..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 .
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.
Election/Restrictions
Claims 7 and 11-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02 January 2026.
Applicant's election with traverse of Species A in the reply filed on 02 January 2026 is acknowledged. The traversal is on the ground(s) that claim 8 has been amended to depend from claim 1. This is not found persuasive because Species B; Species D; Species E; and Species F remain independent and distinct as set forth in the Restriction Requirement mailed on 05 November 2025.
The requirement is still deemed proper and is therefore made FINAL.
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 8-10 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.
The term “highly” in claim 8 is a relative term which renders the claim indefinite. The term “highly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how to establish the metes and bounds of highly thermally conductive. It is unclear at what measurement or term of degree applicant regards a material is no longer highly thermally conductive.
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.
The factual inquiries 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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng (US 9,644,769 B1) in view of Linzell (US 5,519,182).
Claim 1:
Cheng discloses a method comprising:
providing a first workpiece (124, 126 or 128) having a first engagement surface (contact surfaces, 140, 142, 144, 136) (fig. 2, col. 6, lines 24-40);
providing a second workpiece (124, 126 or 128) having a second engagement surface (contact surfaces, 140, 142, 144, 136) (Fig. 2, col. 6, lines 24-40);
positioning the first and second workpieces a predetermined distance apart from each other to locate the first and second engagement surfaces facing each other to define a gap (130, 132) therebetween (fig. 2, col. 6, lines 24-40);
positioning at least one heating element (148A, 148B) in the gap (130, 132), for heating respective first and second heated portions adjacent to the first and second engagement surfaces to respective hot working temperatures at which the first and second heated portions are plastically deformable, to limit heat transfer therefrom into respective first and second body portions of the first and second workpieces, the first and second body portions being contiguous with the first and second heated portions, and being at temperatures that are less than the hot working temperature respectively (figs. 2 -6B and 8, col. 6, lines 40-55);
covering at least the first and second heated portions with an inert atmosphere (figs. 2 -6B and 8, col. 6, lines 40-55);
energizing said at least one heating element, to heat the first heated portion of the first workpiece and the second heated portion of the second workpiece to the hot working temperature (figs. 2 -6B and 8, col. 6, lines 40-55);
when the first and second heated portions are at the hot working temperature, removing said at least one heating element from the gap, and subjecting one or both of the first and second workpieces to a translocation motion, to engage the first and second engagement surfaces with each other (figs. 2-6B, col. 7, lines 1-24); and,
when the first and second heated portions are at the respective first and second hot working temperatures, urging the first and second engagement surfaces together and moving one or more of the first and second engagement surfaces relative to the other in an engagement motion while urged together, for at least partial plastic deformation of the first and second heated portions, to join the first and second workpieces together (figs. 2-6B, col. 7, lines 1-24).
Cheng fails to disclose first and second engagement surface comprising alternating peaks and troughs.
Linzell discloses a method of joining two workpieces (abstract) further comprising
providing a first workpiece (13) having a first engagement surface (11) comprising a plurality of alternating first peaks and first troughs (figs. 1A-1E, col. 15, lines 8-26);
providing a second workpiece (14) having a second engagement surface (12) comprising a plurality of alternating second peaks and second troughs (figs. 1A-1E, col. 15, lines 8-26);
heating respective first and second heated portions adjacent to the first and second engagement surfaces (11, 12) at the first and second peaks to respective hot working temperatures at which the first and second heated portions are plastically deformable, the first and second heated portions being proximal to the first and second peaks, to limit heat transfer therefrom into respective first and second body portions of the first and second workpieces (13, 14), the first and second body portions being contiguous with the first and second heated portions, and being at temperatures that are less than the hot working temperature respectively (col. 4, line 64 bridging col. 5, line 10); and,
when the first and second heated portions are at the respective first and second hot working temperatures, urging the first and second engagement surfaces together and moving one or more of the first and second engagement surfaces relative to the other in an engagement motion while urged together, for at least partial plastic deformation of the first and second heated portions, to join the first and second workpieces together (figs. 1A-1E, col. 15, lines 27-52).
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 contact surfaces of Cheng to include the alternating peak-and-trough geometry as taught by Linzell in order to improve mechanical interlocking between the workpieces, increase bonding strength surface area, and enhance joint strength during the joining process (Linzell, col. 3, line 60 bridging col. 4, line 3). See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because Cheng relies on plastic deformation during joining and Linzell provides geometry that promotes controlled deformation and interlocking, which provides mechanical interlocking geometry that facilitates plastic flow and improved bonding consistency during the deformation process taught by Cheng.
Claim 2:
Cheng in view of Linzell renders obvious the method according to claim 1 in which, in step (c), the first and second workpieces are positioned to align the first peaks with the second troughs, and to align the second peaks with the first troughs (gear-tooth-like mechanical interaction) (figs. 1A-1E, col. 15, lines 19-26).
Examiner note: The specification does not disclose or fairly suggest any particular significance or criticality to a specific positional relationship between peaks and troughs, nor does it demonstrate that any one arrangement produces a different or unexpected result relative to other arrangements.
Claim 3:
Cheng in view of Linzell renders obvious the method according to claim 1 in which, in step (c), the first peaks are aligned with the second peaks, and the first troughs are aligned with the second troughs (see annotated reproduction of fig 1A, below).
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Examiner note: The specification does not disclose or fairly suggest any particular significance or criticality to a specific positional relationship between peaks and troughs, nor does it demonstrate that any one arrangement produces a different or unexpected result relative to other arrangements.
Claim 4:
Cheng in view of Linzell renders obvious the method according to claim 1 in which the first peaks fit in the second troughs and the second peaks fit into the first troughs (see annotated reproduction of fig 1A, below).
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Examiner note: The specification does not disclose or fairly suggest any particular significance or criticality to a specific positional relationship between peaks and troughs, nor does it demonstrate that any one arrangement produces a different or
unexpected result relative to other arrangements.
Claims 2-4:
Claims 2-4 recite various positional relationships between the peaks and troughs of the opposing engagement surfaces. However, the specification does not establish that any particular alignment is critical or results in any unexpected functional advantage. Linzell, reflected in figs. 1A-1E, illustrates that engagement between opposing surface features occurs in a non-uniform and evolving manner during relative motion, including interactions between different portions of the surfaces rather than a fixed alignment. In view of this, and further in view of the relative motion and deformation during joining as taught by Cheng and Linzell, the specific positional relationship between peaks and troughs, whether peak-to-trough or peak-to-peak, represent a predictable variation arising from the interaction of the surfaces and would have been an obvious matter of design choice.
Claim 5:
Cheng in view of Linzell renders obvious the method according to claim 1 in which the first peaks and the second peaks, and the first troughs and the second troughs are rounded (see annotated reproduction of fig 1A, below).
Claim 6:
Cheng in view of Linzell renders obvious the method according to claim 1 in which the first peaks and the second peaks, and the first troughs and the second troughs are pointed (see annotated reproduction of fig 1A, below).
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Claims 5-6:
Claims 5-6 further recite specific geometric relationships of the peaks and troughs. However, the specification does not establish that these particular configurations are critical or produce any unexpected result. Linzell (see figs. 1A-1E) illustrates that surface features formed during engagement are non-uniform and evolve dynamically as a result of relative motion and deformation, resulting in a range of possible geometries rather than a fixed configuration. Parameters such as spacing, pitch, and relative arrangement of peaks and troughs would have been recognized as affecting the degree of engagement and load distribution and thus represent result-effective variables that could be routinely optimized by one of ordinary skill in the art. Further, in view of the relative motion and deformation during joining as taught by Cheng, such variations in geometry would be expected as a predictable outcome of the joining process. Accordingly, the specific configurations recited in claims 5-6 are considered to be obvious design choices that would have been arrived at through routine experimentation.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng in view of Linzell as applied to claim 1 above, and further in view of Lechner et al. (US 2023/0211566 A1).
Claim 8:
Cheng in view of Linzell renders obvious the method of Claim 1 wherein the first workpiece comprises a highly thermally conductive material (metal) (Cheng, col. 2, lines 53-54) and Cheng in view of Linzell fails to disclose a heat shield element.
Lechner discloses an assembly for induction welding (abstract) further comprising a heat shield element (102a) positioned between at least one heating element and a first engagement surface (figs. 5 and 19A, [0074] and [0116]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the method of Cheng in view of Linzell by providing a heat shield as taught by Lechner in order to reduce heat loss, improve heating efficiency and protect surrounding components during the induction heating process (Lechner, [0001], [0002] and [0131]).
Claim 9:
Cheng in view of Linzell and Lechner renders obvious the method according to claim 8 in which said at least one heat shield element (Lechner, 102a) comprises a body in which an opening (300) is formed (Lechner, figs. 19A-19B, [0118]). Lechner discloses a heat shield including an opening (Lechner, 300) positioned at the weld region to permit and localize induction heating (figs. 19A-19B and 20-21, [0134]).
Providing multiple such openings instead of a single opening would have been an obvious matter of design choice, as it constitutes a mere duplication of elements performing the same function of permitting localized heating. Further, it would have been obvious to position such openings at locations where heat concentration is desired, consistent with Lechner’s teaching of locating the recess at the weld surface (figs. 19A-19B and 20-21, [0134]). Thus it would have been obvious to position the at least one heat shield element to locate the openings opposed to the first and second peaks.
Claim 10:
Cheng in view of Linzell and Lechner renders obvious the method according to claim 8 in which said at least one heat shield element (Lechner, 102a) comprises a body in which an opening (300) is formed (Lechner, figs. 19A-19B, [0118]). Lechner discloses a heat shield including an opening (Lechner, 300) positioned at the weld region to permit and localize induction heating (figs. 19A-19B and 20-21, [0134]).
Providing multiple such openings instead of a single opening would have been an obvious matter of design choice, as it constitutes a mere duplication of elements performing the same function of permitting localized heating. Further, it would have been obvious to position such openings at locations where heat concentration is desired, consistent with Lechner’s teaching of locating the recess at the weld surface (figs. 19A-19B and 20-21, [0134]). Thus it would have been obvious to position the at least one heat shield element to locate the openings opposed to the first and second troughs.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shimizu (5,831,252) discloses methods of bonding titanium and titanium alloy members.
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/Lee A Holly/Primary Examiner, Art Unit 3726