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 .
Restriction Election
Applicant's election with traverse of Group I, claims 1-5 and 7-11 in the reply filed on 12/19/2026 is acknowledged. The traversal is on the ground(s) that the burden necessary according to MPEP 806.03(d) to sustain the conclusion that the groups lack unity of invention has not been met. This is not found persuasive because of the following reason:
First, because instant application is submitted under 35 U.S.C 371, Only “unit of invention” analysis is applied according to MPEP 1800.
Second, where unity of invention exists “a priori,” the prior art must be consulted to determine whether the shared (or corresponding) technical feature is novel and nonobvious and thereby a “special” technical feature. Unity of invention is said to exist “a posteriori” – that is, after the prior art has been reviewed – when the shared technical feature is a “special” technical feature. In other words, the shared (or corresponding) technical feature is considered to be novel and nonobvious over the prior art. When unity of invention exists a posteriori, a restriction requirement is improper.
Conversely, if the shared technical feature is anticipated by or obvious over the prior art, then the claimed inventions are said to lack unity “a posteriori,” and a restriction requirement may be proper.
In the instant case, the claimed inventions are said to lack unity “a posteriori,” because the shared technical feature as required by instant claim 1 is obvious over cited prior art JP’678 (JP2010115678A) and Takashima (WO2019003450A1) as indicated in the art rejection below. Hence, a restriction requirement is proper.
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1-20 are pending. Claims 1-5 and 7-11 are presented for this examination. Claims 6 and 12-20 are withdrawn.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 12/20/2022, 10/05/2023, 11/29/2023, 06/17/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 1-4 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over JP’678(JP2010115678A1) in view of Takashima (WO2019003450A1).
As for claims 1-4 and 7-8, JP’678 discloses a nut projection welded joint for improving the joint strength between a nut and a steel plate.[0007] Hence, Figure 2 below illustrates nut 2 and steel plate 1 are projection welded to form a joint interface E and a weld metal zone 13 around it.[0044] The nut side (upper side in Figure 2) reads on claim 1 required second hardened region exists on a side of the nut 2. The steel plate side (lower side in Figure 2) reads on instant claim 1 required first hardened region exists on a side of the steel plate 1.
PNG
media_image1.png
369
530
media_image1.png
Greyscale
Tables 2-4 further discloses the vertical distance from the joining interface E between the steel plate 1 and the nut 2 to the surface of the steel plate (the joining interface position is 0 mm) was measured, with the nut side (upper side in Figure 2) being negative and the steel plate side (lower side in Figure 2) being positive, and the hardness at each distance was measured.
Table 2 illustrates when S(dxW)/t=0.325 in the plate width direction, hardness is 402 Hv (i.e. claimed sH1)at vertical thickness of 0.5 mm. Hardness is 389 Hv (i.e. claimed sH0) at vertical thickness of 1.1 mm. Hence, instant claim 1 required “a hardness sH1 that is higher than a hardness sH0 of a base metal of the steel sheet” is met. Maximum hardness sHmax is 405 Hv.
Hardness is 410 Hv (i.e. claimed NH1) at vertical thickness of -0.6 mm. Hardness is 376 Hv (i.e. claimed NH0) at vertical thickness of -1.4 mm. Hence, instant 1 required “a hardness NH1 that is higher than a hardness NH0 of a base metal of the nut” is met. Maximum hardness NHmax is 410 Hv. Instant claim 2 required Expression (2) is met.
Given the maximum hardness sHmax is 405 Hv and Maximum hardness NHmax is 410 Hv, instant claim 1 required “a maximum hardness NHmax that is higher than the maximum hardness SHmax” is met. Instant claims 3 and 7 required Expression (3) is met.
Table 3 below illustrates when S(dxw)/t=0.619 in the plate thickness direction, hardness 412 Hv (i.e. claimed sH1)at vertical thickness of 0.5 mm. Hardness is 375 Hv (i.e. claimed sH0) at vertical thickness of 1.5 mm. Hence, instant claim 2 required Expression (1) sH1>= sH0 is met.
The steel sheet has broad range of elemental compositions all overlapping with instant claimed range as illustrated in Table 1 below.
Table 1
Element
Applicant
(weight %)
JP’678 et al.
(weight %)
Overlap
(weight %)
C
0.08-0.2
0.05-0.3
0.08-0.2
Si
0.2-1.6
0.02-2.5
0.2-1.6
Mn
1-3.4
0.5-3
1-3
P
<=0.05
<=0.015
<=0.015
S
<=0.01
<=0.01
<=0.01
Al
0.01-0.1
0.01-2
0.01-0.1
N
<=0.01
0
0
Nb
0.005-0.05
<=0.05
0.005-0.05
Ti
0.005-0.05
<=0.05
0.005-0.05
B (Claims 4,8)
<=0.005
<=0.003
<=0.003
V (Claims 4,8)
<=0.05
<=0.05
<=0.05
Cr (Claims 4,8)
<=0.05
<=1
<=0.05
Mo (Claims 4,8)
<=0.5
<=1
<=0.5
Cu (Claims 4,8)
<=0.5
<=1
<=0.5
Ni (Claims 4,8)
<=0.5
<=1
<=0.5
Ca (Claims 4,8)
<=0.05
<=0.003
<=0.003
JP’678 does not disclose region with maximum hardness SHmax is formed of a martensite microstructure having a prior austenite grain size of 20 micron or less and the steel sheet has a TS 980 MPa or higher.
Takashima discloses a steel sheet of a hot pressed member having TS of 1780 MPa or more has martensite microstructure and prior austenite crystal grain size 7 micron or less within 50 micros from a steel sheet in the sheet thickness direction. The steel sheet provides excellent indentation peel strength in a projection welded part (abstract) and improve projection weldability of a nut with respect to the hot pressed member. Hence, Takashima suggests maximum hardness is formed of a martensite microstructure having a prior austenite grain size of 20 micron or less and the steel sheet has a TS 980 MPa or higher.
It should be noted JP’678 explicitly desires excellent indentation peel strength.
Hence, it would have been obvious to one skill in the art, at the time the invention is made, to apply steel sheet of Takashima formed of martensite microstructure and prior austenite crystal grain size 7 micron or less with TS of 1780 MPa or greater, in the process of JP’678 for the benefit of excellent indentation peel strength in a projection welded part.
Claim(s) 5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over JP’678(JP2010115678A1) in view of Takashima (WO2019003450A1) as applied to claim 1 above, and further in view of JP’900 (JP2012157900A).
As for claims 5 and 9-11, JP’678 does not explicitly disclose the steel sheet has a Zn-based coating layer.
JP’900 discloses projected welded joint using a steel sheet having a Zn-based plating layer([0051]) by applying the plating treatment to the surface of the steel sheet. JP’900 discloses the benefit of plating treatment is to ensure the corrosion resistance of the steel sheet. [0052]
Hence, it would have been obvious to one skill in the art, at the time the invention is made to apply Zn plating treatment as suggested by JP’900, to the surface of the steel sheet of JP’678 in order to arrive at claimed steel sheet for the benefit of corrosion resistance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNY R WU/Primary Examiner, Art Unit 1733