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 Amendment
The amendment filed 17 July 2025 has been entered.
The specification objection is maintained in the present Office action.
Applicant’s amendments have overcome the Claim objection. The Claim objection is withdrawn.
Applicant’s amendments have overcome the previous 35 USC 112(b) rejection. However, Applicant’s amendments have provided grounds for a new 35 USC 112(b) rejection.
Applicant’s arguments, filed 17 July 2025, with respect to the rejection of claim 1 under 35 USC § 103 have been fully considered but are not persuasive. Therefore, the grounds of rejection under 35 USC § 103 still stand.
Status of the Claims
In the amendment dated 17 July 2025, the status of the claims is as follows: claims 1 and 12-13 were amended. Claim 2 was cancelled.
Claims 1, 4-5, 12-13, and 18-20 are pending.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: although newly added claim 20 describes fig. 2A, the limitations in claim 20 lack antecedent in the Specification. For example, claim 20 recites “wherein shapes of the joint portions are elliptical.” Although fig. 2A shows elliptical shapes, there is no mention of elliptical shapes in the Specification. Furthermore, there is no mention of a “first joint portion,” a “second joint portion,” or an “axis” in the Specification.
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 1, 4-5, 12-13, and 18-20 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 1 recites the limitation "wherein the plural pairs of joint portions are formed by any one welding selected from a laser welding, a plasma welding, a TIG welding, and laser-TIG hybrid welding.” It is unclear if this limitation is a Markush grouping of alternatives or if instead an open list of alternatives (MPEP 2173.05.h). Although selection from a group is required, the limitation does not use “consisting of.” Furthermore, if this limitation is a Markush grouping, then it is unclear how “laser-TIG hybrid welding” can be an alternative to “laser welding” and “TIG welding.” Instead, “laser-TIG hybrid welding” is a combination of “laser welding” and “TIG welding.” For the purpose of the examination, the limitation will be interpreted under its broadest reasonable interpretation as being an open list.
Claims 4-5, 12-13, and 18-20 are rejected based on their dependency to claim 1. This rejection has been added based on the amended portion of the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-5, 12-13, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto et al. (US20150174702A1, cited in 892-form dated 3 June 2022) in view of Duley et al. (US-6426153-B1).
Regarding claim 1, Fujimoto teaches a joint structure (fig. 7B) comprising:
wherein the second plate-shaped member (member 8, fig. 7B) is overlapped on the first plate-shaped member (member 7, fig. 7B),
wherein the second plate-shaped member (member 8, fig. 7B) has a shape that is longer in a longitudinal direction (horizontal direction, fig. 7B) than in a lateral direction (vertical direction and depth direction, fig. 7B; member 8 is longer horizontally than vertically, fig. 7B),
wherein the first plate-shaped member (member 7, fig. 7B) and the second plate-shaped member (member 8, fig. 7B) are further joined to each other in an overlapping surface (surface between members 7 and 8, fig. 7B) between the first plate-shaped member and the second plate-shaped member by plural pairs of joint portions (spot-welded portions 10 and melted and solidified portions 15, fig. 7B),
wherein the plural pairs of joint portions are formed by any one welding selected from a laser welding (the melted and solidified portions 15 are formed from laser welding, para 0232; construed such that laser welding is used to form the weld were spot-welded portions 10 and melted and solidified portions 15 are located, fig. 7B), a plasma welding (not explicitly disclosed), a TIG welding (not explicitly disclosed), and laser-TIG hybrid welding (not explicitly disclosed)
wherein a bent portion (bent edges of member 7 and member 8 that overlap, fig. 7B) of a welded assembly of the first plate-shaped member and the second plate-shaped member (welded members 7 and 8, fig. 7B), at which bending is to be performed (with respect to fig. 7B, “a flange is joined to a portion shaped through press forming,” para 0342; construed such that the member 8 can be overlapped with member 7 and then press formed or bent together prior to the welding shown in fig. 7B), is set such that the bent portion passes at a center of joint portions (the bent overlapped edges are in the center between melted and solidified portions 15, fig. 7B),
Fujimoto, fig. 7B
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In this embodiment, Fujimoto does not explicitly disclose a first plate-shaped member made of steel joined with a second plate-shaped member made of steel, wherein a front surface of the first plate-shaped member and both edge portions of the second plate-shaped member along the longitudinal direction are joined by a weld metal that extends further outward in the lateral direction than the edge portions of the second plate- shaped member, wherein the joint portions are provided to penetrate through the first plate-shaped member and the second plate-shaped member to a back surface of the first plate-shaped member that is opposite to the front surface of the first plate-shaped member, and wherein the weld metal is a Fe-based alloy.
However, in a different embodiment (fig. 8B), Fujimoto teaches a first plate-shaped member (sheet 61H, fig. 8B; a sheet is construed as having a “plate” shape) made of steel (“uncoated high-strength steel,” para 0280) joined with a second plate-shaped member (sheet 62L, fig. 8B; a sheet is construed as having a “plate” shape) made of steel (“uncoated low-strength steel,” para 0280), wherein the joint portions (portions 10 and 15, fig. 8B) are provided to penetrate through the first plate-shaped member (sheet 61H, fig. 8B) and the second plate-shaped member (sheet 62L, fig. 8B) to a back surface of the first plate-shaped member (bottom surface of sheet 61H, fig. 8B; “the depth LD61 of the melted and solidified portion 15 in the high-strength steel sheet 61H is 100% of the thickness of the high-strength steel sheet 61H,” para 0281) that is opposite to the front surface of the first plate-shaped member (top surface of sheet 61H, fig. 8B).
Fujimoto, fig. 8B
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to use the type of weld shown in fig. 8B as the weld for portions 10 and 15 that are shown in fig. 7B, in order to weld to a depth that is 100% of the lower steel sheet, because when steel sheets are spot-welded, a softening can occur, which can serve as a point of fracture in an automobile collision, but by adding an additional laser-beam weld throughout the thickness of the bottom high-strength sheet, it is possible to reduce the area of the softening zone where fractures are more likely to occur (paras 0022-0023, 0113, 0139-0140; fig. 14 describes different softening zones that form when only the spot weld is used).
Fujimoto does not explicitly disclose wherein a front surface of the first plate-shaped member and both edge portions of the second plate-shaped member along the longitudinal direction are joined by a weld metal that extends further outward in the lateral direction than the edge portions of the second plate- shaped member, and wherein the weld metal is a Fe-based alloy.
However, in the same field of endeavor of manufacturing frames for vehicles, Duley teaches wherein a front surface of the first plate-shaped member (top surface of part 20c, fig. 7) and both edge portions (edges of part 10c, fig. 7) of the second plate-shaped member (part 10c, fig. 7) along the longitudinal direction (construed as the depth direction in fig. 7, i.e., along the edges of the part 10c, which is construed as corresponding with the horizontal direction taught by Fujimoto in fig. 7B) are joined by a weld metal (lap weld 40c, fig. 7) that extends further outward in the lateral direction (construed as the left-right direction in fig. 7, which is construed as corresponding with the vertical and depth directions taught by Fujimoto in fig. 7B) than the edge portions of the second plate- shaped member (as shown in fig. 7; “the constituent part 10c may be welded to the constituent part 12c by following the edge of the constituent part and providing a lap weld 40c along the periphery of the constituent part 10c,” column 4, lines 20-23; construed such that all four edges of the part 10c are welded), and where the weld metal is a Fe-based alloy (Fujimoto teaches “steel sheet members” abstract; Duley also teaches “steel,” column 3, line 59; steel is an FE-based alloy; construed such that because the workpieces are made of steel that the weld will be molten steel).
Duley, fig. 7
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Fujimoto, to include a lap weld 40c, in view of the teachings of Duley, along the periphery of the member 8, as taught by Fujimoto in fig. 7B, in order to apply a seam weld that inhibits moisture ingress in between the members or workpieces, reducing the likelihood of corrosion from occurring at the interface between the two workpieces (Duley, column 5, lines 4-9).
Regarding claim 4, Fujimoto teaches wherein at least one of the first plate-shaped member and the second plate-shaped member is a steel material for hot stamping (“either of or both of the steel sheets…hot stamped member,” para 0122).
Regarding claim 5, Fujimoto teaches which is a structural member for an automobile (“A-pillar and a B-pillar,” para 0182).
Regarding claim 12, Fujimoto teaches wherein at least one of the first plate-shaped member and the second plate-shaped member is a steel material for hot stamping (“either of or both of the steel sheets…hot stamped member,” para 0122).
Regarding claim 13, Fujimoto teaches which is a structural member for an automobile (“A-pillar and a B-pillar,” para 0182).
Regarding claim 20, the combination of fig. 7b of Fujimoto in view of fig. 8b of Fujimoto and Duley as set forth above regarding claim 1 above teaches the invention of claim 20. Specifically, Fujimoto teaches wherein all of the joint portions (spot-welded portions 10 and melted and solidified portions 15, fig. 7B) of the joint structure (fig. 7B) are formed into pairs (three pairs along the length of member 8, fig. 7B) of joint portions by laser welding (portion 15, fig. 7B; para 0125; beam LB, fig. 8B), the pairs of joint portions being located at an interior of the second plate-shaped member with respect to the edge portions (portions 10 and 15 are located inside the edges of member 8, fig. 7B), to connect the first plate-shaped member to the second plate shaped member (para 0280), each of the pairs of the joint portions consists of a first joint portion (top portions 10 and 15, fig. 7B) and a second joint portion (bottom portions 10 and 15, fig. 7B) that is separate from the first joint portion, the first joint portion being on an opposite side (top side of member 8, fig. 7B) of the second joint portion (bottom side of member 8, fig 7B) along the longitudinal direction (horizontal direction, fig. 7B; the top portions 10 and 15 as well as bottom portions 10 and 15 are spread out along the horizontal direction, fig. 7B; fig. 2A in the Instant Application shows a similar arrangement of the joint portions 15 along the x-axis), and
wherein shapes of the joint portions are elliptical (weld nugget 12 is elliptical, fig. 8B), with a longitudinal direction of the second plate-shaped member being a major axis (left-right direction, fig. 8B; construed as being the same direction as the same left-right direction in fig. 7B).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable Fujimoto et al. (US20150174702A1) in view of Duley et al. (US-6426153-B1) as applied to claim 1 above and further in view of Kikuchi et al. (US-20190291216-A1, EFD of 28 Jan 2016).
Regarding claim 18, Fujimoto teaches the invention as described above but does not explicitly disclose wherein the weld metal extends around both of the edge portions of the second plate-shaped member along the lateral direction and around both of the edge portions of the second plate-shaped member along the longitudinal direction such that the weld metal extends continuously over an entire periphery of the edge portions along the lateral direction and the edge portions along the longitudinal direction of the second plate-shaped member.
However, in the same field of endeavor of manufacturing pressed door frames for vehicles, Duley teaches wherein the weld metal (lap weld 40c, fig. 7) extends around both of the edge portions of the second plate-shaped member (edges of part 10c, fig. 7) along the lateral direction and around both of the edge portions of the second plate-shaped member along the longitudinal direction (constituent part 10 has a rectangular shape and four edges in fig. 3; construed such that the lap weld 40c extends along all four edges of the part 10c in fig. 7) such that the weld metal extends over an entire periphery of the edge portions along the lateral direction and the edge portions along the longitudinal direction of the second plate-shaped member (as shown in fig. 7; “the constituent part 10c may be welded to the constituent part 12c by following the edge of the constituent part and providing a lap weld 40c along the periphery of the constituent part 10c,” column 4, lines 20-23; construed such that all four edges of the part 10c are welded).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Fujimoto, to include a lap weld 40c, in view of the teachings of Duley, along the periphery of the member 8, as taught by Fujimoto in fig. 7B, in order to apply a seam weld that inhibits moisture ingress in between the members or workpieces, reducing the likelihood of corrosion from occurring at the interface between the two workpieces (Duley, column 5, lines 4-9).
Fujimoto/Duley do not explicitly disclose such that the weld metal extends continuously over an entire periphery of the edge portions.
However, in the same field of endeavor of lap-welded joints for steel sheets, Kikuchi teaches such that the weld metal (weld zone 16, fig. 1) extends continuously over an entire periphery of the edge portions (edge of first steel material 12, fig. 1).
Kikuchi, fig. 1
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Fujimoto to include, a weld zone 16, in view of the teachings of Kikuchi, by forming a weld toe 16b, as taught by Kikuchi, around the edges of the member 8, as taught by Fujimoto, in order to form a weld toe 16b where the bottom steel sheet is not melted in the vicinity of the weld toe but where a weld melted portion 18 extends along the bottom steel sheet parallel to the weld toe, so as to improve the fatigue properties of the weld joint by 8.4 to 8.7 times in comparison to a joint where only a weld toe is formed (Kikuchi, paras 0004, 0042, and 0085-0086; figs. 3a-3b and 18).
Regarding claim 19, Fujimoto teaches the invention as described above but does not explicitly disclose wherein the weld metal extends around both of the edge portions of the second plate-shaped member along the longitudinal direction such that the weld metal extends continuously over an entire periphery of the edge portions along the longitudinal direction of the second plate-shaped member.
However, in the same field of endeavor of manufacturing pressed door frames for vehicles, Duley teaches wherein the weld metal (lap weld 40c, fig. 7) extends around both of the edge portions of the second plate-shaped member (edges of part 10c, fig. 7) along the longitudinal direction (constituent part 10 has a rectangular shape and four edges in fig. 3; construed such that the lap weld 40c extends along all four edges of the part 10c in fig. 7) such that the weld metal extends over an entire periphery of the edge portions along the longitudinal direction of the second plate-shaped member (as shown in fig. 7; “the constituent part 10c may be welded to the constituent part 12c by following the edge of the constituent part and providing a lap weld 40c along the periphery of the constituent part 10c,” column 4, lines 20-23; construed such that all four edges of the part 10c are welded).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Fujimoto, to include a lap weld 40c, in view of the teachings of Duley, along the periphery of the member 8, as taught by Fujimoto in fig. 7B, in order to apply a seam weld that inhibits moisture ingress in between the members or workpieces, reducing the likelihood of corrosion from occurring at the interface between the two workpieces (Duley, column 5, lines 4-9).
Fujimoto/Duley do not explicitly disclose such that the weld metal extends continuously over an entire periphery of the edge portions.
However, in the same field of endeavor of lap-welded joints for steel sheets, Kikuchi teaches such that the weld metal (weld zone 16, fig. 1) extends continuously over an entire periphery of the edge portions (edge of first steel material 12, fig. 1).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Fujimoto to include, a weld zone 16, in view of the teachings of Kikuchi, by forming a weld toe 16b, as taught by Kikuchi, around the edges of the member 8, as taught by Fujimoto, in order to form a weld toe 16b where the bottom steel sheet is not melted in the vicinity of the weld toe but where a weld melted portion 18 extends along the bottom steel sheet parallel to the weld toe, so as to improve the fatigue properties of the weld joint by 8.4 to 8.7 times in comparison to a joint where only a weld toe is formed (Kikuchi, paras 0004, 0042, and 0085-0086; figs. 3a-3b and 18).
Response to Argument
Applicant' s arguments filed 17 July 2025 have been fully considered but are not persuasive.
Page 5 of the arguments requests that the examiner identify which limitations in claim 20 are missing antecedent in the Specification. The below underlined portion of claim 20 lacks antecedent in the Specification, although these features are shown in fig. 2A:
“The joint structure according to claim 1, wherein all of the joint portions of the joint structure are formed into pairs of joint portions by laser welding, the pairs of joint portions being located at an interior of the second plate-shaped member with respect to the edge portions, to connect the first plate-shaped member to the second plate shaped member, each of the pairs of the joint portions consists of a first joint portion and a second joint portion that is separate from the first joint portion, the first joint portion being on an opposite side of the second joint portion along the longitudinal direction, wherein shapes of the joint portions are elliptical, with a longitudinal direction of the second plate-shaped member being a major axis.”
In response to the Applicant’s argument on page 7 of the arguments that Fujimoto (US20150174702) teaches resistance spot welding in contrast with claim 1, which recites “joint portions are formed by any one welding selected from a laser welding, a plasma welding, a TIG welding, and laser-TIG hybrid welding,” the examiner agrees that Fujimoto teaches resistance spot welding. However, Fujimoto also teaches using “laser welding.” Thus, Fujimoto teaches this limitation.
The examiner further notes that this limitation from claim 1 does not appear to be a Markush claim because “consisting of” is not used and because “laser-TIG hybrid welding” is not an alternative to but is instead a combination of “laser welding” and “TIG welding” (as explained in the 35 USC 112(b) rejection above). Thus, the Applicant’s arguments are not commensurate with the scope of the claims because open claim language is used.
Presupposing instead that this limitation was amended to recite “consisting of,” claim 1 is a product claim and not a method claim. Patentability of a product does not depend on its method of production (MPEP 2113). Thus, patentability would be determined based on whether a joint portion formed only by laser welding is significantly different from a joint portion formed by both laser welding and resistance spot welding. Respectfully submit that the finished product shown in fig. 7b of Fujimoto appears to be the same final product produced in claim 1. The Applicant does not explain how a product that is formed only by “laser welding,” “plasma welding,” “TIG welding,” or “laser-TIG hybrid welding” differs significantly from a product formed by a laser-resistance-spot hybrid welding method (MPEP 2113 explains how the Applicant bears the burden of proof for product-by-process claims).
Page 7 of the arguments states that a weld performed before bending is stronger than a weld that is performed after bending. However, this argument is conclusory and hypothetical. No evidence is provided to support the argument.
Furthermore, Fujimoto teaches that with respect to fig. 7B, “a flange is joined to a portion shaped through press forming” (paragraph 0342). Thus, Fujimoto teaches that the members 7 and 8 in fig. 7C can be press formed or bent together. Thus, Fujimoto teaches the product-by-process limitation of claim 1: “at which bending is to be performed” because Fujimoto teaches that the “bent portions” of members 7 and 8 are portions “at which bending is to be performed” as result of press forming the members together.
For the above reasons, rejections to the pending claims are respectfully sustained by the examiner.
Conclusion
THIS ACTION IS MADE FINAL. 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 ERWIN J WUNDERLICH whose telephone number is (571)272-6995. The examiner can normally be reached Mon-Fri 7:30-5:30.
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/ERWIN J WUNDERLICH/Examiner, Art Unit 3761 9/16/2025
/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761