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
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/5/2025.
Priority
The certified translations filed 3/16/2026, while asserting to be for each of foreign priority applications CN202311185175.X and CN202410988266.5, appear instead to be identical to one another and to coincide only with the earlier CN202311185175.X (filed 9/13/2023) based on comparison to the published document CN117139675. The translations are also not labeled to show which document they are translations of.
The examiner has reviewed what was provided. Referring to MPEP 216 (bold added for emphasis):
The most important aspect of the examiner’s action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the foreign applications. The foreign application may be considered in the same manner as if it had been filed in this country on the same date that it was filed in the foreign country, and the applicant is ordinarily entitled to any claims based on such foreign application that applicant would be entitled to under U.S. laws and practice. The foreign application must be examined for the question of sufficiency of the disclosure under 35 U.S.C. 112 as well as to determine if there is a basis for the claims sought.
The translation of what is presumed to be CN202311185175.X does not disclose a step of “drilling in the first through hole toward the second metal layer to form a traction hole in the second metal layer” as recited in instant claim 1. Thus, the foreign priority application CN202311185175.X filed 9/13/2023 does not appear to sufficiently disclose or provide a basis for the claims sought such that claims 1-13 would not enjoy the right to priority thereto.
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 3-4, 8, and 13 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.
Claims 3 recites “the base hole” in line 9. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, this will be interpreted as --the basic hole--.
Claim 4 is rejected by virtue of dependency on claim 3.
Claim 8 recites a similar limitation in line 4.
Claim 13 recites a similar limitation in line 3.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (CN117696946, with reference to translation).
It is noted that the above reference was published on 3/15/2024, which is prior to the filing date (7/22/2024) of priority application CN202410988266.5 and after the filing date (9/13/2023) of priority application CN202311185175.X. However, because CN202311185175.X fails to adequately support the claimed invention as discussed above, Applicant cannot rely on the earlier 9/13/2023 priority date.
Claim 1: Chen discloses a processing method of a metal composite structure including a first metal layer (202 - e.g. of aluminum, see paragraph 45) and a second metal layer (201 - e.g. of titanium, Id.) stacked on the first metal layer (Fig. 2), the processing method comprising: defining a first through hole (203/2031) in the first metal layer; drilling in the first through hole toward the second metal layer to form a traction hole (hole 2031 extends into the layer 201, ending at 2031a - paragraph 46) in the second metal layer; and performing hot melt drilling on a surface of the second metal layer away from the first metal layer toward the first through hole (paragraph 47), thereby causing the second metal layer to crack under a traction force of the traction hole to form a second through hole (as shown in Figs. 3-5), and a portion of the second metal layer to be melted and squeezed (implied e.g. at paragraph 52 and by “hot melt drilling”) to form a bushing (2011) which adheres to at least a portion of a sidewall of the first through hole (as shown), thereby obtaining the metal composite structure.
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.
Claims 2, 5, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. in view of Lohmuller et al. (U.S. Patent 4,989,681).
Claim 2: Referring to Fig. 2, Chen discloses defining an original through hole (2032) on a surface of the first metal layer away from the second metal layer (lower surface of 202) and an enlarged portion (2031) near the second metal layer (toward the upper half of 202), thereby forming a curved hole segment (2031b/2031c) at the portion of the original through hole near the second metal layer, and a remaining portion of the original through hole forming a basic hole segment (2032), wherein the curved hole segment and the basic hole segment are connected to each other to form the first through hole (Fig. 2), and a diameter of the curved hole segment is greater than a diameter of at least a portion of the basic hole segment (Id.). Chen does not describe the specific steps involved with forming the above hole and so does not explicitly describe defining the original hole through a first cutting tool and enlarging a portion of the original through hole through a second cutting tool, where the diameter of the basic hole segment is equal to a diameter of the original hole segment. It is noted that this essentially requires drilling an undercut hole by first drilling an original hole having a diameter as with 2032 and enlarging that hole (as at 2031) with a different tool through the first hole without further enlarging the original hole.
However, the technique of forming an undercut hole by first drilling an original hole with a first tool and then enlarging a portion of that hole with a second tool is generally known in the art, for example as in Lohmuller et al. (blind hole 10 is produced by a conventional drill bit and subsequently enlarged by an undercutting tool 14 - column 5, line 62 - column 6, line 7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied a similar technique as in Lohmuller to improve the method of forming the hole of Chen for the predictable result of forming a stepped, undercut hole (MPEP 2143 I. D.).
Claim 5: Chen further discloses defining a first reference blind hole (having bottom 2031a) on a surface of the second metal layer facing the first metal layer through the original through hole (paragraph 46).
Claim 12: Chen further discloses milling a sidewall of the second through hole (paragraph 72, Fig. 8 - the sidewall of the second through hole gets milled in this process in that some of it is removed my milling).
Claim 13: Referring to Chen, a central axis of the traction hole, a central axis of the curved hole segment, and a central axis of the base hole segment are aligned with each other (all holes are aligned as shown).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. in view of Lohmuller et al. as applied to claim 2 above, and further in view of Luthi (U.S. PGPub 2003/0170073).
Claim 3: Chen et al. and Lohmuller et al. disclose a method substantially as claimed except for enlarging a portion of the basic hole segment near the surface of the first metal layer away from the second metal layer to form an observation hole, and a remaining portion of the basic hole segment forming a retraction hole, wherein the retraction hole, the curved hole segment, and the observation hole are connected to each other to form the first through hole, the retraction hole is further connected to the curved hole segment, and a diameter of the retraction hole is equal to the diameter of the base hole segment. In other words, the claim essentially requires enlarging a portion of the basic hole segment near the surface of the first metal layer away from the second metal layer as part of the first through hole without otherwise enlarging the basic hole segment (now referred to as a “retraction hole”). However, Luthi teaches a similar fastening method including enlarging a portion (5) of a basic hole segment near the surface of the first metal layer (2) away from a second metal layer (1) to form an observation hole (5 - see Figs. 1-2 and paragraphs 20-21). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have similarly enlarged a portion of the basic hole segment of Chen since upon deformation a positive-locking connection is produced which withstands very high separating forces F (Id.).
Claim 4: Referring to Chen, particularly Fig. 5, the diameter of the retraction hole (portion 2032) is substantially similar to the diameter of the drill bit 300. The drill bit is disclosed to have a diameter of 1.4-1.9 mm, such as 1.4, 1.45, 1.5, 1.7 or 1.9 mm (paragraph 6-7, 60). Thus, it can be reasonably concluded that the diameter of the retraction hole is similar. Given that the claimed diameter of the retraction hole is 1.5-1.6mm, which falls well within the disclosed range, it would be prima facie obvious given that “[i]n the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05 I.
Allowable Subject Matter
Claims 6-7 and 9-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 8 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.
The following is a statement of reasons for the indication of allowable subject matter:
Chen is considered the closest prior art of record. Regarding claim 6, Chen does not disclose inserting the second cutting tool through the curved hole segment, and enlarging the first reference blind hole through the second cutting tool to form a dovetail hole. Chen does not disclose forming a dovetail hole portion, and even if it were obvious to provide one, Lohmuller et al. (used to teach the technique of undercutting using a second tool) would not necessarily teach using the second tool to additionally form the dovetail hole.
Claims 7-8 depend from claim 6.
Regarding claim 9, Chen further discloses forming, on the surface of the second metal layer away from the first metal layer toward the first through hole, a second reference blind hole (204 - paragraph 67). However, The prior art of record fails to additionally teach chamfering at least a portion of a sidewall of the second reference blind hole to form a sidewall-inclining hole, and based on the traction hole, defining a guiding hole on a bottom surface of the sidewall-inclining hole.
Claims 10-11 depend from claim 6.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. PGPub 2023/0202140 defines a first through hole (31) in a first metal layer (10 - Fig. 3), and then drills in the first through hole toward the second metal layer to form a traction hole (33) in the second metal layer (Figs. 4-5). However, this traction hole is itself formed via hot melt drilling (paragraph 44), and subsequent steps do not involve performing hot melt drilling on a surface of the second metal layer away from the first metal layer toward the first through hole as claimed.
U.S. PGPub 2017/0136686 discloses various embodiments of joining plates by heating and flowing material of one sheet into an opening of another. However, none involve “drilling in the first through hole toward the second metal layer to form a traction hole in the second metal layer” as claimed since the top sheet never has a hole through it. It also uses friction stir welding in some embodiments, but not necessarily hot melt drilling.
FR 2371252 discloses a method whereby a hole 2 is bored into sheet 1, a two-step hole 4 is drilled into sheet 3, and a tool pushes through the hole in the top plate 1 and presses metal into lower plate 3 to join them.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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/Matthew P Travers/Primary Examiner, Art Unit 3726