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
Applicant’s election of Group I, claims 10-13 is acknowledged. However, to further compact prosecution, the restriction requirement is withdrawn because there is no serious search and/or examination burden in examining the two groups of invention together.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 10 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 14 of copending Application No. 18/963,501 (reference application). Every limitation of instant claim 10 is recited by claim 14 of copending ‘504. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-24 of copending Application No. 18/963,501 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 12, all of the limitations of claim 12 are recited by claim 15 of ‘501.
Regarding instant claim 13, claim 16 of ‘501 recites substantially identical subject matter.
Regarding instant claims 14-15, claims 20-21 of ‘501 recite substantially identical subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 18/963,501, as applied to claim 15, further in view of Mueller et al. (WO 2024/94407).
Regarding claims 16-18, the limitations of claim 15 have been addressed above. The claims of ‘501 do not recite the order of steps as claimed. Mueller teaches a process of press hardening a steel sheet, punching a hole, and embossing a pattern around the hole (¶ 51). Mueller teaches these steps can be performed in a different sequence (¶ 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 punch cutting prior to hot molding or heating to hot molding temperature, as suggested by Mueller, because changing the order of steps in a process is prima facie obviousness absent an indication of unexpected results. See MPEP 2144.04 IV.C.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 13 objected to because of the following informalities: Claim 13 recites “the component body consists of a hardenable steel” which should be “the composition of the component body consists of a hardenable steel”, as elements of the component body have been previously described: “component body with a mounting opening and a friction structure”. Appropriate correction is required.
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 10-13 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 10 recites: “the component body consists of a hardenable steel” and “the component body is press-hardened”. If the component body consists of a hardenable steel, it cannot be in a press-hardened state. These limitations are thus irreconcilable with each other. For purposes of examination, the claim will be interpreted as if it stated “the composition of the component body consists of a press-hardened steel”.
Claim 11 recites: “the ratio…is between 1:4 and 1:70, in particular the ratio is 1:10 to 1:35”. Claim 13 recites: “a hardness of 350 HV to 550 HV, in particular 400 HV to 500 HV”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claims 11 and 13 are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Dependent claims not addressed are indefinite by virtue of dependence from an indefinite claim.
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 10, 12, 14-15, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oelkers et al. (DE 10 2013 004034).
Regarding claims 10 and 12, Oelkers discloses a press hardened sheet metal material having a recess (corresponding to the claimed mounting opening) (¶ 1). A plate-shaped embossing of the sheet metal material surrounds the recess (corresponding to the claimed friction structure) (¶ 20). The sheet metal is a steel (see ¶ 4), and undergoes hot forming and press hardening to form the recess and embossing (¶ 25).
Regarding claims 14-15, Oelkers discloses a press hardened sheet metal material having a recess (corresponding to the claimed mounting opening) (¶ 1). A plate-shaped embossing of the sheet metal material surrounds the recess (corresponding to the claimed friction structure) (¶ 20). The sheet metal is a steel (see ¶ 4), and is produced by hot forming and press hardening to form the recess and embossing (¶ 25). The embossing takes place in the hot molding tool (¶ 25).
Regarding claim 18, Oelkers teaches the recess is preferably produced after the hot forming step, i.e., press hardening (¶ 10).
Claims 10, 12, 14-15, and 18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mueller et al. (WO 2024/94407).
Regarding claims 10 and 12, Mueller teaches a press hardened sheet metal (¶ 3). The sheet metal includes a pre-made hole at a fastening point for a fastener (¶ 4) (corresponding to the claimed mounting opening). Anti-rotation features are provided concentrically around the hole and can be considered waves since they are recessed (¶ 31) (corresponding to the claimed friction structure). These features are embossed (¶ 15). Mueller teaches the sheet metal is hot formed (¶ 13) and press-hardened (¶ 1), and a 22MnB5 steel (¶ 10).
Regarding claims 14-15, Mueller teaches making a press hardened sheet metal part by heating a sheet metal blank (¶ 12), stamping locking recesses (corresponding to the friction structure), hot forming, and press hardening (¶ 13), and making a hole (corresponding to the mounting opening) in the sheet metal part such that the recesses are next to the hole (¶ 14). Mueller teaches the stamping of the locking recesses can be performed simultaneously with the hot forming (¶ 26). The sheet metal is a steel (¶ 10).
Regarding claim 18, Mueller teaches the hole is made after press hardening (¶ 30).
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 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Oelkers et al. (DE 10 2013 004034), as applied to claim 15, further in view of Mueller et al. (WO 2024/94407).
Regarding claims 16-17, the limitations of claim 15 have been addressed above. Oelkers does not teach forming the recess before hot molding or heating to molding temperature. Mueller teaches a process of press hardening a steel sheet, punching a hole, and embossing a pattern around the hole (¶ 51). Mueller teaches these steps can be performed in different sequence (¶ 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 punch cutting prior to hot molding or heating to hot molding temperature, as suggested by Mueller, because changing the order of steps in a process is prima facie obviousness absent an indication of unexpected results. See MPEP 2144.04 IV.C.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Mueller et al. (WO 2024/94407), as applied to claim 10, as evidenced by Okayasu et al. (“Influence of microstructure on the mechanical properties and hydrogen embrittlement characteristics of 1800 MPa grade hot-stamped 22MnB5 steel”).
Regarding claim 13, the limitations of claim 10 have been addressed above. Mueller does not expressly disclose a hardness of the locking recesses. However, the press hardened steel of Mueller is 22MnB5 (¶ 10) that is austenitized prior to press hardening (¶ 12). Okayasu evidences that press hardened 22MnB5 steel that undergoes austenitization achieves a hardness of about 450-500 HV (p. 5065). Accordingly, one of ordinary skill in the art would expect the locking recesses of Mueller to have a hardness of about 450-500 HV, absent objective evidence to the contrary. See MPEP 2112.
Claims 11 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Mueller et al. (WO 2024/94407), as applied to claims 10 and 15.
Regarding claim 11, the limitations of claim 10 have been addressed above. Mueller teaches a height of the anti-rotation features is 0.1-0.3 mm, while the thickness of the sheet is 0.6-3.0 mm (¶ 24). The ratio between the height and wall thickness is therefore 1:2 to 1:30, which overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claims 16-17, the limitations of claim 15 have been addressed above. Mueller does not teach forming the recess before hot molding or heating to molding temperature. Mueller teaches a process of press hardening a steel sheet, punching a hole, and embossing a pattern around the hole (¶ 51). Mueller teaches these steps can be performed in different sequence (¶ 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 punch cutting prior to hot molding or heating to hot molding temperature, as suggested by Mueller, because changing the order of steps in a process is prima facie obviousness absent an indication of unexpected results. See MPEP 2144.04 IV.C.
Conclusion
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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/XIAOBEI WANG/Primary Examiner, Art Unit 1784