DETAILED ACTION
This office action is responsive to the amendment filed on 01/20/26. As directed by the amendment: claims 1 and 5 have been amended; claims 2 and 6 have been cancelled; and no claims have been added. Thus, claims 1, 3-5, 7, and 8 are presently pending in this application.
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.
Claims 1, 3-5, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al. (US 8,993,918) in view of Yang et al. (US 2019/0001428).
With regard to claims 1 and 5, Sakai teaches a resistance spot welding method using a resistance spot welding apparatus (50; FIG. 12) configured to weld a workpiece (100) made of layered steel plates (101-104) comprising: preparing the workpiece (100) by layering on a first steel plate (101), a second steel plate (104) , bringing the first steel plate (101) into contact with a first electrode (17) of the resistance spot welding apparatus, bringing the second steel plate (104) into contact with a second electrode (14) of the resistance spot welding apparatus, and holding the workpiece between the first electrode (17) and the second electrode (14) (FIG. 12-13, FIG. 14G: first steel plate 101 compressed until the completion of the welding), wherein in the welding, the first steel plate (101) is compressed (via compressing mechanism 21-24) in a direction that intersects a thickness direction of the first steel plate (101) at least from during welding of the workpiece until completion of welding of the workpiece (FIG. 12-13, FIG. 14G: first steel plate 101 compressed until the completion of the welding), and the first steel plate is compressed in a direction that intersects the thickness direction of the first steel plate (101) until cooling of the workpiece is completed after welding (see FIG. 14G illustrates a state in which electrodes are engaged with the workpiece and a welding operation is being performed while FIG. 14H illustrates a post-welding process state in which the electrodes are retracted from the workpiece).
Sakai does not explicitly teach that the first steel plate is a high-tensile steel plate among the steel plates and the second steel plate has less tensile strength than the first steel plate; however, Yang from the same field of endeavor directed toward a method and apparatus for resistance spot welding overlapping steel workpieces teaches the aforementioned limitation: “The steel substrate 152 of the first steel workpiece 138 comprises an advanced high-strength steel, but the steel substrate 156 of the second steel workpiece 140 does not.”, para. [0048]. Notwithstanding the foregoing, it is respectfully submitted that workpieces (i.e., first and second steel plates) utilized within an apparatus claim do not limitation an apparatus claim: see MPEP 2115 Material or Article Worked Upon by Apparatus: MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Sakai reference, such that the first steel plate is a high-tensile steel plate among the steel plates and the second steel plate has less tensile strength than the first steel plate, as suggested and taught by Yang, for the purpose of providing enhanced welding of dissimilar steel sheets. With regard to the method claim of claim 1, to the extent that the prior art apparatus meets the structural limitations of the apparatus as claimed, it will obviously perform the method steps as claimed. Furthermore, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01(I)". Furthermore, it is noted that 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. As that a device according to the combined teachings of the cited prior art would be capable of performing the required intended use and no structural differentiation has been identified, it is the examiner’s determination that this feature does not define the present invention over the cited prior art. See MPEP § 2114.
With regard to claims 3 and 7, Sakai teaches the compressing mechanism (21-24) is configured to compress the first steel plate (101) in a direction that intersects the thickness direction of the first steel plate from before welding of the workpiece is commenced (see FIG. 14F illustrates an initial compression function prior to a welding operation beginning).
With regard to claims 4 and 8, Sakai teaches the compressing mechanism (21-24) comprises a first pressurizing member (68b) and a second pressurizing member (64b) that face each other (FIG. 13), and wherein the first pressurizing member (68b) and the second pressurizing member (64b) are configured to compress a welded portion of the first steel plate (101) in a direction that intersects the thickness direction of the first steel plate (101) by interposing the first steel plate (101) between the first pressurizing member and the second pressurizing member (FIG. 12-13).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of the newly presented prior art rejection(s).
At pgs. 8-10 of the Office Action Response of 01/20/26 the Applicant contends “rather than applying compression force parallel to the thickness direction of the first steel plate as disclosed by Sakai, the present application discloses and claims compression ‘in a direction that intersects the thickness direction of the first steel plate’ such as shown in FIGS. 2A-2B (reproduced below) in which the first steel plate P1 is compressed in a left-right direction that intersects (e.g., is perpendicular to) its thickness direction.” In response to the aforementioned contention(s), the Examiner respectfully submits that the limitations which the Applicant relies to distinguish over the cited prior art (e.g., “the first steel plate P1 is compressed in a left-right direction that intersects (e.g., is perpendicular to) its thickness direction” and/or graphicly depicted structural limitations illustrated in FIGS. 2A-2B which are not recited within the independent claim. Accordingly, it is respectfully submitted that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 JOSEPH W ISKRA whose telephone number is (313) 446-4866. The examiner can normally be reached on M-F: 09:00-17:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, IBRAHIME ABRAHAM can be reached on 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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/JOSEPH W ISKRA/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761
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