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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-22 are drawn to an insulated electrode fixture.
Claims 23-24 are drawn to a method of welding using two electrode fixtures.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process as claimed can be practiced by another and materially different apparatus or by hand as the process requires two electrode fixtures while the apparatus is of only one electrode fixture.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The process requires two electrode fixtures while the apparatus is of only one electrode fixture.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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.
During a telephone conversation with Jeffrey Killian on 05/04/2026 a provisional election was made with traverse to prosecute the invention of I, claims 1-22. Affirmation of this election must be made by applicant in replying to this Office action. Claims 23 and 24 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the welding transformer of claim 22 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Cooperating registration features in claim 17 with the function being to orient the insert relative to the electrically conductive body. In the disclosure they are holes (380) and pegs to fit into those holes.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 4, 5 and 10-13 are 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.
The term “high” in the phrase “high temperature polymer” in claim 4 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unknown how high a temperature has to be in order to qualify as a high temperature polymer. In the interest of compact prosecution examiner will treat “high temperature polymer” as “one of polyaryletherketone (PAEK) polymers, such as polyetherketone (PEK), polyetheretherketone (PEEK), and fluoropolymers, such as polytetrafluoroethylene (PTFE).”
The term “upset of a weld” in the phrase “is sized so that an upset of a weld does not extend radially past an outermost periphery of the insert” in claims 10-13 is indefinite because the upset of a weld is dependent on the size and configuration of the welder which is not claimed. In the interest of compact prosecution examiner will treat “is sized so that an upset of a weld does not extend radially past an outermost periphery of the insert” as “is sized so that it is larger than the radial length of the material to be welded fits within the insulated electrode feature.”
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.
Claim(s) 1, 2, 6, 13, 14, 16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gerber et al. (US Patent 3668366) hereafter referred to as Gerber.
Regarding claims 1 and 6, Gerber teaches a welding fixture (10) comprising an electrically conductive body or base (12, 14, and 16) made of refractory metal (Column 2, Lines 72-73), which as a metal is electrically conductive, a receiving channel (43) between two sides of the fixture, an insert or strip of electrical insulating material (44) is located on the first side of the body and around the receiving channel, which is electrically isolated from the electrically conductive body (12, 14, and 16) as it is an insulator, and the receiving channel is configured to receive a workpiece (54) and the surfaces of the receiving channel are in electrical conductive contact with the electrically conductive body (12 and 14).
Regarding claim 2, the electrically conductive body (12,14, and 16) further includes a recess in the first side and the insert (44) is embedded into the recess.
Regarding claim 13, the insert (44) is larger than the radial length of the material (54) to be welded (Figure 3).
Regarding claim 14, the insert (44) going around the receiving channel (43) includes an opening corresponding to the receiving channel (43).
Regarding claim 16, the insert (44) induces two openings, one at the top and one at the bottom, for fasteners that affix the insert (44) to the electrically conductive body (12 and 14) as the claim just requires the openings and not fasteners.
Regarding claim 18 and 19, the electrically conductive body includes a first (12) second (14), and third (16) body that are configured to join together using guide pins (18, 20, 22, and 24) with cooperating guide channels to form the electrically conductive body.
Regarding claim 20, the insert (44) is a unitary body.
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 3-5, 7-12, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Gerber in view of Wang et al. (US Publication 2016/0158874) hereafter referred to as Wang.
Regarding claims 3-5, 8-10, and 12. Gerber teaches all of the limitations of claim 2 and that the insert (44) is larger than the radial length of the material (54) to be welded (Figure 3) (Claims 10 and 12).
Gerber does not teach that the insert is formed of an electrically conductive material, wherein the insulated electrode fixture further includes an insulator positioned between the electrically isolated insert and the electrically conductive body (Claim 3, 9, 10, and 12) wherein the insulator is formed of a high temperature polymer (Claim 4 and 10), which is a polyaryletherketone, PAEK, polymer or a fluoropolymer (Claim 5), or that a coating of a non-conductive material on at least one of the electrically isolated insert and the electrically conductive body so that the coating is positioned between the electrically isolated insert and the electrically conductive body (Claim 8 and 12).
Wang teaches a resistance welder with an electrode (24) that has an insert (36) that is formed of an electrically conductive material (48) that may have properties may have electrical and thermal conductivities in excess of 20% of the electrical conductivity (as defined by IACS) and the thermal conductivity of commercially pure annealed copper. ([0033]) and a coating or casing (46) that serves as an insulating intermediate barrier between the surrounding electrode body (38) and the insert (36) which could be polytetrafluoroethylene or PTFE ([0034]), which is a fluoropolymer, in order to change the flow of electricity around the insert.
Geber teaches non-conductive inserts but is not specific to the material used. Wang teaches a known material (PTFE) that functions effectively as a non-conductive insert. It would have been obvious to one of ordinary skill in the art to try PTFE as the electrically insulated insert to achieve the predictable result of electrically isolating an area from the electrically conductive body.
Regarding claims 7 and 11, Gerber teaches all of the limitations of claims 1 and 6 and that the insert (44) is larger than the radial length of the material (54) to be welded (Figure 3) (Claim 11), but does not teach that the electrically non-conductive material the insert is made out of is a ceramic.
Wang teaches that when the insert (36) is intended to be a non-conductive electrical insulator, it can be composed of several different ceramic materials. ([0024])
Gerber teaches that the insert is non-conductive but is not specific as to the material. Wang teaches the use of ceramic materials for their insulative properties. Based on the teachings of Wang, it would be have been obvious to one of ordinary skill in the art to try using ceramic as an insulator in the device of Gerber.
Regarding claim 21, Gerber teaches all of the limitations of claims 1, but does not teach that the insert includes two portions.
Wang teaches an insert (36) that comprises of two portions, an insulating casing (46) that can be composed of an insulating material ([0034]) and an interior piece (48) that can have much higher electrical and thermal conductivities since it is isolated from the electrode body (38) by the casing (46) ([0034]).
It would have been obvious to one of ordinary skill in the art to include the two layered insert of Wang in the insulated electrode of Gerber. As disclosed in Gerber, the motivation for the combination would be allowing for higher electrical and thermal conductivities of the insert.
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Gerber in view of Medlin (US Patent 3,573,423).
Regarding claim 15, Gerber teaches all of the limitations of claim 14, but does not teach a cross-sectional area of the opening is larger than a cross-sectional area of the receiving channel.
Medlin teaches an electrode with insulation where the cross-sectional area of the opening of the insulated insert (30) is greater than the cross-sectional area of the channel (32 and 39) corresponding to the insert as the lower end of the sleeve is upset or inwardly flared (Column 2, Lines 61-62).
Gerber teaches that there is an opening with a cross-sectional area, but does not say how it compares to the cross-sectional area of the receiving channel. Medlin teaches that it is known in the art of insulated electrodes to have an insulator insert that has an opening with a cross-sectional area greater than a cross-sectional area of the channel it corresponds to. Based on the teachings of Medlin it would be obvious to try an opening of the insert that has a larger cross-sectional area than a cross-sectional area of the receiving channel in the device of Gerber for the predictable result of insulating the electrode from the electrically conductive body.
Regarding claim 17, Gerber teaches all of the limitations of claim 1, but does not teach that the insert and the electrically conductive body include one or more cooperating registration features configured to orient the insert relative to the electrically conductive body.
Medlin teaches an electrode for welding that contains a solid, cylindrical plug (27) having an externally threaded bottom flange (28), an electrically insulating sleeve (29) around the plug (27) and an externally threaded nipple (30) is press fitted on the sleeve 29, where the nipple (30) engages the threads (20) of section 9 as well as those of the nut (10) which locks the cylindrical plug (27) in the desired position relative to section 9 (Column 2, Lines 56-57).
It would have thus been obvious to one of ordinary skill in the art to include the threaded sections of Medlin in the insulated electrode of Gerber to achieve the claimed invention. As disclosed in Medlin the motivation for the combination would be to allow for locking of the insert in a position relative to the body.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Gerber in view of Stanley (US Patent 1138154).
Geber teaches all of the limitations of claim 1 and that the electrode fixture (10) functions as an electrode in a welding process, but does not teach a welding transformer or that the electrodes are electrically connected to the welding transformer to function as an electrode in a welding process.
Stanley teaches electric resistance welding with a transformer (1) where the electrodes (2,3, 6, and 7) are electrically connected to the transformer in order to have current flow through them (Column 4, Lines 74-78) and function as electrodes in a welding process.
It would have been obvious to one of ordinary skill in the art to include the welding transformer and electrical connections of Stanley to the electrode fixture of Geber to achieve the claimed invention. As disclosed in Stanley the motivation for the combination would be to allow current to flow through the electrode for welding, thereby enabling the electrodes to function in a welding process.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Meyers et al. (US Patent 11377270) teaches a container lid that can be connected to the container body with one or more exterior or interior threads and a lower portion of the container lid 16A may include one or more corresponding threads (Column 13, lines 27-30), however Meyers et al. does not teach anything relating to electrode features or welding but does relate to the art of attaching things together and orienting features.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Drew J Mitchum whose telephone number is (571)272-5610. The examiner can normally be reached 8-4:30.
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, Edward F 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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/D.J.M./Patent Examiner, Art Unit 3761 /EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
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