DETAILED ACTION
This office action is responsive to the amendment filed on 06/11/26. As directed by the amendment: claims 1 and 6 have been amended; no claims have been cancelled; and claims 11-16 are newly added. Thus, claims 1-16 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 § 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.
Claims 11 and 14 are 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.
With regard to claims 11 and 14, each of the claims recite “the shortest linear distance”; however,
the aforementioned limitation is a subjective term which does not provide a frame of reference to ascertain what is construed as “the shortest” and additionally the written description of the instant patent application does not provide an objective standard for determining said limitation. Appropriate correction is required.
With regard to claims 11 and 14, the term “can be” is indefinite as it indicates probability and/or optionality. Appropriate correction is required.
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 1-10, 12, 13, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa (JP 2005103608) in view of Hideki (WO 2014033931).
With regard to claims 1 and 6, Oikawa teaches a resistance spot welding method and a method of manufacturing a weld joint (“In the method of improving the corrosion resistance, tensile strength and fatigue strength of welded joints formed by spot welding high strength plated steel sheets”, cl. 1) comprising: sandwiching two or more overlapped steel sheets (steel plates 1, FIG. 3) between a pair of welding electrodes (electrodes 2, FIG. 1), applying current to the steel sheets (1) while pressing the steel sheets (1), forming a nugget on overlapping surfaces of the steel sheets (1) to join the steel sheets (1) (“As shown in FIG. 2, the high strength plated steel plates 1 are overlapped with each other, energized while being pressed with a copper electrode 2 to form a melted portion between the steel plates, and after energization, the melted portion is cooled to solidify the nugget. 3 is formed.”), and after the joining, irradiating the nugget with sound waves having a frequency of 10 Hz to 100000 Hz (“Note that the frequency, amplitude, and transmission output of the ultrasonic wave used in the ultrasonic impact treatment need not be specified, but the ultrasonic wave having a frequency of 20-60 kHz, an amplitude of 20-40 μm, and a transmission output of 500-1500 W is used for the ultrasonic wave. It is desirable to perform sonic impact theory. If the frequency is lower than this, the noise during the ultrasonic impact treatment increases, and if it is higher than this, the scale of the apparatus becomes too large.”) (emphasis added).
Oikawa further teaches the limitation of “the sound wave irradiation is performed without contacting the steel sheets.” (“The present invention is characterized in that an ultrasonic impact treatment is performed on one part or both sides of the spot welded portion on the nugget 3 parts and the cracked part of the heat-affected part around the nugget..”, Oikawa).
Notwithstanding the foregoing, it is respectfully submitted that as an alternative to the foregoing teaching (i.e., related to the claim limitation of “the sound wave irradiation is performed without contacting the steel sheets.”), if it was determined that Oikawa does not teach the aforementioned limitation, the instant patent application explicitly teaches that such a limitation is well-known in the art as the written description of the instant patent application explicitly states at para. [0074]: “Irradiation of sound waves can use a common device (a sound wave irradiator or a sound wave generator) that generates sound waves and irradiates an object with the sound waves. Examples of the sound wave irradiator include a sound wave transmitter, and a speaker equipped with a diaphragm or the like in a sound wave transmitter.” Accordingly, it is respectfully submitted that if it was determined that the ultrasonic transmitter 6 of Oikawa does indeed touch the steel sheets, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to replace the ultrasonic transmitter 6 of Oikawa with the Applicant Admitter Prior Art (Instant Patent Application, para. [0074]) of a well-known sound wave device (such as a common sound wave irradiator or a sound wave generator) which operates at the parameters of Oikawa detailed above/herein to perform the claimed function to reduce the operational costs by removing the need of a contact portion. Furthermore, with regard to the newly amended claim limitation of “and before a delayed fracture occurs”, it is submitted that as the claimed sound wave frequency of 10 Hz to 1000000 Hz essentially includes a wide range of frequencies that would be perceivable by a human ear, and accordingly, with a such a wide range of frequencies no unexpected results are achieved by said claimed wide frequency range.
Notwithstanding the aforementioned alternative to the initial teaching of Oikawa, as a further alternative regarding the aforementioned limitation, it must be stressed that the claims of the instant patent application are directed toward a product by process claim in which a formed solidified steel nugget is created utilizing the claimed process steps. Further, as the secondary prior art citation explicitly teaches a relation with regard to utilizing sound with regard to a predetermined hydrogen level, and as explicitly illustrated below in FIG. 3 of the prior art citation, it is known in the art that the sound level (dB) / noise level is correspondent with a hydrogen value – as illustrated in the below figure 3, namely with a lower noise (dB) amount being correlated with a lower hydrogen amount to achieve a strengthened nugget with a spot welding operation. Notwithstanding the foregoing, it is submitted that as the independent claim relates to a product by process claim, the claim is not limited to the manipulations of the recited steps, only the structure implied by the steps: (see MPEP 2113 Product by Process Claims I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) . Accordingly, as the claimed structure (“solidified steel nugget”) of the instant patent application’s invention is taught by the cited prior art and as the teachings related to sound wave impingement on said steel nugget is taught by the cited prior art with the claimed frequency and dB, the reduction in trapped hydrogen of the nugget therein would be an inherent result of the sound wave impingement. Finally, in view of the product by process determination and the above MPEP description of such claims, the limitation of “before a delayed fracture occurs” would be provided limited patentable weight as the patentability is determined by the product itself. Notwithstanding the foregoing, it is submitted that one of the ordinary skill in the art as a matter of routine experimentation would apply a predetermined amount of current to the steel sheets via the electrodes to form the solidified steel nugget to maximize the tensile strength of the formed nugget prior to a fracture condition occurring in view of values related to items such as: the thickness of the steel sheets, the material of the steel sheets, etc.
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Notwithstanding the foregoing, Hideki is additionally cited herein as an alternative to the foregoing arguments presented over the claimed limitations (i.e., “a sound pressure level on a surface of the steel sheet is 30 dB or more” and “residual hydrogen in the nugget is reduced”) in which the citation is directed toward the same problem of minimizing hydrogen within a weld which teaches: “It was confirmed that the noise level saturates when the hydrogen addition amount is 1% or less and is almost the same as the noise level without hydrogen addition. In this example, it was confirmed that the hydrogen addition amount was 1% or less and 75 dB or less. This brings about a significant improvement of the working environment and is a very useful effect in the industry.” Furthermore, FIG. 3 illustrates the relationship between the measured value of the noise level (dB) in relation to the amount of hydrogen.
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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 Oikawa reference, such that “a sound pressure level on a surface of the steel sheet is 30 dB or more” and “residual hydrogen in the nugget is reduced”, as suggested and taught by Hideki, for the purpose of generating a predetermined amount of hydrogen reduction in the formed weld/nugget of Oikawa.
With regard to claims 2 and 7, although the primary citation does not teach that the time for irradiation of the sound waves is 1 second or longer, it is submitted that such an adaptation would have been within the level of skill of one of ordinary skill in the art at the time of invention made as a matter of routine experimentation and/or since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art to achieve a desired welding condition. In re Aller, 105 USPQ 233.
With regard to claims 3 and 8, Oikawa teaches at least one of the steel sheets has a tensile strength of 780 MPa or more (“It is not necessary to specifically limit the type of steel plate used in the present invention. A tensile strength of about 400 to 1700 MPa is sufficient….).
With regard to claims 4 and 9, Oikawa teaches at least one of the steel sheets (1) has a coating (“coating”) on at least one of the surface and the overlapping surface (“Next, chemical conversion treatment and electrodeposition coating were performed on these joints, and an SST test (JIS Z2371) was performed.”).
With regard to claims 5 and 10, Oikawa teaches the coating is a hot-dip galvanized coating or a galvannealed coating (“As shown in Table 1, various high-strength galvanized steel sheets (symbol: 590Y: 590 MPa class DP) having a plate thickness of 1.6 mm and a tensile strength of 590 to 980 MPa and subjected to alloying zinc plating were used as test materials. Type composite structure steel plate, 780Y: 780 MPa class DP type composite structure steel plate, 980Y: 980 MPa class DP type composite structure steel plate).”
With regard to claims 12 and 15, it is submitted that the limitation of the residual trapped hydrogen in the solidified steel nugget is reduced to 0.5 ppm or less would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art as the secondary citation (Hideki) illustrates in FIG. 3 that the hydrogen content is correlated to the Noise (dB) value as the aforementioned claimed limitation(s) regarding the Noise (dB) being correlated to a hydrant amount is a result effective variable and such an adaptation would be obvious to try to one of ordinary skill in the art (see MPEP 2144: “the Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, “).
With regard to claims 13 and 16, with regard to the limitation of the sound wave irradiation forcibly vibrates a steel sheet portion including the nugget, thereby causing repeated expansion and contraction of the lattice spacing therein, it is submitted that both prior art citations teach sound wave irradiation as detailed above with the claimed frequency and dB levels, and as such, a forcible vibration would occur as claimed with the lattice spacing expansion and contraction being an inherent feature of the sound wave irradiation.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered and are addressed hereafter.
In response to Applicant’s arguments that the primary prior art citation being directed toward an
invention which involves a post-fractured nugget, it is submitted that the citation is cited for its teachings that ultrasonic impact treatment is cited for its teachings related to increasing tensile strength of a formed nugget (e.g., “Normally, the tensile shear strength and the cross tensile strength decrease as the plate thickness decreases, but in the case of ultrasonic impact treatment, the ultrasonic impact treatment portion (nugget formation portion or the nugget formation portion periphery) is work-hardened, so to some extent Even if the plate thickness decreases, the tensile shear strength and the cross tensile strength do not decrease.”). Furthermore, with regard to the Applicant’s arguments that the prior art citation relates to adding hydrogen in contrast to reducing hydrogen included within a formed nugget, it is submitted that as the primary and secondary prior art citations relate to utilizing sound with regard to a predetermined hydrogen level, and as explicitly illustrated below it is known in the art that the sound level (dB) / noise level is correspondent with a hydrogen value – as illustrated in the below figure, a lower noise (dB) amount is correlated with a lower hydrogen amount to achieve a strengthened nugget. Notwithstanding the foregoing, it is submitted that as the independent claim relates to a product by process claim, the claim is not limited to the manipulations of the recited steps, only the structure implied by the steps: (see MPEP 2113 Product by Process Claims I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) . Accordingly, as the claimed structure (“solidified steel nugget”) is taught by the cited prior art and as the teachings related to sound wave impingement on said steel nugget is taught by the cited prior art with the claimed frequency and dB, the reduction in trapped hydrogen of the nugget therein would be an inherent result of the sound wave impingement. Finally, in view of the product by process determination and the above MPEP description of such claims, the limitation of “before a delayed fracture occurs” would be provided limited patentable weight as the patentability is determined by the product itself. Notwithstanding the foregoing, it is submitted that one of the ordinary skill in the art as a matter of routine experimentation would apply a predetermined amount of current to the steel sheets via the electrodes to form the solidified steel nugget prior to a fracture condition occurring in view of values related to the thickness of the steel sheets, the material of the steel sheets, etc .
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Conclusion
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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