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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 2/2/24 and 6/2/25 have been considered by the examiner.
Claim Observations
The Examiner notes that the terms TJ and D are defined in claim 1. Claim 5 depends from claim 1 and repeats the exact same definitions, which is redundant. Claim 16-20 depend ultimately from claim 1 and repeat the exact same definitions, and thus are also redundant. The Examiner notes that the term α is defined in claim 4. Claim 18 depends from claim 4 and repeats the exact same definition, which is redundant.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 14-20 of U.S. Patent No. 12337408. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the reference patent claims: An electrical steel strip friction stir welding method for joining a first electrical steel strip and a second electrical steel strip as a material to be joined by a pair of rotating tools facing each other, comprising (An electrical steel strip friction stir welding method for joining a first electrical steel strip and a second electrical steel strip following the first electrical steel strip by a pair of rotating tools facing each other, comprising): a preheating process of preheating an unjoined portion of the material to be joined by a heating device disposed in front of the rotating tools in a joining direction on at least one side of the material to be joined; and a joining process of pressing the rotating tools into the unjoined portion of the material to be joined from both sides while rotating the rotating tools in opposite directions, and joining the first electrical steel strip and the second electrical steel strip by moving the rotating tools in the joining direction, wherein the unjoined portion of the material to be joined is a butted portion or an overlapped portion between an end of the first electrical steel strip and an end of the second electrical steel strip following the first electrical steel strip (pressing the rotating tools into an unjoined portion that is a butted portion or an overlapped portion between an end of the first electrical steel strip and an end of the second electrical steel strip from both sides of the unjoined portion while rotating the rotating tools in opposite directions; and joining the first electrical steel strip and the second electrical steel strip by moving the rotating tools in a joining direction), the preheating process and the joining process are performed continuously by moving the heating device in the joining direction in conjunction with the rotating tools, the diameter D (mm) of shoulders of the rotating tools satisfies the relationship of the following Expression (7) (wherein the diameter D (mm) of shoulders of the rotating tools satisfies the relationship of the following Expression (1)), and a rotation speed RS (r/min) of the rotating tools, the diameter D (mm) of the shoulders of the rotating tools, and a joining speed JS (mm/min), expressed as RS x D3/JS, satisfy the relationship of the following Expression (8) (and a rotation speed RS (r/min) of the rotating tools, the diameter D (mm) of the shoulders of the rotating tools, and a joining speed JS (mm/min), expressed as RS x D3/JS, satisfy the relationship of the following Expression (2)) 4 × TJ ≤ D ≤ 10 × TJ ...(7) (4 × TJ ≤ D ≤ 10 × TJ...(1)) 180 × TJ ≤ RS × D3/JS ≤ 1500 × TJ ...(8) (200 x TJ ≤ RS x D3/JS ≤ 2000 x TJ...(2)) where TJ is defined such that, when the unjoined portion is the butted portion, TJ is an average value (mm) of the thickness of the first electrical steel strip and the thickness of the second electrical steel strip, and when the unjoined portion is the overlapped portion, TJ is the thickness (mm) of the overlapped portion (where TJ is defined such that, when the unjoined portion is the butted portion, TJ is an average value (mm) of the thickness of the first electrical steel strip and the thickness of the second electrical steel strip, and when the unjoined portion is the overlapped portion, TJ is the thickness (mm) of the overlapped portion).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 of U.S. Patent No. 12533745. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of the reference patent includes all of the limitations of claim1.
Claims 1-3, 5-12, and 16-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 13, and 18-20 of copending Application No. 18992693 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims the limitations of the rejected claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 2-3, 12-13, and 16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 2, this claim includes the limitation of “mainly ferrite phase” in lines 4-5. The metes and bounds of this claim cannot be determined since it is not clear what amount of ferrite would be required for the microstructure to be “mainly ferrite phase” within this claim. For example, it is not clear if ferrite must merely be the most plentiful phase, if it must be a majority of the microstructure, or another interpretation.
In further regards to claim 2, this claim sets forth the measurements of Hsz, Hbm1, and Hbm2 within the claim. The metes and bounds of this claim cannot be determined since it is not clear what method is utilized in determining the hardness value. For example, Vickers, Brinnell, or Rockwell hardness methods may be utilized. Additionally, the tests may be characterized by the applied force, leading to microhardness, small load, and macro Vickers tests, with designations like HV0.01, HV1, and HV10.
Regarding claim 2, this claim includes the limitation of “wherein the joining is performed under conditions that the steel microstructures of the joined portion and the thermo-mechanically affected zone formed by the joining of the first electrical steel strip and the second electrical steel strip become mainly ferrite phase and the relationships of the following Expressions (3) to (6) are satisfied” in lines 2-5. However, the average grain size of the ferrite and the hardness in the joined portion and the thermo-mechanically affected zone are the results of the joining conditions, rather than joining conditions themselves. The metes and bounds of this claim cannot be determined since it is not clear what joining conditions would be required for the joined portion and the thermo-mechanically affected zone to satisfy the relationships of Expressions (3) to (6) within this claim.
Claims 12-13 and 16 are rejected due to their dependence on rejected claim 2.
Regarding claim 3, this claim includes the limitation of “wherein the joining is performed under conditions satisfying the relationships of the following Expressions (7) and (8), 0.8 x TbmL ≤ TszL ...(7) TszH ≤ 1.3xTbmH...(8)” in lines 2-5. However, the minimum value (mm) of the thickness of the joined portion, and the maximum value (mm) of the thickness of the joined portion are the results of the joining conditions. The metes and bounds of this claim cannot be determined since it is not clear what joining conditions would be required for the minimum value (mm) of the thickness of the joined portion, and the maximum value (mm) of the thickness of the joined portion to satisfy the relationships of Expressions (7) and (8) within this claim.
Regarding claim 12, this claim includes the limitation of “wherein the joining is performed under conditions satisfying the relationships of the following Expressions (7) and (8), 0.8 x TbmL ≤ TszL ...(7) TszH ≤ 1.3xTbmH...(8)” in lines 2-5. However, the minimum value (mm) of the thickness of the joined portion, and the maximum value (mm) of the thickness of the joined portion are the results of the joining conditions. The metes and bounds of this claim cannot be determined since it is not clear what joining conditions would be required for the minimum value (mm) of the thickness of the joined portion, and the maximum value (mm) of the thickness of the joined portion to satisfy the relationships of Expressions (7) and (8) within this claim.
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.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parentheses. Examiner explanations are shown in italics.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-5 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Matsushita et al. (US 20200215644 A1).
Regarding claim 1, Matsushita teaches “a double-sided friction stir welding method including: disposing a pair of opposed rotating tools on the top and bottom sides of a butt joint or a lap joint between metal sheets” (which reads upon “an electrical steel strip friction stir welding method for joining a first electrical steel strip and a second electrical steel strip following the first electrical steel strip by a pair of rotating tools facing each other, comprising”, as recited in the instant claim; paragraph [0001]). Matsushita teaches that “the pair of rotating tools are pressed against the top and bottom sides of the metal sheets and moved in the welding direction while rotated” (which reads upon “pressing the rotating tools into an unjoined portion”, as recited in the instant claim; paragraph [0026]). Matsushita teaches “pressing the rotating tools into an unjoined portion” (which reads upon “that is a butted portion or an overlapped portion between an end of the first electrical steel strip and an end of the second electrical steel strip from both sides of the unjoined portion”, as recited in the instant claim; paragraph [0024]). Matsushita teaches that “in order that a temperature increase and shear stress enough to achieve a good welded state are obtained uniformly in the thickness direction of the metal sheets, it is necessary that the rotation direction of one of the pair of rotating tools be opposite to the rotation direction of the other one” (which reads upon “while rotating the rotating tools in opposite directions”, as recited in the instant claim; paragraph [0019]). Matsushita teaches “moving the pair of rotating tools along the butt joint or the lap joint in a welding direction while the pair of rotating tools are rotated to thereby soften a portion of the metal sheets by heat of friction between the rotating tools and the metal sheets; and stirring the softened portion with the rotating tools to generate plastic flow to thereby join the metal sheets together” (which reads upon “joining the first electrical steel strip and the second electrical steel strip by moving the rotating tools in a joining direction”, as recited in the instant claim; paragraph [0024]). Matsushita teaches that “the diameter D is 4×t≤D≤20×t, and that the thickness t is the thickness t of each of the metal sheets 3 when they are butt welded and is the total thickness t of the lapped metal sheets 3 when they are lap welded” (which reads upon “wherein the diameter D (mm) of shoulders of the rotating tools satisfies the relationship of the following Expression (1), 4 × TJ ≤ D ≤ 10 × TJ...(1), where TJ is defined such that, when the unjoined portion is the butted portion, TJ is an average value (mm) of the thickness of the first electrical steel strip and the thickness of the second electrical steel strip, and when the unjoined portion is the overlapped portion, TJ is the thickness (mm) of the overlapped portion”, as recited in the instant claim; paragraph [0073]). Matsushita teaches that “steel sheets having the thicknesses, chemical compositions, tensile strengths shown in Table 1 were used to perform friction stir welding” (paragraph [0089]). Matsushita teaches that “the welding conditions for the friction stir welding are shown in Table 2” (paragraph [0089]). Example 4 of Matsushita teaches welding conditions which meet Expressions 1 and 2 (which reads upon “wherein the diameter D (mm) of shoulders of the rotating tools satisfies the relationship of the following Expression (1), and a rotation speed RS (r/min) of the rotating tools, the diameter D (mm) of the shoulders of the rotating tools, and a joining speed JS (mm/min), expressed as RS x D3/JS, satisfy the relationship of the following Expression (2), 4 × TJ ≤ D ≤ 10 × TJ...(1) 200 x TJ ≤ RS x D3/JS ≤ 2000 xTJ...(2) where TJ is defined such that, when the unjoined portion is the butted portion, TJ is an average value (mm) of the thickness of the first electrical steel strip and the thickness of the second electrical steel strip, and when the unjoined portion is the overlapped portion, TJ is the thickness (mm) of the overlapped portion”, as recited in the instant claim; Tables 1 and 2).
Matsushita teaches that Example 4 was butt welded and that the thickness of the sheets was 1.6 mm (which reads upon “where TJ is defined such that, when the unjoined portion is the butted portion, TJ is an average value (mm) of the thickness of the first electrical steel strip and the thickness of the second electrical steel strip, and when the unjoined portion is the overlapped portion, TJ is the thickness (mm) of the overlapped portion”, as recited in the instant claim; Tables 1 and 2; TJ = 1.6 mm). Matsushita teaches that in Example 4 the diameter D (mm) of shoulders of the rotating tools was 12 mm (Tables 1 and 2). 4 × TJ ≤ D ≤ 10 × TJ...(1) 4 x 1.6 = 6.4; D = 12; 10 x 1.6 = 16; 6.4 ≤ 12 ≤ 16. Accordingly, Expression 1 is satisfied.
Matsushita teaches that in Example 4 the rotation speed RS (r/min) of the rotating tools was 2500 rpm (Tables 1 and 2; RS = 2500). Matsushita teaches that in Example 4 the welding speed T (m/min) was 5 (Tables 1 and 2; JS = 5 m/min = 5000 mm/min). 200 x TJ ≤ RS x D3/JS ≤ 2000 xTJ. 200 x (1.6) ≤ 2500 x (12)3/5000 ≤ 2000 x (1.6). 320 ≤ 864 ≤ 3200. Accordingly, Expression 2 is satisfied.
Matsushita teaches that “in the following description, a butt joint (or a lap joint) in which metal sheets (e.g., steel sheets) are butted (or lapped) together but still unwelded is referred to as an “unwelded joint,” and an integrated portion joined by plastic flow is referred to as a “welded joint”” (paragraph [0003]). Matsushita teaches joining steel sheets in general. Matsushita is silent regarding electrical steel. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the generic steel sheets of Matsushita with electrical steel sheets in applications where electrical steel is preferred. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled 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 (MPEP § 2143.A.). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143, B.).
Regarding claim 2, Matsushita teaches the method of claim 1 as stated above. Matsushita is silent regarding the microstructure including the grain size of the ferrite of the joined portion and the thermo-mechanically affected zone. Matsushita is silent regarding the hardness of the joined portion and the thermo-mechanically affected zone. It is reasonable to conclude that the claimed parameters of the joined portion and the thermo-mechanically affected zone meeting the claimed Expressions is inherent to the method of Matsushita. Applicant does not teach any joining conditions related to obtaining the desired parameters of the joined portion and the thermo-mechanically affected zone, apart from those claimed in claim 1. Accordingly, the art teaches the joining conditions which lead to the claimed Expressions. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office's inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Additionally, or alternatively, claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. Examples of claim language that may raise a question as to the limiting effect of the language in a claim include wherein and whereby. The court in Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). See MPEP § 2111.04 I. Here, the claim is a wherein clause which simply expresses the intended result of the process steps of claim 1. No additional process steps are claimed. Accordingly, the wherein clause is not given patentable weight.
Regarding claims 3 and 12, Matsushita teaches the method of claims 1 and 2 as stated above. Matsushita is silent regarding the minimum or maximum of the joined portion. It is reasonable to conclude that the minimum and maximum of the joined portion meeting the claimed Expressions is inherent to the method of Matsushita. Matsushita teaches that in Example 4 the tilt angle α of top and bottom side of the rotating tool was 1.5° (Tables 1 and 2; α= 1.5). Applicant teaches that “when the tilt angle α of the rotating tool exceeds 0°, the effect described above is obtainable; however, when the tilt angle α of the rotating tool exceeds 2°, front and back surfaces of the joined portion tend to become concave” (paragraph [0175]). Applicant teaches that “this decreases the minimum value of joined portion thickness relative to base metal thickness” (paragraph [0175]). Applicant teaches that “the tilt angle α of the rotating tool is preferably in the range of 0°<α≤2° for both the front side rotating tool and the back side rotating tool” (paragraph [0175]). Applicant does not teach any other joining conditions related to obtaining the desired thickness of the joined portion. Accordingly, the art teaches the joining conditions which lead to the claimed Expressions. One of ordinary skill in the art would expect that the minimum and maximum of the joined portion meeting the claimed Expressions is inherent to the method of Matsushita. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office's inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Additionally, or alternatively, claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. Examples of claim language that may raise a question as to the limiting effect of the language in a claim include wherein and whereby. The court in Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). See MPEP § 2111.04 I. Here, the claim is a wherein clause which simply expresses the intended result of the process steps of claim 1. No additional process steps are claimed. Accordingly, the wherein clause is not given patentable weight.
Regarding claims 4 and 13-15, Matsushita teaches the method of claims 1, 2-3, and 12 as stated above. Matsushita teaches that in Example 4 the tilt angle α of top and bottom side of the rotating tool was 1.5° (Tables 1 and 2; α= 1.5).
Regarding claims 5 and 16-20, Matsushita teaches the method of claims 1-4 and 12-13 as stated above. Matsushita teaches that “a gap G (mm) between the shoulders that is created by forming a gap g (mm) between the tips of the pins of the pair of rotating tools satisfies (0.5×t)−(0.2×D×sin α)≤G≤t−(0.2×D×sin α), where t is the thickness (mm) of each of the metal sheets when the metal sheets are butted or is the total thickness (mm) of the metal sheets when the metal sheets are lapped, and D is the diameter (mm) of the shoulders of the rotating tools” (paragraph [0028]; very similar expression). Matsushita teaches that Example 4 was butt welded and that the thickness of the sheets was 1.6 mm (Tables 1 and 2; TJ = 1.6 mm). Matsushita teaches that in Example 4 the diameter D (mm) of shoulders of the rotating tools was 12 mm (Tables 1 and 2). Matsushita teaches that in Example 4 the tilt angle α of top and bottom side of the rotating tool was 1.5° (Tables 1 and 2; α= 1.5). Matsushita teaches that in Example 4 the gap was 1 mm (Tables 1 and 2; G= 1). (0.5×TJ)−(0.1×D×sin α) ≤ G ≤ (0.9 x TJ)−(0.1×D×sin α). (0.5×1.6)−(0.1×12×sin (1.5)) ≤ 1 ≤ (0.9 x 1.6)−(0.1×12×sin (1.5)). (0.8)−(0.0314) ≤ 1 ≤ (1.44)−(0.0314). 0.77 ≤ 1 ≤ 1.41. Accordingly, Expression (10) is satisfied.
Claims 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Matsushita et al. (US 20200215644 A1), as applied to claim 1 above, and further in view of Gendoh et al. (US 20020158109 A1).
Regarding claims 6-10, Matsushita teaches the method of claim 1 as stated above.
Matsushita is silent regarding wherein the rotating tools are rotating tools without probes (pins).
Gendoh is similarly concerned with how “to join first and second metal members by lapping at least two metal members one over the other; pressing a planar tip of a rotor against the above first metal member; rotating the above rotor and stirring the portion of the above first metal member subjected to joining by the use of friction caused by the rotating motion of said rotor while keeping the same in a non-molten state, so as to form a non-molten stirred layer while expanding the non-molten stirred layer to said second metal member” (paragraph [0007]). Gendoh teaches that “according to this construction, metal members can be strongly joined without causing thermal distortion and a trace of welding” (paragraph [0010]). Gendoh teaches that “another rotor is provided in such a manner as to face the tip portion of the above rotor via the first and second metal members, the two rotors being rotated in the opposite direction with the first and second metal members interposed between them” (paragraph [0012]). Gendoh teaches “pressing a planar tip of a rotor against the above metal member; rotating the above rotor and stirring the above metal member by the use of friction caused by the rotating motion of said rotor while keeping the same in a non-molten state” (paragraph [0020]). Gendoh teaches that “this enables refinement of the metal structure and decrease in casting defects, thereby the material characteristics such as thermal fatigue (low cycle fatigue) life, elongation and impact resistance can be improved” (paragraph [0021]). Gendoh teaches that “FIGS. 2A, 2B, 3A, 3B, 4A and 4B are views illustrating the shapes of the tip portions 3 of various possible types rotating tools 1” (paragraph [0023]). Gendoh FIGs. 2A and 2B show that the rotating tip is flat, i.e., without a probe (which reads on claims 6 and 7; FIGs. 2A and 2B). Gendoh teaches that “the planar tip portion 3 is provided with a plurality of projections (or grooves) 3 b radiating from its center to the periphery” (which reads upon “spiral”, as recited in the instant claims; paragraph [0066]). Gendoh teaches that “the planar tip portion 3 is provided with at least one groove (or projection) 3 c running from its center to the periphery so that the height of the tip portion varies in the circumferential direction” (paragraph [0066]; portions can become gradually higher or gradually lower from the center to the periphery). Gendoh teaches that “cutting tips 1 b are not necessarily flat, but they may be formed into spiral cutting blades for example” (which reads upon instant claim 8; paragraph [0116]). Gendoh teaches that “the cutting tips 1 b or burr suppressing bump 1 c is not necessarily fixed on the rotating tool 1, it may be formed in such a manner as to move up and down coaxially relative to the axis of rotation of the rotating tool 1” (which reads upon instant claims 9 and 10; paragraph [0123]).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Matsushita to include flat, concave, convex, or spiral leading ends, as taught by Gendoh to enable refinement of the metal structure and a decrease in casting defects, thereby the material characteristics such as thermal fatigue (low cycle fatigue) life, elongation and impact resistance can be improved.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Matsushita et al. (US 20200215644 A1), as applied to claim 1 above, and further in view of Kaga et al. (EP 2474382 A1).
Regarding claim 11, Matsushita teaches the method of claim 1 as stated above.
Matsushita is silent regarding cold-rolling.
Kaga is similarly concerned with a both-side friction stir welding method for joining two metal plates together (paragraph [0033]). Kaga teaches “a metal plates joining method in cold rolling system, the method comprising the step of joining metal plates delivered to cold rolling by using the both-side friction stir welding method in any one of any one of the first to fifteenth aspects of the invention” (which reads upon instant claim 11; paragraph [00]). Kaga teaches that “by applying such a both-side friction stir welding of the invention to joining of metal plates subjected to cold rolling in the above-described manner, a cold rolling of high strength reliability welding and high productivity and high yield can be carried out at a low cost” (paragraph [0083]). Kaga teaches that “with the both-side friction stir welding method of the present invention that allows various problems to be solved, less expensive and more highly strength-reliable joining can be supplied by joining together the steel plates or nonferrous metals, such as aluminum alloys and copper alloys, which will be later subjected to cold rolling” (paragraph [0244]).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Matsushita to add cold rolling, as taught by Kaga such that a cold rolling of high strength reliability welding and high productivity and high yield can be carried out at a low cost. A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 (2007) (see MPEP §§ 2143 and 2143.02).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hasegawa et al. (US 20190211411 A1). Iqbal et al. (US 20180264586 A1). Hasegawa and Iqbal are considered pertinent to at least claim 2 and teach how to control ferrite and hardness in friction welding.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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