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 with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In particular, applicant argued that Iwase fails to disclose or suggest three or more metal members and the associated electrical resistance relationship. This argument is addressed by the newly cited reference, Kurokawa, applied in combination with Iwase for the three or more metal member limitation, as set forth in the rejection below.
Applicant further argued that the electrical resistance relationship is not inherent to Iwase’s disclosed material combination in view of the dimensional variables identified in the specification. This argument is addressed by the rejection below, which no longer relies solely on an inherency rationale for the resistance relationship as extended to three or more metal members, but instead sets forth a routine optimization rationale under MPEP 2144.05 (II)(A).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Iwase et al. (JP 2019130565) hereinafter Iwase, in view of Kurokawa et al. (US 20200130098) hereinafter Kurokawa.
Regarding claim 1, Iwase teaches, in Fig. 5,
a method for joining different kinds of metal materials (abstract: “manufacturing method of a joint body, a rivet, and a structure for joining”), wherein a plurality of metal members (11, “first member” and 13, “second member”) made of different materials (¶ [0012]: “the first member 11 is made of… aluminum or aluminum alloy, and the second member 13… made of a steel material”) are joined by resistance welding (¶ [0002]: “techniques for joining two members include … resistance welding”) using a rivet (15, “rivet”), the method comprising:
preparing the rivet (15), the plurality of metal members (11, 13), and a first electrode (31, “electrode”) and a second electrode (33, “electrode”), each having a shank (annotated Fig. 5: E1 & E3, “shank”) and an electrode portion (annotated Fig. 5: E2 & E4, “electrode portion”) provided at a tip of the shank (the configuration is shown in annotated Fig. 5);
sandwiching the rivet and the plurality of metal members between the first electrode and the second electrode (the arrangement is shown in Fig. 5); and
embedding the rivet (15) into the metal member (13) by pressurization and energization (shown in Fig. 5) using the first electrode (31) and the second electrode (33), wherein
the preparing includes preparing, as the first electrode (31) and the second electrode (33), two electrodes (31, 33) that satisfy a condition in which each of electrical resistance values of the first and second electrodes (31, 33) is lower than or equal to a sum of an electrical resistance value of the plurality of metal members (11, 13) to be joined and an electrical resistance value of the rivet (15) (Iwase discloses the first and second “electrodes used are made of chromium-copper alloys” in ¶ [0048], and “the first member 11 is made of… aluminum or aluminum alloy, and the second member 13 and the rivet 15 are made of a steel material” in ¶ [0012], which corresponds to the material combination described in the application under examination. Chromium-copper alloys are known to have high electrical conductivity and thus low electrical resistance, whereas aluminum and steel members exhibit higher electrical resistance. Therefore, in a resistance welding configuration as disclosed by Iwase, the electrical resistance of the electrodes would inherently be lower than or equal to the combined electrical resistance of the metal members and the rivet, such that the claimed relationship is satisfied).
Iwase does not explicitly teach the plurality of metal members are three or more metal members.
However, Kurokawa teaches a method for joining different kinds of metal materials (¶ [0002]: “a different material joining method for joining a plurality of metal members including a dissimilar metal member by resistance welding by use of a rivet”), wherein a plurality of metal members are three or more metal members(¶ [0107]: “First, in this different material joining method, the rivet 3, first to nth metal members (n is an integer of 2 or more) including a dissimilar metal member, and first and second electrodes 8, 9 are prepared”; ¶ [0228]: “two metal members (the aluminum plate 1 and the iron plate 2) are joined. However, the disclosure is not limited to this, and three or more metal members may be joined”).
Iwase and Kurokawa are considered to be analogous to the claimed invention because they are in the same field of a different material joining method for joining a plurality of metal members. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method taught by Iwase to join three or more metal members as taught by Kurokawa, which would have yielded no more than the predictable result of joining an additional dissimilar metal member using a known welding method of joining a plurality of metal members including a dissimilar metal members using a rivet and first and second electrodes, suitable for any number of metal members of two or more (Kurokawa, ¶ [0107]), for the purpose of joining assemblies in which, for example, “two aluminum plates … and one iron plate … may be joined to each other, a metal plate made of metal other than aluminum and iron, the aluminum plate …, and the iron plate … may be joined to each other, or a plurality of types of metal plates other than aluminum and iron may be joined to each other.” Kurokawa, ¶ [0229].
Regarding the claimed relationship in which each of electrical resistance values of the first and second electrodes is lower than or equal to a sum of an electrical resistance value of three or more metal members to be joined and an electrical resistance value of the rivet, electrical resistance of a conductor is a function of both material resistivity and physical dimensions (e.g., length and cross-sectional area), and the relative resistance of the electrodes as compared to the workpieces and rivet is a result-effective variable recognized in the resistance welding art, in that it governs whether heat generation and nugget formation occur predominantly at the intended weld interface rather than at the electrode-workpiece interface. Iwase’s disclosed material combination—chromium-copper alloy electrodes in combination with aluminum and steel workpieces and rivet (Iwase, ¶¶ [0012] and [0048])—establishes the general conditions of the claimed relationship for the original two metal members and rivet, as set forth above. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(A). In extending Iwase’s method to a third or additional metal member as taught by Kurokawa, one of ordinary skill in the art would have recognized the need to select electrode, rivet and metal member dimensions so as to maintain the same electrode-to-workpiece resistance relationship already established by Iwase’s material combination, and would have arrived at suitable dimensions through routine optimization of this recognized results-effective variable, absent a showing of unexpected results. See MPEP 2144.05(II)(A). Accordingly, the claimed relationship, as extended to three or more metal members, would have been obvious over the combined teachings of Iwase and Kurokawa.
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Fig. 5 of Iwase, annotated
Regarding claim 2, Iwase in view of Kurokawa teaches, in Fig. 5 of Iwase,
The method for joining different kinds of metal materials (abstract) according to claim 1, wherein the first and second electrodes (31, 33) are formed of a copper alloy containing chromium (¶ [0048]: “electrodes used are made of chromium-copper alloys”).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JE HWAN JOHN PARK whose telephone number is (571)272-6405. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/J.J.P./Examiner, Art Unit 3761
/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
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