line 2, the phrase “including” appears to serve the same purpose as a transitional phrase to further limit the structure of the method; therefore, for the purposes of examination this will be interpreted as an open transitional phrase (i.e. equivalent to “comprising”). Please see MPEP 2111.03.
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 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Uchikura et al. (hereafter “Uchikura”)(JPH08332529) in view of Nishiyama et al. (hereafter “Nishiyama”)(JP2002035861).
With regards to claim 13, Uchikura discloses a metallic member (1), comprising:
a cut edge surface, the cut edge surface including: a sheared surface, as seen in Figure 7b; and
a recessed surface (7) represented by a curved surface having a shape protruding inwardly with respect to the member, as seen in Figures 7a&b.
With regards to the limitation “formed by stamping,” it is noted that this is considered a product-by-process limitation and even though product-by-process limitations are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113.
Uchikura discloses the invention substantially as claimed except for wherein the metal sheet having front and back faces covered with a coating layer and at least a portion of the recessed surface being covered with the coating layer. Nishiyama is relied upon to teach have a metal workpiece (14) with a plating layer (18). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide Uchikura’s member with a coating because combining prior art elements according to known methods to yield predictable results require only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
With regards to claim 14, Uchikura discloses wherein: the cut edge surface further includes an undercut contiguous to the recessed surface, as seen in Figure 7b; and Nishiyama further teaches not less than 50 % of a total area of the recessed surface and the undercut is covered with the coating layer, as seen in Figure 8-10 and described in at least paragraphs 0020.
With regards to claim 15, Uchikura discloses wherein: the cut edge surface further includes a second undercut contiguous to the sheared surface; and the sheared surface is located between the recessed surface and the second undercut as determined along a thickness direction of the metallic member, as seen in Figure 7b.
With regards to claim 16, Uchikura discloses wherein: the cut edge surface further includes a second recessed surface represented by a curved surface having a shape protruding inwardly with respect to the member, and a second undercut contiguous to the second recessed surface; and the sheared surface is located between the recessed surface and the second recessed surface as determined along a thickness direction of the metallic member, as seen in Figures 7a & b.
With regards to claim 17, Uchikura discloses the invention substantially as claimed except for wherein an amount of sinking represented by a distance between a tangent to the sheared surface and an inwardmost point on the recessed surface is 0.01 to 0.10 times a thickness of the metallic member. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed parameter, 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. It is noted that Applicant has not disclosed that having this particular value provides an advantage, is used for a particular purpose, or solves a stated problem and since it appears to be an arbitrary design consideration which fails to patentable distinguish over Uchikura.
Allowable Subject Matter
Claims 1-12 are allowed. It is in the opinion of the examiner that the art of record neither anticipates nor renders obvious “wherein the press tool further includes the following construction A): the sheet holder including a projecting portion at an inner circumferential edge of the face facing the metal sheet, the projection portion of the sheet holder including a corner at an inner circumference, the corner having a radius of curvature R1, the radius of curvature R1 being not smaller than 0.10 times a thickness of the metal sheet, and the manufacturing method comprising: pushing the projecting portion of the sheet holder int the metal sheet; and moving the punch and the die closer to each other to stamp the metal sheet; or wherein the press tool further includes the following construction B): the punch including a projecting portion at a circumferential edge of a face facing the metal sheet, the projecting portion of the punch including a corner at an outer circumference, the corner having a radius of curvature R3, the radius of curvature being not smaller than 0.10 times a thickness of the metal sheet, and the
manufacturing method comprising: pushing the projecting portion of the punch into the metal sheet; and moving the counter-pad and the sheet holder closer to each other to stamp the metal sheet” in combination with the rest of the claimed limitations set forth in the independent claim.
Searching by the Examiner yielded prior art as follows:
2019/0338798 discloses a component with a sheared surfaces and a curved/concaved surface, as seen in inf Figures 1-15.
2018/0036784 discloses a method of forming a workpiece comprising a punch, die, counter punch and sheet holder as seen in Figures 3-6.
Conclusion
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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