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The Obvious-type Double Patenting rejection is withdrawn in view of the Terminal Disclaimer filed 6/18/2026.
Applicant’s arguments, see Remarks, filed 6/18/2026, 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 The rejections have been withdrawn.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.
Terminal Disclaimer
The terminal disclaimer filed on 6/18/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on pending U.S. Patent Application No. 18/963,501 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 19-21 and 27-28 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 19 recites “the component body comprises a hardenable, hot molded steel”. However, based upon the process claim 22 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 § 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 19-20 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Hinzpeter et al. (US 2010/0092265).
Regarding claims 19 and 27, 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 opposite surface of the sheet metal is compressed to a depth of 10%-50% the thickness of the sheet metal in order to provide the material displacement for the peaks (¶¶ 12-14). Accordingly, one of ordinary skill in the art would expect the peaks to represent at least 10%-50% of the thickness of the sheet metal, which corresponds to a ratio of at between about 1:2 to 1:10 or less. This overlaps the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
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 render obvious the claimed product.
Regarding claim 20, the profiled features of the antiskid region are teeth that extend radially from the opening (¶ 21), which can be considered ribs.
Claims 21 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Hinzpeter et al. (US 2010/0092265), as applied to claim 19, further in view of Bolz et al. (DE 102012022504).
Regarding claims 21 and 28, the limitations of claim 19 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).
Allowable Subject Matter
Claims 22-26 are allowed.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/XIAOBEI WANG/Primary Examiner, Art Unit 1784
Prosecution Insights