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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 6/15/2026 has been entered.
Response to Amendment
Applicant's amendment filed on 6/15/2026 has been entered.
Claims 1-7 were previously cancelled.
Claim 8 has been amended.
Claims 9-17 are as previously presented.
Claims 8-17 are still pending in this application, with claim 8 being independent.
Applicant's amendment overcomes the previously set-forth 11/13/2025 rejection under 35 U.S.C. 103 of claims 8, 9, and 15-17.
Response to Arguments
Applicant's arguments filed 6/15/2026 have been fully considered but they are not persuasive [Remarks pps. 4-9].
Applicant argues “Tokunaga and Brysch - either alone or in combination - do not disclose or suggest at least the following features recited in amended independent claim 8…”. Examiner respectfully disagrees. Amended claim 8 now requires: “a first step of providing a zinc-coated motor vehicle component having a welding surface, the welding surface having a zinc layer with a varying thickness, supported by Applicant’s specification describing a conventional motor vehicle component [i.e., the rough surface of a cast component, when a zinc layer is formed thereon by generative manufacturing (e.g., heat treatment, hot galvanizing), the generated zinc layer has a varying layer thickness; para. 0006: “In the case of generative manufacturing, as in the case of casting of the motor vehicle component, the motor vehicle component has a particularly great surface roughness. When zinc coating this particularly rough surface, and in particular when hot galvanizing this particularly rough surface, a zinc coating of the motor vehicle component that has varying layer thicknesses over a surface of the motor vehicle component is produced.”]. Thus, it has been presented below that while Tokunaga describes generating the zinc layer such that it has a specific thickness [paras. 0042-48], the zinc coating of the vehicle component can alternatively be formed by heat treatment/galvanizing [para. 0051].
In response to Applicant's argument that “Applicants' inventive method solves the problem in the prior art”, wherein “There is an existing problem in the prior art” [p. 5: “Applicants' Specification explains that conventional welding of zinc-coated components becomes problematic when the zinc layer is too thick, particularly where a zinc layer thickness exceeds 15 micrometers, and further explains that hot galvanizing can produce zinc layers having uncontrolled or difficult-to control thicknesses at the welding surface. See Applicants' Specification at [0017]. Their Specification also explains that cast and generatively manufactured motor vehicle components may have particularly rough surfaces, such that zinc coating those surfaces can produce varying layer thicknesses in the region of the welding surface, making it difficult to obtain constant welding quality using constant welding parameters.”], the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case: Tokunaga discloses a zinc coated component to be welded; Tokunaga discloses that the thickness of the zinc layer is to be controlled to a particular thickness, at least to avoid blow holes; Tokunaga discloses that the zinc coated component can alternatively be formed through heat-treatment/galvanizing; Brysch teaches that a zinc layer thickness can be selectively reduced, with a laser, to a particular thickness in distinct welding areas, wherein the zinc layer need not be removed completely, and that only a minimum layer may remain, thereby improving efficiency; and since it is known in the art that zinc coated components to be welded may have their zinc coating formed by heat treatment, galvanizing, and hot-dip galvanizing, as evidenced by Tokunaga [para. 0051; para. 0055], Brysch [para. 0002, para. 0007], Yang [including cast members; paras. 0044-45], and Musselman [para. 0004], the fact that the inventor has recognized another advantage of using a laser to remove a portion of a zinc layer to a specified thickness, i.e., that laser removal can be applied to “irregular” surfaces of varying thickness, in addition to the advantage disclosed by the prior art, i.e., reducing blow holes and improving efficiency, cannot be the basis for patentability when the differences would otherwise be obvious.
Regarding “Tokunaga and Brysch do not disclose or suggest each claim limitation” [p. 6], Applicant argues “Thus, Tokunaga does not teach providing a zinc-coated motor vehicle component having a welding surface with a pre-existing zinc layer of varying thickness; rather, Tokunaga teaches adding or forming a zinc oxide/metal-member layer at the welding location for use during welding… Brysch does not disclose providing a zinc-coated motor vehicle component having a welding surface with a zinc layer having a varying thickness component having a welding surface with a zinc layer having a varying thickness, nor does Brysch disclose the claimed sequence in which that varying pre-existing zinc layer is then reduced to a specified maximum layer thickness between 7 and 15 micrometers before welding…”. Examiner respectfully disagrees, and his presented Tokunaga and Brysch as both disclosing a zinc-coated motor vehicle component having a welding surface with a zinc layer having a varying thickness [e.g., a known galvanized/heat-treated part having a zinc coating formed thereon, the thickness being inherently imperfect and thus varying, see claim 8 103 rejection below].
Examiner further notes that although the instant specification shows support for the amendments to claim 8, the specification is silent with regards to any quantification of irregularity of the surface, and fig. 1 does not show any dimensions or indicate that it is drawn to scale.
Examiner further notes that it would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to apply the structure of Tokunaga and Brysch to a conventional structure known in the art, i.e., a zinc-coated motor vehicle component to be welded, having a zinc layer with a varying thickness formed thereon, e.g., a hot-dip galvanized coating, with a reasonable expectation of success, since the structure of Brysch is capable of removing a zinc layer.
Furthermore, in addition to structural limitations, claim 8 recites functional limitations drawn toward the intended use or manner of operating the laser device, i.e., removing the zinc layer to the specified maximum layer thickness in a region of the welding surface of the zinc-coated motor vehicle with a laser device, wherein the welding surface having a zinc layer with a varying thickness. When the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114.
In response to applicant's argument on p. 7 [“Moreover, a person of ordinary skill in the art could not have arrived at the presently claimed method by combining Tokunaga and Brysch. Tokunaga's method depends on adding or forming a zinc oxide/metal-member layer at the scheduled welding location and then using that layer during welding to increase vapor pressure near the joined interface, thereby broadening the molten metal and improving tensile shear strength. See Tokunaga at [0015], [0019], [0033]-[0037], [0068], [0071]-[0076].”] and in p. 8 [“Even accepting the Examiner's position that Tokunaga teaches a range of zinc content, the teachings of both references must be considered as a whole, as this is incumbent on the Examiner. Here, the Examiner must reconcile two teachings pertaining to zinc content. The Examiner may not pick and choose one teaching over the other, but rather consider both (both references must be considered as a whole), to then ask where would the teachings of both reference led the person of ordinary skill to.”], one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, it has been presented that Tokunaga discloses welding vehicle components with a zinc layer thereon, wherein the zinc layer is desired at a particular thickness, and Brysch has been presented as teaching that it is known and advantageous to use a laser to remove zinc layers to particular thicknesses, wherein all the prior art cited herein each disclose the conventional use of galvanized vehicle components, the galvanized components having the claimed zinc layer of varying thickness.
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.
Claims 8-17 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 8:
The recitation of “a zinc layer” in line 5 renders the claim indefinite because it is unclear if this is intended to be distinct from the zinc layer recited in line 4. The claim will be interpreted as indicating, in line 4, that a portion the zinc layer is removed.
The recitation of “a welding surface” in line 6 renders the claim indefinite because it is unclear if this is intended to be distinct from the welding surface recited in lines 3-4.
The limitation “the zinc-coated motor vehicle” in line 6 lacks sufficient antecedent basis and will be interpreted as reciting “the zinc-coated motor vehicle component” so as to refer to line 3.
The limitation “the pre-treated welding surface” in line 10 lacks sufficient antecedent basis and will be interpreted as reciting “the ” so as to refer to the welding surface after the second step.
Similarly, dependent claims 11 and 17 respectively recite “wherein the welding surface is pretreated” and “the pre-treating” and will be interpreted as similarly referring to the second step.
Claim 17:
The steps “pre-treating” and “welding” lack sufficient antecedent basis and will respectively be interpreted as referring to the second step and third step in claim 8.
Claims 9-17 are rejected due to dependence on a rejected claim.
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.
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.
Claims 8, 9, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga (US 20170314595 A1) in view of Brysch (DE 10315976 A1).
Regarding claim 8, Tokunaga discloses:
A method for welding zinc-coated motor vehicle components [Tokunaga discloses a laser welded joint of a member for automotive use, e.g., lower side metal sheet #4 coated with a metal member layer #5 of zinc oxide; see fig. 2; para. 0001; para. 0046; para. 0049], comprising:
a first step of providing a zinc-coated motor vehicle component having a welding surface [Tokunaga discloses a first step of preparing a welding surface wherein the metal member layer is formed on the metal sheet, between another metal sheet, wherein a thickness of the metal member layer is not limited (i.e., the layer need not be formed over the entire surface, and wherein the metal layer thickness is further selected according to a total thickness of corresponding overlaid metal sheets); para. 0040; paras. 0046-47], the welding surface having a zinc layer with a varying thickness [Tokunaga discloses that the zinc coating of the component can be alternatively generated through heat treated/galvanizing, thus having a varying thickness, i.e., the galvanizing process forming a coating with a non-ideal uniform thickness; para. 0051];
[Tokunaga discloses forming the metal member layer and limiting the thickness of the layer relative to a total thickness, in order to avoid forming blow holes; para. 0047: “The thickness of the metal member layer is preferably made 0.06t^1/2 - 0.01 (mm) or less when defining the total thickness of the overlaid metal sheets to be welded as "t" (mm). If the thickness of the metal member layer exceeds 0.06t^1/2 - 0.01 (mm), blow holes easily form inside the weld metal of the joined interface. Further, to obtain the effect of expansion of the width of the weld metal of the joined interface of the present invention, the thickness of the layer is preferably 1 µm or more.” ]; and
a third step, carried out after the second step, of welding a connecting element [fig. 2: upper side metal sheet #3] onto the pre-treated welding surface [Tokunaga discloses overlaying another metal sheet before welding them by a laser beam; para. 0041: “(ii) A step of irradiating a laser beam from an overlaid direction of the metal sheets so that a region including the metal member layer melts to thereby weld them by the laser beam”], wherein
the specified maximum layer thickness is between 7 and 15 micrometers [Tokunaga discloses wherein a thickness of a zinc oxide layer is between 1 μm and 20 μm; see fig. 5, showing wherein zinc oxide layer thicknesses of 1, 20, 40, and 50 micrometers exhibits increased shear strength compared to zinc oxide layer thicknesses of 0 and 100 micrometers. Thus, Tokunaga discloses a range that overlaps the claimed range of between 7 and 15 micrometers, wherein the range of thicknesses is limited by sufficient specificity to anticipate the claimed range. See MPEP § 2131.03(II).].
However, although:
Tokunaga discloses that it is known that the zinc coating can be formed through heat-treatment/galvanizing, and that the zinc layer thickness is selected according to the requirements of the given application,
Tokunaga does not disclose:
a second step, carried out after the first step, of removing a zinc layer to a specified maximum layer thickness in a region of a welding surface of the zinc-coated motor vehicle with a laser device.
Brysch, in the same field of endeavor [i.e., preparing a welding surface by removing a zinc layer to a specified thickness; para. 0001: “The present invention relates to a method for preparing the joining area of a coated workpiece, in which at least one surface layer of the workpiece is at least partially removed in the joining area by the action of laser radiation.”; para. 0008: “If the zinc layer in a joint is too thick, e.g. B. larger than 5 μm, a negative welding result is usually to be expected. If the zinc layer thickness is reduced to e.g. B. less than 5 μm, a positive welding result can be expected. If you only reduce it to a "minimum value", a higher removal performance with the laser beam and thus a higher removal speed can be achieved.”], teaches a pre-treating second step, wherein the zinc layer is removed to a specified thickness in a region of the welding surface with a laser device [para. 0009].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the method of Tokunaga to further comprise:
a second step, carried out after the first step, of removing the zinc layer to the specified maximum layer thickness in a region of the welding surface of the zinc-coated motor vehicle with a laser device.
One having ordinary skill in the art, before the effective filing date of the invention, would have been motivated to selectively remove Tokunaga’s zinc layer to a specified maximum layer thickness in a region of the welding surface with a laser device, since Brysch teaches that this maintains the zinc layer in remaining areas, which maintains protection against corrosion attack [i.e., a controlled removal of the zinc layer to achieve the desired thickness according to the requirements of the given application, e.g., to only a minimum thickness so as to improve efficiency; para. 0024: “In contrast, the zinc layer remains in the remaining areas of these components, so that even after the joining process, the resulting composite component is protected against corrosion attack on all accessible surfaces.”].
Regarding claim 9, Tokunaga in view of Brysch discloses the method according to claim 8.
Tokunaga as modified by Brysch, specifically Brysch further discloses wherein the zinc-coated motor vehicle component is hot galvanized [para. 0007].
Regarding claim 15, Tokunaga in view of Brysch discloses the method according to claim 8.
Tokunaga further discloses wherein a first thickness of the zinc layer along an entirety of the region of the welding surface has a same specified layer thickness which differs from a second thickness outside of the region of the welding surface [Tokunaga discloses that the metal member layer may be formed at a first thickness only at the scheduled welding location, and not outside of the region of the welding surface (i.e., at a different second thickness); para. 0046].
Regarding claim 16, Tokunaga in view of Brysch discloses the method according to claim 8.
Tokunaga discloses the method further comprising: focusing the laser device two-dimensionally and three-dimensionally onto certain points on the surface of the zinc layer [i.e., adjusting a vertical focus of a laser beam emitted from the laser device as well as driving the laser beam along a weld zone] with a deflecting device [Tokunaga discloses a focusing optical system and drive system to control a position and focus of a laser beam during welding; par. 0063-64].
Regarding claim 17, Tokunaga in view of Brysch discloses the method according to claim 8.
Tokunaga as modified by Brysch further discloses using the same laser device to perform both the pre-treating and the welding [Brysch discloses that the removal of the coating and the subsequent welding be done by means of laser radiation (paras. 0005-6), specifically wherein the components are treated prior to laser soldering (para. 0009), and wherein the laser is adjusted according to the respective application; para. 0009: “According to the invention, components can also be treated, for example, which are subsequently joined by laser soldering… The removal of one or more layers is then carried out selectively or completely as required, whereby the corresponding laser is adjusted and the parameters of the laser beam device are set according to the respective application. Various lasers can be used in the method according to the invention, for example solid-state lasers, carbon dioxide lasers, diode lasers and fiber lasers or others. The use of a short-pulsed Nd:YAG laser is particularly preferred. The laser is also selected depending on the organic or inorganic coating to be evaporated as well as the removal depth and width.”].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to use the same laser device to perform both the pre-treating and the welding, as disclosed by Brysch, since a single laser device can be chosen such that its parameters can be set according to the respective application, which reduces costs.
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga (US 20170314595 A1) in view of Brysch (DE 10315976 A1) as applied to claim 9 above, and further in view of Yang (US 20190224781 A1).
Regarding claim 10, Tokunaga as modified by Brysch discloses the method according to claim 9.
Tokunaga further discloses that the metal sheets are not limited [para. 0055].
However, Tokunaga does not explicitly disclose wherein the zinc-coated motor vehicle component is generatively manufactured or cast.
Yang, in the same field of endeavor, teaches wherein the zinc-coated motor vehicle component is cast [para. 0045: “Additionally, each of the base aluminum substrates 36, 38 may be separately provided in wrought or cast form.”].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the method of Tokunaga and Brysch, wherein the zinc-coated motor vehicle component is generatively manufactured or cast [One having ordinary skill in the art, before the effective filing date of the invention, would have been motivated to apply the method of Tokunaga and Brysch to cast zinc-coated motor vehicle parts since this broadens the usability of the method and would lower costs.].
Regarding claim 11, Tokunaga as modified by Brysch and Yang discloses the method according to claim 10.
Tokunaga as modified by Brysch and Yang, specifically Brysch further discloses wherein the welding surface is pretreated with the laser device and the laser device is a pulsed high-power solid-state laser [para. 0009].
Regarding claim 12, Tokunaga as modified by Brysch and Yang discloses the method according to claim 11.
Tokunaga further discloses wherein the laser device generates a laser beam that is guided over the welding surface by a deflecting device [Tokunaga discloses a focusing optical system and drive system to control a position and focus of a laser beam during welding; par. 0063-64].
Regarding claim 13, Tokunaga as modified by Brysch and Yang discloses the method according to claim 12.
Tokunaga further discloses wherein the zinc-coated motor vehicle component is laser-welded to the connecting element [para. 0019].
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga (US 20170314595 A1) in view of Brysch (DE 10315976 A1) and Yang (US 20190224781 A1) as applied to claim 12 above, and further in view of Musselman (EP 1640104 A2).
Regarding claim 14, Tokunaga as modified by Brysch and Yang discloses the method according to claim 12.
However, Tokunaga does not disclose wherein the zinc-coated motor vehicle component is painted after welding to the connecting element.
Musselman, in the same field of endeavor, teaches that it is well known to apply a zinc coating to improve paintability [para. 0004].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the method of Tokunaga, wherein the zinc-coated motor vehicle component is painted after welding to the connecting element [One having ordinary skill in the art, before the effective filing date of the invention would have been motivated to paint the zinc-coated motor vehicle component after welding to the connecting element since the remaining galvanized surfaces offer improved paintability, as taught by Musselman].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE J EVANGELISTA whose telephone number is (571)272-6093. The examiner can normally be reached Monday - Friday, 9am - 5pm EST.
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/THEODORE J EVANGELISTA/Examiner, Art Unit 3761 /EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
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