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 Arguments
Applicant’s arguments filed 13 April 2026 have been fully considered but they are not persuasive.
Applicant argues that Gu’s method of silicate island removal would result in a structure that would not match the product by process of claim 15. Applicant argues that Gu heats the underlying weld bead (p. 7), including to a temperature sufficient enough to liquefy it, for which the gas force is preferably controlled to avoid disturbing the weld bead (p. 8). While the Office appreciates Applicant’s point, this argument is unpersuasive because of how Gu’s claim 6 (cited for the rejection of claim 20) is broad enough to suggest that the laser beam is used to liquefy “at least one of the material and the localized portion of the underlying surface.” Because Gu broadly discloses only liquefying the “material” (i.e. the silicate island), the Office finds it sufficient to disclose what is claimed. The Office grants that Gu discloses that the weld bead may be liquefied, or that even if it is not liquefied, that it would be heated. However, under the broad scope of disclosure of Gu’s claim 6, the Office finds that Gu does disclose at least one product by process where the underlying surface (i.e. the weld bead) would not be liquefied, and further, the Office is not persuaded that any non-liquefying heating of the underlying surface would cause any lasting structural changes that would render it different from the product by process claimed in claim 15. Therefore, the rejection is maintained.
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 the at least two work pieces (102A, 102B) together to form the 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 1–14 are allowed.
Conclusion
This action is made final. 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 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
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