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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/25/2024 has been considered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 112(a) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/508,669, fails to provide adequate support in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claim 1 recites, “wherein the metal insert prevents a molten portion of the high-strength steel member from mixing with a molten portion of the light metal member.” The disclosure of 16/508,609 fails to provide adequate support for this limitation. Accordingly, the effective filing date of the claims of instant application 18/597,335 is March 6, 2024.
Claim Interpretation
The “light metal member” of claim 1 is being interpreted as a metal such as aluminum, aluminum alloy, magnesium, magnesium alloy, titanium or titanium alloy, in view of paragraph [0007] of the specification, as well as Applicant’s remarks filed September 3, 2021 (page 6) in parent application 16/508,669. The “high-strength steel member” of claim 1, is being interpreted as a steel member such as USIBOR® 1500, ultrahigh-strength steel, high strength steel coated with zinc (Zn) or an aluminum-silicon (AISi) alloy coating, hot stamped boron steel, in view of paragraph [0032] of the specification, as well as Applicant’s remarks filed September 3, 2021 (page 6) in parent application 16/508,669. Paragraph [0032] also recites the following with regard to the tensile strength of ‘high-strength steel’: “the high-strength steel can have a tensile strength of between about 780 MPa and 1500 MPa (e.g., 780 MPa, 781 MPa, 782 MPa, ..., 1498 MPa, 1499 MPa, 1500 MPa) including any range or value therebetween. Additionally, this disclosure contemplates that the high-strength steel be a resistance spot weldable steel with nominal tensile strength greater than 1500 MPa.”
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 5 and 8 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 5 recites “wherein the high-strength steel member has a tensile strength of about 1500 MPa.” The term “about” renders unclear the scope of “about 1500 MPa.” That is, it is unclear what values would be considered “about 1500 MPa,” and what values would not be considered “about 1500 MPa.” For example, would 1499 MPa, or 1495 MPa, or 1475 MPa be considered to correspond to “about 1500 MPa?”
Similarly, claim 8 recites, “wherein the metal insert has a thickness of about 0.25 mm.” The term “about” renders unclear the scope of “about 0.25 mm” for reasons similar to those given above.
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 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.
Claims 1, 3 – 4, 6 – 10, and 13 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Broda et al. (EP 2679328) in view of Yang et al. (US 2015/0231729).
Regarding claim 1, Broda discloses a method for joining metals, comprising: forming an intermediate joint between a light metal member and a metal insert, wherein the intermediate joint is formed using a solid state welding process; and forming a primary joint between the light metal member and a high-strength steel member (Figs. 1-4 illustrate method steps for joining a first member (1) to a second member (3); in Figs. 1-2, welding insert (5) is joined to first member (1) by ultrasonic welding [0018], which is a solid state welding process, to form an intermediate joint; in Figs. 3-4, resistance welding is performed to join first member (1) with second member (3) [0023]-[0026]; “the first joining partner 1 is permanently connected to the second joining partner 3 by means of a connection having the first part connection 11 and the second part connection 13” [0026] of Google Patents translation; “second joining partner 3 has, in particular, a high-strength steel 22MnB5 + AS, wherein the first joining partner 1 comprises an aluminum material and / or magnesium material” [0053]; aluminum, aluminum alloys, magnesium, and magnesium alloys are examples of light metal members; “the weld insert which likewise has a steel material” [0011]; “the second joining partner 3 and the weld insert 5 are melted in regions to form the weld nugget 31” [0028]), wherein the primary joint is formed using a welding process that melts the high-strength steel member at a temperature above the respective melting points of the light metal member and the high-strength steel member (Broda discloses, "Advantageously, the weld insert 5 is high-melting, in particular so high-melting, that its melting temperature is above corresponding melting temperatures of the joining partners 1 and 3" [0050]; Broda also discloses wherein the weld insert 5 is melted: "the weld insert 5 and the second joining partner 3 are melted" [0032]; therefore, since weld insert 5 melts during the resistance welding process described in [0023]-[0026], and the melting temperature of weld insert 5 is "above corresponding melting temperatures of the joining partners 1 and 3," this indicates that the primary joint is formed using a welding process that melts the high-strength steel member at a temperature above the respective melting points of the light metal member and the high-strength steel member), wherein the welding process used to form the primary joint melts and fuses together the high-strength steel member and a first local region of the metal insert in contact with the high-strength steel member without melting and fusing together both the light metal member and a second local region of the metal insert in contact with the light metal member (“the second joining partner 3 and the weld insert 5 are melted in regions to form the weld nugget 31” [0028]; “Advantageously, the electric current flow 7 can be dimensioned such that only the weld insert 5 and the second joining partner 3 are melted, but not the first joining partner 1” [0032]; “In particular, the weld insert 5 is embedded in a predetermined and / or predetermined height in the first joining partner 1 by means of friction welding, in particular ultrasonic welding. Advantageously, a remaining residual height of the weld insert 5 can thereby be adjusted, which in particular can advantageously act as a current concentrator for the electrical current flow 7, in particular a type of weld boss for a butt weld welding represents. Advantageously, the height of the weld insert 5 can be selected such that a partial melting, in particular the weld nugget 31, does not reach the first joining partner 1” [0034]; this indicates that the resistance welding does not melt and fuse together both the light metal member / first joining partner 1 and a region of the metal insert / weld insert 5), and wherein the metal insert prevents a molten portion of the high-strength steel member from mixing with a molten portion of the light metal member (the height of the weld insert 5 can be selected such that a partial melting, in particular the weld nugget 31, does not reach the first joining partner 1” [0034]; a partial melting of weld nugget 31, achieved using a weld insert 5 having a height sufficient to result in part of weld insert not melting, results in weld insert 5 preventing a molten portion of high-strength steel member 3 from mixing with a molten portion of light metal member 1).
While Broda discloses wherein the primary joint is formed using a welding process that melts the high-strength steel member as described above, Broda does not disclose wherein the primary joint is formed using a welding process that melts both the light metal member and the high-strength steel member. Rather, Broda states, "Advantageously, the electric current flow 7 can be dimensioned such that only the weld insert 5 and the second joining partner 3 are melted, but not the first joining partner 1." Additionally, Broda does not disclose wherein the welding process used to form the primary joint melts the light metal member to braze onto the second local region of the metal insert.
Yang is directed toward spot welding of dissimilar metals [Title]. Yang discloses wherein a primary joint is formed using a welding process that melts both a light metal member and a steel member (Fig. 7 shows "steel workpiece 12" being welded to "aluminum alloy workpiece 14" [0043] by “resistance spot welding” [0041], wherein "molten steel weld pool 82" and "molten aluminum alloy weld pool 80" are created during the welding process [0044]). Additionally, Fig. 7 of Yang shows wherein the portion of the aluminum alloy workpiece that is melted is the portion that is adjacent to steel workpiece (that is, the upper portion of aluminum alloy workpiece 14 in Fig. 7). In Broda (and the claimed invention), the second local region of the metal insert is the portion of the metal insert that is adjacent to the aluminum workpiece. Therefore, since the upper portion of the aluminum alloy workpiece of Yang melts, in the combination of Broda and Yang this would result in the portion of the aluminum alloy workpiece of Broda (that is adjacent to the metal insert) to melt, thus resulting in the aluminum alloy workpiece (the light metal member) brazing onto the second local region of the metal insert.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the primary joint is formed using a welding process that melts both the light metal member and the high-strength steel member, wherein the welding process used to form the primary joint melts the light metal member to braze onto the second local region of the metal insert. As stated above, Broda recites, “the electric current flow 7 can be dimensioned such that only the weld insert 5 and the second joining partner 3 are melted, but not the first joining partner 1” [0032].” Therefore, Broda recognized that the parameters of the electric current flow affect whether the first joining partner (the light metal member melts). Yang describes that the electrical current density affects the formation of molten weld pools:
“The passage of the electrical current at different current densities through the workpieces 12, 14 is considered to be at least partially responsible for a series of metallurgical events that synergistically improve the spot weldability of the workpieces 12, 14. Passage of the electrical current through the workpieces 12, 14 initially causes the steel workpiece 12 to heat up more quickly than the aluminum alloy workpiece 14 since it has a higher resistivity. This heat imbalance--which becomes magnified due to the electrical current being more concentrated in the steel workpiece 12--causes a temperature gradient to become established in both the steel workpiece 12 and the aluminum alloy workpiece 14. The flow of heat down the temperature gradient toward the water-cooled aluminum alloy welding electrode 40, in conjunction with the generated heat that results from the resistance to the flow of the electrical current across the faying interface 28, eventually melts the aluminum alloy workpiece 14 and forms a molten aluminum alloy weld pool 80, as depicted in FIG. 7, which then wets the faying surface 20 of the steel workpiece 12” [0043].
Yang further states:
“The molten steel weld pool 82 is more likely to be initiated and grown when a weld schedule that calls for more aggressive electrical currents and/or longer weld times is employed” [0044].
Therefore, Yang teaches that the melting of steel and/or aluminum workpieces depends on the magnitude of the electrical current and/or the weld times. One of ordinary skill in the art would be able to incorporate Yang’s teaching that applying an appropriate current magnitude through the workpieces for an appropriate amount of time will result in the melting of the desired workpiece(s), and would be motivated to do so to achieve bonding of the materials without excessive melting. It is noted that while Yang does not expressly disclose the use of a metal insert between the aluminum alloy workpiece and the steel workpiece, Broda discloses a metal insert between an aluminum alloy workpiece and a steel workpiece, and one of ordinary skill in the art would be able to apply Yang’s teaching of applying an appropriate current magnitude for an appropriate amount of time, to melt the aluminum alloy workpiece of Broda.
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Figs. 1 and 2 of Broda
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Figs. 3 and 4 of Broda
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Fig. 7 of Yang
Regarding claim 3, Broda discloses wherein the high-strength steel member comprises a zinc or aluminum-silicon alloy coating (“second joining partner 3 has an AlSi layer” [0047]).
Regarding claim 4, Broda discloses wherein the high-strength steel member is press hardened steel (“Advantageously, the second joining partner 3 can be joined to a surface by means of resistance welding despite a comparatively rough surface and / or a stable layer produced by press hardening” [0053]).
Regarding claim 6, Broda discloses wherein the light metal member is aluminum (Al) or an aluminum alloy, or magnesium (Mg) or a magnesium alloy (“the first joining partner 1 comprises an aluminum material and / or magnesium material” [0053]).
Regarding claim 7, Broda discloses wherein the metal insert has a thickness greater than 0.125 millimeter (mm) (the ‘height’ [machine translation] of element 5 is “0.2 to 2 mm” [0048]).
Regarding claim 8, while Broda discloses wherein the metal insert has a thickness of “0.2 to 2 mm” [0048], Broda does not expressly disclose wherein the metal insert has a thickness of about 0.25 mm.
However, Broda states, “the height of the weld insert 5 can be selected such that a partial melting, in particular the weld nugget 31, does not reach the first joining partner 1” [0034].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the metal insert has a thickness of about 0.25 mm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Given the above teaching of Broda, one of ordinary skill in the art would recognize that the height/thickness of the metal insert affects whether the weld nugget reaches the light metal member, and would be able to choose an appropriate height/thickness of the metal insert.
Regarding claim 9, Broda discloses wherein the primary joint is formed to at least partially overlap with the intermediate joint (see Figs. 1-5, which show the location of the intermediate joint (at the location of welding insert (5)) and the primary joint (at the location between electrodes (29)).
Regarding claim 10, Broda discloses wherein the intermediate joint is selectively formed at a desired location of the primary joint before forming the primary joint (“The welding insert 5 can be connected to the first joining partner 1 ... by means of ultrasonic welding .... The ultrasonic welding with the first joining partner 1 serves as a so-called auxiliary joining process for the subsequent resistance spot welding process“ [0054]).
Regarding claim 13, Broda discloses wherein the solid state welding process used to form the intermediate joint is an ultrasonic welding process or an impact welding process (“ultrasonic welding” [0018]; see also the rejection of claim 1).
Regarding claim 14, Broda discloses wherein the welding process used to form the primary joint is resistance welding, projection welding, or a capacitive discharge welding process (“resistance spot welding” [0023]; see also the rejection of claim 1).
Regarding claim 15, Broda discloses wherein the solid state welding process used to form the intermediate joint is an ultrasonic spot welding process, and the welding process used to form the primary joint is resistance spot welding (“ultrasonic welding” [0018]; “resistance spot welding” [0023]; see also the rejection of claim 1).
Regarding claim 16, Broda does not expressly disclose wherein a thickness of intermetallic compounds at the interface between the light metal and high-strength steel members after formation of the primary joint is sufficiently thin to avoid a detrimental effect on mechanical properties of the primary joint.
However, Broda discloses “[i]ntermetallic phases can advantageously be avoided or at least reduced to a minimum by means of ultrasonic welding. Such low joining temperatures can advantageously be used in ultrasonic welding, so that neither the welding insert 5 nor the first joining partner 1 exceed a solidus line” [0052], and “no critical metallic phases arise or act on the first partial connection 11 and /or the second partial connection 13” [0060].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein a thickness of intermetallic compounds at the interface between the light metal and high-strength steel members after formation of the primary joint is sufficiently thin to avoid a detrimental effect on mechanical properties of the primary joint, based on Broda’s teaching that it is desirable to avoid intermetallic phases, and that “low joining temperatures” can be used to achieve this result.
Regarding claim 17, Broda does not expressly disclose wherein a strength of the primary joint is greater than a minimum required by an industry standard.
However, Broda discloses “a strength of the welded connection can be set and / or specified via a size and /or shape of the welding insert 5” [0061]. This indicates that the size and/or shape of the welding insert is a result-effective variable that will determine the strength of the welded connection.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein a strength of the primary joint is greater than a minimum required by an industry standard, in order to achieve a desired weld strength.
Regarding claims 18 and 19, Broda discloses providing a sealant layer between the light metal member and the metal insert before forming the intermediate joint [claim 19], and wherein the sealant layer is an adhesive [claim 20] (“The welding insert 5 can advantageously displace an adhesive layer previously applied to one of the joining partners 1 and 3 and form a welding point” [0049]).
Regarding claim 20, Broda discloses wherein the metal insert is a high melting point metal (“Advantageously, the weld insert 5 is high-melting” [0036]).
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Broda et al. (EP 2679328) in view of Yang et al. (US 2015/0231729), in further view of Sigler et al. (US 2010/0258537).
Regarding claim 2, Broda does not expressly disclose wherein the high-strength steel member is aluminized steel.
Sigler is related to methods of welding similar or dissimilar materials [0050]. Sigler discloses wherein a steel workpiece can be welded to an aluminum workpiece [0050], and wherein the steel workpiece can be “aluminized steel” [0051].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the high-strength steel member is aluminized steel, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. MPEP § 2144.07.
Regarding claim 12, while Broda discloses joining the first member and the welding insert via ultrasonic welding (see [0018], and the rejection of claim 1), Broda does not expressly disclose wherein the solid state welding process used to form the intermediate joint roughens a surface of the metal insert.
Sigler discloses that it is desirable to have a workpiece joining surface that has a “roughened surface texture” in order to “enable more effective rupture of the oxide layer on the opposing workpiece” [0045].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the solid state welding process used to form the intermediate joint roughens a surface of the metal insert. This “enable[s] more effective rupture of the oxide layer on the opposing workpiece” as disclosed by Sigler [0045], ultimately resulting in a desired bond.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Broda et al. (EP 2679328) in view of Yang et al. (US 2015/0231729), in further view of He et al. (Research on Mechanical Properties of 22MnB5 Steel Quenched in a Steel Die, J. Shanghai Jiaotong Univ. (Sci.), 2011, 16(2): 129-132).
Regarding claim 5, Broda does not expressly disclose wherein the high-strength steel member has a tensile strength of about 1500 MPa.
However, Broda discloses that 22MnB5 can be used as the high-strength steel member [0053]. It is known that 22MnB5 can be heat treated and quenched such that a tensile strength of 1500 MPa is achieved, as evidenced by He et al. (see, for example, pg. 131, Fig. 5).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the high-strength steel member has a tensile strength of about 1500 MPa, in order to achieve desired material properties. Broda discloses that the process can be performed on parts for a motor vehicle [0053], therefore it would be obvious to include parts with a desired tensile strength such that motor vehicle safety is achieved.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Broda et al. (EP 2679328) in view of Yang et al. (US 2015/0231729), in further view of Gafri et al. (US 2010/0108666).
Regarding claim 11, Broda does not expressly disclose wherein the intermediate joint is a metallurgical bond.
Gafri is directed toward a method of joining a first metal workpiece and a second metal workpiece utilizing a foil between the first metal workpiece and the second metal workpiece [Abstract]. Gafri discloses performing solid state welding [0002], such as ultrasonic welding [0007], in order to create a “metallurgical bond” [0002], [0003].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the intermediate joint is a metallurgical bond. A metallurgical bond is an “interlocking” [0002] bond between elements, that holds the elements together [0030]. Therefore, a metallurgical bond provides a strong bond which ensures that elements are adequately joined together.
Conclusion
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761