Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 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.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the steel constituting the backing material having a volume per unit mass greater at room temperature than at the Ms point. Applicant’s disclosure teaches the backing material having the claimed volume per unit mass during the welding process due to martensitic transformation during cooling (see ¶ [0010] of Applicant’s originally filed specification). However, claim 1 is directed to an already welded structure wherein the backing material has already undergone the martensitic transformation. Further, Applicant’s disclosure does not teach the backing material of the already welded structure capable of the volume per unit mass limitation without transforming and changing the properties of the backing material. Thus, this limitation is not supported by the originally filed disclosure.
For purposes of compact prosecution, for prior art purposes the claims will be interpreted as the backing material capable of having a volume per unit mass greater at room temperature than at the Ms point if subjected to a heat treatment that transforms the backing material and changes properties of the backing material, or capable of a volume per unit mass greater at room temperature than at the Ms point when forming the transformed region.
Claims 2-8 are rejected for depending from claim 1.
Rejections under 35 USC 102
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 6,428,633 (“Kasuya”).
Regarding claim 1, Kasuya teaches a welded structure comprising: a first member which is a steel plate or a cast steel (i.e. left plate illustrated in fig. 1, see also col. 1 lines 5-15, col. 8 lines 59-60 & Tables 1 & 3, wherein the welded structures illustrated in fig. 1 are a Ni-alloyed or Cr-alloyed steel); a second member which is a steel plate or a cast steel disposed adjacent to the first member with a space therebetween (i.e. right plate illustrated in fig. 1, see also col. 1 lines 5-15, col. 8 lines 59-60 & Tables 1 & 3, wherein the welded structures illustrated in fig. 1 are a Ni-alloyed or Cr-alloyed steel); a first welded portion filling the space and joining the first member to the second member (fig. 1, col. 4 lines 25-35, cols. 18-19 lines 56-37, wherein one of skill in the art appreciates that the weld metal fills the space between the left and right plates to weld the plates together); and a backing material composed of a steel disposed in contact with the first welded portion so as to close a first opening of the space (i.e. bottom plate illustrated in fig. 1 extending between the left and right plates, see also col. 1 lines 5-15, col. 8 lines 59-60 & Tables 1 & 3, wherein the welded structures illustrated in fig. 1 are a Ni-alloyed or Cr-alloyed steel), the backing material including a transformed region having a martensitic structure in the region in contact with the first welded portion (col. 5 lines 10-60, col. 7 lines 37-67, col. 25-26 lines 35-55, wherein a weld zone including heat affected zones of the steel materials to be welded expand due to martensite transformation).
Claim 1 lastly recites the steel constituting the backing material having a volume per unit mass greater at room temperature than at the Ms point. As detailed above, since the steel of the backing material is capable of forming martensite when subjected to a heat treatment, the backing material is capable of having a volume per unit mass greater at room temperature than at the Ms point if subjected to a heat treatment that transforms the backing material and changes properties of the backing material since martensitic transformation of steel expands the steel so that the volume per unit mass at the Ms temperature is less then when the steel is cooled to room temperature.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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(a) 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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Kasuya as applied to claim 1 above, and further in view of US Patent No. 2,362,505 (“Smith”).
Regarding claim 2, Kasuya fails to explicitly teach a second welded portion disposed in contact with the first member and the backing material and joining the first member to the backing material. However, this would have been obvious in view of Smith.
Smith is also directed to butt-welding two plates 11 & 12 having a space therebetween and a backing material 14 attached to the plates (fig. 1, col. 2 lines 25-31). The material 14 can be held to the plates via a variety of methods including welding (col. 2 lines 32-34).
In this case, each of Kasuya and Smith are directed to butt-welding two plates having a space therebetween and a backing material attached to the plates. While Kasuya is silent as to how the backing material is fixed to the plates prior to welding the plates together, Smith teaches one of skill in the art that it is known to weld the backing material to the plates. Thus, in order to fix the plates and backing material of Kasuya prior to welding the plates together it would be obvious to weld the backing material to each of the plates. Thus, the assembly in fig. 1 of Kasuya comprises second and third welded portions that contact and join the backing materials to the first and second plates, respectively.
Regarding claim 3, Kasuya fails to explicitly teach a third welded portion disposed in contact with the second member and the backing material and joining the second member to the backing material. However, this is obvious in view of Smith for the same reasons detailed in the rejection to claim 2, above.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kasuya as applied to claim 1 above.
Regarding claim 4, Kasuya fails to explicitly teach the first member and the second member are steel plates or cast steels having a thickness of not less than 6 mm. However, MPEP 2144.04(IV)(A) states that changes in size are prima facie obvious if the prior art having the claimed size would not perform differently. In this case, Kasuya is silent as to the thicknesses of the first and second members. However, the first and second members will still be able to be welded together if they had a thickness of 6mm or more. Thus, this limitation is not sufficient to patentably distinguish over Kasuya.
In the alternative, the examiner is taking Official Notice that it is well known in art of welding to butt-weld plates having a thickness greater than 6mm. Thus, it would be obvious and predictable to modify Kasuya so that the plates are greater than 6mm.
Claim 5 recites the steel constituting the backing material has a yield stress greater than a yield stress of a material constituting the first welded portion. Kasuya teaches that the yield strength (which is fundamentally the same as yield stress, i.e. the stress at which a material transitions from elastic deformation to plastic deformation) for each of the welded materials and the weld metal should be within 60 to 120 kg/mm2 at the transformation starting temperature (col. 3 lines 9-14 & 51-56). Kasuya also gives many examples of weld metals and steel structures to be welded. In Tables 1 & 3 of Kasuya, Kasuya teaches steels for the structures to be welded that have yield strengths between 63 and 113.6. In Tables 2 & 4 of Kasuya, Kasuya teaches steels for weld metal/metal wire that have yield strengths between 70 and 115. Thus, it would be routine experimentation to determine the workable and/or optimal combinations of steels used for the welded structures and the welding wire, wherein some of the combinations comprise steel of the backing material having a yield strength and stress greater than the yield strength and stress of the first welded portion. See MPEP 2144.05(II).
In addition, Kasuya also teaches specific combinations that meet this claim. For example, Tables 5-12 show examples wherein the residual stress was reduced to less than 10 kg/mm2. Some of these examples comprise a steel used for the welding material that has a yield strength/stress greater than the steel used for the weld wire/first welded portion.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2020/0190767 (“Aoyama”) in view of Kasuya.
Regarding claim 1, Aoyama teaches a welded structure comprising: a first member (32) which is a … plate or a cast steel (fig. 5, ¶ [0048]); a second member (22) which is a steel plate or a cast steel disposed adjacent to the first member with a space therebetween (fig. 5-6, ¶ [0038]); a first welded portion (44) filling the space and joining the first member to the second member (fig. 5-6, ¶ [0050] & [0053]); and a backing material (46) … disposed in contact with the first welded portion so as to close a first opening of the space (fig. 5-6, ¶ [0052]-[0053]).
Aoyama fails to explicitly teach the first member being a steel plate, the backing member composed of a steel, the backing material including a transformed region having a martensitic structure in the region in contact with the first welded portion. However, this would be obvious in view of Kasuya.
Kasuya is directed to a butt-welding technique for steel materials comprising a backing member to decrease residual stress in a weld zone and improve various properties of welded structures (fig. 1, col. 1 lines 5-15 & 36-45, col. 5 lines 10-60). Kasuya teaches the materials to be welded and the weld metal are a steel material having an Ms temperature and yield strength within a certain range so that the weld metal and weld zone (including heat affected zone of the steel materials to be welded) expand due to martensite transformation, thus causing the weld zone to become in a compressive state (col. 5 lines 10-60, col. 7 lines 37-67, col. 25-26 lines 35-55).
In this case, Aoyama teaches welding a steel plate to another plate with a backing member in contact with the two plates and the welded portion, but is silent as to the material of the other plate, backing member, and the weld metal. One of skill in the art appreciates that it is generally easier to weld similar metals together since similar metals have similar melting points, thermal expansion rates, and chemical compositions. Further, Kasuya teaches a known butt-welding method to create welded structures with improved properties (i.e. the materials to be welded are all steel having Ms temperatures and yield strengths within a certain range so that the weld metal and weld zone expand due to martensite transformation, thus causing the weld zone to become in a compressive state). Thus, it would be obvious to modify Aoyama so that the first member, second member, backing material, and weld metal are all steels having compositions, Ms temperatures and yield strengths as taught by Kasuya, and wherein the welding process causes the weld metal and heat affected zone of the steel materials (including the backing material) to expand due to martensite transformation.
Given the above modification, the heat affected region of the backing material in contact with the first welded portion will have a martensitic structure.
Claim 1 lastly recites the steel constituting the backing material having a volume per unit mass greater at room temperature than at the Ms point. As detailed above, since the steel of the backing material is capable of forming martensite when subjected to a heat treatment, the backing material is capable of having a volume per unit mass greater at room temperature than at the Ms point if subjected to a heat treatment that transforms the backing material and changes properties of the backing material since martensitic transformation of steel expands the steel so that the volume per unit mass at the Ms temperature is less then when the steel is cooled to room temperature.
Claim 2 recites a second welded portion disposed in contact with the first member and the backing material and joining the first member to the backing material. Aoyama teaches to weld the backing member 46 to steel plate 32 (fig. 5, ¶ [0053]). Thus, when interpreting plate 32 as the first member, a second welded portion is disposed in contact and joining the first member and backing material.
Claim 3 recites a third welded portion disposed in contact with the second member and the backing material and joining the second member to the backing material. Aoyama teaches to weld the backing member 46 to steel plate 32 (fig. 5, ¶ [0053]). Thus, when interpreting plate 32 as the second member, a welded portion is disposed in contact and joining the second member and backing material.
In the alternative, assuming arguendo that plate 22 is interpreted as the second member, it would be obvious to weld backing member to plate 22 since Aoyama teaches to fix backing member 46 in place via welding to at least one of the plates (fig. 5, ¶ [0053] of Aoyama). Since upper plate 23 is welded to plates 22 after positioning plate 22 with respect to backing member 46 (see ¶ [0053]), backing member 46 is capable of being welded to plate 22 via access that is subsequently closed by plate 23 being attached to plate 22.
Regarding claim 4, Aoyama fails to explicitly teach the first member and the second member are steel plates or cast steels having a thickness of not less than 6 mm. However, MPEP 2144.04(IV)(A) states that changes in size are prima facie obvious if the prior art having the claimed size would not perform differently. In this case, Aoyama is silent as to the thicknesses of the first and second members. However, the first and second members will still be able to be welded together if they had a thickness of 6mm or more. Further, one of skill in the art appreciates that plates with thicknesses of greater than 6mm can be butt-welded together. In addition, the first and second members will still be capable of forming the work implement of the excavator since excavators require a strong work implement due to the forces applied to them. Thus, this limitation is not sufficient to patentably distinguish over Aoyama et al.
In the alternative, the examiner is taking Official Notice that it is well known in art of welding to butt-weld plates having a thickness greater than 6mm. Thus, it would be obvious and predictable to modify Aoyama et al. so that the plates are greater than 6mm. The first and second members will still be capable of forming the work implement of the excavator since excavators require a strong work implement due to the forces applied to them.
Claim 5 recites the steel constituting the backing material has a yield stress greater than a yield stress of a material constituting the first welded portion. Kasuya teaches that the yield strength (which is fundamentally the same as yield stress, i.e. the stress at which a material transitions from elastic deformation to plastic deformation) for each of the welded materials and the weld metal should be within 60 to 120 kg/mm2 at the transformation starting temperature (col. 3 lines 9-14 & 51-56). Kasuya also gives many examples of weld metals and steel structures to be welded. In Tables 1 & 3 of Kasuya, Kasuya teaches steels for the structures to be welded that have yield strengths between 63 and 113.6. In Tables 2 & 4 of Kasuya, Kasuya teaches steels for weld metal/metal wire that have yield strengths between 70 and 115. Thus, it would be routine experimentation to determine the workable and/or optimal combinations of steels used for the welded structures and the welding wire, wherein some of the combinations comprise steel of the backing material having a yield strength and stress greater than the yield strength and stress of the first welded portion.
In addition, Kasuya also teaches specific combinations that meet this claim. For example, Tables 5-12 show examples wherein the residual stress was reduced to less than 10 kg/mm2. Some of these examples comprise a steel used for the welding material to have a yield strength/stress greater than the steel used for the weld wire/first welded portion.
Regarding claims 6, Aoyama et al. teaches the welded structure according to claim 1 (see rejection to claim 1 above). Aoyama further teaches the welded structure being a part of a work vehicle (figs. 1-4, ¶ [0032]-[0038]).
Regarding claims 7, Aoyama further teaches the welded structure is included in a work implement (4) of the work vehicle (figs. 1-4, ¶ [0033]-[0038]).
Regarding claims 8, Aoyama further teaches the work vehicle is an excavator (fig. 1, ¶ [0033]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
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