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 .
Prosecution Reopened
In view of the appeal brief filed on 21 January 2026, 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
There are still grounds for objections of the Claims.
The Office fully considered the Applicant’s arguments in the appeal brief filed 21 January 2026 regarding the 35 USC 112(a) rejection, and the Office was persuaded by the Applicant’s arguments. Accordingly, the 35 USC 112(a) rejection has been withdrawn.
An additional 35 USC 112(b) rejection has been provided in the present Office action.
Applicant’s arguments, filed 30 April 2025, with respect to the rejection of claim 29 under 35 USC § 103 have been fully considered by the Office and were persuasive. However, after conducting an updated search, additional references were identified, which teach the disputed portions of the claims. Therefore, the grounds of rejection under 35 USC § 103 still stand.
New grounds of rejection are provided, which are not a result of the Applicant’s amendments. Therefore, the current Office action is a non-final status.
Status of the Claims
The claims were last updated in an amendment filed 30 April 2025.
Claims 29-35 are pending.
Claim Objections
Claims 32-33 are objected to because of the following informalities:
In claim 32, recommend placing a comma after the words “alloy coating” in line 7.
In claims 32-33, recommend reciting “laser-butt welding” instead of “laser-but welding.”
Appropriate correction is required. These objections are provided based on the amended portions of the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 33 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 33 recites: “the laser but welding is performed on a first portion of the region…. simultaneously with a second portion of the region being coated with the additional coating.” However, claim 33 is dependent on claim 32, which recites: “laser butt-welding…wherein at least a region…has been previously coated with an additional coating.” In claim 33, it is unclear if during the laser butt-welding, the second portion is “being coated with the additional coating,” as required in claim 33, or instead “has been previously coated with an additional coating,” as required in claim 32. For the purpose of the examination, so long as the second region is coated, then it will be presumed that the system can operate as intended.
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.
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 29-35 are rejected under 35 U.S.C. 103 as being unpatentable over Gu et al. (US-20160332256-A1; hereinafter Gu ‘256) in view of McCay et al. (US-5985056-A) and Gu et al. (US-20170095886-A1; hereinafter Gu ‘886).
Regarding claim 29, Gu ‘256 teaches a method for the fabrication (“fabricated,” para 0023) of a pre-coated steel sheet (fig. 1A) having a steel substrate (steel substrates 102 and 104, fig. 1A) and a metal alloy coating (pre-coat layers 114 and 120, fig. 1A) in contact with a surface of the steel substrate (pre-coat layers 114 and 120 are in contact with steel substrates 102 and 104, fig. 1A), the method comprising:
applying on top of the metal alloy coating (top of layers 114 and 120, fig. 1A) an additional coating (clad layer 110, fig. 1A) at least at a region at a periphery of at least one of opposing faces of the pre-coated sheet (the clad layer 110 is on the edges of the side faces of the steel substrates 102 and 104, fig. 1A; the edges are construed as the claimed “region”), the additional coating having a vaporization temperature greater than the metal alloy coating (Gu ‘256 teaches using “nickel” for the clad layer 110, para 0026 and “aluminum-silicon” for the pre-coat layers, para 0009; similarly, the Specification of the Instant Application discloses that nickel has a higher vaporization temperature than AlSiFe, paras 0032-0033; construed then that in the invention taught by Gu ‘256, the nickel has a higher vaporization temperature than aluminum silicon), the additional coating being a coating which increases the vapor pressure between the metal alloy coating and the additional coating (“the alloying material from the clad layer 110 is, for instance, a nickel rich material,” para 0026; similarly, para 0033 of the Specification discloses using nickel and that as a result, the vapor pressure improves when nickel is used; construed then such the nickel taught by Gu ‘256 would cause increase in the vapor pressure) during a laser butt-welding method (“FIGS. 1-3 are butt welds,” para 0030; the laser butt-welding method takes place in fig. 2A; laser cladding with nickel powder is shown in fig. 1A).
Gu ‘256, fig. 1A
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Gu ‘256 does not explicitly disclose applying by spin coating or spray painting or using a paint brush; a laser butt-welding method up to a pressure, the pre-coating being ejected away from the weld at the pressure.
However, in the same field of endeavor of laser processing aluminum workpieces, McCay teaches applying by spin coating (spin coating is not explicitly disclosed) or spray painting (“….component of a slurry. In a preferred embodiment, the precursor alloy material is a powder which is mixed with a binder, which may be applied to the metal surface by spraying,” column 2, lines 49-52; spraying the slurry powder mixed with a binder is construed as spray painting; “nickel,” column 2, line 40; “sprayed,” column 8, line 30) or using a paint brush (using a paint brush is not explicitly disclosed).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of McCay, by spraying using a slurry component that includes a binder and nickel powder, as taught by McCay, instead of spraying using a nickel powder and performing cladding, as taught by Gu ‘256 in fig. 1A, in order to use a material that includes a binder that causes the material to adhere to the workpiece surface, because unlike cladding where a dry, non-adhesive powder is used, the sprayed slurry material becomes an integral part of the workpiece such that the formed layer does not chip or flake off, and because the binder will eventually burn off during laser processing, such that the binder has no significant effect on the final product (McCay, column 1, lines 17-25, column 1, lines 33-39, column 2, lines 48-56, and column 6, lines 39-44).
Gu ‘256 / McCay do not explicitly disclose laser butt-welding method up to a pressure, the pre-coating being ejected away from the weld at the pressure.
However, in the same field of endeavor of laser processing aluminum workpieces, Gu ‘886 teaches a laser butt-welding method (fig. 3) up to a pressure (“conduit 202 follows behind the laser beam 206 in the scan direction, such that the stream of the gas is directed toward melted material that is formed immediately behind the defocused laser beam 206,” para 0031; the pressure applied by the stream of glass is construed as the claimed “pressure”), the pre-coating being ejected away from the weld at the pressure (“the stream of the gas blows the melted material out of the contiguous surface areas before the melted material re-solidifies,” para 0031; the melted material that is blown away is construed as the claimed pre-coating that is ejected away).
Gu ‘886, fig. 3
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Gu ‘886, by using a conduit 202 to blow away melted material, as taught by Gu ‘886, after the workpieces are laser welded together and before the weld re-solidifies, as taught by Gu ‘256 in fig. 2A, in order to remove undesired intermetallic compounds that result because of the melted coating in the weld joint, which can cause severe cracking in the weld joint if not removed (Gu ‘886, paras 0009 and 0031).
Regarding claim 30, Gu ‘256 teaches wherein the additional coating comprises gammagene elements (“nickel,” para 0026).
Regarding claim 31, Gu ‘256 teaches wherein the additional coating includes carbon (not explicitly disclosed) or nickel (“nickel,” para 0026).
Regarding claim 32, Gu ‘256 teaches a method for the fabrication (“fabricated,” para 0023) of a steel part (fig. 1A) comprising:
laser butt-welding (fig. 2A) of first and second pre-coated steel sheets (“pre-coated steel sheet plates,” para 0023), each comprising a steel substrate (steel substrates 102 and 104, fig. 2A) and a metal alloy coating (pre-coat layers 114 and 120, fig. 2A) in contact with a surface of the steel substrate (pre-coat layers 114 and 120 are in contact with steel substrates 102 and 104, fig. 2A), wherein at least a region at the periphery of at least one of opposing faces of the first and the second pre-coated steel sheets (the edges of the side faces of the steel substrates 102 and 104 are construed as the claimed “region,” figs. 1A and 2A) has been previously coated with an additional coating (as shown in fig. 1A, the edges are coated with a clad layer 110 prior to the laser welding that occurs in fig. 2A; the welding is a “two-step process,” para 0016) applied on top of the metal alloy coating (top of layers 114 and 120, fig. 1A), the additional coating having a vaporization temperature greater than the metal alloy coating (Gu ‘256 teaches using “nickel” for the clad layer 110, para 0026 and “aluminum-silicon” for the pre-coat layers, para 0009; the melting temperature for nickel is 1,455°C; “an aluminum-silicon alloy coating has a melting temperature lower than 600° C,” para 0024; construed such that if the melting temperature of nickel is greater than the aluminum silicon alloy, then the vaporization temperature must also be greater; similarly, the Specification of the Instant Application also discloses that nickel has a higher vaporization temperature than AlSiFe, paras 0032-0033) the additional coating being a coating which increases the vapor pressure between the metal alloy coating and the additional coating (“the nickel in the alloying material is a martensitic promoter, and as such the presence of nickel in the melt pool 136 at least partially compensates for the adverse effects of the aluminum,” para 0026; similarly, para 0033 of the Specification discloses that the vapor pressure improves when nickel is used) during the laser butt-welding method (“FIGS. 1-3 are butt welds,” para 0030; the laser butt-welding method takes place in fig. 2A; laser cladding with nickel powder is shown in fig. 1A).
Gu ‘256 does not explicitly disclose an additional coating applied by spin coating, or spray painting or using a paint brush; laser butt-welding method up to a pressure, the laser-but welding ejecting the pre-coating away from the weld at the pressure.
However, in the same field of endeavor of laser processing aluminum workpieces, McCay teaches an additional coating (“nickel,” column 2, line 40; “component of a slurry,” column 2, line 49; “binder,” column 2, line 51; the precursor alloy material that is a slurry material, which includes binder and nickel, is construed as the claimed “additional coating”) applied by spin coating (spin coating is not explicitly disclosed) or spray painting (“In a preferred embodiment, the precursor alloy material is a powder which is mixed with a binder, which may be applied to the metal surface by spraying,” column 2, lines 49-52; spraying the slurry powder mixed with a binder is construed as spray painting; “sprayed,” column 8, line 30) or using a paint brush (using a paint brush is not explicitly disclosed).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of McCay, by spraying using a slurry component that includes a binder and nickel powder, as taught by McCay, instead of spraying using a nickel powder and performing cladding, as taught by Gu ‘256 in fig. 1A, in order to use a material that includes a binder that causes the material to adhere to the workpiece surface, because unlike cladding where a dry, non-adhesive powder is used, the sprayed slurry material becomes an integral part of the workpiece such that the formed layer does not chip or flake off, and because the binder will eventually burn off during laser processing, such that the binder has no significant effect on the final product (McCay, column 1, lines 17-25, column 1, lines 33-39, column 2, lines 48-56, and column 6, lines 39-44).
Gu ‘256 / McCay do not explicitly disclose laser butt-welding method up to a pressure, the pre-coating being ejected away from the weld at the pressure.
However, in the same field of endeavor of laser processing aluminum workpieces, Gu ‘886 teaches a laser butt-welding method (fig. 3) up to a pressure (“conduit 202 follows behind the laser beam 206 in the scan direction, such that the stream of the gas is directed toward melted material that is formed immediately behind the defocused laser beam 206,” para 0031; the pressure applied by the stream of glass is construed as the claimed “pressure”), the pre-coating being ejected away from the weld at the pressure (“the stream of the gas blows the melted material out of the contiguous surface areas before the melted material re-solidifies,” para 0031; the melted material that is blown away is construed as the claimed pre-coating that is ejected away).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Gu ‘256, in view of the teachings of Gu ‘886, by using a conduit 202 to blow away melted material, as taught by Gu ‘886, after the workpieces are laser welded together and before the weld re-solidifies, as taught by Gu ‘256 in fig. 2A, in order to remove undesired intermetallic compounds that result because of the melted coating in the weld joint, which can cause severe cracking in the weld joint if not removed (Gu ‘886, paras 0009 and 0031).
Regarding claim 33, Gu ‘256 teaches wherein said laser but welding (fig. 2B) is performed on a first portion of the region (annotated in fig. 2B below) after the first portion is coated with the additional coating (clad layer 110, fig. 2B) and simultaneously with a second portion of the region (annotated in fig. 2B below) being coated with the additional coating (clad layer 110, fig. 2B).
Gu ‘256, fig. 2B (annotated)
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Regarding claim 34, Gu ‘256 teaches wherein the additional coating comprises gammagene elements (“nickel,” para 0026).
Regarding claim 35, Gu ‘256 teaches wherein the additional coating includes carbon (not explicitly disclosed) or nickel (“nickel,” para 0026).
Response to Argument
Applicant' s arguments in the appeal brief filed 21 January 2026 have been fully considered but are moot because the arguments do not apply to the new rejections of Gu ‘256 combined with McCay and Gu ‘886.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Schneider (NPL: “Powder Coating vs. Painting”) teaches the difference between powder coating and painting.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERWIN J WUNDERLICH whose telephone number is (571)272-6995. The examiner can normally be reached Mon-Fri 7:30-5:30.
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/ERWIN J WUNDERLICH/Examiner, Art Unit 3761 12 Feb 2026