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 104 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; 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).
In addition, 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. 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 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 300 to 1000 m/s (paragraph 11).
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 (paragraph 11).
With respect to claim 104, 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).
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; 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).
In addition, 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. 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 11/3/25 have been fully considered but they are not persuasive.
The applicant argues that neither Vivek nor Richman nor CN '728 nor Graham nor Foster nor Bruck nor Wang nor Brice, alone or in combination, disclose or suggest a method in which the piece of the first metal is joined to the stationary piece of the second metal via a weld, wherein at least one of the first metal, the second metal, or a combination thereof comprises a shape memory alloy, and wherein the weld has a joint efficiency of at least 95% relative to the ultimate tensile strength of the shape memory alloy, as recited in claim 1. Further, neither Vivek nor Richman nor CN '728 nor Graham nor Foster nor Bruck nor Wang nor Brice, alone or in combination, disclose or suggest that the weld is substantially free of heat affected zones (HAZs) and substantially free of continuous layers of brittle intermetallics, as recited by amended claim 1.
The examiner respectfully disagrees. MPEP § 2112- 2112.02 is very clear that 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). As stated in the final Office action of 5/1/25, “[i]n the instant case the applicant has not met their burden of proof and the examiner maintains that a prima facia case of obviousness has been established. In other words, the applicant has clearly failed to meet their burden and establish that the collective process will not result in the claimed joint efficiency of at least 95%. Nor has the applicant provided a persuasive argument and/or evidence describing why the collective process will not intrinsically result in the claimed efficiency.” The same rationale applies to the new limitation “wherein the weld is substantially free of heat affected zones (HAZs) and substantially free of continuous layers of brittle intermetallics”, i.e., the applicant has failed to provide a persuasive argument and/or evidence that the collective process of Vivek and Richman or Brice will not intrinsically result in the claimed microstructure.
The applicant argues that the cited references fail to provide an expectation that such a high level of joint efficiency could be achieved when joining shape memory alloys using the claimed methods. Richman described methods that involve explosively bonding metals. These methods involve detonation of a chemical explosive, such as a mixture of ammonium nitrate and 6% fuel oil (ANFO). Brice describes joining a shape memory alloy to an interface material using a "bonding method selected from the group consisting of explosive, ultrasonic, magnetic pulse, etc." Thus, neither Richman nor Brice describe employing a shape memory alloy in vapor foil actuator welding. Further, neither Richman nor Brice 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, as recited in claim 1. Therefore, based on the cited references, one of ordinary skill in the art would not have had a reasonable expectation that such a high level of joint efficiency could be achieved when joining shape memory alloys using the claimed methods. Further, the instantly claimed method join the first metal and the second metal while maintaining the strength, ductility, and cyclical properties of the shape memory alloy. Shape memory alloys present welding challenges due to their specialized microstructure and thermomechanical properties. The ability to achieve such high joint efficiency while maintaining the functional properties of the shape memory alloy is not disclosed or suggested by any of the cited references. None of the cited references disclose or suggest that such a method can be performed while retaining the functional properties of the shape memory alloy. Likewise, none of the references provide one of ordinary skill in the art with a reasonable expectation that a weld formed by these methods would be substantially free of heat affected zones (HAZs) and substantially free of continuous layers of brittle intermetallics, as recited by amended claim 1.
The examiner respectfully disagrees. The instant rejections are based on Vivek teaching the claimed vapor foil actuator welding with a substitution of workpieces of Richman or Brice. In response to applicant's arguments against the references individually, 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). Vapor foil actuator welding, explosive welding, and magnetic pulse welding are all known forms of impact welding in the art of welding. Thus, one of ordinary skill in the art would have reasonably expected that the disclosed impact weldable workpiece material, taught by Richman or Brice, would have been predictably usable in the vapor foil actuator welding of Vivek because it is also a form of impact welding. The claim would have been obvious because the substitution of one known element (workpiece material) for another (workpiece material) would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See MPEP 2143. Thus, since vapor foil actuator welding, as taught by Vivek, is a known form of impact welding and it is also known to impact weld a shape memory alloy without compromising the shape memory properties, as taught by Richman or Brice, one of ordinary skill in the art would have reasonably expected/predicted the weldment of the collective process to exhibit the claimed efficiency and microstructure. It is important to note that the instant specification does not attribute the claimed efficiency to any specific process parameters. Accordingly, there is no reason for the examiner or artisan to believe that the collective process of Vivek and Richman or Brice would result in an inferior joint efficiency. Furthermore, as mentioned above, the applicant has failed to meet their burden of proof regarding the joint efficiency and microstructure of the collective process of Vivek and Richman or Brice. Clearly, it is within ordinary skill in the art to substitute a known impact weldable material into another impact welding process.
Conclusion
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