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
Claims 1 and 2 are amended. No claims are canceled. No claims are added. As a result, claims 1-3 remain under consideration.
The amendment to claim 2 obviates the previously indicated objection.
Response to Arguments
Applicant's arguments filed 7/2/2026 have been fully considered but they are not persuasive.
Applicant traverses the rejection of claim 1 over Zeniya in that:
Different regions: The "hardness control region" of Zeniya (0.5xD to 1.OxD from the center of the nugget) is different from the claimed "third region" (100 pm on each side of the boundary between the molten metal portion and the heat-affected portion). Zeniya's region is located outside the nugget, whereas the third region spans across the boundary between the first region (molten metal portion) and the second region (heat-affected portion).
Different hardness parameters: Claim 1 requires "average Vickers hardness HvAve" in the first region, whereas Zeniya only discloses maximum and minimum hardness values. Zeniya does not disclose a relationship in Vickers hardness between two different regions as claimed.
Critical significance of the claimed range: The claimed range of HvAve - HvMin < 100 has critical significance in suppressing fractures from the spot-welding portion, as demonstrated by the experimental examples in the specification (Table 2). (See Remarks, page 5 and 6.)
Regarding Zeniya’s hardness control region being different from the claimed third region, the Examiner respectfully disagrees as Applicant's traversal is not responsive to the rejection as it is articulated. In this case, Applicant traverses HAZ softened portion generated 0.5xD to 1.0xD of Zeniya as being different from the "third region," however, the Examiner notes that "second region" was the basis of the rejection. The claim as written requires a frame member with a first and second steel sheet member spot welded together, wherein the spot welded portion includes a molten metal portion formed by spot welding defined as the first region, a heat-affected portion outside of the molten metal portion defined as a second region, and a region between the first and the second region defined as the third region. Zeniya’s HAZ softened portion generated 0.5xD to 1.0xD from the center of the nugget in the sheet surface direction corresponds to the claimed second region, therefore there exists a boundary between the nugget (corresponding to the claimed first region) and the HAZ softened portion (corresponding to the second region) which correspond to the claimed third region. Since the nugget and HAZ disclosed in Zeniya are physically larger than 200 µm, there exists an arbitrary region between the nugget and the HAZ that corresponds with the claimed third region stretching 100 µm in directions towards the first and the second regions. As such Zeniya reads on the claim language detailing the third region as written.
Regarding Zeniya’s hardness parameters being different from the claimed relationship in Vickers hardness between two different regions and the critical significance of the Vickers hardness range claimed to suppress fractures, the claim as written requires a Vickers hardness to satisfy Hvave – Hvmin
≤
100. Although Zeniya does not explicitly disclose the hardness profile between the average Vickers hardness Hvave and the minimum Vickers hardness Hvmin of a region, it explicitly discloses that the hardness profile between the maximum and minimum hardness values of a region is less than or equal to 80, and it follows that the hardness value between the average hardness value of a region and the minimum hardness value of a region will have hardness value further below 80, which is within the range provided by the claim as written (see MPEP § 2144.05). Additionally, the hardness profile of a spot welded area is a physical property, which is inherent in a weld joint. In this case, Zeniya discloses the same frame structure and spot-welding process, and it follows that the resultant physical properties of the claimed invention, such as the hardness profile claimed, are necessarily present or presumed to be inherent (see MPEP § 2112.01).
Furthermore, the traversal and amendment to the claims do not address the 35 U.S.C. 112(b) rejections and, as such, these rejections are maintained. For reasons detailed herein, the Examiner maintains, based on the preponderance of evidence that the rejections of claims 1-3 under 35 U.S.C. 103 are proper.
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 1-3 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.
Claim 1 is directed to a product or apparatus: “A frame member”, but improperly mixes statutory classes by including active method steps such as measuring and testing within the same claim, specifically where it recites “Vickers hardness is measured…” A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph (see MPEP 2173.05 (p)).
Furthermore, claim 1 contains confusing and grammatically ambiguous language regarding the boundaries of the claimed regions in, for example “… a region formed of a region from a boundary between the first region and the second region to a position 100 μm away from the boundary toward the first region and a region from the boundary to a position 100 μm away from the boundary toward the second region is defined as a third region…” This obscures the clear definition of the third region, it is unclear if the third region is a single continuous area spanning 200 μm across the boundary, or two separate disconnected regions on either side of the boundary line, rendering the claim indefinite.
Claims 2 and 3 are rejected to due to dependency upon rejected-to claim.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zeniya et al., WO Patent Application Publication No. 2019230580 A1 as translated by US Patent Application Publication No. 2021205915 A1.
Claim 1. Zeniya discloses a frame member comprising: a first steel sheet member; and a second steel sheet member, wherein the first steel sheet member and the second steel sheet member are joined together at a spot welded portion, (Zeniya, Fig. 5 shows two steel sheet members 11 and 12 spot welded at location 2.)
wherein the frame member includes a cross-sectional region in which a cross section perpendicular to a longitudinal direction of the frame member is a closed cross section, (Zeniya, Fig. 5 shows the steel sheets welded together having a closed cross section.)
the first steel sheet member has a tensile strength of 1,900 MPa or more, and (Zeniya, [0023] “A spot welded joint according to an aspect of the present disclosure includes a first steel sheet having a tensile strength of 1100 MPa or higher.”; and page 7, Table 1 shows several steel sheets having a tensile strength of more than 1900 MPa.)
the spot-welding portion includes: a molten metal portion formed by the spot welding, and a heat-affected portion adjacent to an outside of the molten metal portion, (Zeniya, [0023] “A spot welded joint according to an aspect of the present disclosure includes… a nugget having a diameter D at an interface between the first steel sheet and the second steel sheet and formed between the first steel sheet and the second steel sheet…)
wherein in a cross section perpendicular to the longitudinal direction including a center point of the molten metal portion, a region corresponding to the molten metal portion is defined as a first region, (Zeniya, Fig. 2 and 3 shows nugget 2 corresponding to the claimed first region.)
a region corresponding to the heat-affected portion is defined as a second region, and (Zeniya, [0047] “In the spot welded joint 1 according to the present embodiment, the HAZ softened portion is generated in the range of 0.5×D to 1.0×D from the center O of the nugget in the sheet surface direction.”)
a region extending from a boundary between the first region and the second region to positions 100 μm away from the boundary toward each of the first region and the second region is defined as a third region, (Zeniya, Fig. 6 shows an example of the nugget formed between two sheets, dependent on a sheet thickness measured in mm (see [0099]), for a frame member used in the pillar of a vehicle shown in Fig. 4.)
Since the nugget and the HAZ disclosed are physically larger than 200 μm, as evidenced by its use in the frame member of a vehicle such as an automobile, then there exists a 200 μm area surrounding the boundary, corresponding to the claimed third region, between the nugget, corresponding to the claimed first region, and the HAZ, corresponding to the claimed second region as an inherent geometric feature of the prior art’s weld.
wherein Vickers hardness is measured at a pitch of 15 μm with a load of 10 gf along a virtual straight line extending from a center portion of the first region to the second region, and
Zeniya does not disclose the pitch of 15 μm with a testing load of 10 gf. However, these limitations are merely methods of measuring the product being claimed. A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process (see MPEP § 2173.05 (p)). As such, the limitation does not offer a patentable distinction over the prior art.
wherein an average Vickers hardness at a measurement position corresponding to the first region on the virtual straight line and minimum Vickers hardness HvMin at a measurement position corresponding to the third region on the virtual straight line satisfy HvAve - HvMin ≤ 100. (Zeniya, [0030] “In the manufacturing method of a spot welded joint according to (7) described above, a tempering may be performed such that a difference between a maximum value of hardness and a minimum value of the hardness in the region becomes 80 HV or less…”)
Zeniya discloses the same frame structure and spot-welding process. Accordingly, the resultant physical property such as “the hardness profile of ≤ 100” is an inherent material property of Zeniya’s weld joint (see, MPEP 2112.01).
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 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Zeniya et al., WO Patent Application Publication No. 2019230580 A1 as translated by US Patent Application Publication No. 2021205915 A1.
Claim 2. Zeniya discloses the frame member according to Claim 1.
wherein the frame member includes a cross-sectional region in which a ratio h1/w of a height h1 and a width w is 0.6 or less, wherein h1 is a height of the first steel sheet member measured along a sheet thickness direction at a part where the spot-welding portion is provided in the first steel sheet member in a cross section perpendicular to the longitudinal direction of the frame member, and wherein w is a width of the frame member measured along a direction perpendicular to the sheet thickness direction of at a part where the spot-welding portion is provided in the first steel sheet member in a cross section perpendicular to the longitudinal direction of the frame member. (Zeniya, Fig. 5 shows a similar frame member.)
Although Zeniya does not explicitly state that the ratio h1/w of their frame member is less than or equal to 0.6, the frame member in Fig. 5 shows a width substantially greater than its height. A frame member, such as those used in vehicles, would need to fit within the physical bounds of its spatial packaging constraints, such as fitting the member into the B-pillar of a vehicle side body, while also preserving its strength and ability resist or safely deflect crash or collision related forces applied to the structure. Therefore, there is a tradeoff between the strength of the frame member and its ability to meet the structural requirements for assembly, maintenance and operation that is directly correlated to its size as dictated by its height and width ratio. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to optimize the ratio of the frame member taught by Zeniya within the constraints useful for a vehicle body for which it is meant to be used since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (see MPEP § 2144.05 II).
Claim 3. Zeniya discloses the frame member according to Claim 2.
wherein the cross-sectional region in which the ratio h1/w is 0.6 or less exists in 50% or more of a total length of the frame member in the longitudinal direction. (Zeniya, Fig. 4 shows an example of the framework component, such a B pillar of a vehicle, that the frame member in shown in Fig. 5 is used.)
Although Zeniya does not explicitly state that the ratio less than or equal to 0.6 exists in 50% or more of the total length of the frame member, the framework component shown in Fig. 4 depicts a continuous B pillar structure that maintains the hat-shaped structure down its entire length. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to optimize the ratio of the frame member taught by Zeniya within the constraints useful for a vehicle body for which it is meant to be used since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (see MPEP § 2144.05 II).
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 KRYSTENE NHELLE B MACEDA whose telephone number is (571)272-2380. The examiner can normally be reached M-Th 7:30a-5:00p.
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/K.B.M./Examiner, Art Unit 3761
/JUSTIN C DODSON/Primary Examiner, Art Unit 3761
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