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 .
Reopened after the filing of an Appeal brief
In view of the Appeal Brief filed on 17 October 2022, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below.
/EDWARD F LANDRUM/ Supervisory Patent Examiner, Art Unit 3761
Response to Amendment
Applicant’s amendments to the claims filed on 10/13/2025 are acknowledged and entered. According to the Amendments to the claims, claims 58-60 has /have been amended, claims 1-44 and 49-53 has /have been cancelled previously. Accordingly, claims 45-48 and 54-65 are pending in the application. An action on the merits for claims 45-48 and 54-65 are as follow.
The previous 112 (b) Claim Rejections are withdrawn in accordance with applicant's amendment to the claims with no new matter added.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 45-48 and 54-65 is/are rejected under 35 U.S.C. 103 as being unpatentable over Briand et al. (US 2003/0230559 Al) in view of Johnson et al. (US 6,664,508 B1), Pan (CN 105033506 A), Calla et al. (US 2010/0173087 A1) and further in vier of Crozes et al. (US 2016/0312364 A1) as evidentiary evidence.
Regarding Independent Claim 45, Briand et al. disclose a method for the manufacture of an assembly comprising the following successive steps:
providing at least two metallic substrates (a method of laser welding tailored blanks, [0025]) wherein a first of the at least two metallic substrates is a steel (a material mostly containing steel. [0025]) having a reflectance higher or equal to 60% at all wavelengths between 6.0 and 15.0μm (chart with title: “Absorption for… Steel (different types of lasers); shown the reflect of steel with the wavelengths from 6.0 to 15.0μm in; https://endurancelasers.com/absorption-wavelength-spectrum-for-different-materials/) that has been pre-coated with a precoating (a metal surface coating, [0037]); and
welding of the at least two metallic substrates by laser welding (See Title).
Briand et al. disclose the invention substantially as claimed and as discussed above; except does not disclose a precoating (taught by Briand et al. already) including at least one titanate and at least one nanoparticle, wherein the at least one titanate has a diameter between 1 and 40μm, and at the at least one nanoparticle is selected from the group consisting of TiO2, SiO2, Yttria-stabilized zirconia (YSZ), AhO3, MoQ3, CrQ3, CeO2 and mixtures thereof; and welding of the at least two metallic substrates by laser welding (taught by Briand et al. already) at a wavelength between 6.0 and 15.0μm.
Johnson et al. teach a welding method with a steel (carbon steel, chrome-molybdenum steels, low alloy steel, austenitic stainless steel, Col 4 line 10-12) with a precoating (taught by Briand et al. already) including at least one titanate (Titanate salts, Col 4 line 9; shown in Table 1) and at least one particle (see TABLE 1 in Col 5), and at the at least one nanoparticle is selected from the group consisting of TiO2, SiO2, Yttria-stabilized zirconia (YSZ), AhO3, MoQ3, CrQ3, CeO2 and mixtures thereof (see TiO2, SiO2 under TABLE 1 in Col 5). Johnson et al. teach the invention substantially as claimed, except for the precoating including the at least one particle is a at least one nanoparticle; as evidenced by Crozes et al., it was old and well known in the art to have the precoating including at least on nanoparticle (a method for dip-withdraw a metal substrate with a nanoparticle TiO2 film, [0008]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to including the at least one particle is a at least one nanoparticle as claimed, since it was well known in the art to do so as evidenced by Crozes et al.
Pan teaches a welding method (see Title; resulting in superior performance of welding rods and fine welds, [0005]) with a steel with a precoating (taught by Briand et al. already) including at least one titanate (see Title; Note: taught by Johnson et al. already), wherein the at least one titanate has a diameter between 1 and 40μm (with a diameter of 0.5 to 1.0 μm, [0009]).
Calla et al. teaches welding of the at least two metallic substrates by laser welding (heat source 108 may include one or more lasers, [0018]. Note: “the at least two metallic substrates by laser welding” taught by Briand et al. already) at a wavelength between 6.0 and 15.0μm (applied CO2 lasers having a wavelength of approximately 10 microns may be used, [0019]).
Therefore, it would have been obvious before the effective filling date of the claimed invention to one of ordinary skill in the art to modify Briand et al. with Johnson et al.’s further teaching (as evidenced by Crozes et al.) of a precoating including at least one titanate and at least one nanoparticle, and at the at least one nanoparticle is selected from the group consisting of TiO2, SiO2, Yttria-stabilized zirconia (YSZ), AhO3, MoQ3, CrQ3, CeO2 and mixtures thereof; because Johnson et al. teach, in Abstract, of providing an excellent welding method to afford a deep weld penetration in steels during processing; and modify Briand et al. in view of Johnson et al. with Pan’s further teaching of the at least one titanate has a diameter between 1 and 40μm; because Pan teaches, in Para. [0005], of providing an excellent welding method can reduce arc voltage, stabilize the arc, and reduce spatter, resulting in superior performance and fine welding results; and modify Briand et al. in view of Johnson et al. and Pan with Calla et al.’s further teaching of welding of the at least two metallic substrates by laser welding at a wavelength between 6.0 and 15.0μm; because Calla et al. teach, in Para. [0018], of providing excellent laser heat source to pre-heating a region of the substrate 122 prior to the application of the coating material may be desirable to improve the performance and properties of the applied coating.
Claim 46, wherein the laser welding is performed by a laser welding machine having a laser having wavelengths between 6.0 and 15.0μm (applied CO2 lasers having a wavelength of approximately 10 microns may be used, [0019], Calla et al.).
Claim 47, wherein the laser welding is performed with a shielding gas being an inert gas and/or an active gas (MIG (Metal Inert Gas) welding, [0002], Briand et al.).
Claim 48, wherein a power of the laser is between 1 and 20kW (the laser is of the CO2 type and has a power of from 4 to 10 kW, [0034], Briand et al.).
Claim 54, wherein the steel is a carbon steel (carbon-manganese steel, [0034], Briand et al.).
Claim 55, wherein, the at least one nanoparticle has a size comprised between 5 and 60 nm (see TiO2, SiO2 under TABLE 1 in Col 5 of Johnson et al. and [0007-0008] of Crozes et al. as evidentiary evidence shown above in claim 45). Even though, the prior art do not explicitly disclose that the at least one nanoparticle has a size comprised between 5 and 60 nm; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange the at least one nanoparticle has a size comprised between 5 and 60 nm, since such a configurations would have involved a mere change in the size of a component, a change in position is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237; also, applicant has not disclosed that this kind of design solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well when the at least one nanoparticle do not with a size comprised between 5 and 60 nm as claimed (see Specification [0024]: Preferably, the nanoparticles have a size comprised between 5 and 60 nm).
Claim 56, wherein, a percentage in dry weight of the nanoparticles in the precoating is below or equal to 80% (see TiO2, SiO2 under TABLE 1 in Col 5, Johnson et al.). Johnson et al. and evidentiary evidence Crozes et al. do not explicitly disclose that a percentage in dry weight of the nanoparticles in the precoating is below or equal to 80%; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange the at least one nanoparticle that a percentage in dry weight of the nanoparticles in the precoating is below or equal to 80% (see Specification [0025]: the nanoparticles is below or equal to 80% and preferably between 2 and 40%), since such a configurations would have involved a mere change in the percentage of a component, a change in percentage is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237.
Claim 57, wherein, a percentage in dry weight of the nanoparticles in the precoating is between 2 and 40% (see TiO2, SiO2 under TABLE 1 in Col 5, Johnson et al.). Johnson et al. and evidentiary evidence Crozes et al. do not explicitly disclose that a percentage in dry weight of the nanoparticles in the precoating is between 2 and 40%; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange the at least one nanoparticle that a percentage in dry weight of the nanoparticles in the precoating is between 2 and 40% (see Specification [0025]: the nanoparticles is below or equal to 80% and preferably between 2 and 40%), since such a configurations would have involved a mere change in the percentage of a component, a change in percentage is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237.
Claim 58, wherein the at least one titanate has a particle size (Titanate salts, Col 4 line 9; shown in Table 1, Johnson et al). Johnson et al. do not explicitly disclose that the at least one titanate has a particle size distribution between 1 and 40μm; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange the at least one titanate has a particle size distribution between 1 and 40μm (see Specification [0027]: a particle size distribution between 1 and 40μm, more preferably between 1 and 20μm and advantageously between 1 and 10μm), since such a configurations would have involved a mere change in the size of a component, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237.
Claim 59, wherein the at least one titanate has a particle size distribution between 1 and 10μm (Titanate salts, Col 4 line 9; shown in Table 1, Johnson et al). Johnson et al. do not explicitly disclose that the at least one titanate has a particle size distribution between 1 and 10μm; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange the at least one titanate has a particle size distribution between 1 and 10μm (see Specification [0027]: a particle size distribution between 1 and 40μm, more preferably between 1 and 20μm and advantageously between 1 and 10μm), since such a configurations would have involved a mere change in the size of a component, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237.
Claim 60, wherein the at least one titanate is selected from the group consisting ofNa2ThO1, NaTiQ3, K2TiQ3, K2ThOs MgTiQ3, SrTiQ3, BaTiQ3, CaTiQ3, FeTiQ3 and ZnTiO4 and mixtures thereof (at least one titanate compound such as Na2Ti3O7, Col 4 line 18, Johnson et al.).
Claim 61, wherein a percentage in dry weight of the at least one titanate is above or equal to 45% (Titanate salts, Col 4 line 9; shown in Table 1, Johnson et al). Johnson et al. do not explicitly disclose that the percentage in dry weight of the at least one titanate is above or equal to 45%; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange the titanate has a percentage in dry weight of the at least one titanate is above or equal to 45% (see Specification [0029]: Preferably, the percentage in dry weight of the at least one titanate is above or equal to 45% and for example of 50 or of 70%), since such a configurations would have involved a mere change in the percentage of a component, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237.
Claim 62, wherein a percentage in dry weight of the at least one titanate is above or equal to 50% (Titanate salts, Col 4 line 9; shown in Table 1, Johnson et al). Johnson et al. do not explicitly disclose that the percentage in dry weight of the at least one titanate is above or equal to 50%; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange the titanate has a percentage in dry weight of the at least one titanate is above or equal to 50% (see Specification [0029]: Preferably, the percentage in dry weight of the at least one titanate is above or equal to 45% and for example of 50 or of 70%), since such a configurations would have involved a mere change in the percentage of a component, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237.
Claim 63, wherein a percentage in dry weight of the at least one titanate is above or equal to 70% (Titanate salts, Col 4 line 9; shown in Table 1, Johnson et al). Johnson et al. do not explicitly disclose that the percentage in dry weight of the at least one titanate is above or equal to 70%; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to arrange the titanate has a percentage in dry weight of the at least one titanate is above or equal to 75% (see Specification [0029]: Preferably, the percentage in dry weight of the at least one titanate is above or equal to 45% and for example of 50 or of 70%), since such a configurations would have involved a mere change in the percentage of a component, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237.
Claim 64, wherein a thickness of the precoating (a metal surface coating, [0037], Briand et al.) is between 10 to 140 μm. Briand et al. do not explicitly disclose that a thickness of the precoating is between 10 to 140 μm; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to have a thickness of the precoating is between 10 to 140 μm (see Specification [0032]: Preferably the thickness of the coating is between 10 to 140 μm, more preferably between 30 to 100 μm), since such a configurations would have involved a mere change in the thickness of a component, a change in thickness is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237.
Claim 65, wherein a thickness of the precoating (a metal surface coating, [0037], Briand et al.) is between 30 to 100 μm. Briand et al. do not explicitly disclose that the a thickness of the precoating is between 30 to 100 μm; however It would have been an obvious matter of design choice to one skilled person in the art at the time the invention was made to has a thickness of the precoating is between 30 to 100 μm Preferably the thickness of the coating is between 10 to 140 μm, more preferably between 30 to 100 μm, since such a configurations would have involved a mere change in the thickness of a component, a change in thickness is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237.
Response to Arguments
Applicant’s arguments with respect to Claims have been considered but are moot because of the updated rejection with new prior art made of record.
The applicant's argument on Remarks, namely “A PHOSITA would not have modified Briand in view of Pan as asserted by the Examiner… The Examiner's assertions are unreasonable because the potassium titanate electrode additive used in Pan is part of a welding rod that is used for electrode welding. In contrast, an essential aspect of the invention in Briand is laser welding, which would not use an electrode additive. In view of this, it is clear that the Examiner's combination is based on improper hindsight bias, and the Examiner has not even attempted to understand what these references as a whole actually teach, but instead is just using the claimed invention as a template for picking and choosing select portions of the cited references. See In re Fine, 837 F.2d 1071, 1075, 5 U.S.P.Q.2D (BNA) 1596 (Fed. Cir. 1988) ("[C]annot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.")). The reasoning that a person having ordinary skill in the art would have modified Briand to include based on the teachings of Pan "because Pan teaches, in Para. [0005], of providing an excellent welding method can reduce arc voltage, stabilize the arc, and reduce spatter, resulting in superior performance and fine welding results" is illogical. The claim recites "a pre-coating including at least one titanate .. . [having] a diameter between 1 and 40μm." Pan involves a potassium titanate electrode additive in a welding rod, not a pre-coating. There would have been no reason to have believed that including the potassium titanate electrode additive in the precoating of the Briand/Johnson combination would "reduce arc voltage, stabilize the arc, and reduce spatter, resulting in superior performance and fine welding results," especially because Briand involves laser welding”.
The examiner’s response: The combination of Briand et al. in view of Johnson et al., Pan, Calla et al. and further in vier of Crozes et al. as evidentiary evidence disclosed all the limitations as cited in the claims shown above; the reason for bringing in Pan is to teaches a welding method (see Title; resulting in superior performance of welding rods and fine welds, [0005]) with a steel with a precoating (taught by Briand et al. already) including at least one titanate (see Title; Note: taught by Johnson et al. already), wherein the at least one titanate has a diameter between 1 and 40μm (with a diameter of 0.5 to 1.0 μm, [0009]) of providing an excellent welding method can reduce arc voltage, stabilize the arc, and reduce spatter, resulting in superior performance and fine welding results ([0005], Pan). 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). Therefore, the examiner maintains the rejection.
The applicant's argument on Remarks, regarding Dependent Claims 55-59 and 61-65 respectively, namely “The Examiner rejects this claim solely based on "design choice." As noted above, the Federal Circuit has stated that "[m]erely stating that a particular [limitation] is a design choice does not make it obvious." Id. It is a well-established rule than an Examiner cannot simply rely on case law as providing per se rules of obviousness. There is no evidence supporting the Examiner's speculative assertion that the language of claims 55-59 and 61-65 would have been obvious”.
The examiner’s response: The combination of Briand et al. in view of Johnson et al., Pan, Calla et al. and further in vier of Crozes et al. as evidentiary evidence disclosed all the limitations as cited in claims 55-59 and 61-65 shown above; during “examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)”. “Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention” (MPEP 2173.01(I)). Therefore, the examiner maintains the rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is advised to refer to the Notice of References Cited for pertinent prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUANGYUE CHEN whose telephone number is 571/272-8224. The examiner can normally be reached on M-F 9:00-5:00 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, supervisor Ibrahime Abraham can be reached on 571/270-5569, supervisor Kosanovic Helena can be reached on 571/272-9059, supervisor Steven Crabb can be reached on 571/270-5095, or supervisor Edward Landrum can be reached on 571/272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571/273-8300.
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/KUANGYUE CHEN/
Examiner, Art Unit 3761
/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761