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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 1 and 15 require the same range of rpms. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 4, 8, 15, and 17-19 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hatakeyama et al. (US2012/0052322A1) (hereafter Hatakeyama).
With respect to claim 1, Hatakeyama teaches a method comprising: plunging a refractory (resistant) tool (13) onto an upper surface of a first workpiece (11) without penetrating the upper surface of the workpiece by more than 1 mm (figures 1, 3B, 8, and 9B; and paragraphs 37, 41-45, 46, 51, 58, and 65), the first workpiece being in direct or indirect contact with a second workpiece along an interface (figure 1), the first workpiece comprises a first material, and the second workpiece comprises a second material different from the first material, the first material having a melting temperature that is greater than a melting temperature of the second material (paragraph 34); applying an axial load to the refractory tool with a force while simultaneously rotating the refractory tool relative to the first workpiece with a rotational speed of between 100 rpm and 10,000 rpm (paragraphs 36, 42, 46, 52, 59, and 63), wherein heat generated at the upper surface of the first workpiece diffuses into a faying joint interface between the first workpiece and the second workpiece to create a metallurgical bond (figures 3A-3D, 4A-4D, and 5A-5D) therebetween without exceeding the melting temperature of the first workpiece or the melting temperature of the second workpiece, such that the metallurgical bond is a solid-state weld joint (figures; and paragraphs 7-8,16, and 33-53); and retracting the refractory tool from the first workpiece, wherein the refractory tool does not penetrate the first workpiece more than 1 mm, and wherein the refractory tool does not reach the interface between the first workpiece and the second workpiece (figures 1, 3B, 8, and 9B; and paragraphs 37, 41-45, 46, 51, 58, and 65).
With respect to claim 1, Hatakeyama teaches that the steel of the top layer case a yield strength of 270MPa (paragraph 41). Accordingly, a pressure of greater than 270MPa would be required to form the weld of Hatakeyama. Since the applicant has failed to provide a diameter of the refractory tool or a pressure (force/area), the Newton force of the instant application cannot be converted to pressure. Accordingly, it is the examiner position that the pressure of greater 270MPa with a tool diameter of 3 mm or more (paragraph 57) as taught by Hatakeyama would meet the limitation of a force between 500 N to 20 kN. 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. If the applicant can prove that the pressure required in Hatakeyama does meet the limitation of a force between 500N to 20 kN, then since the amount of force directly attributes to the amount of friction heat generated and plasticization, it is the examiner’s position that minus unexpected results it would have been obvious to utilize a force within the claimed range of 500 N to 20 kN in order to achieve the desired friction and plasticization of the top layer and form a bond of the desired strength. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
With respect to claim 4, Hatakeyama teaches wherein rotating the refractory tool relative to the first workpiece includes rotating the refractory tool in a clockwise manner or counterclockwise manner (there are only two choices so Hatakeyama intrinsically rotates the tool either clockwise or counterclockwise).
With respect to claim 8, Hatakeyama teaches wherein the refractory tool includes a flat engagement surface or a contoured engagement surface (figure 1).
With respect to claim 15, Hatakeyama teaches wherein rotating the refractory tool includes a rotational speed of between 100 rpm to 10,000 rpm (paragraphs 36, 42, 46, 52, 59, and 63).
With respect to claim 17, Hatakeyama teaches wherein the first workpiece includes aluminum, magnesium, titanium, steel, or alloys thereof (paragraph 34).
With respect to claim 18, Hatakeyama teaches wherein the second workpiece includes aluminum, magnesium, titanium, steel, or alloys thereof (paragraph 34).
With respect to claim 19, Hatakeyama teaches wherein the metallurgical bond comprises an elongated bonding area having a uniform cross-sectional thickness (broadest reasonable interpretation) (figures 3A-3D, 4A-4D, and 5A-5D).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama as applied to claim 1 above, and further in view of Verma (US 2020/0331203A1).
With respect to claim 5, Hatakeyama does not teach wherein rotating the refractory tool relative to the first workpiece includes rotating the refractory tool in each of a clockwise manner and a counterclockwise manner.
However, Verma teaches rotating the refractory tool in each of a clockwise manner and a counterclockwise manner (paragraph 24).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the clockwise and counterclockwise rotation of Verma in the process of Hatakeyama in order to generate the desired friction.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama as applied to claim 1 above, and further in view of Aota et al. (US2009/0218033A1) (hereafter Aota).
With respect to claim 9, Aota teaches wherein an engagement surface of the refractory tool includes a plurality of raised features (figures 9 and 10).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the plurality of raised features as taught by Aota in the process of Hatakeyama in order to generate the desired friction and plasticization.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama as applied to claim 1 above, and further in view of Burford (US 2016/0008918A1).
With respect to claim 10, Hatakeyama does not teach wherein the refractory tool comprises a flat side surface for securing the refractory tool to a tool holder.
However, Burford teaches wherein the refractory tool comprises a flat side surface for securing the refractory tool to a tool holder (figures 1A-1B, 2, 15-16, and 19-20).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the flat side surface on the tool as taught by Burford in the process of Hatakeyama in order to limit movement of the tool in the holder.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama as applied to claim 1 above, and further in view of Fleck et al. (US 2024/0131614A1) (hereafter Fleck).
With respect to claim 11, Hatakeyama does not teach wherein the tool holder includes a cutting feature comprising serrations for removing flashing from the upper surface of the first workpiece.
However, Fleck teaches wherein the tool holder includes a cutting feature comprising serrations (one or more cutting elements) for removing flashing from the upper surface of the first workpiece (paragraphs 19 and 65).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the cutting elements of Fleck in the process of Hatakeyama in order to
remove flash from the surface of the workpiece around the stirred region.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama as applied to claim 1 above, and further in view of Wang et al. (CN-109500485A) (hereafter Wang).
With respect to claims 12-13, Hatakeyama does not teach pre-treating a lower surface of the first workpiece and an upper surface of the second workpiece to promote the metallurgical bond therebetween; and wherein pretreating the lower surface and the upper surface includes mechanical abrasion, laser surface texturing, acid treatments, plasma treatments, silane treatments, or combinations thereof.
However, Wang teaches pre-treating a lower surface of the first workpiece and an upper surface of the second workpiece to promote the metallurgical bond therebetween (figures 1-2; and the machine translation); and wherein pretreating the lower surface and the upper surface includes mechanical abrasion (sand paper/polishing), laser surface texturing, acid treatments, plasma treatments, silane treatments, or combinations thereof (figures 1-2; and the machine translation).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the sanding process of Wang in the process of Hatakeyama in order to oil stain, oxides, and impurities for bonding.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama as applied to claim 1 above, and further in view of Ito et al. (US 2017/0225265A1) (hereafter Ito).
With respect to claim 16, Hatakeyama does not teach wherein plunging the refractory tool onto the upper surface of the first workpiece includes a plunge speed of between 0.1 mm/min to 10 mm/min.
However, Ito teaches wherein plunging the refractory tool onto the upper surface of the first workpiece includes a plunge speed of between 0.1 mm/min to 10 mm/min (paragraph 16).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the plunge speed of Ito in the process of Hatakeyama in order to generate the desired friction and plasticization during bonding.
Response to Arguments
Applicant's arguments filed 11/12/25 have been fully considered but they are not persuasive.
The applicant alleges that Hatakeyama does not disclose applying an axial load to a refractory tool with a force of between 500 N and 20 kN while rotating the refractory tool without penetrating the upper workpiece by more than 1 mm.
The examiner respectfully disagrees. As mentioned above, Hatakeyama teaches that the steel of the top layer case a yield strength of 270MPa (paragraph 41). Accordingly, a pressure of greater than 270MPa would be required to form the weld of Hatakeyama. Since the applicant has failed to provide a diameter of the refractory tool or a pressure (force/area), the Newton force of the instant application cannot be converted to pressure. Accordingly, it is the examiner position that the pressure of greater 270MPa with a tool diameter of 3 mm or more as taught by Hatakeyama would meet the limitation of a force between 500N to 20 kN. 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. If the applicant can prove that the pressure required in Hatakeyama does meet the limitation of a force between 500N to 20 kN, then since the amount of force directly attributes to the amount of friction heat generated and plasticization, it is the examiner’s position that minus unexpected results it would have been obvious to utilize a force within the claimed range of 500 N to 20 kN in order to achieve the desired friction and plasticization of the top layer and form a bond of the desired strength. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Furthermore, Hatakeyama teaches that the top steel layer/workpiece is 1mm thick and the tool does not penetrate the top layer/workpiece. Accordingly, the tool of Hatakeyama is intrinsically plunged not more than 1 mm into the top layer/workpiece. Additionally, the explicit teaching of “0.5 to 0.6 mm” in paragraph [0037] of Hatakeyama also satisfies the claimed range.
The applicant’s argument regarding keyhole size of Hatakeyama and the instant application is not commensurate in scope with the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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