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 .
Response to Arguments
The Statutory Double Patenting rejection is withdrawn in view of Applicant’s amendments to the instant claims and the reference application. The Obvious-type Double Patenting rejection is maintained over the new claims.
Applicant’s arguments, see Remarks, filed 7/6/2026, with respect to the 35 U.S.C. 112(b) rejections and 35 U.S.C. 102 rejections over Oelkers (DE 102013004034) and Mueller (WO 2024/94407) have been fully considered and are persuasive in view of Applicant’s amendments to the claims. The rejections have been withdrawn.
However, upon further search and consideration, new grounds of rejection have been entered in view of Applicant’s amendments.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 25-26, 29-30 and 35-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-18 of copending Application No. 18/963,504 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 25, the limitations of claim 25 are substantially similar to claim 19 of ‘504. The main distinction is instant claim 25 recites “friction elements comprise elevations with respect to adjacent regions thereof”. This structure is implied by “friction elements have an average height” in claim 19 of ‘504.
Regarding instant claim 26, claim 21 of ‘504 recites substantially identical subject matter.
Regarding instant claim 29, claim 19 of ‘504 has the same structure as the claimed product and therefore can be considered a connecting arrangement.
Regarding instant claim 30, claim 22 of ‘504 recites substantially similar processing steps for making a molded component.
Regarding instant claim 35, claim 28 of ‘504 recites substantially identical subject matter.
Regarding instant claim 36, claim 20 of ‘504 recites substantially identical subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 27-28 and 31-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 18/963,504, as applied to claim 25, further in view of Mueller et al. (WO 2024/94407).
Regarding claim 27, the limitations of claim 25 have been addressed above. The claims of ‘504 do not recite a wall thickness of the component body. Mueller teaches a press hardened steel sheet having a hole and an embossed region around the hole (¶ 4). The thickness of the steel sheet in Mueller is 0.6-3.0 mm (¶ 24). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to use a steel sheet having the thickness disclosed in Mueller for the molded component of instant claim 25 because the prior art recognizes these steel sheets as suitable for press hardening.
Regarding claim 28, the limitations of claim 25 have been addressed above. The claims of ‘504 do not recite the component body consists of a boron-alloyed steel. Mueller teaches a press hardened steel sheet having a hole and an embossed region around the hole (¶ 4). The steel sheet is 22MnB5 (¶ 10). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to use a steel sheet having the composition disclosed in Mueller for the molded component of instant claim 25 because the prior art recognizes these steel sheets as suitable for press hardening.
Regarding claims 31-32, the claims of ‘504 do not recite the mounting opening is produced during hold molding or the friction structure and mounting opening are formed simultaneously. Mueller teaches a process of press hardening a steel sheet, punching a hole, and embossing a pattern around the hold (¶ 51). Mueller teaches these steps can be performed in different sequence or simultaneously (¶ 51). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to perform the embossing and punch cutting steps simultaneously to press hardening, as suggested by Mueller, because a person having ordinary skill in the art would recognize combining steps reduces processing time.
Regarding claims 33-34, Mueller teaches the steel sheet blank is heated to an austenitizing temperature (¶ 12). For 22MnB5, this temperature is above 750°C
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 30 objected to because of the following informalities: Claim 30 contains somewhat repetitive language. For example, claim 30 recites “the friction structure is embossed and hardened”. Claim 30 then recites “the friction structure is embossed into the metallic component body which is a press-hardened component” and “the friction structure comprises embossed friction elements”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 25-36 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 25 recites “the component body comprises a hardenable, hot molded steel”. Claim 30 recites “the metallic component body comprises a hardenable, hot molded steel”
However, based upon the process claim 30 and various statements in the specification (see, e.g., [0033] of the corresponding US PGPub), hot molding (or pressing) the steel also hardens the steel. There thus appears to be insufficient support for a component body which has been hot molded but remains hardenable (i.e., is not in a hardened state). For purposes of examination, it is presumed the component body comprises a hardened, hot molded steel. Dependent claims not addressed depend from an indefinite claim and are rejected for the same reasons.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 25, 29 and 36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hinzpeter et al. (US 2010/0092265).
Regarding claims 25 and 29, Hinzpeter teaches a steel metal structure (¶ 2) having a profiled antiskid region surrounding an opening in a sheet metal (¶ 7). Hinzpeter states such metals are typically made from steel (¶ 4). The antiskid region is formed by a cold-forming process and an embossing step, thereby forming hardened peaks (¶ 9). Hinzpeter teaches the anti-skid region is formed of peaks (¶ 12); thus, they are elevated with respect to adjacent regions.
While the steel metal structure of Hinzpeter is produced by cold forming as opposed to hot forming, this limitation is considered a product-by-process limitation. Even though product-by-process claims 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. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2112. In this case, the claim does not recite any features which would not be present in the prior art product due to hot forming. Accordingly, Hinzpeter is considered to anticipate the claimed product.
Regarding claim 36, the profiled features of the antiskid region are teeth that extend radially from the opening (¶ 21), which can be considered ribs.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 26 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Hinzpeter et al. (US 2010/0092265), as applied to claim 25, further in view of Bolz et al. (DE 102012022504).
Regarding claims 26 and 35, the limitations of claim 25 have been addressed above. Hinzpeter does not expressly teach a hardness of the antiskid region. Bolz teaches a surface structure for increasing friction between connecting components (¶ 8), where the structures can be formed by cold pressing (¶ 13), and have a hardness of at least 300 HV (¶ 40). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to ensure the antiskid region of Hinzpeter has a hardness of at least 300 HV because Bolz teaches this is required hardness for anti-friction structures for connecting components in order to prevent the structures from being destroyed during connection (¶ 9).
Claims 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Hinzpeter et al. (US 2010/0092265), as applied to claim 25, further in view of Mueller et al. (WO 2024/94407).
Regarding claim 27, the limitations of claim 25 have been addressed above. Hinzpeter does not teach a thickness of the sheet. Mueller teaches a sheet metal having an opening for a connection with a thickness of 0.6-3.0 mm (¶ 24). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to adopt the sheet thickness of Mueller for the sheet of Hinzpeter because the prior art recognizes this range of thicknesses as suitable for a sheet metal having an opening for a connection. The thickness taught by Mueller overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 28, the limitations of claim 25 have been addressed above. Hinzpeter does not expressly teach the sheet material is a boron-alloyed steel. Mueller teaches a sheet metal having an opening for a connection which is press-hardenable and has a 22MnB5 composition (¶ 10). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to use a boron-alloyed steel such as 22MnB5, as taught by Mueller, for the sheet material of Hinzpeter because the prior art recognizes this type of steel as suitable for a sheet having an opening for a connection and is hardenable.
Allowable Subject Matter
Claims 30-34 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for allowance: The prior art of record does not teach or suggest the claimed process for producing the molded component comprising a hot molding step for forming a friction structure. Oelkers (DE 102013004034) and Mueller (WO 2024/94407) disclose recesses as opposed to friction elements having a height. Hinzpeter is specifically directed to cold-hardened peaks (¶ 9); thus, there is a lack of expectation of success in substituting cold-forming for hot-forming.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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