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 .
Election/Restrictions
Applicant’s election of Group I (claims 1-5) in the reply filed on 6/2/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
Claim 2 is 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 2, line 3 it is unclear if the “assuming” language positively requires a joining pressure P and the temperature difference.
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.
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 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Brenninger et al. (US 2008/0023527A1) (hereafter Brenninger).
With respect to claim 1, Brenninger teaches a method for manufacturing a tailored blank material (figure 3), characterized in that one member and the other member are subjected to linear friction-joining (paragraph 18), and a difference in tensile strength between the one member (5000 aluminum) and the other member (conventional steel) is set to 150 MPa or more (paragraphs 5, 13, and 19-20; and claims 1-6). It is the examiner’s position that the 5000 series aluminum and conventional steel of Brenninger would intrinsically have a difference in tensile strength of 150 MPa or more. 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. However, if the applicant can prove otherwise, the examiner takes the position that it would have been obvious to one of ordinary skill in the art to select a conventional steel with a tensile strength that will result in a difference of 150 MPa or more in order to form a weldment with the desired mechanical and/or chemical properties.
With respect to claim 4, Brenninger teaches in that the one member and/or the other member are galvanized steel sheets (paragraphs 5 and 15; and claim 6).
Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cao et al. (US 5,941,110) (hereafter Cao).
With respect to claim 1, Cao teaches a method for manufacturing a tailored blank material (title), characterized in that one member and the other member are subjected to linear (column 4, lines 3 and 15) friction-joining (column 4, line 2), and a difference in tensile strength between the one member (aluminum) and the other member (low carbon steel or high strength low alloy steel) is set to 150 MPa or more (paragraphs 5, 13, and 19-20; and claims 1-6). It is the examiner’s position that the aluminum and low carbon steel or high strength low alloy steel of Cao would intrinsically have a difference in tensile strength of 150 MPa or more. 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. However, if the applicant can prove otherwise, the examiner takes the position that it would have been obvious to one of ordinary skill in the art to select a low carbon steel or high strength low alloy steel with a tensile strength that will result in a difference of 150 MPa or more in order to form a weldment with the desired mechanical and/or chemical properties.
With respect to claim 4, Cao teaches in that the one member and/or the other member are galvanized steel sheets (column 4, lines 1-17).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brenninger or Cao as applied to claim 1 above, and further in view of Zarisfi (GB-2547688A).
With respect to claim 3, Brenninger teaches linear friction welding sheets (figures 1-3), and Cao teaches linear friction welding sheets (figures; and column 1, line 13-colun 2, line 46)
Although Brenninger or Cao do not explicitly that the steel sheet has a tensile strength of 980 MPa or more.
However, Zarisfi teaches linear friction welding steels with a tensile strength of above 700 MPa (page 3, lines 8-10 and 30-31).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the steel of Zarisfi in the linear friction welding process of Brenninger or Cao in order to form a weldment with the desired mechanical and/or chemical properties.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brenninger or Cao and Zarisfi as applied to claims 1 and 3 above, and further in view of Fujii et al. (US 2018/0214974A1) (hereafter Fujii).
With respect to claim 5, Brenninger or Cao and Zarisfi do not teach that the joining temperature is set to a point A.sub.1 or less of the steel sheet.
However, Fujii teaches linear friction welding (paragraph 2, 17, and 64) wherein the joining temperature is set to a point A.sub.1 or less (paragraphs 19, 21, 58, 60, and 84).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the joining temperature of Fujii in the process of Brenninger or Cao and Zarisfi in order to suppress the formation of martensite.
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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.
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 on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KILEY S STONER/ Primary Examiner, Art Unit 1735
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