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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-9, 11, 16, 22-28, 30-32, and 102 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vivek et al. (US2015/0336153A1) (hereafter Vivek) in view of Richman et al. (US 5,531,369) (hereafter Richman).
With respect to claim 1, Vivek teaches a method of impact joining a first metal to a second metal, the method comprising: positioning a metallic consumable body proximate to a piece of the first metal (figures; and paragraphs 30-32 and 38); accelerating the piece of the first metal by vaporizing the metallic consumable body and directing the gas pressure generated by the vaporized metallic consumable body into the piece of the first metal, wherein the piece of the first metal attains a velocity in the range of 300 to 1000 m/s (abstract; paragraphs 4, 11, 30, and 33; and claims 7 and 18); and colliding the accelerated piece of the first metal into a stationary piece of the second metal, thereby joining the piece of the first metal to the stationary piece of the second metal (figures; and paragraphs 10, 16, 30-32 and 38).
With respect to claim 1, Vivek does not teach wherein the first metal, the second metal, or a combination thereof comprises a shape memory alloy having an ultimate tensile strength.
However, Richman teaches impact welding a NiTi shape memory alloy having an ultimate tensile strength to another metal (abstract; figures; column 1, line 65-column 3, line 27; and column 5, lines 1-29).
Since Vivek and Richman teach the claimed process with the claimed materials, it is the examiner’s position that the collective process would intrinsically result in the claimed efficiency, i.e., the piece of the first metal is joined to the stationary piece of the second metal via a weld having a joint efficiency of at least 95% relative to the ultimate tensile strength of the shape memory alloy. In addition, since Vivek and Richman teach the claimed process with the claimed materials, it is the examiner’s position that the resulting weld will be intrinsically substantially free of heat affected zones (HAZs) and substantially free of continuous layers of brittle intermetallics. Furthermore, since impact welding is a "cold" welding process, i.e., no external heat is applied, the heat generation is very limited. This will create no heat-affected zone and the material properties in the weld zone are not changed. Thus, since the collective process of Vivek and Richman is an impact welding process the artisan would reasonably expect the weld to be substantially free of heat affected zones (HAZs). When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02.
Thus, at the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the bonding process of Vivek to bond the materials of Richman in order to form a clad assembly of the desired composition that is resistant to cavitation and liquid drop erosion.
With respect to claim 2, Vivek teaches wherein the consumable body comprises a foil (paragraph 8).
With respect to claim 3, Vivek teaches wherein the metallic consumable body comprises aluminum (paragraph 12).
With respect to claim 4, Vivek teaches wherein the stationary piece of the second metal is a die and the piece of the first metal is deformed by the collision to create a desired shape or surface structure (paragraphs 4, 9, 30, 33, 36, and 39).
With respect to claim 5, Vivek teaches wherein the die contains holes, such that the piece of the first metal is perforated or sheared by the collision to create a desired hole or a series of holes or interlocking features (paragraphs 9, 33, and 39).
With respect to claim 6, Vivek teaches wherein the first metal and the second metal comprise dissimilar metals (paragraph 10 and 32).
With respect to claim 7, Richman teaches wherein the first metal comprises stainless steel, and the second metal comprises a nickel-titanium shape memory alloy (column 1, lines 20-39; column 7, lines 16-25; column 7, line 59-column 8, line 12; and column 8, lines 31-51).
With respect to claim 8, Richman teaches wherein the first metal comprises a nickel-titanium shape memory alloy, and the second metal comprises stainless steel (column 1, lines 20-39; column 7, lines 16-25; column 7, line 59-column 8, line 12; and column 8, lines 31-51).
With respect to claim 9, Richman teaches wherein the first metal, the second metal, or a combination thereof comprise a nickel-titanium shape memory alloy (column 1, lines 20-39; column 7, lines 16-25; column 7, line 59-column 8, line 12; and column 8, lines 31-51).
With respect to claim 11, Richman teaches wherein the nickel-titanium shape memory alloy comprises a nickel-titanium (NiTi) alloy, a nickel-titanium-iron (Ni—Ti—Fe) alloy, a nickel-titanium-copper (Ni—Ti—Cu) alloy, a nickel-titanium-lead (Ni—Ti—Pb) alloy, or a nickel-titanium-hafnium (Ni—Ti—Hf) alloy (column 1, lines 20-39; column 7, lines 16-25; column 7, line 59-column 8, line 12; and column 8, lines 31-51).
With respect to claim 16, Vivek teaches wherein the first metal, the second metal, or a combination thereof comprise a radio-opaque alloy, an advanced structural metal, a high entropy alloy, a refractory alloy, an amorphous metal, or any combination thereof (paragraphs 19 and 32).
With respect to claim 22, Vivek teaches wherein in the accelerating step, the piece of the first metal attains a velocity in the range of 500 to 600 m/s (abstract; paragraphs 4, 11, 30, and 33; and claims 7 and 18).
With respect to claim 23, Vivek teaches wherein the accelerating step is achieved by passing a current rapidly into the consumable body (paragraphs 30-32).
With respect to claim 24, Vivek teaches wherein the current is achieved by discharging a capacitor (paragraphs 30-31).
With respect to claim 25, Vivek teaches the capacitor provides an input energy in the range of 100 joules to 100 kilojoules (paragraphs 20-24).
With respect to claim 26, Vivek teaches wherein the piece of the first metal and the stationary piece of the second metal are arranged in that order between a pair of blocks of material, each of which significantly outweighs the piece of the first metal, thereby directing the vaporized stream towards the piece of the first metal and accelerating the piece of the first metal towards the stationary piece of the second metal (figures; and paragraphs 16, 30-32 and 38).
With respect to claim 27, Vivek teaching using a standoff (paragraphs 32 and 38), but does not teach using multiple standoffs of the same thickness; however, it is the examiner’s position that at the time of the invention it would have been obvious to one of ordinary skill in the art to utilize multiple standoffs of the same thickness to create a desired standoff distance. The courts have determined that the duplication of parts for a mere multiplied effect, which is the intent of the instant application, is not a patentable concept. Please see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) and St. Regis Paper Co. V. Bemis Co., Inc., 193 USPQ 8, 11.
With respect to claim 28, Vivek teaches wherein the standoff sheet thickness ranges from 0.1 mm to 1 cm (paragraph 32).
With respect to claims 30-32, Vivek teaches forming a 0.023 inch thick sheet (paragraphs 21-22), but does not explicitly teach wherein the piece of the first metal has a first thickness, the stationary piece of the second metal has a second thickness, and the first thickness is 20% less than the second thickness; the piece of the first metal has a thickness of from 10 μm to 4 cm; and wherein the stationary piece of the second metal has a second thickness, the second thickness ranging from 10 μm to 4 cm. However, it is the examiner’s position that the thickness and proportions of the workpieces are merely an obvious design choices. Minus unexpected results the artisan would have been motivated to utilize the claimed thicknesses and proportions in order to form weldments of the desired dimensions. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Note that the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)).
With respect to claim 102, Vivek teaches wherein in the accelerating step, the piece of the first metal attains a velocity in the range of from greater than 440 to 1000 m/s (abstract; paragraphs 4, 11, 30, and 33; and claims 7 and 18).
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vivek and Richman as applied to claim 1 above, and further in view of CN10499728A (hereafter CN ‘728).
With respect to claim 29, Vivek teaches the vaporization impact welding process, while Richman teaches impact welding a shape memory alloy to another metal (see citations above). Vivek and Richman do not explicitly teach wherein the piece of the first metal comprises a shape memory alloy, and the stationary piece of the second metal comprises a casting. However, CN ‘728 teaches impact welding a casting to another metal (machine translation). It is the examiner’s position that the orientation and selection of the stationary and flyer parts with respect to one another is merely an obvious choice since the movement that generates the weld is purely relative. Thus, either part in the collective prior art could be selected as the stationary part with predictable results. All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the casting of CN ‘728 in the collective process of Vivek and Richman in order to form a weldment of the desired composition.
Claim(s) 33-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vivek and Richman as applied to claim 1 above, and further in view of Graham (US 2,045,267).
With respect to claim 33, Vivek and Richman do not teach wherein the piece of the first metal and the stationary piece of the second metal are joined with a scarf weld and form a joined piece.
However, Graham teaches scarf welding two pieces (figure 7; and page 2, column 1, line 41-page 2, column 2, line 4).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the scarf weld of Graham in the collective process of Vivek and Richman in order to form a strong weld with the desired interface surface area.
With respect to claim 34, Graham teaches wherein the piece of the first metal and the stationary piece of the second metal are wires (figure 7; page 1, column 1, line 35; and page 2, column 1, line 41-page 2, column 2, line 4).
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Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vivek, Richman, and Graham as applied to claims 1 and 33-34 above, and further in view of Foster (US 3,192,355).
With respect to claim 35, Vivek, Richman, and Graham do not teach machining the piece of the first metal and the piece of the second metal into a desired shape. However, Foster teaches machining the ends of two workpieces for scarf welding (figure 1; and column 6, lines 44-55).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the machining of Foster in the collective process of Vivek, Richman, and Graham in order to precisely form the desired joint design.
Claim(s) 101 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vivek and Richman as applied to claim 1 above, and further in view of Bruck (US20170216959A1).
With respect to claim 101, Vivek and Richman do not teach wherein in the colliding step comprising colliding the accelerated piece of the first metal into the stationary piece of the second metal at an impact angle of from 5 degrees to 30 degrees.
However, Bruck teaches wherein in the colliding step comprising colliding the accelerated piece of the first metal into the stationary piece of the second metal at an impact angle of from 5 degrees to 30 degrees (paragraph 35).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the impact angle of Bruck in the collective process of Vivek and Richman in order to control the direction of the weld progression during impact.
Claim(s) 103 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vivek and Richman as applied to claim 1 above, and further in view of Wang et al. (CN-109048048A) (hereafter Wang).
With respect to claim 103, Vivek and Richman do not teach wherein the weld has a surface area of from 50 nm2 to 100 mm2.
However, Wang teaches impact joining micro parts to form a welding area that is generally several (more than two but not many) millimeters (machine translation).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to form an impact welded joint with an area within the claimed range as taught by Wang in the collective process of Vivek and Richman in order form a weldment of the desired strength and size.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vivek et al. (US2015/0336153A1) (hereafter Vivek) in view of Brice et al. (US 2010/0269975A1) (hereafter Brice).
With respect to claim 1, Vivek teaches a method of impact joining a first metal to a second metal, the method comprising: positioning a metallic consumable body proximate to a piece of the first metal (figures; and paragraphs 30-32 and 38); accelerating the piece of the first metal by vaporizing the metallic consumable body and directing the gas pressure generated by the vaporized metallic consumable body into the piece of the first metal, wherein the piece of the first metal attains a velocity in the range of 300 to 1000 m/s (abstract; paragraphs 4, 11, 30, and 33; and claims 7 and 18); and colliding the accelerated piece of the first metal into a stationary piece of the second metal, thereby joining the piece of the first metal to the stationary piece of the second metal (figures; and paragraphs 10, 16, 30-32 and 38).
With respect to claim 1, Vivek does not teach wherein the first metal, the second metal, or a combination thereof comprises a shape memory alloy.
However, Brice teaches impact welding shape memory alloy having an ultimate tensile strength to another metal (paragraphs 15 and 18).
Since Vivek and Brice teach the claimed process with the claimed materials, it is the examiner’s position that the collective process would intrinsically result in the claimed efficiency, i.e., the piece of the first metal is joined to the stationary piece of the second metal via a weld having a joint efficiency of at least 95% relative to the ultimate tensile strength of the shape memory alloy. In addition, since Vivek and Brice teach the claimed process with the claimed materials, it is the examiner’s position that the resulting weld will be intrinsically substantially free of heat affected zones (HAZs) and substantially free of continuous layers of brittle intermetallics. Furthermore, since impact welding is a "cold" welding process, i.e., no external heat is applied, the heat generation is very limited. This will create no heat-affected zone and the material properties in the weld zone are not changed. Thus, since the collective process of Vivek and Brice is an impact welding process the artisan would reasonably expect the weld to be substantially free of heat affected zones (HAZs). When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02.
Thus, at the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the bonding process of Vivek to bond the materials of Brice in order to form an assembly of the desired composition, i.e., a shape memory alloy weldment.
Response to Arguments
Applicant's arguments filed 7/28/26 have been fully considered but they are not persuasive.
The instant specification demonstrates that impact velocity is a result-effective variable for welding shape memory alloys and relates to whether the claimed joint efficiency and microstructural limitations are achieved. For example, as described in the instant specification, in VFAW processes such as those recited in the claims, a flyer plate can be accelerated to a velocity in the range of 300 to 1000 m/s toward a target plate. These velocities can result in welds that exhibit a joint efficiency of at least 95% relative to the ultimate tensile strength of the shape memory alloy, as well as welds that can be substantially free of heat affected zones (HAZs) and substantially free of continuous layers of brittle intermetallics.
Example 1 further reports VFAW welds between NiTi/NiTi and NiTi/stainless steel made using impact velocities of 500 to 600 m/s and reports joint efficiencies of 100% and 96.3%, respectively. By contrast, TIG, laser welding, and laser brazing of the same SMA pairs can produce significantly lower joint efficiencies and suffer from HAZ formation and brittle intermetallics. Example 2 correlates impact velocity and impact angle with different interface regions, including regions having different melting behavior and interface morphology.
These teachings collectively establish that, for SMA impact welds, impact velocity is not an arbitrary value. Rather, velocity is a variable associated with the formation of a weld having a high joint efficiency and which is substantially free of heat affected zones and continuous brittle intermetallic layers, as recited in claim 1. In contrast, the cited prior art does not recognize impact velocity as a variable that affects SMA joint efficiency or SMA weld microstructure. Richman and Brice are relied upon in the Office Action only for the general proposition that SMAs can be impact welded or explosively bonded. The Office Action fails to identify any disclosure in those references of specific impact velocity ranges for SMA welds, much less any correlation between velocity and SMA joint efficiency or HAZ/intermetallic behavior. Indeed, the Office Action acknowledges that Richman and Brice do not characterize joint efficiency at all, much less indicate that their methods can produce a weld having a joint efficiency of at least 95% relative to the ultimate tensile strength of the shape memory alloy.
Vivek discloses a broad generic impact-velocity range (e.g., 200-2000 m/s for sheet-metal impact forming/joining). However, neither Vivek nor Richman nor Brice teaches that any particular sub-range of impact velocities within this broad range is associated with SMA weld quality or that operating in such a sub-range can yield a weld having a joint efficiency of at least 95% relative to the ultimate tensile strength of the shape memory alloy and being substantially free of heat affected zones and substantially free of continuous layers of brittle intermetallics. As such, none of the cited references would have led one of ordinary skill in the art to a method in which the piece of the first metal is accelerated to a velocity in the range of 300 to 1000 m/s SO as to obtain the recited SMA weld properties.
The applicant further argues that under Federal Circuit law on result-effective variables (see also MPEP § 2144.05), optimization by "routine experimentation" is only applicable where the prior art first recognizes the parameter to be a result-effective variable. As a consequence, an Applicant may rebut a prima facie case of obviousness based on overlapping or encompassing ranges by showing that the claimed variable was not recognized in the prior art to be result-effective.
Here, because neither Richman nor Brice nor Vivek identifies impact velocity as affecting SMA joint efficiency or SMA microstructure, optimization of velocity for SMA weld quality would not have been an exercise of routine optimization. Instead, it represents non-obvious discovery of a previously unrecognized process window for SMA welding. The instant specification-not the cited prior art-is what first discloses that operating within a VFAW impact-velocity window of 300 to 1000 m/s, and more narrowly around 500 to 600 m/s in Example 1, is associated with SMA welds having the claimed combination of high joint efficiency and favorable microstructural characteristics.
Further, the "routine optimization" line of cases often assumes an overlap between a claimed range and a prior-art range for the same variable in the same context, creating a rebuttable presumption of obviousness. Here, there is no such overlap with respect to SMA welds. Vivek's 200-2000 m/s range is disclosed for sheet-metal impact joining/forming in general, not for SMA welds having the properties recited in claim 1. Richman and Brice, as cited, do not disclose any velocity ranges for SMA joints. Thus, the claimed velocity ranges for SMA VFAW do not simply "fall within" a prior-art SMA velocity range; rather, they represent an SMA-specific refinement in a field where the prior art does not even quantify impact velocity for SMA joints.
As described in MPEP § 2144.05, where the parameter optimized was not recognized to be result-effective, and the claimed range does not merely overlap a prior-art range for the same context, optimization would not have been obvious. The Office has not demonstrated that impact velocity was recognized in the prior art as affecting joint efficiency or microstructure of SMA welds, nor has the Office explained why a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed velocity ranges through routine experimentation.
The Office Action's inherency-based reasoning is similarly deficient. The Office asserts that, because vapor foil actuator welding was known from Vivek and impact welding of shape memory alloys was known from Richman or Brice, one of ordinary skill in the art would have reasonably expected the resulting weld to exhibit the claimed efficiency and microstructure. However, neither Richman nor Brice discloses any impact-velocity values for SMA joints or identifies velocity as a determinant of SMA joint efficiency or microstructure. Vivek's broad velocity disclosure is generic and is not tied to SMA performance. Moreover, the instant specification shows that particular velocity windows are associated with claimed SMA performance. Thus, the Office has shown, at most, that high-velocity impact welding might produce good joints under some conditions, not that the claimed SMA weld properties necessarily and inevitably flow from the cited combination. Accordingly, the cited references do not establish that the presently claimed SMA weld properties are inherent in the combination of Vivek with Richman and/or Brice, and the burden cannot properly be shifted to Applicant on that basis.
The examiner respectfully disagrees. Paragraph [0004] of Vivek states that:
It is also well known that collision of a fast travelling piece of metal with another can lead to a weld, if the impact velocity and angle are in an optimum range. Collision welds are generally observed when the impact velocity is in the range of 150 m/s to 500 m/s and the impact angle is between 5 to 20 degrees (emphasis added by the examiner).
Accordingly, Vivek explicitly teaches that the impact velocity is indeed a result-effective variable and consequently the applicant’s entire argument drawn to Vivek not recognizing velocity as a result-effective variable lacks merit. Clearly an artisan armed with the velocities of Vivek would have had the knowledge and ability to find an optimum velocity range for the materials of Richman or Brice by simple routine experimentation. In addition, it should be noted that one of ordinary skill in the art would optimize the impact velocity for every material combination when impact welding because if the velocity is too low there can be insufficient collision pressure, no metallurgical bonding, reduced weld quality, and/or possible incomplete fusion. While, an impact velocity that is too high can cause wavy or vortex interfaces, jet formation, rebound, and/or non-equilibrium microstructures, all of which can degrade weld strength and reliability. Thus, proper control of velocity within an optimum range is essential to achieving a strong, defect-free weld. Accordingly, the examiner maintains that a proper prima facie case of obviousness has been established. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) and In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In addition, the applicant has failed to provide a persuasive argument and/or evidence of unexpected results that are commensurate in scope with the range of 300 to 1000 m/s in independent claim 1. Examples 1 and 2 in the instant application are insufficient to establish unexpected results for the claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KILEY SHAWN STONER whose telephone number is (571)272-1183. The examiner can normally be reached on Monday-Thursday.
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/KILEY S STONER/Primary Examiner, Art Unit 1735
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