DETAILED ACTION1
ELECTION/RESTRICTION
Claim 28 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim.
Applicant timely traversed the restriction (election) requirement in the reply filed on August 11, 2026. The traversal between groups I and II is on the ground(s) that claim 28 does not include any process steps. First, this argument fails to address the primary point in the restriction, namely that the structure of claim 28 can be made by a materially different process. As such, the argument is non-responsive on its face. Second, claim 28 is reciting a product-by-process because it recites three pressure deformed chamber profile preforms. This pressure deformation is the process and the resulting preform is the product. This feature could have been the basis for an (unpersuasive) argument that the structure of claim 28 cannot be made by a different process than claim 1. Hence why the restriction addressed it. Regardless, the arguments are unpersuasive. The restriction requirement between Group I and II is still deemed proper and is therefore made FINAL.
PRIORITY
Claims 9 and 23 recites incompressible fluid is delivered through the respective preform opening to deform the preform while compressible fluid is within the chamber in contacting engagement with the weld. Parent application 17/787,084 does not describe this feature. Because this applicant is a CIP, this is not a new matter issue. Rather, this claim is merely not entitled to the earlier priority date of December 18, 2019. Rather, it has priority to October 1, 2024. All other claims are entitled to priority back to December 2019.
REJECTIONS UNDER 35 USC 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 9 and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 9 and 23 both recite incompressible fluid is delivered through the respective preform opening to deform the preform while compressible fluid is within the chamber in contacting engagement with the weld. This feature is not enabled. MPEP 2164.01 states that the test of enablement is whether undue experimentation would be needed to practice the invention. The MPEP lays out eight factors to consider whether the level of experimentation would be undue. These factors are: (A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; and (H) the quantity of experimentation needed to make or use the invention based on the context of the disclosure. See MPEP 2164.01(a) citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The nature of the invention is forming a support structure, and the breadth of the claim is delivering incompressible fluid while compressible fluid is within the chamber in contacting engagement with the weld. The level of ordinary skill is a mechanical engineer with 3-5 years of relevant experience in the sheet metal arts. The level of predictability in the field is admittedly high. There is no discussion of this specific feature in the prior art that would enable it.
Applicant’s specification teaches that this claim step is accomplished by controlling the orientation of the preforms. See Specification [0036]. But the specification does not further elaborate on what orientation is required or any further steps. Nor is any working example or diagram provided. As such, this feature is not deemed to be enabled.
REJECTIONS UNDER 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 12, 14, & 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2012/159856 to Przybylo.
Claim 1 recites a method of making an axial load support member. Przybylo taches forming a sheet metal structure. See Przybylo pg. 1.2 Such a structure is capable of support axial loads. Claim 1 recites providing at least three chamber profile preforms. Figure 1 of Przybylo shows a triangular structure with three prongs. Each of the prongs is deemed an individual preform. This interpretation is consistent with dependent claim 12, which explicitly allows different preforms to be formed from the same bent sheet of metal. (Claim 12 is also therefore deemed anticipated by this rejection.) Returning to claim 1, the claim recites each preform includes a pair of sheet metal walls having a common shape with the other wall of the pair. This is shown in figure 1. Claim 1 also recites the walls are substantially parallel. This feature is anticipated in two distinct ways. One, the term substantially is broad enough to encompass a small amount of deviation from parallel, shown in figure 1 with a small beta angle. This is consistent with figure 9 for example. Two, figure 10, example 6.6 shows several embodiments with parallel structure walls. As such, a triangle (or any three or more pronged shape) with parallel walls is deemed taught by Przybylo. Przybylo also teaches there is a hermetically sealed empty chamber between the walls. See Przybylo pgs. 1-2. Because all of the segments are formed from a single folded piece of sheet metal, they are joined in fixed connection. See Przybylo pgs. 5-6. Przybylo further teaches then delivering fluid pressure through the respective preform opening of each respective preform to the respective chamber to deform each respective preform such that the walls of each respective preform in axially transverse cross-section extend further away from one another with increased radial distance away from the central member axis. See Przybylo pg. 5 and Figs. 7C-D. Przybylo never explicitly shows a preformed opening…for delivering fluid, this this opening would be inferred to be present.
Regarding claim 2, Przybylo treaches the pair of walls of at least one preform is comprised of a single metal sheet that is bent along at least a portion of the at least one edge. See Przybylo pg. 5. Regarding claim 14, figure 10 shows examples, e.g. 6.1, where at least one of the preforms extends radially outward from the central member axis a greater distance than at least one other of the preforms. Likewise, this figure also shows six preforms as recited by claim 19.
REJECTIONS UNDER 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 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 obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 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.
Claims 1, 5, 8-11, 15-16, 20-23, & 27 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2004/0154236 to Kinzer in view of EP 2110189 to Zieta.
Claim 1 recites a method of making an axial load support member. Kinzer relates to forming load bearing columns, which are axial load support members. See Kinzer [0005]. Kinzer teaches forming these columns by providing…three chamber profile preforms (60) and then joining the…three preforms together…along a central member axis to form a triangle. See Kinzer Fig. 8C. Kinzer does not teach that each preform includes a pair of sheet metal walls having a common shape [of a] respective flat plane, is respectively bounded by a wall edge, and includes a straight linear preform wall bounding portion [that is] sealed [to form] a hermetically sealed empty chamber. Nor does Kinzer teach then delivering fluid pressure through [a] respective preform opening…to deform each respective preform such that the walls of each respective preform in axially transverse cross-section extend further away from one another with increased radial distance away from the central member axis. Rather, Kinzer teaches forming the sheep metal pieces to already be shaped such that they form central void regions. But it would have been obvious to modify Kinzer to perform these steps in view of Zieta.
Zieta teaches forming deformed sheet metal products by providing a pair of sheet metal walls (11, 11’) having a common shape with the other wall of the pair. See Zieta Fig. 1 and [0015]. Figure1 of Zieta further shows each wall…extends substantially in a respective flat plane, is respectively bounded by a wall edge, and includes a straight linear preform wall bounding portion that is in sealed engagement with the respective edge of the other respective wall of the preform such that a hermetically sealed empty chamber (14) including a gap extends between interior surfaces of the sheet metal walls of the preform. Figure 1 also shows a preform opening (13) extending therethrough that is adapted to configured for delivering fluid pressure to the chamber. See Zieta [0015]. Zieta then teaches delivering fluid pressure through the…opening…to deform the sheet metal. See Zieta [0017]. This technique creates a structure whose cross-section (in the middle region) is similar to that of each prong of the triangular load member of Kinzer. Thus, if the deformed structure of Zieta had its top and bottom sliced off, it would become a suitable replacement material for the existing shaped sheet metal of Kinzer. Zieta also teaches that these deformed sheet metal structures are designed and suitable for use as lightweight support structures. See Zieta [0035]. It is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). In this case, it would have been obvious to use the deformation technique of Zieta to create three suitable segments to join together at their vertices to form the same type of load bearing column shown in figure 8C of Kinzer. Such a modification would have been predictable because both references are using sheet metal as the load bearing material. Zieta explicitly teaches its technique is suitable and designed for load bearing, and the overall shape of figure 1b of Zieta mirrors the central region of each prong in figure 8C of Kinzer.
Claim 5 recites simultaneously deform[ing] all of the preforms. Scaling up fabrication operations by simultaneously performing actions is obvious. This is common practice in assembly line manufacture. Regarding claim 8, the triangular structure of Kinzer results in the preforms [being] joined…symmetrically…about the central member axis.
Claim 9 recites the walls are weld[ed] together. Zieta teaches welding the sheets. See Zieta [0026]. Claim 9 also recites incompressible fluid is delivered through the respective preform opening to deform the preform. Zieta teaches using water, which is an incompressible fluid, for the deformation process. See Zieta [0017]. Claim 9 then recites this occurs while compressible fluid is within the chamber in contacting engagement with the weld. This feature was deemed non-enabled, but assuming arguendo it is enabled because it is known in the art, it would likewise have been known to do here as well.
Regarding claim 10, Zieta teaches using up to 10 bar of pressure which overlaps the recited range of fluid pressure of at least 5 bars. Claim 11 recites fluid is delivered through the preform opening for approximately one minute to reach an elevated fluid pressure within the cavity, and immediately thereafter the elevated fluid pressure is held constant within the cavity for about 30 seconds. Zieta does not explicitly teach these time frames. But Zieta does teach that the pressure is held until the shape remains stable due to permanent plastic deformation. See Zieta [0017]. As such, the length of time for the sheet metal to be pressured is a mere result effective variable. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Specifically, it is obvious to optimize a result effective variable, when the prior art teaches variation of the value of the variable will affect a known result. See MPEP 2144.05(A-B). In this case, the time of pressurization is based on the time required to deform the sheet metal. Since Zieta and the instant applicant are both deforming sheet metal, using a similar pressure range, the length of time would optimize to the same values.
Regarding claim 15, Zieta teaches delivering a liquid material, such as foaming aluminum, that later solidifies into each respective preform opening, and [then] holding the material within each respective cavity until it solidifies and thereafter remains within each respective cavity. See Zieta [0020]. Claim 16 recites the a check valve in fluid communication with the respective preform opening. Zieta does not explicitly teach using a check valve. But example takes Official Notice that check valves exist and that they allow one-way fluid movement. It would have been obvious as a matter of common sense to use a check valve to maintain pressure inside during the duration of defomation. A check valve is designed to hold the fluid under pressure in the chamber, as recited. Regarding claim 20, Zieta teaches both welding and gluing to form the seal. See Zieta [0015]. Regarding claim 21, figure 1b of Zieta shows that the walls grow closer at each terminal end. Thus, when arranged in the triangular configuration of Kinzer increased radial distance away from the central member axis…[results in] the walls extend[ing] closer to one another. Claim 22 recites a combination of features from claim 1 and 21 and is rejected for the same reasons. Claim 23 recites the same features as claim 9 and is rejected for the same reasons. Claim 27 recites the same features as claim 15 and is rejected for the same reasons.
Claims 2 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2004/0154236 to Kinzer in view of EP 2110189 to Zieta, and further in view of WO 2012/159856 to Przybylo.
Claim 2 recites the pair of walls of at least one preform is comprised of a single metal sheet that is bent along…one edge. Zieta teaches welding or glueing two sheets together. It does not teach folding one sheet over. But it would have been obvious to modify Kinzer/Zieta to include this step in view of Przybylo. Przybylo also relates to fluidly deforming sheet metal structures. See Przybylo Background. As such, Przybylo is highly analogous art. Przybylo teaches folding over sheet metal into complex shapes and then welding or gluing a single join line before pressure deforming the structure. Przybylo teaches this reduces the number of weld or glue joints, thus reducing cost and failure points. See Przybylo pgs. 3-4. It would have been obvious to modify Zieta to fold over a single sheet to likewise reduce cost and failure points.
Claim 25 recites the same features as claim 2 and is rejected for the same reasons.
ALLOWABLE SUBJECT MATTER
Claims 3-4, 6-7, 13, 17-18, 24, & 26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 3 & 4 are allowable because while the prior art teaches various methods of limiting the fluid deformation, it does not specifically teach doing so while the preforms are between pressure plates in the context of creating load bearing structures.
Claims 6, 7, and 26 recite that the deformations occur relative to the central axis. This requires that step b) have already occurred, since otherwise a central axis does not yet exist. The prior art does not teach or suggest simultaneously deforming all of the preforms after they have been attached to each other. As such, claims 6 and 7 are allowable.
Claim 13 recites creating different preforms from a single sheet metal. This is taught by Przybylo. But Przybylo does not individually seal each of the three preform regions, instead creating a single central sealed region. This also is the reason Claim 24 is allowable.
Claims 17 and 18 recite additional linear wall segments that are non-parallel to the made straight segments at the boundary regions. This feature is not taught or suggested in the load bearing art regions of pressurized fluid sheet metal deformation.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 The WIPO publication of Przybylo (submitted in the parent application IDS) contains no paragraph or line numbers, limiting the specificity of the citations.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
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