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 .
Election/Restrictions
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected spot welding device, method of manufacturing a non-stick electrode, and a method of performing a spot weld, there being no allowable generic or linking claim. Applicant’s election of Group 1 claim 1-11 in the reply filed on 5/5/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The examiner acknowledges the statement "without prejudice" but the statement is not considered synonymous with "without traverse"
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/3/2026 has been entered.
Response to Arguments
Applicant's arguments filed 3/3/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). Due to the broad structural recitations in the claims, the examiner respectfully believes that the art as applied in final rejection of 1/2/2026 still stands.
Regarding applicant’s arguments that Schumacher does not teach an electrically conductive interlayer that contacts the electrode, the examiner respectfully points out that this is addressed in the rejections in combination with the art of US 1094141 A Guido which teaches the use of an electrically conductive interlayer. The examiner respectfully notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Further, the art of US 1094141 A Guido is used to teach the use of an interlayer which is obvious to combine with the art of Schumacher.
Regarding applicant’s arguments that Chergui does not teach the electrode cap 18 comprising graphene, carbon-nanotube paper, carbon nanotube-carbon black paper, or a combination thereof, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant’s arguments, filed 3/3/2026, with respect to the rejection(s) under 35 U.S.C 103 with regards to the art of Sollac have been fully considered and are persuasive because the arguments are directed towards the unexamined amendments of the amended claims of 3/3/2026. Therefore, a new ground(s) of rejection is made in view of KR 101974590 B1 JI CHANG WOOK.
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.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over US4831228A Schumacher in view of US 1094141 A Guido in view of US10875119B2 Chergui in view of KR 101974590 B1 JI CHANG WOOK.
Regarding claim 1, Schumacher teaches, except where struck through,
A non-stick electrode comprising: an electrode (electrode carrier 30 and electrode surface 32);
an electrically insulating sheath (electrical insulating sleeve 42, insulating sleeve 22) disposed thereon (fig. 1);
where the electrically insulating sheath has an opening on a surface of the electrode through (fig .1) which an electric current is transmitted or received to or from an opposing electrode (32’ fig. 1) (column 3 lines 46 through 60);
where the electrode protrudes through the opening in the electrically insulating sheath (fig. 1);
Schumacher does not teach and an electrically conducting interlayer disposed on the electrode such that it contacts a surface of the electrically insulating sheath as well as the electrode at the opening in the sheath;
and wherein the electrically conducting interlayer comprises a material that decomposes at a temperature that is greater than a temperature of a metal that is liquified on contact with the non-stick electrode;
and wherein the electrically conducting interlayer comprises graphene, carbon-nanotube paper, carbon nanotube-carbon black paper, or a combination thereof.
Guido teaches,
and an electrically conducting interlayer disposed on the electrode such that it contacts the electrode (fig. 1 3 is an interlayer, Guido teaches (Figure 1) it is known to utilize an electrically conducting interlayer (3) disposed on an electrode (2; see for example Figures 2 and 3) and is located between the electrode and a workpiece (1) to be welded);
and wherein the electrically conducting interlayer comprises a material that decomposes at a temperature that is greater than a temperature of a metal that is liquified on contact with the non-stick electrode (column 1 lines 37 through 39 and column 2 lines 40 through 51 and lines 17-19 teach that utilizing these types of interlayers prevents the clogging of the electrodes).
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the Schumacher reference or to combine the teachings Guido to arrive at the claimed invention since it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the instant application to have modified Schumacher based on the teachings of Guido to attach interlayers to the electrodes that were disposed between the electrodes and workpiece during a welding operation.
Further, there were design incentives for implementing the claimed variation. Specifically, to weld other metals and alloys such as brass (Guido lines 52 through 55) and the use of interlayers would have been recognized as predictable to one of ordinary skill in the art because doing so would prevent the clogging of the electrodes thereby reducing the downtime of the apparatus between operations.
Further, there were design incentives for implementing the claimed variation.
Specifically, Chergui teaches
an electrode (welding electrode body 2’);
an electrically insulating sheath (electrical insulation 12) disposed thereon (fig. 4b);
where the electrically insulating sheath has an opening on a surface of the electrode through (fig. 4b) which an electric current is transmitted or received to or from an opposing electrode (fig. 4b and column 10 lines 8 to 35 teach flowing current IV);
where the electrode protrudes through the opening in the electrically insulating sheath (fig. 4b);
and an electrically conducting interlayer (welding electrode cap 18’) disposed on the electrode such that it contacts a surface of the electrically insulating sheath as well as the electrode at the opening in the sheath (fig. 4b).
Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify Schumacher by extending the electrical insulating sleeve 42 of Schumacher according to the teachings of Chergui for the purpose of allow preheating current to better flow across the electrode surfaces 32.
Further, there were design incentives for implementing the claimed variation.
Specifically, JI CHANG WOOK teaches
an electrode 110 for resistance spot welding (page 1 and 2 technical field) coated with a thin film layer 120 and further teaches wherein the electrically conducting interlayer (thin film layer 120) comprises graphene, carbon-nanotube paper, carbon nanotube-carbon black paper, or a combination thereof (the claims, page 3 par. 6 and 8, page 4 par. 1, and page 5 par. 1 teach coating electrode 110 with a thin film layer 120 comprising a carbon nanomaterial using graphene).
Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to coat the electrode surface 32 of Schumacher with the thin film layer 120 comprising a carbon nanomaterial using graphene of JI CHANG WOOK for the purpose to suppress the reaction between the aluminum plate and the welding electrode by providing … a thin film layer using a carbon nano material having excellent thermal conductivity and electrical conductivity…such that…the welding quality can be improved (JI CHANG WOOK page 5 par. 2).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US4831228A Schumacher in view of US 1094141 A Guido in view of US10875119B2 Chergui in view of KR 101974590 B1 JI CHANG WOOK in view of US 7538294 B2 Scotchmer.
Regarding claim 2,
The primary combination teaches the non-stick electrode of claim 1 (as discussed above).
Schumacher teaches, electrode carrier 30 and electrode surface 32.
The difference between the prior art and the claimed invention is that Schumacher does not expressly teach: wherein the electrode comprises a metal; wherein the metal is copper, a copper-tungsten alloy, copper alloys, steel, brass, tungsten, chromium, zirconium, molybdenum, or a combination thereof.
Before the effective filing date of the claimed invention, there had been a recognized problem or need in the art to solve the problem of providing a welding electrode material.
There were a finite number of identified and predictable potential solutions to the recognized need or problem evidenced by Scotchmer.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose from a number of known metals to solve a particular purpose of withstanding resistance welding temperatures.
The results would have been predictable, and since Scotchmer teaches: a welding electrode (20) having shank and contact region (abstract) wherein the electrode (body 30 and electrode 20) comprises a metal (column 6 lines 9-35 teach copper); wherein the metal is copper, a copper-tungsten alloy, copper alloys, steel, brass, tungsten, chromium, zirconium, molybdenum, or a combination thereof (column 6 lines 9-35 teach copper, copper alloys…ect.).
One of ordinary skill in the art would have pursued the known potential solutions with a reasonable expectation of success because the prior art references teach that it is known that the use of metal including copper and copper alloys are elements that are known in the art for providing a strengthened electrode with high thermal conductivity (Scotchmer column 6 lines 9-35).
Claim(s) 3, 8, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US4831228A Schumacher in view of US 1094141 A Guido in view of US10875119B2 Chergui in view of KR 101974590 B1 JI CHANG WOOK in view of US 20150174689 A1 Murakami.
Regarding claim 3,
The primary combination teaches the non-stick electrode of claim 1 (as discussed above).
Schumacher teaches, electrode carrier 30 and electrode surface 32.
The difference between the prior art and the claimed invention is that Schumacher does not teach wherein the electrically insulating sheath comprises a ceramic or an organic polymer.
Before the effective filing date of the claimed invention, there had been a recognized problem or need in the art to solve the problem of providing an electrically insulative electrode material (Murakami par. 63).
There were a finite number of identified and predictable potential solutions to the recognized need or problem evidenced by Murakami.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use ceramic as an electrically insulating material (Murakami par. 63).
The results would have been predictable, and since Murakami teaches: electrode 1 being surrounded by pressurizing member 2 which doubles as an insulating sheath because it is made of an insulating material such as a ceramic per par. 63 and 72 and therefore teaches that it is obvious to have an electrically insulating sheath comprises a ceramic or an organic polymer.
Accordingly, the prior art references teach that it is known that using ceramic as an insulator are elements that are known in the art for providing load-bearing strength at high temperature during energization (Murakami par. 63).
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to have modified the sleeve 42 and insulating sleeve 22 of Schumacher to construct the sleeve of ceramic to achieve the predictable result of improved bearing strength and high temperature resilience during operations.
Regarding claim 8,
The primary combination teaches the non-stick electrode of claim 1 (as discussed above).
Schumacher teaches, electrode carrier 30 and electrode surface 32.
The difference between the prior art and the claimed invention is that Schumacher does not teach: wherein the electrically insulating sheath has a thickness of 50 to 300 micrometers.
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Further, there were design incentives for implementing the claimed variation such as providing thinness to provide dielectric resistance against high voltages.
Specifically, Murakami teaches electrode 1 being surrounded by pressurizing member 2 which doubles as an insulating sheath because it is made of an insulating material such as a ceramic per par. 63 and 72 and wherein the electrically insulating sheath has a thickness of 50 to 300 micrometers (par. 66 teaches 0.1 to 2.0mm which overlaps the range disclosed in the instant application and it would have been obvious to one of ordinary in the art at the time of the invention was made to determine an electrically insulating sheath thickness since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ (CCPA 1980)).
Murakami teaches the thickness it is known when utilizing a sheath constructed of ceramic to perform the functions of the sheath set forth in Schumacher it is known to have the sheet be between 0.1 and 2mm. The range of 0.1 to 2.0 mm falls within the range set forth in claim 8.
Based on the teachings of Murakami it would have been obvious to one of ordinary skill in the art to have modified Schumacher and try constructing the sheath out of ceramic and/or having the sheath have a thickness of between 0.1 and 2.0mm, which is between the 50-300 micrometer range, to achieve the predictable result securing a specific nugget diameter and increasing a splash occurrence limit (Murakami par. 13). It has been held that determining the optimum value of a result effective variable is within the level of routine skill in the art.
Regarding claim 9,
The primary combination teaches the non-stick electrode of claim 1 (as discussed above).
Schumacher teaches, electrode carrier 30 and electrode surface 32.
The difference between the prior art and the claimed invention is that Schumacher does not teach: wherein the opening on the surface of the electrode has a diameter of 2 to 10 millimeters.
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Further, there were design incentives for implementing the claimed variation to match a diameter of a metal electrode.
Specifically, Murakami teaches that it is known to have electrode 1 being surrounded by pressurizing member 2 which doubles as an insulating sheath because it is made of an insulating material such as a ceramic per par. 63 and 72 and wherein the opening on the surface of the electrode has a diameter of 2 to 10 millimeters (tables 1-4 teach a tip diameter of 7mm which is within the range disclosed in the instant application and it would have been obvious to one of ordinary in the art at the time of the invention was made to determine an opening with a desired size of an insulating component to match a design size of an electrode since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ (CCPA 1980).
Based on the teachings of Murakami it would have been obvious to one of ordinary skill in the art to have modified Schumacher and try constructing the surface of the electrode to have an opening with a desired diameter such that the opening on the surface of the electrode has a diameter of 2 to 10 millimeters to achieve the predictable result of securing a specific nugget diameter and increasing a splash occurrence limit (Murakami par. 13). It has been held that that determining the optimum value of a result effective variable is within the level of routine skill in the art.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US4831228A Schumacher in view of US 1094141 A Guido in view of US10875119B2 Chergui in view of KR 101974590 B1 JI CHANG WOOK in view of US 20150174689 A1 Toshio in view of US 5611945 A Kuwabara.
Regarding claim 4,
The primary combination teaches, The non-stick electrode of Claim 3 (as discussed above).
The difference between the prior art and the claimed invention is that Stieglbauer does not teach: wherein the ceramic comprises silica, quartz, alumina, titania, ceria, zirconia, boron nitride, or a combination thereof.
Kuwabara teaches a “comparable” device where it is known to provide a source of insulation (grid shaped members 3) on a resistance welding electrode 1.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the improvement taught by Kuwabara would have been capable of being applied to Schumacher and the results of having an electric conductivity lower than that of an electrode matrix would have been predictable to one of ordinary skill in the art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention would have applied the known improvement technique where the ceramic comprises silica, quartz, alumina, titania, ceria, zirconia, boron nitride, or a combination thereof of Kuwabara in the same way to the electrode carrier 30 and electrode surface 32 of Schumacher to achieve the predictable results of having an electric conductivity lower than that of an electrode matrix (Kuwabara column 3 lines 56 through 62) as Kuwabara teaches that the use of the use of grid shaped members 3 as an insulator being made of “silicon nitride, kaolinite, and alumina, non-metallic inorganic materials of SiC, TiN, and TiB.sub.2, metals of Ti, stainless steel (SUS304), steel (SCM420), Co, Ni (u520), and a sintered Cr--Cu alloy” (Kuwabara column 5 lines 46 through 58).
Claim(s) 6 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US4831228A Schumacher in view of US 1094141 A Guido in view of US10875119B2 Chergui in view of KR 101974590 B1 JI CHANG WOOK in view of US 20220131035 A1 Kim.
Regarding claims 6 and 11,
The primary combination teaches, The non-stick electrode of Claim 1 (as discussed above).
Guido further teaches the electrically conducting interlayer is replaceable as “For convenience the said intermediate layer which may be any suitable formation, is, preferably, detachably connected to the electrode in any suitable manner” (lines 20-24).
The difference between the prior art and the claimed invention is that Stieglbauer does not teach: wherein the electrically conducting interlayer is reversibly bonded to the electrically insulating sheath with boron nitride.
Kim teaches a “comparable” device where it is known to bond Hexagonal boron nitride (hBN) and graphene together using a boron nitride and graphene junction using Van Der Waals forces per claim 2 and par. 32 and that the combination of hBN and graphene form a van der Waals heterostructure as “At this time, the junction of each of the graphene layer GR and the first encapsulation layer N1 and the second encapsulation layer N2 may be a van der Waals heterostructure. Due to the heterogeneous bonding of the graphene layer GR and the first encapsulation layer N1 and the second encapsulation layer N2, the light source according to the inventive concept may emit light through strong light-material interaction at the bonding interface while maintaining excellent graphene properties”.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the improvement taught by Kim would have been capable of being applied to Schumacher in combination with Guido and the results would have been predictable to one of ordinary skill in the art to use Van der Waals forces to removably bond a graphene and Boron nitride interface together.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention would have applied the known improvement technique wherein the electrically conducting interlayer is reversibly bonded to the electrically insulating sheath with boron nitride of Kim in the same way to the intermediate layer 3 of Guido and the results would have been predictable because Kim teaches that the interface between boron nitride and graphene junction bond using Van Der Waals forces per claim 2 and par. 32.
Claim(s) 7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US4831228A Schumacher in view of US 1094141 A Guido in view of US10875119B2 Chergui in view of KR 101974590 B1 JI CHANG WOOK in view of US20050230362A1 Stieglbauer.
Regarding claim 7,
The primary combination teaches, The non-stick electrode of Claim 1 (as discussed above).
The difference between the prior art and the claimed invention is that Schumacher does not teach: wherein the electrically conducting interlayer prevents adhesion of the electrode to a battery foil or to a battery tab during a welding operation.
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention
Further, there were design incentives for implementing the claimed variation.
Specifically, Stieglbauer teaches wherein the electrically conducting interlayer (strip 1 fig. 3) prevents adhesion of the electrode (electrode 4) to a battery foil or to a battery tab (metal sheets 6 and7) during a welding operation (par. 41 teaches strip 3 having a low tendency of adhesion to metal sheets 6 and 7) which allows for enhanced welding quality (Stieglbauer par. 41).
Therefore, the use of an electrically conducting interlayer to prevent adhesion would have been recognized as predictable to one of ordinary skill in the art.
Regarding claim 10,
The primary combination teaches the non-stick electrode of claim 1 (as discussed above).
The difference between the prior art and the claimed invention is that Schumacher does not teach: wherein the electrically conducting interlayer has a thickness of 0.1 to 0.5 millimeters.
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention
Further, there were design incentives for implementing the claimed variation. Specifically, Stieglbauer teaches strip 1 in fig. 3 as an electrically conducting interlayer and further teaches wherein the electrically conducting interlayer has a thickness of 0.1 to 0.5 millimeters (pars. 4 and 42 teach a strip thickness of 0.02 to 0.05 mm which is within the range disclosed in the instant application). It would have been obvious to one of ordinary in the art at the time of the invention was made to determine an interlayer thickness since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ (CCPA 1980) to advantageously provide thickness enough to ensure proper conveyance (Stieglbauer par. 42).
Therefore, the use of an wherein the electrically conducting interlayer has a thickness of 0.1 to 0.5 millimeters would have been obvious and predictable to one of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM M ECKARDT whose telephone number is (313)446-6609. The examiner can normally be reached 6 a.m to 2:00 p.m EST Monday to Friday.
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ADAM MICHAEL. ECKARDT
Assistant Examiner
Art Unit 3761
/ADAM M ECKARDT/ Examiner, Art Unit 3761
/EDWARD F LANDRUM/ Supervisory Patent Examiner, Art Unit 3761