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 .
Election/Restrictions
Newly submitted claims 17 and 19 are directed to inventions that are independent or distinct from the invention originally claimed for the following reasons:
New claims 17 and 19 are directed to a product made while the original process as claimed can be used to make another and materially different product such as an aerospace component.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 17 and 19 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 102
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 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) 1-3, 9, 11-13, 16, and 18 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Mironov et al. “Abnormal grain growth in fine-grained aluminum produced by friction-stir welding” (hereafter Mironov).
With respect to claim 1, Mironov teaches a method of treating a granular metallic material to affect a grain size of the material (title), the method comprising: performing a friction stir processing (FSW/P) operation on the material, the friction stir processing operation comprising passing a rotating head (probe) of a friction stir welding tool (welding tool) through a surface thickness of the granular metallic material in a treatment path (Introduction on page 1; and Material and experimental procedure on pages 1-2); and performing an annealing operation on the granular metallic material to grow a size of the granular metallic material (Material and experimental procedure on page 2; Results and discussion on pages 2-4; and Figures 1-3).
With respect to claim 2, Mironov teaches the friction stir process operation is devoid of a friction stir welding operation (Introduction on page 1; and Material and experimental procedure on page 1). Note that Mironov explicitly teaches friction stir processing and a bead-on-plate configuration, which do not require welding two components together.
With respect to claim 3, Mironov teaches wherein the treatment path includes a treatment pattern (broadest reasonable interpretation), the treatment pattern lying within a surface region of the granular metallic material (figures 1-2; and the bead-on-plate configuration).
With respect to claim 9, Mironov teaches wherein the surface thickness of the granular metallic material is in the range 1 to 20 millimeters (2 mm thick cold rolled sheets) (Material and experimental procedure on page 1).
With respect to claim 11, Mironov teaches wherein the annealing operation is performed at a temperature in the range of 500 to 600°C (Material and experimental procedure on page 2; and Figure 2).
With respect to claim 12, Mironov teaches wherein the annealing operation is performed for a duration in the range 0.01 to 24 hours (Material and experimental procedure on page 2; and Figure 2).
With respect to claim 13, Mironov teaches wherein the granular metallic material includes aluminum (title).
With respect to claim 16, Mironov teaches wherein the annealing operation on the granular metallic material causes the size of the granular material to be great than an original size of the granular metallic material (Title; Introduction on page 1; and Material and experimental procedure on pages 1-2; Results and discussion on pages 2-4; and Figures 1-3).
With respect to claim 18, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Mironov teaches a method of preparing a monolithic chamber component for use in a plasma-based substrate processing chamber (the underlined portion is merely intended use and a non-limiting preamble), the method comprising: passing a rotating head (probe) of a friction stir welding tool (welding tool) through a surface thickness in the range of 1 to 20 millimeters (2 mm) of a granular metallic material of the chamber component (fine grained aluminum cold-rolled sheets are capable of being used to construct a chamber) in a treatment pattern (bead-on-plate) within a surface region devoid of welds, the friction stir processing being a solid-state process that does not exceed a melting point of the material (Title; Introduction on page 1; and Material and experimental procedure on pages 1-2; Results and discussion on pages 2-4; and Figures 1-3); and annealing the granular metallic material after the friction stir processing at a temperature in the range of 500 to 600 degrees Celsius for a duration in the range of 1 to 24 hours to intentionally enlarge a grain size at the treated surface region (Title; Introduction on page 1; and Material and experimental procedure on pages 1-2; Results and discussion on pages 2-4; and Figures 1-3), thereby reducing grain boundary density and reducing corrosion nucleation sites (Title; Introduction on page 1; and Material and experimental procedure on pages 1-2; Results and discussion on pages 2-4; and Figures 1-3) during substrate processing in fluorine-rich environments (the underlined portion is merely intended use). Since Mironov is performing the annealing process on the claimed materials at the claimed temperature for the claimed duration, it is the examiner’s position that the process of Mironov intrinsically results in reducing grain boundary density and reducing corrosion nucleation sites. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02.
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) 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mironov as applied to claims 1 and 3 above, and further in view of Hori et al. (WO2006/093125A1) (hereafter Hori).
With respect to claim 4-8, Mironov does not teach wherein a first treatment path in the treatment pattern overlaps with a second treatment path in the treatment pattern; wherein in the treatment pattern includes a raster pattern; a spiral pattern; a reciprocating pattern; and a serpentine pattern.
However, Hori teaches wherein a first treatment path in the treatment pattern overlaps with a second treatment path in the treatment pattern (figure 5C); wherein in the treatment pattern includes a raster pattern (figure 4A); a spiral pattern (5D); a reciprocating (broadest reasonable interpretation) pattern (figure 4Q); and a serpentine pattern (figure 4A).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the patterns of Hori in the process of Mironov in order to form a friction stir processed region in the desired pattern on the workpiece.
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mironov as applied to claims 1 and 3 above, and further in view of Wang et al. (CN-109500485A) (hereafter Wang).
With respect to claim 6-8, Mironov does not teach wherein the treatment pattern includes a spiral pattern; a reciprocating pattern; and a serpentine pattern.
However, Wang teaches friction stir processing in a spiral (vortex) pattern (claim 4); a reciprocating (broadest reasonable interpretation) pattern (figure 1; and claim 4); and a serpentine pattern (figure 1; and claim 4).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the patterns of Wang in the process of Mironov in order to form a friction stir processed region in the desired pattern on the workpiece.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US2016/0354861A1) (hereafter Xu) in view of Mironov.
With respect to claim 14, Xu teaches a computer-readable storage medium, the computer-readable storage medium including instructions that when executed by a computer, cause the computer to perform operations comprising, at least: implement a friction stir processing operation on a granular metallic material to affect a grain size thereof, the friction stir processing operation comprising passing a rotating head of a friction stir welding tool through a surface thickness of the granular metallic material in a treatment path (figures; paragraphs 6, 13, 16, 18, 24, 42, 45, and 48; and claims 19-20).
Xu fails to teach performing an annealing operation on the granular metallic material to grow a size of the granular metallic material.
However, Mironov teaches performing an annealing operation on the granular metallic material to grow a size of the granular metallic material (Introduction on page 1; and Material and experimental procedure on pages 1-2; Results and discussion on pages 2-4; and Figures 1-3).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to combine the annealing of Mironov with the computer-readable storage medium of Xu in order to automate the collective friction stir processing and annealing process. Note that the court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.) In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958).
With respect to claim 15, Xu teaches a computing apparatus, the computing apparatus comprising: a processor; and a memory storing instructions that, when executed by the processor, configure the computing apparatus to perform operations comprising, at least: implement a friction stir processing operation on a granular metallic material to affect a grain size thereof, the friction stir processing operation comprising passing a rotating head of a friction stir welding tool through a surface thickness of the granular metallic material in a treatment path (figures; paragraphs 6, 13, 16, 18, 24, 42, 45, and 48; and claims 19-20)
Xu fails to teach performing an annealing operation on the granular metallic material to grow a size of the granular metallic material.
However, Mironov teaches performing an annealing operation on the granular metallic material to grow a size of the granular metallic material (Introduction on page 1; and Material and experimental procedure on pages 1-2; Results and discussion on pages 2-4; and Figures 1-3).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to combine the annealing of Mironov with the computing apparatus of Xu in order to automate the collective friction stir processing and annealing process. Note that the court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.) In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-9 and 11-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In view of the newly cited Mironov reference, the applicant’s request for interview is deemed unnecessary until the applicant has had the opportunity to study the teachings of Mironov.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KILEY SHAWN STONER whose telephone number is (571)272-1183. The examiner can normally be reached on Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KILEY S STONER/ Primary Examiner, Art Unit 1735