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 .
Claim Objections
Claims 4–6 and 15–20 are objected to because of the following informalities:
Claim 4, line 1, should be amended to replace “the step” with “a step.”
Claim 5, line 1, should be amended to replace “the step” with “a step.”
Claim 15 recites “at least two work pieces” (l. 4), but antecedent basis for these is already provided earlier in the claim, and so this should recite “the at least two work pieces.” The same goes for “a weld joint” (l. 4), which should be “the weld joint.”
Claims 6 and 16–20 are objected to due to dependency upon an objected-to claim.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
The step of applying a phosphate layer in claim 4.
The step of applying a coating in claim 5.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f), it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections — 35 USC § 102
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.
Claims 15, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gu et al. (US Pub. 2017/0361403).
Claim 15 is directed to, at least in part, a product-by-process claim. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps (MPEP § 2113.I.).
Claim 15: Gu discloses a part (100), comprising:
at least two pieces of metal (102A, 102B) joined together at a weld joint (104), the weld joint being formed according to a welding process including the following steps;
welding at least two work pieces (102A, 102B) together to form a weld joint (104) which contains at least one silicate island (106); and
laser cleaning (via 204) the weld joint (e.g. shown in figs. 3A–3C and discussed in ¶ 28) to sublimate material from a top surface of the weld joint to reduce a size of the at least one silicate island (Gu does not disclose sublimation, but its liquefication (see ¶ 28) and subsequent dislodging via a gas stream (ibid.) results in a structurally same part; see MPEP § 2113).
Comment: Hanschmann et al. (US Pub. 2015/0251274) may read on claim 15; however, it also may not, since its use of laser deposition welding arguably causes a structurally distinct weld from one that would be required by the product-by-process steps of the claim.
Claim 19: Gu discloses that the at least two pieces are made of steel or an alloy steel (Gu clearly implies that its at least two pieces are made of steel or alloy steel in ¶¶ 5 and 35).
Claim 20: Gu discloses that, during the laser cleaning step, material of the weld joint surrounding the at least one silicate island is not removed from the weld joint (see claim 6 disclosing that the laser beam causes “a temperature that is sufficient to liquefy at least one of the material and the localized portion of the underlying surface,” i.e. with only the material (i.e. the silicate island) liquefied, only it would be removed; see also similar language in ¶ 28).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16–18 are rejected under 35 U.S.C. 103 as being unpatentable over Gu as applied to claim 15 above, and further in view of Hanschmann et al. (US Pub. 2015/0251274).
Claim 16: Gu does not disclose that a phosphate layer is disposed over the weld joint.
However, Hanschmann discloses a similar product-by-process where a phosphate layer (see ¶ 28 discussing “coating 28” and “phosphating”) is disposed over a weld joint (see ¶ 24 describing that the coating 28 is applied over 26).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to implement the phosphate layer of Hanschmann onto the weld joint of Gu to improve corrosion resistance.
Claim 17: Modified as per claim 16 above, Hanschmann discloses that a coating is disposed over the phosphate layer (¶ 28 describes that the coating 28 may be “at least one of painting, phosphating and electrocoating,” where painting on top of the phosphate layer would be done for aesthetic reasons).
Claim 18: Gu discloses that the forming process further includes directing a pulsating laser beam (¶ 36, “pulsed”) from a laser head (202) directly at the top surface of the weld joint (see figs. 2–3C).
Comment: The “forming process” is clearly referring to the formation of the weld joint in claim 15.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Gu.
Gu never explicitly discloses that, during the laser cleaning step, material of the weld joint surrounding the at least one silicate island is not removed from the weld joint.
However, Gu provides enough of a disclosure to suggest that this would be the case. See claim 6 disclosing that the laser beam causes “a temperature that is sufficient to liquefy at least one of the material and the localized portion of the underlying surface,” i.e. with only the material (i.e. the silicate island) liquefied, only it would be removed. See also similar language in ¶ 28.
Allowable Subject Matter
Claims 1–3 and 7–14 are allowed.
Claims 4–6 would inherit allowability if rewritten or amended to overcome the objections set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Gu clearly discloses liquefying the silicate islands, not sublimating them. Although sublimation via lasers is known, the prior art does not suggest that it would have been obvious to one of ordinary skill in the art to sublimate the silicate islands via a more powerful laser.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: Helmig (US Pub. 2006/0035567) discloses a process for removing silicates from a welding steam by using high pressure fluid jets.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward (Ned) F. Landrum can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN J NORTON/Primary Examiner, Art Unit 3761