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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/20/2026 has been entered.
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 1-2, 5, 8-10, 18-19 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 indefinite because it is unclear what actually makes up the area of the valley part. Does the imaginary line between the first apex and the second apex does not have to extend the entire length from the first apex to the second apex, or does it only have to be a line that is located between the first and second apex? The limitation as written only requires any line between the first and second apex. Does the valley bottom of the valley part have to actually be the surface of the base of the valley or can it be anything that a person considers a bottom of the area? The way the claim is written, the valley bottom can be any arbitrary location within the valley part. Furthermore, how is the area of the adjacent valley part measured? There is not description for the adjacent valley part, only the valley part. The areas of the valley part and adjacent valley part are not clearly defined.
Claim 1 is indefinite because it is unclear what makes up “the differential rate of areas between a ridge part and an adjacent ridge part thereof along the axis parallel to the rotation axis”. What is meant by “formed along the axis parallel to the rotation axis”? There is no clear definition of where the ridge area part and adjacent ridge part are actually measured. Does it start at the apex of the ridge? Where does the area actually stop within the ridge part? Does it extend the entire width of the ridge part? Since there is no clear definition, the ridge part area and adjacent ridge part area can be any arbitrary areas within the ridge portions.
Claim 1 is indefinite because it is unclear what is meant by “a difference between a first pitch between a first ridge part and a second ridge part and a second pitch between the second ridge part and a third ridge part”. Are these first, second, and third ridge parts any locations/areas of the ridge? How are these parts determined? Where along the ridge parts is the pitch measured from? It is unclear how this pitch is actually determined and measured and requests that the Applicant please clarify.
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.
Claim(s) 1-2, 5, 8-10, 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Trapp et al. (6,676,004) in view of Fujii et al. (2019/0210149).
Regarding claim 1, Trapp discloses a friction stir welding tool member comprising: a shoulder portion 12; and a probe portion 14, wherein a helical concavo-convex portion including a ridge (top of groove, figure 1) and a valley 44 is provided on a side peripheral surface of the probe portion (figure 1), and in a cross-section passing through a rotation axis of the probe portion, a differential rate of areas between a valley part and an adjacent valley part thereof formed along an axis parallel to the rotation axis is within a range of 5% or more and 30% or less, the valley part and the adjacent valley part being included in the valley, an area of the valley part being a space formed by a cavity defined by an imaginary line between a first apex and a second apex a valley bottom of the valley part, in the cross-section passing through the rotation axis, a differential rate of areas between a ridge part and an adjacent ridge part thereof formed along the axis parallel to the rotation axis is within a range of 5% or more and 30% or less, the ridge part and the adjacent ridge part included in the ridge, a difference between a first depth of the valley part and a second depth of the adjacent valley part is within the range of 0.01 millimeters or more and 0.1 millimeters or less, and a difference between a first pitch between a first ridge part and a second ridge part and a second pitch between the second ridge part and a third ridge part is within a range of 0.01 mm or more and 0.2 mm or less, the first ridge part, the second ridge part, and the third ridge part included in the ridge.
Based on the 112 rejections above, it is not clear what is being claimed. However, a valley part and adjacent valley part can be any arbitrary area of the same valley when viewed in a cross section. Furthermore, the ridge and the adjacent ridge can be any arbitrary area. The first, second, and third ridge area parts are not clearly defined and can be any arbitrary area. The pitches can be any length since the first, second, and third ridge area parts not clearly defined. Since they are all arbitrary parts/areas, it is the Examiner’s position that the areas/parts can be selected within Trapp to meet the claim limitations above. Currently the claim limitations are met by Trapp.
Trapp does not disclose that the friction stir welding tool member is made of a silicon nitride sintered body. However, Fujii discloses making a friction stir welding probe out of sintered silicon nitride (abstract). To one skilled in the art at the time of the invention it would have been obvious to make the probe out of sintered silicon nitride because it creates an excellent durability (abstract).
Regarding claim 2, Trapp discloses wherein the valley of the helical concavo-convex portion is formed of one continuous piece (figure 1).
Regarding claim 5, since the first, second, and third ridge parts are not defined, they can be any arbitrary area, and therefore, the pitches could be measured to meet the claim limitation.
Regarding claims 8, 18, Trapp discloses that a front end surface of the probe portion has a curved surface shape in which a rotation center is a peak (figure 1). Trapp does not disclose a surface roughness Ra of the front end surface of the probe portion is within a range of 0.2 or more and 15 microns or less. However, Fujii discloses that the probe tip has a surface roughness of 10 microns or less (paragraph 0035). This overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05). To one skilled in the art at the time of the invention it would have been obvious to use a roughness within the claimed range as it helps the tool from being broken (paragraph 0035).
Regarding claim 9, Trapp discloses a root part of the probe portion has a curved surface shape with a radius of curvature of 0.1 mm or more (column 3 lines 35-47).
Regarding claim 10, Trapp discloses friction stir welding apparatus comprising the friction stir welding tool member according to claim 1 (figure 1).
Regarding claim 19, Trapp with Fujii disclose friction stir welding apparatus comprising the friction stir welding tool member according to claim 18 (figure 1 of trapp, figure 1 of Fujii).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2, 5, 8-10, 18-19 have been considered but are moot because the new ground of rejection provided above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIN B SAAD whose telephone number is (571)270-3634. The examiner can normally be reached Monday-Thursday 7:30a-6p.
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/ERIN B SAAD/ Primary Examiner, Art Unit 1735