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 .
Response to Amendment
This office action is responsive to the amendment filed on 05/26/2026. As directed by the amendment: claim(s) 1 has/have been amended; no claim(s) has/have been cancelled and no new claim(s) has/have been added. Thus, claims 1-2 are presently pending in this application.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoyama et al (US 2005/0284847) in view of Schuster et al (EP 2213402).
Regarding claim 1, Aoyama discloses a magnet-equipped projection welding electrode, the electrode comprising:
a main body (Fig. 1 #6 main body) made of metal and having a cylindrical shape;
an end cover (Fig. 1 #10 end cover) made of metal, the end cover (Fig. 1 #10 end cover) attached to an end of the main body (Fig. 1 #6 main body), the end cover (Fig. 1 #10 end cover) having a through hole (Fig. 1 #19 through hole) into which a part is inserted;
a heat insulating guide sleeve (Fig. 1 #12 guide sleeve) made of an insulation material, the heat insulating guide sleeve (Fig. 1 #12 guide sleeve) being inserted into the main body (Fig. 1 #6 main body) and having a minor diameter hole (Fig. 1 #18 minor diameter section) and a major diameter hole (Fig. 1 #17 major diameter section), the minor diameter hole (Fig. 1 #18 minor diameter section) communicating with the through hole (Fig. 1 #19 through hole) of the end cover (Fig. 1 #10 end cover), the major diameter hole (Fig. 1 #17 major diameter section) having a diameter larger than a diameter of the minor diameter hole (Fig. 1 #18 minor diameter section);
a cooling water passage (Fig. 1 #32 cooling passage) formed in an outer peripheral portion of the heat insulating guide sleeve (Fig. 1 #12 guide sleeve), the cooling water passage (Fig. 1 #32 cooling passage) having an annular groove shape and disposed in a circumferential direction of the main body (Fig. 1 #6 main body);
an inlet (Fig. 1 #34 inlet pipe) and an outlet (Fig. 1 #35 outlet pipe) formed in the main body (Fig. 1 #6 main body), the inlet (Fig. 1 #34 inlet pipe) configured to supply cooling water to the cooling water passage (Fig. 1 #32 cooling passage), the outlet (Fig. 1 #35 outlet pipe) configured to discharge the cooling water from the cooling water passage (Fig. 1 #32 cooling passage);
a heat insulating portion (Fig. 1 #33 groove) being a portion of the heat insulating guide sleeve (Fig. 1 #12 guide sleeve) that is located at an inner side of the cooling water passage (Fig. 1 #32 cooling passage);
a container (Fig. 1 #14 container) slidably inserted into the major diameter hole (Fig. 1 #17 major diameter section) located on an inner side of the heat insulating portion (Fig. 1 #33 groove), the container (Fig. 1 #14 container) containing a permanent magnet (Fig. 1 #15 magnet);
and a magnetic force transmission member (Fig. 1 #3 stem) extending from the container (Fig. 1 #14 container), the magnetic force transmission member (Fig. 1 #3 stem) slidably inserted into the minor diameter hole (Fig. 1 #18 minor diameter section), wherein the permanent magnet (Fig. 1 #15 magnet), the heat insulating portion (Fig. 1 #33 groove) of the heat insulating guide sleeve (Fig. 1 #12 guide sleeve), and the cooling water passage (Fig. 1 #32 cooling passage) are disposed in a positional relationship in which the permanent magnet (Fig. 1 #15 magnet), the heat insulating portion (Fig. 1 #33 groove) of the heat insulating guide sleeve, and the cooling water passage (Fig. 1 #32 cooling passage) are arranged in a diameter direction of the main body (Fig. 1 #6 main body), and a depth dimension of the cooling water passage (Fig. 1 #32 cooling passage) as viewed in the diameter direction of the main body (Fig. 1 #6 main body), and is set to be smaller than a thickness dimension of the heat insulating portion (Fig. 1 #33 groove).
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However, Aoyama does not each wherein a depth dimension (D1) of the cooling water passage as viewed in the diameter direction of the main body is set to be smaller than a thickness dimension (T1) of the heat insulating portion, and wherein a ratio (T1/D1) of the thickness dimension (T1) to the depth dimension (D1) is set to 1.40 to 1.70 for securing the thickness dimension (T1) of the heat insulating portion so as to suppress heat transfer from the cooling water heated in the cooling water passage to the permanent magnet through the heat insulating portion.
Applied prior art Aoyama fail(s) to explicitly teach that a ratio (T1/D1) of the thickness dimension (T1) to the depth dimension (D1) is set to 1.40 to 1.70 for the cooling water passage. Schuster does, however, teach geometric parameters D (corresponding with T1) and DP (corresponding with D1) for a cooling tube.
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Therefore, thickness and depth are recognized as a result-effective variables, i.e. a variable which achieves a recognized result. Thickness and depth are In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B). In this case, the recognized result is that heat related damage or wear will be avoided. Therefore, since the general conditions of the claim, i.e. that consideration of geometric parameters D (corresponding with T1) and DP (corresponding with D1) for a cooling tube, were disclosed in the prior art by Schuster, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to set geometric parameters D (corresponding with T1) and DP (corresponding with D1) such that (T1/D1) is set to 1.40 to 1.70 for the purpose of creating a turbulent flow of cooling fluid. Turbulent flow is tied to the Reynolds number as taught by Schuster (Description ---" In addition to these dimensioning parameters, influencing the volume flow with which liquid coolant can be conducted through the cooling tube into the cavity can also be taken into account. It should have a highly turbulent flow within the cavity whose Reynolds number is greater than twice the critical Reynolds number.” and ---" It should have a highly turbulent flow within the cavity whose Reynolds number is greater than twice the critical Reynolds number. As a result, with the liquid coolant, which should preferably have a flow temperature in the range between 30 and 40 ° C, a sufficient amount of heat be removed and a corresponding cooling of the electrode unit and in particular the electrode can be achieved.” The Reynolds number for a turbulent flow is characterized as above being a Reynolds number by at least two times in the Shuster prior art.
Description---"With the in Fig. 9 As shown, the strong influence of the inner diameter D of the cooling tube 6 on the Reynolds number can be clarified. Thus, with decreasing inner diameter D, the Reynolds number increases. In summary, it can be stated that the coolant flow has a very significant influence on the Reynolds number.” Schuster ties turbulent flow to the diameter of the channel in which the cooling fluid flows.)
Furthermore, there are two ways to change the flow of cooling fluid to achieve a turbulent flow. The two ways are increasing or decreasing the thickness of the heat insulating portion (which effects the diameter of the inner tube), or increasing or decreasing the depth of the cooling channel. Both ways attempts to solve the same problem of creating a turbulent flow designed for optimal cooling of the electrode.
Therefore, it would have been obvious to try, by one of ordinary skill in the art before the effective filing date of the claimed invention, to adjust the thickness of the heat insulating portion and incorporate it into the projection welding electrode of Aoyama since there are a finite number of identified, predictable solutions (thickness/diameter or depth) to the recognized need (turbulent flow) and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success (effective cooling of the electrode).
(Examiner notes that the phrase “for securing the thickness dimension (T1) of the heat insulating portion so as to suppress heat transfer from the cooling water heated in the cooling water passage to the permanent magnet through the heat insulating portion.” is a statement of intended use and the structure of the device as taught by Aoyama in view of Schuster can perform the intended function. It has been held that “[A]pparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original); MPEP 2114. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); MPEP 2114(II). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.)
Regarding claim 2, Aoyama in view of Schuster teaches the welding electrode as appears above (see the rejection of claim 1), but does not teach wherein a ratio (D1/W) of the depth dimension (D1) to a width dimension (W) of the cooling water passage as viewed along a central axial line of the magnet-equipped projection welding electrode is set to 0.11 to 0.21.
Applied prior art Aoyama in view of Schuster fail(s) to explicitly teach that a ratio (D1/W) of the depth dimension (D1) to a width dimension (W) of the cooling water passage is set to 0.11 to 0.21 for the cooling water passage. Schuster does, however, teach geometric parameter DP (corresponding with D1) for a cooling tube.
Therefore, depth is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B). In this case, the recognized result is that heat related damage or wear will be avoided. Therefore, since the general conditions of the claim, i.e. that consideration of geometric parameter DP (corresponding with D1) for a cooling tube, were disclosed in the prior art by Schuster, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to set geometric parameter DP (corresponding with D1) such that (D1/W) is set to 0.11 to 0.21 (As stated above, turbulent flow can be created by adjusting the diameter of the cooling channel. Description---"With the in Fig. 9 As shown, the strong influence of the inner diameter D of the cooling tube 6 on the Reynolds number can be clarified. Thus, with decreasing inner diameter D, the Reynolds number increases. In summary, it can be stated that the coolant flow has a very significant influence on the Reynolds number.” Schuster ties turbulent flow to the diameter of the channel in which the cooling fluid flows.).
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that the combination of Aoyama and Schuster fails to disclose or suggest these features of claim 1. Applicant specifically argues that the difference between the setting of the ratio (T1/D1) of the thickness dimension (T1) to the depth dimension (D1) in claim 1 and the setting of the ratio (DP/D) of the inner diameter (DP) of the cavity 5 to the inner diameter (D) of the cooling tube 6 in Schuster is that the setting of the ratio (T1/D1) contributes to suppression of the heat transfer from the heated cooling water in the cooling passage to the permanent magnet, which is contained in the container and positioned in the inner diameter side of the heat insulating portion of the heat insulating guide sleeve, through the heat insulating portion of the heat insulating guide sleeve, whereas the setting of the ratio (DP/D) in Schuster contributes only to the creation of a turbulent flow of cooling water in the cavity. Examiner respectfully disagrees.
In response to applicant's argument that the combination of Aoyama and Schuster fails to disclose or suggest a ratio (T1/D1) of the thickness dimension (T1) to the depth dimension (D1) being set to 1.40 to 1.70 for securing the thickness dimension (T1) of the heat insulating portion so as to suppress heat transfer from the cooling water heated in the cooling water passage to the permanent magnet through the heat insulating portion, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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 JOE E MILLS JR. whose telephone number is (571)272-8449. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at (571) 270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOE E MILLS JR./ Examiner, Art Unit 3761
/CHRIS Q LIU/ Primary Examiner, Art Unit 3761
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