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
The amendment filed 08/07/2026 has been entered. Claims 1-5 and 10-14 remain pending in the application. Applicant’s emended to the Drawings have overcome each and every objection previously set forth in the Non-Final Office Action dated 05/12/2026.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 10 have been considered but are moot because the new ground of is based on a different interpretation of the prior art not provided for in the previous office action. Specifically, examiner gave to much weight to the phrase “sandwiching and pressurizing the element”. This phrase, when provided with no specific structure associated with it essentially depicts any force exerted by an electrode through a welding device as being capable of sandwiching and pressurizing the element and metal members. As such, examiner now considers the electrodes of Kurokawa to inherently perform this step because the welder device inherently has some external pressurizing jig that moves the electrodes to bring them together. To overcome the rejection and additionally overcome a rejection with external pressurizing jigs that provide different pressures that could be provided in the future, examiner suggests adding the structure found in Figure 7 and directly attribute that structure to the force and pressure application steps.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 4, 5, 10, 12, 13, and 14 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by Kurokawa (US-20200130098-A1).
Regarding Claims 1 and 10, Kurokawa teaches (Figures 1-20) method for joining together a plurality of metal members, including a dissimilar metal member by resistance welding and use of a rivet ([0002]). Kurokawa teaches that the method for joining different materials includes a first to nth metal member, where an aluminum plate (first metal member (1)), an iron plate (nth metal member (2)), and a rivet (3) are combined, where the rivet and nth metal can both be made of iron (a ferrous material) but need not necessarily be made of the same materials ([0013], [0109]). The rivet includes a head (4) and a shank (5) that is formed in a columnar shape and projects in one direction from the central part of the disc shaped head, with an annular wall (6) and groove (7) on the outer peripheral surface of the shank ([0108]). The sandwiching step of the method includes sandwiching, between a first electrode (8) and second electrode (9) of the resistance spot welder, the rivet, the first member, and the nth metal members arranged in the order of head, shank, and first to nth metal members ([0013], [0111], [0153]). The penetrating step includes pressurizations and current application on the rivet and metal members by the first and second electrodes, allowing the shank to penetrate the metal members ([0013]). A forming step of performing pressurization and current application on the rivet and the first to nth metal members is then performed so a nugget is formed between the shank and nth metal member ([0013]). During the penetration step, pressurization and current application are performed to form a nugget between the iron plate (2) and the shank (5) penetrating the aluminum plate (1) ([0013], [0112]). During the penetration step, the rivet, aluminum plate, and iron plate are subject to pressurization and current application in such a manner that the first and second electrode are made to come close (welding device that pushes the electrodes together can be understood to be an external jig that pressurizes the electrode as to bring the electrodes close during the welding process) to each other so that a welding pressure is applied to the rivet head and the iron plate ([0118]). It is understood that applying a sandwiching force from the electrodes onto the head of a rivet and the nth metal members also exhibits a pressurizing force over the entire rivet head, as Pressure equals the Force over an Area (P=F/A). In this situation, as the force is applied to the sandwiching and penetration step, it can be understood that the force applied by the electrode creates a pressure extending over the entirety of the surface area of the rivet.
Regarding Claims 3 and 12, according to the principle that two bodies exert forces equal and opposite to each other, as the electrodes are made to come close to each other during the sandwiching, pressurizing, and penetrating step as stated above, there is understood to be a force applied to both electrodes. As the electrodes are said to come close to each other, the welder device is understood to have a component that applies a force onto both electrodes, where the force of both electrodes also exhibit pressure under the relationship of P=F/A as discussed above.
Regarding Claims 4, 5, 13, and 14, Kurokawa teaches that the first and second electrodes sandwich together a rivet, an aluminum plate, and nth metal plates ([0013]). It can be understood that as a force is applied from the electrode onto the rivet by the welder device, a pressure is also generated by the same P=F/A relationship as discussed above. Additionally, as the first electrode exhibits pressure onto the rivet, the rivet also exhibits some force and pressure onto the first metal member.
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 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kurokawa in view of Sunamoto (JP-H09201679-A).
With regards to Claim 2 and 11, Kurokawa teaches (Figures 1-20) method for joining together a plurality of metal members, including a dissimilar metal member by resistance welding and use of a rivet ([0002]). Kurokawa teaches that the method for joining different materials includes a first to nth metal member, where an aluminum plate (first metal member (1)), an iron plate (nth metal member (2)), and a rivet (3) are combined, where the rivet and nth metal can both be made of iron (a ferrous material) but need not necessarily be made of the same materials ([0013], [0109]). The rivet includes a head (4) and a shank (5) that is formed in a columnar shape and projects in one direction from the central part of the disc shaped head, with an annular wall (6) and groove (7) on the outer peripheral surface of the shank ([0108]).
The sandwiching step of the method includes sandwiching, between a first electrode (8) and second electrode (9) of the resistance spot welder, the rivet, the first member, and the nth metal members arranged in the order of head, shank, and first to nth metal members ([0013], [0111], [0153]). The penetrating step includes pressurizations and current application on the rivet and metal members by the first and second electrodes, allowing the shank to penetrate the metal members ([0013]). A forming step of performing pressurization and current application on the rivet and the first to nth metal members is then performed so a nugget is formed between the shank and nth metal member ([0013]). During the penetration step, pressurization and current application are performed to form a nugget between the iron plate (2) and the shank (5) penetrating the aluminum plate (1) ([0013], [0112]).
However, under this interpretation, Sunamoto does not teach an external pressurizing jig that applies different pressures to the element and the sandwich of the materials.
Sunamoto teaches a method for joining different kinds of metals (Figs 1-15) through resistance welding, where a holder (24/25) has locking claws (29), locking legs (26), and an electrode (4) that grips the locking piece (7) in a fixed position against the first metal plate before the contacts points are welded through resistance welding ([0065]-[0067]). Sunamoto teaches that the locking claws are provided at the tip of the locking legs (26), where the electrode (4) is displaced relative to the holder (24) based on the force provided by the force of spring (31) ([0062], [0065]). With no external force acting on the holder (24), spring (31) forms a gap at the locking claw, where the clocking piece can slide through before being joined to the desired materials ([0063]). When the first material (1) overlaps the second material (2) at the desired joining location, the holder is then positioned on the surface of the first material and pressure is then applied to the first member, where the spring causes the electrode to be displaced relative to the force acting against the spring (Fig 10, [0064] and [0065]). During the welding process, the locking piece (3) moves further and its tip (3a) reaches the second material (2), and the electrode (4) comes into contact with the first metal material (1) completing the joining process, as a result, the first metal material is sandwiched between the based end of the locking piece and the second metal material using the locking piece (3) ([0067]).
It is obvious to combine prior art elements according to known methods to yield predictable results. See MPEP 2143(A). The MPEP states the prior art must: (1) teach each claimed element (a method or apparatus that will be modified), (2) show that one of ordinary skill in the art could have combined the elements by known methods and that the combination doesn’t change the function of the elements, and (3) show that one of ordinary skill would have recognized that applying the known technique to the base device would yield predictable results. See MPEP 2143(A).
In this case, Kurokawa teaches the resistance welding method of joining together dissimilar metals through use of a rivet and being welded into the metals through force and pressure, and Sunamoto teaches that the external pressurizing jig can apply different amounts of pressure from the electrode holder onto the element and metal members, where the electrode holder includes an external pressurizing jig and a spring to provide the different pressurizing forces. An artisan of ordinary skill could have combined the welding method with the electrode holder that applies different pressures to the sandwiched materials and the element through a spring by known methods because the use of electrodes and electrode holders in welding is well-known in industry, and the combination of the electrode holder with a spring doesn’t change the function of the electrode. Predictable results would be achieved because the electrode still performs the function of welding together pieces of metal with a rivet.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the welding method of Kurokawa with the electrode holder and spring as taught by Sunamoto, because all the claimed elements were known in the prior art and one skill in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miyamoto (JP-2008284570-A) teaches (Figs 1-9) a method and apparatus for joining different metals by resistance welding. Specifically, Miyamoto teaches a rod-shaped jig (4) situated around both electrodes (E1 and E2) ([0038]). Miyamoto also teaches that the electrodes and the jigs are insulated from each other through both space and an insulating material (I) ([0038]). Miyamoto further teaches that the jig around each electrode is advantageous because the jig allows for control over the relative distance between the electrodes and the material to be joined, this control over the spacing allows for the electrodes to be maintained at a desired distance that prevents excessive push-in by the electrodes during operation ([0039], [0048]).
Chergui (US-20160045977-A1) teaches (Figs 1-8) together a functional element and auxiliary element to a sandwich sheet, where the sandwich sheet includes two metallic outer layers and a thermoplastic layer arranged between the metallic layers ([0034]). The device also includes springs (16) and pins (15) that are used to exert a force on the functional element and the auxiliary element, where the force exerted from the pins is outwards from the central area of the auxiliary element (Fig 4, [0034]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUNTER HEMMINGS whose telephone number is (571)467-0070. The examiner can normally be reached Monday - Friday 8:00-5:00.
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/HUNTER G HEMMINGS/ Examiner, Art Unit 3761 /EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
