Prosecution Insights
Last updated: April 19, 2026
Application No. 18/535,601

ULTRASONIC JOINING HORN

Non-Final OA §103§112
Filed
Dec 11, 2023
Examiner
GAMINO, CARLOS J
Art Unit
1735
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Prime Planet Energy & Solutions Inc.
OA Round
5 (Non-Final)
35%
Grant Probability
At Risk
5-6
OA Rounds
2y 11m
To Grant
81%
With Interview

Examiner Intelligence

Grants only 35% of cases
35%
Career Allow Rate
257 granted / 729 resolved
-29.7% vs TC avg
Strong +46% interview lift
Without
With
+46.0%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
42 currently pending
Career history
771
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
48.4%
+8.4% vs TC avg
§102
18.8%
-21.2% vs TC avg
§112
30.1%
-9.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 729 resolved cases

Office Action

§103 §112
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 . Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/5/26 has been entered. 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 “the zigzag portion is formed along… a direction perpendicular to the vibration direction… a width of the exposed surface in the vibration direction is larger than a width of the exposed surface in the direction perpendicular to the vibration direction” as recited in claim 1, 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. The drawings received are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include reference sign(s) for the “upper surface of the base portion”, “line perpendicular to the vibration direction”, “peripheral edge”, “direction perpendicular to the vibration direction”, “width of the exposed surface in the vibration direction”, and “width of the exposed surface in the direction perpendicular” as recited in claim 1, “boundary portion” as recited in claim 7, and “burr accumulation portion” as recited in claim 9. Although the figures do appear to show these elements, these elements are not separately labeled/numbered. Moreover, should the applicant decide to provide numerals corresponding to the elements identified these claim(s), revision/amendment of the specification may be necessary to provide proper identification of the element(s) depicted in figures. 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. 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. Any objections to the drawings will not be held in abeyance. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “F”, “B”, “L”, and “R”. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 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 1-5, 7-9, and 12-16 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 recites “at least a portion of a peripheral edge of a portion in which the protrusions are arrayed has a zigzag shape”. It is unclear as to what the second “portion” is referring to. For the purposes of this examination, this limitation will be interpreted as -- at least a portion of a peripheral edge of the plurality of protrusions has a zigzag shape, the plurality of protrusions are arrayed--. Claim 1 recites the limitations “both ends” and “the zigzag portion”. There is insufficient antecedent basis for these limitations in the claim. Claim 2 recites “the portion”. It is unclear as to what this portion is referring to since there various other portions. Claim 2 also recites “a corrugated plate shape”. It is unclear if this to be the same corrugated plate shape as also recited in claim 2. The examiner suggests something along the lines of –the portion of the peripheral wall having the corrugated plate shape corresponds to the zigzag portion of the peripheral edge of the plurality of protrusions”. Claim 3 recites “a corrugated plate shape”. It is unclear if this is the same as that recited in claim 2 or not. Claim 15 recites “wherein the zigzag portion is not formed along the vibration direction”. Note that claim 1 recites the zigzag portion is formed along “the vibration direction” or “a direction perpendicular to the vibration direction”. It is unclear if the direction in claim 15 is referring to the “direction perpendicular to the vibration direction” or a third direction. For the purposes of this examination, since there is no third direction disclosed, this limitation will be interpreted as being the “direction perpendicular to the vibration direction”. Claim 16 recites “wherein only one of the plurality of protrusions is positioned at each of both ends of the pressure contact portion” while claim 1 recites “at each of both ends of the pressure contact portion in the vibration direction, more than one of the plurality of protrusions are arranged”. It is unclear as to how more than one can now be one. For the purposes of this examination, this limitation will be interpreted as noted in the rejection below. Claim 16 recites “a direction perpendicular to the vibration direction”. It is unclear if this is the same as that recited in claim 1 or not. For the purposes of this examination, this limitation will be interpreted as they are the same. Claim Rejections - 35 USC § 103 The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Claims 1, 4, 5, 8, 9, and 12-16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kayama et al. (JP 2003-154467 A) in view of Park et al. (US 2022/0088708 A1) and Abe et al. (JP 2003-162882 A). Regarding claim 1, Kayama teaches: An ultrasonic joining horn [horn (440); figures 6-7] that can generate ultrasonic vibration in a predetermined vibration direction [direction (E)], the ultrasonic joining horn comprising: a base portion [the part of the horn comprising side surface portions (701-704)]; and only a single pressure contact portion formed of a plurality of protrusions [protrusions (630)] that protrude from an upper surface of the base portion [the surface from which bonding protrusions (630) protrude], wherein each of the protrusions forming the pressure contact portion is formed into a pyramid shape or a truncated pyramid shape and the protrusions are arrayed [see figure 7], when viewed from top, at least a portion of a peripheral edge of a portion in which the protrusions are arrayed has a zigzag shape [see figure 7], and the zigzag portion is formed along at least one of the vibration direction and a direction perpendicular to the vibration direction [see figure 7]. Kayama does not teach: a stand portion that rises from an upper surface of the base portion; the plurality of protrusions protrude from an upper surface of the stand portion; at each of both ends of the pressure contact portion in the vibration direction, more than one of the plurality of protrusions are arranged adjacent to each other with a center of an upper surface of each of the more than one protrusions being positioned on a line perpendicular to the vibration direction; the upper surface of the base portion has an exposed surface on which the stand portion is not formed; and when viewed from top, the exposed surface is provided in an entire periphery of the stand portion, wherein a width of the exposed surface in the vibration direction is larger than a width of the exposed surface in the direction perpendicular to the vibration direction. Concerning the protrusions centered on a line perpendicular to the vibration direction; Kayama teaches when two protrusions (1660) are centered on line (B), which is perpendicular to the vibration direction, at the end portion of horn (1600); i.e. outer most pair of protrusions on the far left and far right, crack (1700) may form; figures 10, 11, and 13A. This is prevented by placing the protrusions at an acute angle/diagonally to the direction of vibration; 0033-0039 and figures 7 and 8. Note that no crack forms in the middle of the weld where protrusions (1660) are also centered; figure 13. Park teaches ultrasonic horn (31) comprising welding surface (311) having arrayed pyramid shape protrusions (312) in protrusion formation part (313), wherein five rows of the protrusions are arranged diagonally to the edges of the welding surface such there are protrusions centered on a/same line perpendicular to any edge and any two opposing ends of the protrusion part formation have more than one protrusion on the same line; figures 1 and 2. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add any number of additional rows of protrusions as taught by Park to Kayama in order to achieve a larger bonding area or different shape. In doing making the bonding area larger, the additionally row(s) of protrusions would be centered on a line perpendicular to the vibration direction/sides (701-704) to another row of protrusions. Note that since all of the protrusions are at the acute angle no crack will form. However, to take it a step further to ensure no crack forms, one would not center an additionally protrusion with the outermost protrusion so as to create a similar situation as in Kayama figure 13; i.e. two or more protrusions at the far left and far right centered on a line perpendicular to the vibration direction. Note that in this configuration there would be only one outermost protrusion on each opposing end, the far left and far right, of the surface from which bonding protrusions (630) protrude. Furthermore, forming any configuration of protrusions is simply a matter of design choice minus any criticality. Concerning the stand portion: Abe teaches the outer periphery of the tip portion of the horn (22B) has upper surface/lip (31) which is an exposed surface provided around the entire periphery of the working surface in order to control the occurrence of burrs; 0030-0033 and figures 4 and 5. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the Abe lip concept into the side surface portions of the horn in order to control the occurrence of burrs. In doing so, a lip would extend around the entire periphery of the surface from which bonding protrusions (630) protrude. Regarding claim 4, Kayama teaches: wherein the protrusions are disposed so as to adjoin to each other without a flat groove between every adjacent ones of the protrusions [see figure 7]. Regarding claim 5, Kayama teaches: wherein when viewed from top, the peripheral edge of the portion in which the protrusions are arrayed does not have any one of a side extending parallel to the vibration direction and a side extending perpendicular to the vibration direction [see figure 7]. Regarding claim 8, Kayama does not teach: wherein a ratio between a height (T1) of the stand portion from the upper surface of the base portion and a height (T2) of the protrusions from the upper surface of the stand portion is 5:1 to 1:1. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to make the ratio between the heights any desired ratio, including that claimed, in order to control the occurrence of burrs as desired, minus any unexpected results. Regarding claim 9, Kayama does not teach: wherein a space above the exposed surface up to a height of the stand portion defines a burr accumulation portion, and a volume of the burr accumulation portion is larger than a volume of the pressure contact portion. Since the formation of the burr is proportional to the amount of material being displaced by the volume of the protrusions it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to make the volume above the lip equal to or larger than the volume of the protrusions in order to control the occurrence of the burrs. Regarding claim 12, Kayama teaches: wherein the width of the exposed surface in the vibration direction is equal to or larger than a height of the protrusions from the upper surface of the stand portion [the height of the protrusions is significantly less than the width of the surface from which bonding protrusions (630) protrude which is less then incorporated Abe lip in direction (E)]. Regarding claim 13, Kayama teaches: wherein the base portion has a rectangular shape when viewed from top [see figure 7]. Regarding claim 14, Kayama does not teach: wherein an outer edge of the exposed surface has a rectangular shape [see figure 3]. However, the incorporation of the Abe lip would also be rectangular since it surrounds the periphery of the surface from which bonding protrusions (630) protrude, which is rectangular. Regarding claim 15, Kayama does not teach: wherein the zigzag portion is not formed along the vibration direction. Note that the direction in which the horn vibrates is not structurally limiting and that the horn only needs to be structurally capable of functioning in this manner. However, the horn in Kayama figure 7 structurally meets this as the zigzag is not formed along surfaces (703, 704). One adding another row along surfaces (701, 702) so as to make the weld larger, as suggested in the rejection of claim 1, and keeping to only one outermost protrusion on opposing ends of the surface from which bonding protrusions (630) protrude in order to ensure no crack forms, as suggested by the rejection of claim 1, would arrive at an arrayed plurality of protrusions that meet this claim. Regarding claim 16, Kayama does not teach: wherein only one of the plurality of protrusions is positioned at each of both ends of the pressure contact portion in a direction perpendicular to the vibration direction. Due to the indefiniteness of this claim it will be interpreted as both ends have more than one protrusion but there is only one outermost protrusion on each end. Thus, the rejection of claim 15 applies here too. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kayama et al. (JP 2003-154467 A) in view of Park et al. (US 2022/0088708 A1) and Abe et al. (JP 2003-162882 A) as applied to claim 1 above, and further in view of Lang (WO 2019/1611902 A). Regarding claim 7, Kayama does not teach: wherein a boundary portion between the upper surface of the base portion and the peripheral wall of the stand portion is formed in a slope shape. Lang teaches using a chamfered corner between a surface and wall of an ultrasonic component; figure 2A. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to chamfer any corner between surfaces as taught by Lang, including that of the prior art lip, in order to reduce the stress on the inside corner or stress on the inside corner of a weld formed using the tool. Response to Arguments Applicant's arguments filed 1/5/26 have been fully considered but they are not persuasive. The applicant argues, “For at least the above reason, and as described in paragraph [0038] and shown in Figs.11 and 13 of Kayama, Applicant respectfully submits that Kayama clearly teaches away from at least the claimed features: "at each of both ends of the pressure contact portion in the vibration direction, more than one of the plurality of protrusions are arranged adjacent to each other with a center of an upper surface of each of the more than one protrusions being positioned on a line perpendicular to the vibration direction," as recited in amended independent claim 1. Kayama criticizes and discredits the claimed feature of arranging more than one of the plurality of protrusions adjacent to each other with a center of an upper surface of each of the more than one protrusions being positioned on a line perpendicular to a vibration direction since such a feature could purportedly cause stress concentration cracks.” However, one reading paragraphs 0038-0039 would conclude that it is not two protrusions (1660) being centered on the same line perpendicular to the vibration direction (E) that cause the crack but instead it is the orientation of the protrusions being perpendicular to the vibration direction; i.e. the base of the protrusion having a pair of sides that are perpendicular to the vibration direction and another pair that is parallel. Kayama solves this problem by orientating the base of the protrusions at an acute angle to the vibration direction. Thus, there is no teaching against having an additional row of protrusions as long as they are also orientated at an acute angle to the vibration direction. Furthermore, to take it a step further to ensure no crack forms, one would not center additional protrusions with the outermost protrusions so as to create a similar situation as in Kayama figure 13; i.e. two or more protrusions at the far left and far right centered on a line perpendicular to the vibration direction. The applicant argues, “Regarding Abe, Applicant respectfully submits that Abe relates to a tape reel. The upper surface/lip portion 31 must be evenly spaced in the radial direction (donut-shaped). See Fig. 4 of Abe, reproduced below and including annotations. Therefore, even if it were proper to combine Kayama and Abe, which Applicant does not concede, the requirements of Abe would have taught away from varying the width of the exposed surface. In particular, the disclosure in Abe teaches away from at least the claimed features: "when viewed from top, [an] exposed surface is provided in an entire periphery of [a] stand portion, wherein a width of the exposed surface in [a] vibration direction is larger than a width of the exposed surface in [a] direction perpendicular to the vibration direction," as included in amended independent claim 1, and hence dependent claims 2- 5, 7-9, and 12-16.” Note that the tool of Kayama is rectangular, not round, so while one could make the lip round this would be a huge waste of material, make the tool very bulky, and defeat the lip’s purpose. One the other hand, one of ordinary skill in the art being reasonable would make the lip rectangular in order to match the tool shape taught by Kayama, keep the tool compact, and/or not waste resources. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS J GAMINO whose telephone number is (571)270-5826. The examiner can normally be reached M-F 9-6. 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, Keith Walker can be reached at 5712723458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CARLOS J GAMINO/Examiner, Art Unit 1735 /KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
Read full office action

Prosecution Timeline

Dec 11, 2023
Application Filed
Nov 21, 2024
Non-Final Rejection — §103, §112
Feb 25, 2025
Response Filed
Mar 06, 2025
Final Rejection — §103, §112
May 27, 2025
Examiner Interview Summary
May 27, 2025
Applicant Interview (Telephonic)
Jun 06, 2025
Request for Continued Examination
Jun 10, 2025
Response after Non-Final Action
Jun 28, 2025
Non-Final Rejection — §103, §112
Sep 17, 2025
Applicant Interview (Telephonic)
Sep 17, 2025
Examiner Interview Summary
Sep 25, 2025
Response Filed
Oct 08, 2025
Final Rejection — §103, §112
Jan 05, 2026
Request for Continued Examination
Jan 07, 2026
Response after Non-Final Action
Jan 09, 2026
Non-Final Rejection — §103, §112
Apr 01, 2026
Applicant Interview (Telephonic)
Apr 08, 2026
Examiner Interview Summary

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

5-6
Expected OA Rounds
35%
Grant Probability
81%
With Interview (+46.0%)
2y 11m
Median Time to Grant
High
PTA Risk
Based on 729 resolved cases by this examiner. Grant probability derived from career allow rate.

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