DETAILED ACTION
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
Applicant’s arguments, see response to Reply to Restriction Requirement, filed 05/07/2026, with respect to restriction requirement have been fully considered and are persuasive. The restriction of claims of claims 1-12 have been withdrawn.
However, a new restriction under Unity of Invention is provided below.
REQUIREMENT FOR UNITY OF INVENTION
Restriction is required under 35 U.S.C. 121 and 372. This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
I) Group I, Claims 1-8 and 11-12, drawn to a welding apparatus with a welding rod cooler, classified in B23K 37/003.
II) Group II, Claims 9-10, drawn to a welding method including measuring temperature, classified in B23K 11/252.
Applicant is required, in reply to this action, to elect between invention groups I or II above to which the claims shall be restricted if no generic claim is finally held to be allowable. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because under PCT Rule 13.2 they lack the same or corresponding special technical features for the following reasons: Nastasi (US 6750418 B1) reference establishes that independent claim 1 in its’ current form lacks novelty. The existence of an anticipatory references demonstrating that one or more independent claims lack novelty establishes that the inventions do not relate to a single general inventive concept.
Nastasi teaches a welding apparatus comprising:
a welding rod (Figures 1-2 Column 2 Lines 28-31, weld tips 22);
a temperature measuring jig configured to measure a temperature of the welding rod (Column 5 Lines 38-50, temperature sensor 56 comprises a sensor to measure a temperature of the welding tip 22); and
a welding rod cooler configured to cool the welding rod (Column 7 Lines 40-55, weld tip is cooled using a water cooling system; Column 2 Lines 32-37, welding tips are air cooled).
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently none of the claims are generic to the restrictions.
Applicant is required, in reply to this action, to elect a single inventive idea between inventions above. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
During a telephone conversation with Chad Wells on 5/28/2026,a provisional election was made with traverse to prosecute the invention of Group I, claims 1-8 and 11-12. Affirmation of this election must be made by applicant in replying to this Office action. Claim 9-10 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification, as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a temperature measuring jig” in independent claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. A review of the specification and drawing found the corresponding structure of a temperature sensor (per page 3 lines 6-8).
Claim Objections
Claim 7 is objected to because of the following informalities:
“wherein the cooling panel has a shape curved toward a lower end of the upper welding” should be “wherein the cooling panel has a shape curved toward a lower end of the upper welding rod”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nastasi (US 6750418 B1).
Regarding claim 1, Nastasi (US 6750418 B1) teaches a welding apparatus comprising:
a welding rod (Figures 1-2 Column 2 Lines 28-31, weld tips 22);
a temperature measuring jig configured to measure a temperature of the welding rod (Column 5 Lines 38-50, temperature sensor 56 comprises a sensor to measure a temperature of the welding tip 22); and
a welding rod cooler configured to cool the welding rod (Column 7 Lines 40-55, weld tip is cooled using a water cooling system; Column 2 Lines 32-37, welding tips are air cooled).
Regarding claim 2, Nastasi teaches the welding apparatus of claim 1,
wherein the temperature measuring jig (Figure 1 Column 7 Lines 40-44, testing element 30 of monitoring station 20; Column 3 Lines 63-67, testing element 30 includes a mounting, temperature sensor 56, a lever portion 60, and a pivot 62) includes:
a main body (Figure 2 Column 4 Lines 1-19, mounting 50 which includes a lever portion 60);
a temperature sensor positioned at an upper end of the main body (Figure 3, temperature sensor 56 are placed on an upper end of the alignment elements wherein the temperature sensor 56 and alignment elements 52 are located within the top half of the mounting 50); and
a rotating shaft (Column 5 Lines 65-67, pivot 62 which comprises a rod or other suitable pivot element) configured to rotate the main body to position the temperature sensor at a lower end of the welding rod (Column 6 Lines 11-14, lever portion 60 moves around pivot 62 in response to movement of alignment elements 52; capable of rotating the lever portion 60 to position the temperature sensor 56 placed on an upper end of the lever portion at a lower end of the welding tips).
The Office further notes that using a pivot to rotate a device intended to receive welding tips from an idle position to a working position is well known in the art as evidenced by Hopkins (US 20080317577 A1).
Regarding claim 5, Nastasi teaches the welding apparatus of claim 2, wherein the welding rod includes an upper welding rod and a lower welding rod (Column 5 Lines 47-50, upper weld tip and lower weld tip; Figure 1, upper and lower welding tip 22 can be seen), and
wherein the temperature sensor is configured to contact a lower end of the upper welding rod (Column 4, alignment elements 52 coupled to temperature sensor 56 comprise members shaped like portions of a washer which are operable to move in response to contact with weld tips 22) through rotation of the main body (Column 6 Lines 11-14, lever portion 60 moves around pivot 62 in response to movement of alignment elements 52; capable of rotating the lever portion 60 to position the temperature sensor 56 placed on an upper end of the lever portion at a lower end of the welding tips) to measure the temperature of the upper welding rod (Column 5 Lines 47-50, one temperature sensor detects an upper weld tip while a second temperature sensor determines temperature of lower weld tip; Column 7 Lines 40-55, testing element determines the temperature of the weld tips).
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.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nastasi (US 6750418 B1) as applied to claim 2 above, and further in view of Hopkins (US 20080317577 A1)
Regarding claim 3, Nastasi teaches the welding apparatus of claim 2,
wherein the rotating shaft is located on the main body portion (Figure 2 Column 4 Lines 53, lever portion 60 comprises a pivot 62), and
Nastasi fails to teach:
the rotating shaft is configured to rotate the main body portion in a horizontal direction around the rotating shaft.
Hopkins (US 20080317577 A1) teaches a robot positioned welding tip dresser, wherein:
the rotating shaft is configured to rotate the main body portion in a horizontal direction around the rotating shaft (Figure 1 Paragraph 13, pedestal mounts a pivot 24 carrying a pivotable end 26 of a pivoting arm; Paragraphs 19-20, positioning mechanism is moved from idle position to a working position and back again; Figure 1 Paragraph 10, figure 1 is a schematic top view and thus the assembly is moved in a horizontal direction).
It would have thus been obvious to someone of ordinary skill in the art before the filing date of the claimed invention to have modified Nastasi with Hopkins and have a rotating shaft facilitate rotating the entire mounting in a horizontal direction around the shaft located on the mounting. This would have been done to move to facilitate moving the monitoring station (Nastasi Column 7 Lines 38-39) such as to allow the monitoring station to be positioned between an idle position wherein the weld tips can be used for welding (Hopkins Paragraph 5) and a working position wherein the welding tips interact with the monitoring station (Hopkins Paragraph 5).
Regarding claim 4, as modified Nastasi teaches the welding apparatus of claim 3.
Hopkins further teaches:
wherein the rotating shaft is configured to rotate the main body portion between 0 degrees and 90 degrees (Figure 1, the idle position and the working position is within the range of 0 and 90 degrees apart)
It would have been obvious for the same motivation as claim 3.
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nastasi (US 6750418 B1) as applied to claim 2 above, and further in view of Wada (WO 2018043738 A1) and RYU (KR 20150006676 A).
Regarding claim 6, Nastasi teaches the welding apparatus of claim 2.
Nastasi fails to teach:
wherein the welding rod cooler includes:
a cooling panel;
a plurality of cooling holes in the cooling panel; and
a blower, the blower being configured to blow cold air flowing through the blower through at least one cooling hole of the plurality of cooling holes to the welding rod.
Wada (WO 2018043738 A1) teaches resistance welding equipment, comprising:
a blower (Paragraph 31, cooling device such as a blower is provided to cool the intermediate electrode 12 at welding standby positions)
It would have thus been obvious to someone of ordinary skill in the art before the filing date of the claimed invention to have modified Nastasi with Wada and a blower cool the weld tips. This would have been done to facilitate air cooling (Nastasi Column 2 Lines 32-37) and to suppress thermal degradation (Wada Paragraph 31).
Nastasi modified with Wada fails to teach:
a cooling panel;
a plurality of cooling holes in the cooling panel; and
the blower being configured to blow cold air flowing through the blower through at least one cooling hole of the plurality of cooling holes to the welding rod.
RYU (KR 20150006676 A) teaches a cooking structure of a spot welding device, wherein:
the welding rod cooler (Paragraphs 52-53, cooling unit 100) includes:
a cooling panel (Figure 9, shank 9);
cooling hole in the cooling panel (Figure 2 Paragraph 73, shank 9 has a cooling discharge hole 63); and
the air source being configured to blow cold air flowing through the blower through at least one cooling hole of the plurality of cooling holes to the welding rod (Paragraph 70, cooling air is supplied from the vortex tube to discharge the cooling air to the insert tip on the tip base such as to directly cool the insert tip with cool air).
While RYU does not explicitly teach of “a plurality of cooling holes”, the Office further notes that the MPEP teaches that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP §2144.04.VI.B. In this case, one of ordinary skill in the art would have found it obvious to have duplicated the cooling hole such as to provide cooling to each of the welding tips. Thus, providing a plurality of holes in the cooling panel for cooling a plurality of welding tips has no patentable significance unless a new or unexpected result is produced.
It would have thus been obvious to someone of ordinary skill in the art before the filing date of the claimed invention to have modified Nastasi with Wada and have an air source deliver cold air through at least one cooling hole to the welding tip. This would have been done to facilitate directly cooling welding tips to eliminate cooling water utility (Wada Paragraph 16).
Regarding claim 7, Nastasi as modified teaches the welding apparatus of claim 6, wherein the welding rod includes an upper welding rod and a lower welding rod (Column 5 Lines 47-50, upper weld tip and lower weld tip; Figure 1, upper and lower welding tip 22 can be seen), and
RYU further teaches:
wherein the cooling panel has a shape curved toward a lower end of the upper welding (Figure 2, bottom part of shank 9 is curved toward both welding rods which include a lower end of the upper welding rod) such that the cold air is blown to the lower end of the upper welding rod (Paragraph 70, cooling air is supplied from the vortex tube to discharge the cooling air to the insert tip on the tip base such as to directly cool the insert tip with cool air; would have been obvious to have duplicated the cooling discharge hole such as to blow cooling air toward the lower end of the upper welding rod).
It would have been obvious for the same motivation as claim 2.
Regarding claim 8, Nastasi as modified teaches the welding apparatus of claim 6.
RYU further teaches:
the plurality of cooling holes include 5 or fewer cooling holes (Figure 2, a single cooling air discharge hole; would have been obvious to have duplicated the cooling hole for each welding tip intended to be cooled).
While RYU does not explicitly teach of a plurality of cooling holes, the Office further notes that the MPEP teaches that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP §2144.04.VI.B. In this case, one of ordinary skill in the art would have found it obvious to have duplicated the cooling hole such as to provide cooling to each of the welding tips. Thus, providing a specific number of cooling holes for cooling a plurality of welding tips has no patentable significance unless a new or unexpected result is produced.
It would have been obvious for the same motivation as claim 6.
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nastasi (US 6750418 B1) as applied to claim 1 above, and further in view of Hopkins (US 20080317577 A1) and Kusumegi (US 5895585 A).
Regarding claim 11, Nastasi (US 6750418 B1) teaches a welding method using the welding jig of claim 1 (see claim 1 above), the welding rod including an upper welding rod and a lower welding rod (Column 5 Lines 47-50, upper weld tip and lower weld tip; Figure 1, upper and lower welding tip 22 can be seen), the welding method comprising:
contacting the temperature measuring jig to a lower end of the upper welding rod (Column 4, alignment elements 52 coupled to temperature sensor 56 comprise members shaped like portions of a washer which are operable to move in response to contact with weld tips 22) to measure the temperature of the lower end of the upper welding rod (Column 7 Lines 31-39, monitoring station is moved toward the welding tips such as to perform testing; Column 5 Lines 47-50, one temperature sensor detects an upper weld tip while a second temperature sensor determines temperature of lower weld tip; Column 7 Lines 40-55, testing element determines the temperature of the weld tips; Column 5 Lines 42-44, temperature sensor detects heat as the weld tips are inserted; Column 7 Lines 56-64, alignment of weld tips is determined while the weld tips are inserted in the testing element; thus steps 202 and 204 of Figure 5 reasonably are performed simultaneously)
moving the temperature measuring jig away from the lower end of the upper welding rod (Column 6 Lines 27-31, weld tips are withdrawn from the testing element 30 after relevant measurements have been made);
moving the upper welding rod in a direction toward the lower welding rod to perform a welding process (Column 2 Lines 37-42, weld tips are brought toward together to form a weld);
contacting the temperature measuring jig to a lower end of the upper welding rod through rotation to measure the temperature of the lower end of the upper welding rod again (Column 3 Lines 39-46, weld tips are moved such as to interact with the monitoring station 20 after a predetermined number of welding jobs; Column 5 Lines 47-50, one temperature sensor detects an upper weld tip while a second temperature sensor determines temperature of lower weld tip; Column 7 Lines 40-55, testing element determines the temperature of the weld tips).
Nastasi fails to explicitly teach:
moving the temperature measuring jig away from the lower welding rod through rotation
moving the upper welding rod away from the lower welding rod after the welding process is completed; and
Hopkins (US 20080317577 A1) teaches a robot positioned welding tip dresser, wherein:
moving the temperature measuring jig away from the lower welding rod through rotation
(Figure 1 Paragraph 13, pedestal mounts a pivot 24 carrying a pivotable end 26 of a pivoting arm; Paragraphs 19-20, positioning mechanism is moved from idle position to a working position and back again).
It would have thus been obvious to someone of ordinary skill in the art before the filing date of the claimed invention to have modified Nastasi with Hopkins and have a rotating shaft facilitate rotating the entire mounting in a horizontal direction around the shaft located on the mounting. This would have been done to move to facilitate moving the monitoring station (Nastasi Column 7 Lines 38-39) such as to allow the monitoring station to be positioned in an idle position wherein the weld tips can be used for welding (Hopkins Paragraph 5) and a working position wherein the welding tips interact with the monitoring station (Hopkins Paragraph 5).
Nastasi modified with Hopkins fails to teach:
moving the upper welding rod away from the lower welding rod after the welding process is completed; and
Kusumegi (US 5895585 A) teaches a device for confirming an opening of welding gun, wherein:
moving the upper welding rod away from the lower welding rod after the welding process is completed (Column 2 Lines 11-24, state in which the movable and fixed electrodes are spaced at a maximum distance from each other after each welding is completed); and
It would have thus been obvious to someone of ordinary skill in the art before the filing date of the claimed invention to have modified Nastasi with Kusumegi and moved the upper and lower welding rods away from each other and verify the fact after the welding process is completed. This would have been done to avoid an operation failure (Kusumegi Column 2 Lines 11-24).
Regarding claim 12, Nastasi as modified teaches the welding method of claim 11, further comprising cooling the lower end of the upper welding rod using a welding rod cooler (Column 7 Lines 40-55, weld tip is cooled using a water cooling system; Column 2 Lines 32-37, welding tips are air cooled).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANKLIN JEFFERSON WANG whose telephone number is (571)272-7782. The examiner can normally be reached M-F 10AM-6PM (E.S.T).
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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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/F.J.W./Examiner, Art Unit 3761
/WOODY A LEE JR/Primary Examiner, Art Unit 3761
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