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 .
Response to Amendment
The amendment filed 15 July 2026 has been entered.
The Applicant’s amendments to the Abstract and the Specification have overcome the Specification objections. The Specification objections have been withdrawn.
The Applicant’s amendments have overcome the previous Claim objections. The previous Claim objections have been withdrawn. However, the Applicant’s amendments have provided grounds for a new Claim objection.
The Applicant’s amendments have overcome the previous 35 USC 112 rejections. The previous 35 USC 112 rejections have been withdrawn. However, the Applicant’s amendments have provided grounds for new 35 USC 112 rejections.
Applicant’s arguments, filed 15 July 2026, with respect to the rejection of claims under the prior-art rejections have been fully considered but are not persuasive. Therefore, the grounds of rejection under 35 USC § 103 still stand.
Status of the Claims
In the amendment dated 15 July 2026, the status of the claims is as follows: Claims 1, 3-9, 11-12, and 15 have been amended. Claim 2 has been cancelled. Claim 17 is new.
Claims 1, 3-15, and 17 are pending.
Claim Objections
Claim 6 is objected to because of the following informality: in line 3, recommend amending the claim to recite: “…component
Appropriate correction is required.
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.
Claim 3 is 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.
Claim 3 recites: “aligning the laser beam at an angle α to the contact plane, where in the angle α is at most 45°.” Claim 3 is dependent on claim 1, which recites “aligning the laser beam parallel to the contact plane.” The Specification describes that “the laser beam 11 is aligned parallel to the contact plane 5 or with α = 0°.” Thus, when the beam is parallel, as recited in claim 1, the examiner understands this limitation in view of the Specification to mean that the angle α is at zero degrees. It is unclear if the angle of the beam is at zero degrees, as required in claim 1, or at an angle between zero and forty-five degrees, as required in claim 3. For the purpose of the examination, claim 3 will be interpreted under its broadest reasonable interpretation as requiring an angle between zero and forty-five degrees.
This is a new rejection based on the amended portion of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites: “aligning the laser beam at an angle α to the contact plane, where in the angle α is at most 45°.” Claim 3 is dependent on claim 1, which recites “aligning the laser beam parallel to the contact plane.” The Specification describes that “the laser beam 11 is aligned parallel to the contact plane 5 or with α = 0°.” Thus, when the beam is parallel, as recited in claim 1, the examiner understands this limitation in view of the Specification to mean that the angle α is at zero degrees. As a result, instead of further limiting the “parallel” orientation that is at 0 degrees, as required in claim 1, claim 3 broadens this limitation to permit an angle between 0-45 degrees. Thus, claim 3 does not include all of the limitation of claim 1, which claim 3 depends upon.
This is a new rejection based on the amended portion of the claims.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 3, 6, 8, 13-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamoto et al. (JP-H0284287-A, referencing foreign version for drawings and provided English translation for written disclosure) in view of Nishino et al. (JP-2001353587-A, referencing foreign version for drawings and provided English translation for written disclosure).
Regarding claim 1, Kawamoto teaches a laser welding method (“perform welding in a short time using a high-energy density welding method that uses a high-energy density laser beam,” page 2) for joining a non-sintered material (solid material 5, fig. 2) to a sintered material (sintered material 4, fig. 2), the method comprising the steps of:
providing (fig. 2a) a first component comprising a non-sintered material (solid material 5, fig. 2a),
providing (fig. 2a) a second component comprising a sintered material (sintered material 4, fig. 2a),
arranging (fig. 2a) the first component and the second component along a contact plane (plane in a depth direction between the surface of the materials 4 and 5, fig. 2a) such that a joining joint (welded portion 13, fig. 2d) is produced,
applying a laser beam (beam 6, fig. 2b) to a first joining region (molten part 10, fig. 2b) of the first component (solid material 5, fig. 2b) in a region of the joining joint (region of welded portion 13, fig. 2d) so as to melt the first joining region to a melt (“the solid material 5 first melts,” page 5),
melting a second joining region (melted part 11, fig. 2c) of the second component (sintered material 4, fig. 2c) in the region of the joining joint by the melt of the first joining region (“The bubbles 12 are heated relatively slowly by heat conduction from the molten part 10 of the solid material 5, rise in the molten part 11, and are released to the outside,” page 5), and
cooling the joining joint (welded portion 13 solidifies after being melted, fig. 2d; construed as cooling).
Kawamoto, fig. 2
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Kawamoto teaches the invention as described above but does not explicitly disclose wherein the step of applying a laser beam further comprises a step of aligning the laser beam parallel to the contact plane.
However, in the same field of endeavor of laser welding, Nishino teaches wherein the step of applying a laser beam (fig. 4b) further comprises a step of aligning the laser beam (beam B, fig. 4B) parallel to the contact plane (plane between the workpieces Sb and Sa, fig. 4b; para 0006).
Nishino, fig. 4b
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Nishino, by tilting the beam, as taught by Nishino, such that the beam was parallel to the fitting surface 8, as taught by Kawamoto, and where the sintered material 4 was a gear with a high carbon composition and the solid material 5 was a shaft with a low carbon composition, as taught by Kawamoto, in order to use a gear whose outer circumference contained high-carbon material, which is commonly used in automatic transmissions, and where the beam was off-centered onto the low-carbon material, in order to keep the melting ratio of low carbon-steel to high-carbon steel to above 80%, which is necessary in order to avoid the occurrence of cracks in the weld due to the migration of carbon from the high-carbon steel into the molten material (Nishino, paras 0002-0003 and 0007).
Regarding claim 3, Kawamoto teaches the invention as described above but does not explicitly disclose wherein the step of applying the laser beam further comprises the step of aligning the laser beam at an angle α to the contact plane, wherein the angle α is at most 45°.
However, in the same field of endeavor of laser welding, Nishino teaches wherein the step of applying the laser beam (fig. 3b) further comprises the step of aligning the laser beam at an angle α to the contact plane, wherein the angle α is at most 45° (“range of 2° < θ < 10°,” para 0011).
Nishino, fig. 3b
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Nishino, by tilting the beam to angle between 2 and 10 degrees, as taught by Nishino, relative to the fitting surface 8, as taught by Kawamoto, and where the sintered material 4 was a gear with a high carbon composition and the solid material 5 was a shaft with a low carbon composition, as taught by Kawamoto, in order to use a gear whose outer circumference contained high-carbon material, which is commonly used in automatic transmissions, and where the beam was angled, off-centered onto the low-carbon material, in order to keep the melting ratio of low carbon-steel to high-carbon steel to above 80%, which is necessary in order to avoid the occurrence of cracks in the weld due to the migration of carbon from the high-carbon steel into the molten material (Nishino, paras 0002-0003 and 0007).
Regarding claim 6, Kawamoto teaches wherein: the step of providing (fig. 2a) of the first component further comprises a step of providing the first component (solid material 5, fig. 2a), and
the step of providing the second component further comprises a step of providing the second component made of a sintered material (sintered material 4, fig. 2a).
Kawamoto does not explicitly disclose a first component made of steel; a second component made of carbon-containing steel.
However, in the same field of endeavor of laser welding, Nishino teaches first component made of steel (low-carbon steel Sa, fig. 3b); a second component made of carbon-containing steel (high-carbon steel Sb, fig. 3b).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Nishino, where the sintered material 4 was a gear with a high-carbon steel composition and the solid material 5 was a shaft with a low-carbon steel composition, as taught by Kawamoto, in order to use a gear whose outer circumference contained high-carbon material that is joined to a hub member of low-carbon steel, which is commonly used in automatic transmissions (Nishino, para 0002).
Regarding claim 8, Kawamoto teaches a composite body, comprising: a first component comprising a non-sintered material (solid material 5, fig. 2a) and a second component comprising a sintered material (sintered material 4, fig. 2a), and wherein the composite body is manufactured by the laser welding (fig. 1; laser beam 6, figs. 1-2) according to claim 1 (claim 8 is a product-by-process claim; the process by which the composite body is made does not provide any patentability to the composite body, MPEP 2113; Applicant’s Specification does not indicate that method steps of claim 1 produce a final product that is unique or unexpected).
Regarding claim 13, Kawamoto teaches wherein the sintered material (sintered material 4, fig. 2a) is at least one of a sintered metal (“welding metal materials,” page 4) and a sintered steel (not explicitly disclosed).
Regarding claim 14, Kawamoto teaches the invention as described above but does not explicitly disclose wherein the non-sintered material is at least one of a metal and a steel with a carbon content of at most 0.2%.
However, in the same field of endeavor of laser welding, Nishino teaches wherein the non-sintered material is at least one of a metal and a steel with a carbon content of at most 0.2% (“low-carbon steel Sa had a carbon content of 0.1%.,” para 0021).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Nishino, where the sintered material 4 was a gear with a high-carbon steel composition and the solid material 5 was a shaft with a low-carbon steel composition, as taught by Kawamoto, in order to use a gear whose outer circumference contained high-carbon material that is joined to a hub member of low-carbon steel, which is commonly used in automatic transmissions (Nishino, para 0002).
Regarding claim 15, Kawamoto teaches the invention as described above but does not explicitly disclose wherein the sintered metal comprises a carbon content between at least one of 0.3 and 0.9 percent.
However, in the same field of endeavor of laser welding, Nishino teaches wherein the sintered metal comprises a carbon content between at least one of 0.3 and 0.9 percent (“surface carbon content of 0.7%,” para 0021).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Nishino, where the sintered material 4 was a gear with a high-carbon steel composition and the solid material 5 was a shaft with a low-carbon steel composition, as taught by Kawamoto, in order to use a gear whose outer circumference contained high-carbon material that is joined to a hub member of low-carbon steel, which is commonly used in automatic transmissions (Nishino, para 0002).
Regarding claim 17, Kawamoto teaches a laser welding method (“perform welding in a short time using a high-energy density welding method that uses a high-energy density laser beam,” page 2) for joining a non-sintered material (solid material 5, fig. 2) to a sintered material (sintered material 4, fig. 2), the method comprising the steps of:
providing (fig. 2a) a first component comprising a non-sintered material (solid material 5, fig. 2a),
providing (fig. 2a) a second component comprising a sintered material (sintered material 4, fig. 2a),
arranging (fig. 2a) the first component and the second component along a contact plane (plane in a depth direction between the surface of the materials 4 and 5, fig. 2a) such that a joining joint (welded portion 13, fig. 2d) is produced,
applying a laser beam (beam 6, fig. 2b) to a first joining region (molten part 10, fig. 2b) of the first component (solid material 5, fig. 2b) in a region of the joining joint (region of welded portion 13, fig. 2d) so as to melt the first joining region to a melt (“the solid material 5 first melts,” page 5),
melting a second joining region (melted part 11, fig. 2c) of the second component (sintered material 4, fig. 2c) in the region of the joining joint by the melt of the first joining region (“The bubbles 12 are heated relatively slowly by heat conduction from the molten part 10 of the solid material 5, rise in the molten part 11, and are released to the outside,” page 5), and
cooling the joining joint (welded portion 13 solidifies after being melted, fig. 2d; construed as cooling).
Kawamoto does not explicitly disclose wherein the step of applying the laser beam further comprises the step of aligning the laser beam at an angle α to the contact plane, wherein the angle α is at most 45°.
However, in the same field of endeavor of laser welding, Nishino teaches wherein the step of applying the laser beam (fig. 3b) further comprises the step of aligning the laser beam at an angle α to the contact plane, wherein the angle α is at most 45° (“range of 2° < θ < 10°,” para 0011).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Nishino, by tilting the beam to angle between 2 and 10 degrees, as taught by Nishino, relative to the fitting surface 8, as taught by Kawamoto, and where the sintered material 4 was a gear with a high carbon composition and the solid material 5 was a shaft with a low carbon composition, as taught by Kawamoto, in order to use a gear whose outer circumference contained high-carbon material, which is commonly used in automatic transmissions, and where the beam was angled, off-centered onto the low-carbon material, in order to keep the melting ratio of low carbon-steel to high-carbon steel to above 80%, which is necessary in order to avoid the occurrence of cracks in the weld due to the migration of carbon from the high-carbon steel into the molten material (Nishino, paras 0002-0003 and 0007).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamoto et al. (JP-H0284287-A, referencing foreign version for drawings and provided English translation for written disclosure) in view of Nishino et al. (JP-2001353587-A, referencing foreign version for drawings and provided English translation for written disclosure) as applied to claim 1 above and further in view of Sanchez et al. (EP-1577049-A1).
Regarding claim 4, Kawamoto teaches the invention as described above but does not explicitly disclose wherein the step of applying the laser beam further comprises the steps of applying the laser beam by a continuous or a pulsed laser beam.
However, in the same field of endeavor of laser welding, Sanchez teaches wherein the step of applying the laser beam (para 0011) further comprises the steps of applying the laser beam by a continuous (“continuous mode,” para 0016) or a pulsed laser beam (there can alternatively be “pulsation,” para 0014).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Sanchez, by using a high-carbon content, as taught by on the sintered material gear 4, as taught by Kawamoto, and where the beam taught by Kawamoto, operated in either a continuous mode with argon gas or in a pulsed mode, as taught by Sanchez, in order to use a high-carbon content that improved the wear resistance of the gear, and where the beam can be operated in either a continuous mode with an auxiliary gas, such that weld spatter is suppressed, or in a pulsation mode, where ultrasonic vibration can improve the mechanical properties of the welded joint (Sanchez, paras 0005, 0014, and 0016).
Regarding claim 5, Kawamoto teaches the invention as described above but does not explicitly disclose wherein the step of applying a laser further comprises the step of applying the laser by laser beam Metal Shielding Gas (“MSG”) hybrid welding.
However, in the same field of endeavor of laser welding, Sanchez teaches wherein the step of applying a laser (para 0011) further comprises the step of applying the laser by laser beam Metal Shielding Gas (“MSG”) hybrid welding (“addition of Ar as the auxiliary gas,” para 0016; combining a laser beam with the use of argon gas is construed as “laser beam MSG hybrid welding”).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Sanchez, by using a high-carbon content, as taught by on the sintered material gear 4, as taught by Kawamoto, and where the beam taught by Kawamoto, operated a continuous mode with argon gas, as taught by Sanchez, in order to use a high-carbon content that improved the wear resistance of the gear, and where the beam can be operated in a continuous mode with an auxiliary gas, such that weld spatter is suppressed (Sanchez, paras 0005, 0014, and 0016).
Claims 7, 9, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamoto et al. (JP-H0284287-A, referencing foreign version for drawings and provided English translation for written disclosure) in view of Nishino et al. (JP-2001353587-A, referencing foreign version for drawings and provided English translation for written disclosure) as applied to claims 1 and 8 above and further in view of Lichtenwald et al. (US-20060278187-A1).
Regarding claim 7, Kawamoto teaches the step of applying the laser beam (fig. 2b) further comprises the step of applying the laser beam by directing the laser beam from radially outside (beam 6 is directed from the left, fig. 2b; the left direction of fig. 1 as being a radial outside direction) onto the first joining region (molten part 10, fig. 2b) and guiding the laser beam on a circular path parallel to the contact plane and around at least one of the components (“This solid material 5 is chucked in a rotating jig (not shown) and rotates at a constant speed,” page 3; construed such that beam rotates on a circular path on the top surface of the material 5 as a result of the rotation).
Kawamoto does not explicitly disclose wherein: the step of providing the first component further comprises the step of providing the first component by a circular disc-shaped component, and.
However, in the same field of endeavor of laser welding, Lichtenwald teaches wherein: the step of providing the first component (driving wheel 3, fig. 3) further comprises the step of providing the first component by a circular disc-shaped component (a wheel is construed as having a circular, disc shape; the diving wheel 3 is welded to the stator 4 through weld 15a, fig. 3).
Lichtenwald, fig. 3
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Lichtenwald, where instead of the gearing being welded to a shaft, as taught by Kawamoto, the gear was welded to a driving wheel, as taught by Lichtenwald, in order to use a driving wheel that allows for phase adjustment between a camshaft and a crankshaft, which facilitates gas exchange valve time control for internal combustion engines by changing the opening and closing times of the gas exchange valves as a result of changing the phase between the driven part and the driving wheel (Lichtenwald, paras 0001-0005).
Regarding claim 9, Kawamoto teaches the invention as described above but does not explicitly disclose wherein the first component is in a shape of a circular disc.
However, in the same field of endeavor of laser welding, Lichtenwald teaches wherein the first component (driving wheel 3, fig. 3) is in a shape of a circular disc (a wheel is construed as having a circular, disc shape; the diving wheel 3 is welded to the stator 4 through weld 15a, fig. 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Lichtenwald, where instead of the gearing being welded to a shaft, as taught by Kawamoto, the gear was welded to a driving wheel, as taught by Lichtenwald, in order to use a driving wheel that allows for phase adjustment between a camshaft and a crankshaft, which facilitates gas exchange valve time control for internal combustion engines by changing the opening and closing times of the gas exchange valves as a result of changing the phase between the driven part and the driving wheel (Lichtenwald, paras 0001-0005).
Regarding claim 11, Kawamoto teaches the invention as described above but does not explicitly disclose wherein the first component is configured as at least one of a cover or a stator cover on a camshaft adjuster.
However, in the same field of endeavor of laser welding, Lichtenwald teaches wherein the first component (driving wheel 3, fig. 3) is configured as at least one of a cover or a stator cover (the wheel 3 is construed as a cover for the stator 4, fig. 3) on a camshaft adjuster (adjuster 1, fig. 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Lichtenwald, where instead of the gearing being welded to a shaft, as taught by Kawamoto, the gear was welded to a driving wheel, as taught by Lichtenwald, in order to use a driving wheel that allows for phase adjustment between a camshaft and a crankshaft, which facilitates gas exchange valve time control for internal combustion engines by changing the opening and closing times of the gas exchange valves as a result of changing the phase between the driven part and the driving wheel (Lichtenwald, paras 0001-0005).
Regarding claim 12, Kawamoto teaches the invention as described above but does not explicitly disclose wherein the second component is configured as at least one of a stator or a stator of a camshaft adjuster.
However, in the same field of endeavor of laser welding, Lichtenwald teaches wherein the second component (stator 4, sealing disk 17, and housing 15, fig. 3; para 0041) is configured as at least one of a stator (stator 4 is a stator) or a stator of a camshaft adjuster (adjuster 1, fig. 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Lichtenwald, where instead of the gearing being welded to a shaft, as taught by Kawamoto, the gear was welded to a driving wheel, as taught by Lichtenwald, such that the sintered material 4, as taught by Kawamoto, was a stator 4, sealing disk 17, and a housing 15, as taught by Lichtenwald in order to use a driving wheel that allows for phase adjustment between a camshaft and a crankshaft, which facilitates gas exchange valve time control for internal combustion engines by changing the opening and closing times of the gas exchange valves as a result of changing the phase between the driven part and the driving wheel (Lichtenwald, paras 0001-0005; Lichtenwald teaches that the stator can be “sintered,” para 0041).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kawamoto et al. (JP-H0284287-A, referencing foreign version for drawings and provided English translation for written disclosure) in view of Nishino et al. (JP-2001353587-A, referencing foreign version for drawings and provided English translation for written disclosure) as applied to claims 1 and 8 above and further in view of Rothstein et al. (US-20180306302-A1).
Kawamoto teaches the invention as described above but does not explicitly disclose further comprising at least one groove formed parallel to the joining joint, wherein the groove is formed recessed in one of the first component and the second component.
However, in the same field of endeavor of laser welding, Rothstein teaches further comprising at least one groove (groove 30, fig. 7) formed parallel to the joining joint (underneath weld W, figs. 9-10; the groove 30 is construed as being parallel the weld W), wherein the groove is formed recessed in one of the first component (not explicitly disclosed) and the second component (gear workpiece 12, fig. 7).
Rothstein, fig. 9
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Kawamoto, in view of the teachings of Rothstein, by inserting a groove, as taught by Rothstein, into the sintered material 4 at the connection with material 5, as taught by Kawamoto, in order to use an undercut groove that provides space underneath the weld, so that the weld does not have to removed or burred prior to the solidification of the weld, such that the quality or appearance of the weld is not adversely affected (Rothstein, paras 0042 and 0052).
Response to Argument
Applicant's arguments filed 15 July 2026 have been fully considered but they are not persuasive.
35 USC § 103 Rejections
The examiner agrees with the Applicant that in paragraph 0006, the Nishino reference (JP2001353587A) teaches that shifting the beam to the low-carbon steel Sa reduces a “loss of weld strength” because more “low-carbon steel … dilutes the overall carbon content of the molten area.” Comparing fig. 4a with fig. 4b, it is obvious that less high-carbon steel Sb melts in fig. 4b in comparison to fig. 4a because the distance L2 is smaller than L1. Further, the examiner agrees with the Applicant that Nishino teaches that this loss of weld strength can be mitigated by increasing the penetration of the weld. Referring to fig. 4b of Nishino, it is obvious that increasing the depth of the weld will cause the distance L2 to become longer. In the last sentence of paragraph 0006, Nishino teaches that this increase in weld depth “presents a problem.”
The Applicant has concluded that based on this teaching that “an ordinary artisan would not modify the Kawamoto method in view of the cited paragraph of Nishino.” The implied determination to this conclusion is that this teaching from Nishino represents a “teaching away.”
A teaching away occurs when a reference “criticizes, discredits, or otherwise discourages” from the claimed solution. On other hand, a teaching away does not take place when a solution is described as being known in the art and is described as being simply inferior to another solution (MPEP 2145.X.D.1).
Respectfully submit that Nishino’s teaching regarding fig. 4b is the latter and not the former. Increasing the weld depth because the beam is not tilted is a case of one solution being described as inferior to another, i.e., tilting the beam, which is shown in fig. 3a. As shown in figs. 4a-4b and described in paragraph 0006, aligning the weld beam B to be parallel to a contact surface between workpieces is an orientation for a laser beam that is “conventional” or already known in the art. Although Nishino describes the increase in weld depth as a “problem,” this increase in weld depth is only a problem if the workpieces are not thick enough. Calling something a potential problem is not the same as “criticizing, discrediting, or otherwise discouraging” the claimed solution.
With respect to the thickness of the workpieces, Kawamoto describes using workpieces with thicknesses of 1 meter and half a meter (page 5). In contrast, Nishino is experimenting on workpieces that only have a thickness of 5 millimeters (paragraph 0020). Thus, this potential problem described by Nishino would not be a problem in the invention taught by Kawamoto because the depth of the weld would not be a concern.
Although the Applicant contends that one of ordinary skill would determine based on Nishino’s teachings, that a “gap” should be placed between the workpieces (see page 10 of the arguments), placing a gap between the workpieces is a preference for the when the beam is tilted, as shown in figs. 3a-b of Nishino because there is “more melting of the high-carbon steel Sb side and a tendency for the weld length to be shallow” (paragraph 0024). When the beam is parallel, as required in claim 1 and as shown in fig. 4b of Nishino, then there would not be a need to compensate with a gap because the majority of the weld is located on the “Sa” side, which is shown in fig. 4b of Nishino.
New Claim 17
Page 12 of the arguments references figs. 3a-b of Nishino and makes the argument that if the beam was tilted, then based on fig. 3a of Nishino, one of ordinary skill would determine that a gap is needed. Admittedly, in paragraph 0024, Nishino describes the no-gap figure as producing a weld that tends “to be shallow” in comparison to the gap drawing shown in fig. 3b. However, this description of tendency “to be shallow” does not represent a teaching-away. Instead, it is simply a preference for having a gap when the beam is tilted. In other words, the statement that there is “a tendency for the weld length to be shallow” is not the same as “criticizing, discrediting, or otherwise discouraging,” which could be considered a teaching away. Nishino is simply stating that having a gap (fig. 3b) is preferable over no gap (fig. 3a), which does not constitute a teaching away (MPEP 2145.X.D.1).
For the above reasons, rejections to the pending claims are respectfully sustained by the examiner.
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 ERWIN J WUNDERLICH whose telephone number is (571)272-6995. The examiner can normally be reached Mon-Fri 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward Landrum can be reached at 571-272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERWIN J WUNDERLICH/Examiner, Art Unit 3761 7/24/2026
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