DETAILED ACTION
This Office Action is responsive to the application filed on September 06, 2023. Claims 1-12 are pending.
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 .
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 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.
Election/Restrictions
Applicant's election with traverse of Species A, (Claims 1-12) in the reply filed on May 21, 2026 is acknowledged. The traversal is on the ground(s) that the claims are generic and present minimal search burden.
As a preliminary matter, it is noted that the restriction will be reconsidered if a claim to the elected invention is placed in condition for allowance.
Applicant’s traversal is not found persuasive because the inventions as claimed have been shown to be distinct based on their mutually exclusive configurations pursuant to MPEP § 806.04 and because a search and examination burden has been established pursuant to MPEP § 808.02 (see p. 2 of the prior Office Action). In the instant case, (I) it is necessary to search for the elected species in a manner that is not likely to result in finding art pertinent to the divergent and mutually exclusive subject matter of the other species. Each patentably distinct species requires a different field of search, as defined in MPEP § 808.02. Applicant has not stated on the record or submitted evidence that the species are not patentably distinct. Pursuant to MPEP § 904.02, (II) the search covers the claimed subject matter AND the disclosed features which might reasonably be expected to be claimed. In the instant case, if the application were not restricted to one patentably distinct species, the search would be required to cover unique features reasonably expected to be claimed for the numerous mutually exclusive configurations. It is additionally pointed out that, (III) the examination burden is not limited exclusively to a prior art search but also includes that effort required to apply the art by making and discussing all appropriate grounds of rejection. Multiple inventions, such as those in the present application, normally require additional reference material and further discussion for each additional invention examined. Concurrent examination of multiple inventions would thus typically involve a significant burden even if all searches were coextensive.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it uses phrases which can be implied, such as “Disclosed is” and “according to the present disclosure”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claims 1-12 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 pre-AIA the applicant regards as the invention.
As to Claim 1, the limitation “wherein in steps (2)-(4), an interval between the preheating welding, the tack welding and the deep penetration welding is 5-15 min” is ambiguous and renders the claim indefinite. The language raises question as to whether (1) each respective interval must be 5-15 min (i.e., the interval between the preheating welding and the tack welding is 5-15 min and the interval between the tack welding and the deep penetration welding is 5-15 min); or (2) the interval between all three steps is 5-15 min (i.e., an overall interval between all three of the preheating welding, the tack welding and the deep penetration welding is 5-15 min, the time interval between the preheating welding to deep penetration welding is 5-15 min). The claim on its face would appear to suggest (2); however, the specification appears more consistent with (1). A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). For purposes of further examination, scenario (1) is presumed.
Claims 1 & 7 each recite a “welded molded part”. The meaning and metes and bounds imposed by the term “molded” in the context of the disclosure art not clear. For example, according the specification upon deep penetration welding, the part undergoes cooling. The specification refers to the part as a ‘welded molded part’ at this point as it is cooled (“A welded molded part was cooled in the vacuum chamber for at least 60 min”; ¶0050). It is unclear what metes and bounds “molded” impose, particularly if the term is further limiting to ‘welded’ in the instant case. The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014). Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained.
Claim 8 recites a ‘manufacture’ method comprising “using the welded molded part according to claim 7”. In the instant case, the welded molded part of claim 7 is a product by process, defined by the structure implied by method steps of Claim 1. Referencing this product by process in the manufacture method of claim 8 raises question as to whether the instant claim limited by any of the steps of the method steps of claim 1. To the extent that it is not attempting to require steps of claim 1, claim 8 amounts to a “use” claim and is indefinite because it merely recites a use without any positive steps delimited how this use is actually practiced. See MPEP 217.05(q).
Claims 2-6 and 9-12 are rejected as being dependent on, and failing to cure the deficiencies of, a rejected indefinite claim.
Prior Art Relied Upon
This action references the following Foreign patent documents and/or Publications:
FOREIGN
DOCUMENT NUMBER
HEREINAFTER
*CN 112695258 A
“HAN”
*CN114589387A
“LIU”
Translation to English relied upon herewith is included herewith.
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 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over HAN in view of LIU.
Re Claim 7, the claim recites “A welded molded part, wherein the welded molded part is obtained by using the method for vacuum electron beam welding of TWIP steel according to claim 1” which makes the claim a product by process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
HAN teaches a part (automobile body; see HAN at ‘Background’) having a composition of TWIP steel according to claim 1 (“ultra-high manganese TWIP steel is as follows: according to the mass percentage, C 0.6 % to 0.9 %, Mn 20 % to 30 %, Si 0.3 % to 1.0 %, Al 0.3 % to 1.0 %, P less than or equal to 0.015 %, S less than or equal to 0.005 %, V 0.3 % to 0.6 %, Nb 0.2 % to 0.5 %; impurity is less than or equal to 0.1 %, the rest is Fe; weighing the steel material according to the formula of the ultra-high manganese TWIP steel”). As such, the material & composition of a molded part as claimed One of ordinary skill will appreciate a steel automobile body would be welded at least in part and therefore will include the structure of a at least one weld; however, HAN fails to discuss vacuum electron beam welding.
LIU teaches a steel part with a weld created by a vacuum electron beam welding process that would have been expected to impart all the structural characteristics imparted by using the method for vacuum electron beam welding according to claim 1 of the instant application. LIU forms electron beam welding forming a deep penetration weld on the butt joint of steel workpieces and does so according to nearly identical parameters to that in instant claim 1, undergoing vacuum weld preparation at 1.2 x 10^-4 mbar, locating/tack welding (see Embodiment 1 step 7) and deep penetration electron beam welding (see Embodiment 1 step 8) at accelerating voltage is 150kV, the electron beam flow is 5mA, scanning frequency is 100 Hz, the scanning waveform is circular wave and the scanning amplitude is 0. 1 mm, the welding speed is 5 mm/s to the first steel plate 1 and the second steel plate 2 for penetration welding, which are all within the claimed ranges. This is followed by a cooling step. It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide the molded part of HAN such that is welded according to LIU, thereby producing a welded molded part in accordance with Claim 7, to weld an automobile body in a manner that obtains the crack-free, small splash, smooth transition of the appearance scale of the welding seam, which reaches the ISO13919-1 of the B-level welding line requirement, wherein the welding deformation is small and/or wherein the welding joint of the room temperature tensile strength is greater than the base material.
The resulting combination above is a product is the same composition and has a weld of the same structure substantially the same process and which therefore reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim. This is evidenced by the significant overlap in the process parameters, results and weld quality discussed by LIU. For example, the result of the method in the instant application is a butt joint has no internal quality defects and the butt joint grade meets ISO13919-1 grade B requirements (SPEC ¶0050-0052). This specific result is also achieved in LIU (abstract; The welding method of the invention is simple, it can obtain the crack-free, small splash, smooth transition of the appearance scale of the welding seam, reaches the ISO13919-1 of the B-level welding line requirement, and the welding deformation is small). Therefore, the resultant weld appears identical or nearly so and a product appearing to be substantially identical in structure is found in the prior art. It does not appear the claimed process steps or conditions would impart an unexpected property or significant structural change to the end product.
Examiner notes that once a product appearing to be substantially identical is found and a 35 U.S.C. 102 or 103 rejection made, as is the case above, the burden shifts to the Applicant to show an unobvious difference. After a prima facie case of unpatentability has been made, the burden is shifted to Applicants. In order to overcome the rejection, applicant needs to show that the claimed process imparts unexpected property or structure to the end product that renders the structure product patentably distinct from the prior art’s structure. An argument that the applied reference fails to meet all claimed process steps of making the product does NOT overcome a proper 102/103 rejection of a PBP claim because the reference needs only to substantially meet the structure of the end product.
As to Claim 8, HAN in view of LIU renders obvious the welded molded part according to claim 7 for the reasons discussed above and using the same (for the reasons discussed in Claim 7). HAN further teaches a manufacture method of a lightweight energy-absorbing buffer component of a vehicle (HAN Background). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide a manufacture method of a lightweight energy-absorbing buffer component of a vehicle, comprising using the welded molded part according to claim 7 for the reasons discussed above and since the TWIP steel has a higher requirement for the strength and toughness of steel for vehicles, can improve the passive safety performance of the automobile, providing high strength and high plasticity to an automobile body.
Pertinent Art
The following references made of record and included on the attached PTO-892 were not used in a rejection but are deemed pertinent to Applicant’s disclosure for the reasons below.
REFERENCE
PERTINENCE
US-20120160363-A1
Electron beam welding butt joints, including TWIP steel
US-20140261918-A1
Welding types for TWIP Steel, including electron beam
US-20120298637-A1
Welding of TWIP Steel; however, directed to laser welding
US-20190224781-A1
Welding of TWIP Steel; however, directed to laser welding
CN-113210830-A*
Preheating a butt joint with an electron beam
CN-115921894-A*
Electron beam preheating
Lawler et al., Local vacuum electron beam welding for pressure vessel applications (2015)*
Electron beam welding of cryogenic tank of C–Mn steel
*Copy Included
Allowable Subject Matter
Independent Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Dependent Claims 2-6 and 9-12 would also be allowable due to their dependence from Claim 1 if Claim 1 is amended to overcome the rejection(s) under 35 U.S.C. 112(b).
The following is a statement of reasons for the indication of allowable subject matter:
Prior art fails to teach or fairly suggest, in combination with all the other limitations of the independent claims, wherein the chemical composition of the TWIP steel workpieces in step (1) is as claimed according to the mass percentages of claim 1; wherein the step of preheating welding, comprising: performing electron beam defocus preheating on a butt joint of the TWIP steel workpieces, wherein the electron beam defocus preheating process is carried out with a focused beam current of 2,300-2,600 mA and electron beam deflection scanning in a sine wave mode with a scanning amplitude of 2-5 mm and a frequency of 500-1,000 Hz; and wherein the deep penetration welding, comprising: performing deep penetration welding on the butt joint of the TWIP steel workpieces subjected to the tack welding, wherein the deep penetration welding process is carried out with the following parameters: a focused beam current of 2,050-2,350 mA, and electron beam deflection scanning in a circular wave mode with a scanning amplitude of 0.5-2 mm.
Examiner Comment: While preheating and deep penetration welding were generally known, and TWIP steel according to the claimed composition of mass percentage was known, prior art fails to teach or suggest performing the steps claimed together and with values within the claimed ranges, for a TWIP steel workpiece, less one having the given composition.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON H DUGER whose telephone number is (313) 446-6536. The examiner can normally be reached 8:30a to 4:30p EST Monday & Tuesday and 8:00a to 2:00p Wednesday, and is OFF Thursday and Friday.
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JASON H DUGER
PRIMARY EXAMINER, ART UNIT 3741
PHONE (313) 446 6536
FAX (571) 270 9083
DATE
July 11, 2026
/JASON H DUGER/Primary Examiner, Art Unit 3741
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