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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6, 8-9 and 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 6 the newly added limitations “wherein the first action portion is fixed to the welding base body and configured to not shake with respect to the welding base body when receiving a vibration with a frequency above 20 KHz” and “wherein the second action portion is fixed to the welding head body and is configured to not shake with respect to the welding head body when receiving a vibration with a frequency above 20 KHz” are not supported by the original disclosure and constitute new matter.
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 6, 8-9 and 11-12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 6 it is unclear what the applicant means by “configured to not shake” when ultrasonic vibration itself can be considered shaking. For the purposes of examination, the broadest reasonable interpretation has been applied.
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.
Claim(s) 6 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 2018/0085847A1) in view of Kelch et al. (US2013/0213552A1 IDS) (hereafter Kelch) and Tsukada et al. (JP-2014213366A1) (herafter Tsukada).
With respect to claim 6, Sato teaches an ultrasonic welding unit (figure 1), comprising: a welding base (figures 18 and 20) comprising: a welding base body (54); and a first action portion (lower surface of 54) disposed on (broadest reasonable interpretation) the welding base body, a side of the first action portion facing away from the welding base body being provided
with a first welding tooth (46), and the tooth having an outer surface (47) constructed
as a spherical surface with a first radius (figures 18 and 20; and paragraphs 76 and 78);
and a welding head (1(4)) comprising: a welding head body (figures 18 and 20);
and a second action portion (lower surface 5) disposed on (broadest reasonable interpretation) the welding head body and facing toward the first action portion, a side of the
second action portion facing away from the welding head body being provided with a second
welding tooth (11(8)), and the second welding tooth having an outer surface (12) constructed
as a spherical surface with a second radius (figures 18 and 20; and paragraphs 76 and 78);
wherein the welding head and the welding base are disposed opposite each other (figures 18 and 20), the welding head is controlled to move in a direction approaching or leaving the welding base (figure 13; and paragraphs 62-66), and the second radius is equal to the
first radius (figures 18 and 20; and paragraphs 76 and 78).
With respect to claim 6, Sato teaches using a plurality of teeth on the welding head and the anvil (figures 13, 21, and 23), but does not explicitly teach using a plurality of spherical welding teeth on both the welding head and the anvil. However, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art to duplicate the spherical welding teeth of figures 18 and 20 on both the welding head and the anvil of Sato in order to gain more gripping strength during ultrasonic bonding. The courts have determined that the duplication of parts for a mere multiplied effect, which is the intent of the instant application, is not a patentable concept. Please see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) and St. Regis Paper Co. V. Bemis Co., Inc., 193 USPQ 8, 11.
With respect to claim 6, Sato does not teach the first action portion, the second action portion, the plurality of first welding teeth, and the plurality of second welding teeth are made of a ceramic material; and the first action portion is opposite to the second action portion in a first direction, and a size of a projection of the second action portion on a plane perpendicular to the first direction is smaller than a size of a projection of the first action portion on the plane perpendicular to the first direction.
However, Kelch teaches the first action portion (anvil), the second action portion (horn), the plurality of first welding teeth, and the plurality of second welding teeth are made of a ceramic material (figures 1-4; paragraphs 38-42; and claims 8-11 and 16-17); and the first action portion is opposite to the second action portion in a first direction (figures 1-4; paragraphs 38-42; and claims 8-11 and 16-17).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize ceramic as taught by Kelch for the first and second actions portions of Sato in order to be able to utilize a less aggressive knurl with lower energy consumption.
While, Tsukada teaches the first action portion (22) is opposite to the second action (21) portion in a first direction, and a size of a projection (21b) of the second action portion on a plane perpendicular to the first direction is smaller than a size of a projection (22b) of the first action portion on the plane perpendicular to the first direction (figure 13; and machine translation).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the first action portion and second action portion layout of Tsukada in the collective apparatus of Sato and Kelch in order to form a bond with the desire contact area and shape.
Regarding the newly added limitations “wherein the first action portion is fixed to the welding base body and configured to not shake with respect to the welding base body when receiving a vibration with a frequency above 20 KHz” and “wherein the second action portion is fixed to the welding head body and is configured to not shake with respect to the welding head body when receiving a vibration with a frequency above 20 KHz”, since neither Sato, Kelch, or Tsukada teach that the first and second action portions shake when receiving a vibration with a frequency above 20 KHz the examiner reasonably considers the first and second action portions of the prior art to not shake in view of the broadest reasonable interpretation.
With respect to claim 12, Sato teaches an ultrasonic welding machine, comprising the ultrasonic welding unit according to claim 6 (figures 1 and 13).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato, Kelch, and Tsukada as applied to claim 6 above, and further in view of Steiner et al. (WO02/43915A1) (hereafter Steiner).
With respect to claim 8, Sato, Kelch, and Tsukada do not teach wherein the second action portion and the welding head body are welded to each other.
However, Steiner teaches using a separate ceramic member (28) as a second action portion of a welding head wherein the second action portion and the welding head body are welded to each other (12) (figure 1; and the machine translation)
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the welding of Steiner to connect the ceramics of Kelch in order to form a strong horn and anvil while increasing the service life of the ultrasonic welding system.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato, Kelch, and Tsukada as applied to claim 6 above, and further in view of Steiner et al. (WO02/43915A1) (hereafter Steiner) and Nagatomo et al. (US2015/0034367A1) (hereafter Nagatomo).
With respect to claim 9, Sato, Kelch, and Tsukada do not teach wherein the second action portion is a (separate) ceramic member; and wherein the second action portion is welded to the welding head body via transient liquid phase bonding.
However, Steiner teaches using a separate ceramic member (28) as a second action portion of a welding head wherein the second action portion and the welding head body are welded to each other (12) (figure 1; and the machine translation).
While, Nagatomo teaches TLP bonding ceramic to metal (paragraph 135).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to combine the ceramic member of Steiner onto the welding head body of Sato in order to increase the service life of the welding head. In addition, at the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the TLP of Nagamoto to bond the components of Sato and Steiner in order to form a bond that has a higher melting point than the bonding temperature through isothermal solidification.
Claim 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato, Kelch, and Tsukada as applied to claim 6 above, and Xu et al. (CN- 211759162A) (hereafter Xu).
With respect to claim 11, Sato, Kelch, and Tsukada do not teach wherein each of
the welding teeth has a diameter of the first radius ranges from 0.7 mm to 1.0 mm.
However, Xu wherein each of the welding teeth has a radius of 0.7 mm to 1.0 mm (figures 1-3; and the machine translation).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the welding teeth size of Xu on the collective apparatus of Sato Kelch, and Tsukada in order to obtain the desired contact area and gripping strength during ultrasonic bonding.
Response to Arguments
Applicant's arguments filed 1/28/26 have been fully considered but they are not persuasive.
The applicant argues that Sato does not disclose or suggest that "the first action portion is fixed to the welding base body and configured to not shake with respect to the welding base body when receiving a vibration with a frequency above 20 KHz," and "the second action portion is fixed to the welding head body and is configured to not shake with respect to the welding head body when receiving a vibration with a frequency above 20 KHz," as recited in amended claim 6, (emphases added). The Office also asserted that Kelch teaches "the first action portion the second action portion the plurality of first welding teeth, and the plurality of second welding teeth are made of a ceramic material" (Office Action at 4), that Tsukada teaches "the first action portion is opposite to the second action portion in a first direction, and a size of a projection of the second action portion on a plane perpendicular to the first direction is smaller than a size of a projection of the first action portion on the plane perpendicular to the first direction" (id.), that Steiner teaches "using a separate ceramic member as a second action portion of a welding head" (id. at 5), that Nagatomo teaches "TLP bonding ceramic to metal" (id.), and that Xu teaches "each of the welding teeth has a radius of 0.7 mm to 1.0 mm" (id. at 6). Without acquiescing to the Office's assertions, Applicants respectfully submit that Kelch, Tsukada, Steiner, Nagatomo, and Xu, whether taken alone or in combination, also fail to disclose or suggest the above-quoted elements of claim 6, and thus do not cure the deficiencies of Sato.
The examiner respectfully disagrees. The applicant has failed to persuasively argue and/or provide evidence or logic as to why that the first and second actions portions in the collective obviousness rejection will shake when receiving a vibration with a frequency above 20 KHz. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02.
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 KILEY SHAWN STONER whose telephone number is (571)272-1183. The examiner can normally be reached on Monday-Thursday.
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/KILEY S STONER/ Primary Examiner, Art Unit 1735