Patent Application 17761271 - SYSTEMS COMPOSITIONS AND METHODS FOR PRODUCING - Rejection

Patent Application 17761271 - SYSTEMS COMPOSITIONS AND METHODS FOR PRODUCING

Title: SYSTEMS, COMPOSITIONS, AND METHODS FOR PRODUCING SHARP EDGES

Application Information

• Invention Title: SYSTEMS, COMPOSITIONS, AND METHODS FOR PRODUCING SHARP EDGES
• Application Number: 17761271
• Submission Date: 2025-04-08T00:00:00.000Z
• Effective Filing Date: 2022-03-17T00:00:00.000Z
• Filing Date: 2022-03-17T00:00:00.000Z
• National Class: 451
• National Sub-Class: 045000
• Examiner Employee Number: 85956
• Art Unit: 1784
• Tech Center: 1700

Rejection Summary

• 102 Rejections: 2
• 103 Rejections: 1

Cited Patents

The following patents were cited in the rejection:

• US 0230510🔗
• US 0163390🔗

Office Action Text

    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
Applicant's arguments filed 2/21/2025 have been fully considered and are persuasive in view of the amendments to the claims. The 35 U.S.C. 112 and 102 rejections have been withdrawn. However, new rejections are entered in view of the amendments.
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 1-4 and 28-41 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 1 recites “terminates in a notch to form a sharp edge at a portion of a terminal distal end of the metallic material, with the homogeneity of the metallic material increasing across the length of the metallic material such that the homogeneity is highest at the notch”. There is insufficient support for this limitation in the specification, and thus it constitutes new matter.
The specification describes a metallic material deformed using tapered rolls (Spec., ¶ 43). These tapered rolls deform the material so as to form a notch in the metallic material that runs down the length of the material (Spec., ¶ 62). The specification states the tapered rolls may be positioned so as to split the metallic material in two, thus forming blades following the deformation (Spec., ¶¶ 6, 43). The size and angle of the notch determines the sharpness of the tip (Spec., ¶ 52). Thus, the specification provides that the sharp edge is formed arising from deforming the metallic material which forms a notch, and not that the sharp edge is formed where the notch meets the terminal distal end of the metallic material.
Although the Specification states “FIG. 5B is an exemplary embodiment of the material 102 having undergone local deformation by the tapered roll 100 at a distal end 102 d thereof. As shown, the distal end 102 includes a refined region 146 that includes a notch 150 that forms a sharp edge” (Spec, ¶ 49), it is apparent in the context of the remainder of the specification that it is the notch which forms a sharp edge. This is supported by the statement that the proximal end constitutes the non-refined, and hence yet to be deformed, region of the metallic material (see Spec., ¶ 49). Therefore, the phrase “distal end” in the specification refers to the portion of the metallic material which has undergone deformation, and does not establish that the notch forms a sharp edge at a portion of the terminal distal end of the metallic material.
Further, in view of the amendments, the claim now appears to require a change in microstructure in two dimensions--one from the non-deformed portion to an increased homogeneity in the deformed portion at the notch, and also an increased homogeneity at the terminal distal end. These are not the same direction as they are perpendicular to each other (see, e.g., Fig. 4 of the present specification). The specification does not provide sufficient support for this arrangement as claimed. Rather, the specification appears to state that an increased homogeneity occurs only when the metallic material is pearlitic steel due to the Hall-Petch effect, composite effect, interface strengthening, and/or solid solution strengthening (see Spec., ¶ 50). In addition, based on the deformation forming the substantially homogeneous microstructure, and pearlitic steel being responsible for increased homogeneity at the terminal distal end, it would appear that the homogeneity is highest not at the notch but at the notch at the terminal distal end. According, the scope of the claimed invention is not fully supported by the present specification and the amended claims constitute new matter. Dependent claims not addressed are rejected for the same reasons above.
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 42-43 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.
Claims 42 and 43 recite: “terminates in a notch to form a sharp edge”. This limitation is indefinite. The specification does not provide a special definition for “notch”. Accordingly, the common dictionary definition is adopted. See MPEP 2111.01 I. The most common definition of “notch” given by Merriam-Webster is “a V-shaped indentation”, which appears to agree with the usage of the term in the present specification (see Figs. 4&5B), and roughly corresponds with the present claims (see, e.g., claim 30&32). It is unclear how such a notch can form a sharp edge since it is no more than an indentation in another material. On the contrary, the present specification states after forming such a notch, the material is separated to form two sharp edges (see Spec., ¶ 61). Thus, it is not clear what claims 43 and 44 are actually directed to – the metallic material which has been deformed by way of a notch prior to separation and is still a unitary article, or after separation to form two articles having an edge whose shape is formed due to deformation. For purposes of examination, either interpretation will be considered.
Dependent claims not addressed are indefinite by virtue of dependence from an indefinite claim.
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.
Claim 43 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Flanhardt et al. (US 2005/0230510).
Regarding claim 43, Flanhardt discloses a cutting blade (¶ 4). The blade is obtained by rolling of the longitudinal edges into shape (¶ 8) and includes an undeformed central portion (see Fig. 3). Although Flanhardt does not expressly teach a metallic material which is deformed in a notch to form a sharp edge, the edge obtained by the process of Flanhardt is identical to an edge obtained via deforming by way of a notch and separating to form an edge because in both cases, the edge shape is created by a rolling process. 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 2113.

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Flanhardt does not expressly teach that a homogeneity of the blade increases such that it is highest at the notch (i.e., sharp edge), and that the grain sizes in the deformed portion are smaller than that of the non-deformed portion or prior to deformation. However, as recognized by the present specification, rolling a material both homogenizes and refines the grains of the material’s microstructure (see Spec., ¶ 7). Accordingly, these features are expected to inherently be present in the blade of Flanhardt, absent objective evidence to the contrary. See MPEP 2112. The use of tapered rolls for the rolling is 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 2113. Since the process of Flanhardt results in the same metal material which has a notch for forming a blade edge as that claimed, the prior art is considered to anticipate the claimed invention.

Claims 42-43 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Hobbs et al. (US 2007/0163390).
Regarding claim 42, Hobbs discloses a method of manufacturing razor blades from a strip material by reducing a thickness of the strip in a region that becomes the blade edge of the razor blade (¶ 5). The step of reducing the thickness is carried out by passing the strip between rollers along its length (¶ 7), and results in a beveled surface 36. Hobbs teaches in one embodiment, the middle of the strip is rolled in this manner, thus creating a notch that will become the sharp edge of a blade (¶ 29; see Fig. 4).

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Hobbs does not expressly teach that a homogeneity of the blade increases such that it is highest at the notch (i.e., sharp edge), and that the grain sizes in the deformed portion are smaller than that of the non-deformed portion or prior to deformation. However, as recognized by the present specification, rolling a material both homogenizes and refines the grains of the material’s microstructure (see Spec., ¶ 7). Further, since the metal material is rolled to the point that a blade edge is formed (¶ 29), one of ordinary skill in the art would expect severe plastic deformation such that the size of the deformed grains is in the range of 1%-25% of the non-deformed grains, in accordance with the substantially identical rolling process of the present invention (see Spec., ¶ 61). Accordingly, these features are expected to inherently be present in the blade of Hobbs, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 43, Hobbs discloses a method of manufacturing razor blades from a strip material by reducing a thickness of the strip in a region that becomes the blade edge of the razor blade (¶ 5). The step of reducing the thickness is carried out by passing the strip between rollers along its length (¶ 7), and results in a beveled surface 36. Hobbs teaches multiple pairs of rollers 48 are used to roll the strip material on both sides (¶ 33, see Fig. 5). Hobbs teaches in one embodiment, the middle of the strip is rolled in this manner, thus creating a notch that will become the sharp edge of a blade (¶ 29; see Fig. 4).

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Hobbs does not expressly teach that a homogeneity of the blade increases such that it is highest at the notch (i.e., sharp edge), and that the grain sizes in the deformed portion are smaller than that of the non-deformed portion or prior to deformation. However, as recognized by the present specification, rolling a material both homogenizes and refines the grains of the material’s microstructure (see Spec., ¶ 7). Accordingly, these features are expected to inherently be present in the blade of Hobbs, absent objective evidence to the contrary. See MPEP 2112. The use of tapered rolls for the rolling is 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. Since the process of Hobbs results in the same metal material which has a notch for forming a blade edge as that claimed, the prior art is considered to anticipate the claimed invention.
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.
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Hobbs et al. (US 2007/0163390) in view of Ishida (JP H01-154801).
Regarding claim 43, Hobbs discloses a method of manufacturing razor blades from a strip material by reducing a thickness of the strip in a region that becomes the blade edge of the razor blade (¶ 5). The step of reducing the thickness is carried out by passing the strip between rollers along its length (¶ 7), and results in a beveled surface 36. Hobbs teaches multiple pairs of rollers 48 are used to roll the strip material on both sides (¶ 33, see Fig. 5). Hobbs teaches in one embodiment, the middle of the strip is rolled in this manner, thus creating a notch that will become the sharp edge of a blade (¶ 29; see Fig. 4).
Hobbs does not expressly teach that a homogeneity of the blade increases such that it is highest at the notch (i.e., sharp edge), and that the grain sizes in the deformed portion are smaller than that of the non-deformed portion or prior to deformation. However, as recognized by the present specification, rolling a material both homogenizes and refines the grains of the material’s microstructure (see Spec., ¶ 7). Accordingly, these features are expected to inherently be present in the blade of Hobbs, absent objective evidence to the contrary. See MPEP 2112.
Hobbs does not expressly teach the use of tapered rolls for the rolling of the strip material. However, given that the rolling of the strip material results in a beveled surface at what will become the edge of a blade, the rollers used for rolling must be either tapered or angled. Ishida teaches it is known to use tapered rollers to obtain a blade from a coiled stock (see ¶¶ 1-3, Figs. 4 and 8). Accordingly, 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 tapered rolls, as taught by Ishida, for rolling the blade stock material of Hobbs, as Ishida teaches such a roller is suitable for producing blades and there is an expectation of success in adapting a known, suitable process for making blades.
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.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784