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
Applicant’s election without traverse of group I, claims 1-13 and specie in the reply filed on 3/12/2026 and specie 1D, 2E, and 3A is acknowledged. The Applicant states that the Species were incorrectly labeled. The Examiner acknowledges that the figures 22A, 23A and 24A belong together; 22B, 23B, and 24B belong together; and 22C, 23C, and 24C belong together.
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 1-13 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.
The term “large threads” in claim 1 is a relative term which renders the claim indefinite. The term “large” 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. How big do the threads need to be for them to be considered large? Is there value required for the threads to be considered large? The Examiner requests that the Applicant please clarify.
The term “fine threads” in claim 1is a relative term which renders the claim indefinite. The term “fine” 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. How small do the threads need to be for them to be considered fine? Is there value required for the threads to be considered fine? The Examiner requests that the Applicant please clarify.
The term “generally longitudinal” in claim 1 is a relative term which renders the claim indefinite. The term “generally” 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. Longitudinal is something that is arranged lengthwise running parallel to the long axis. How can something be generally longitudinal? Does this mean it can be other values other than parallel to the long axis? If so, how far off from the longitudinal can it be for it to be considered “generally”. The Examiner requests that the Applicant please clarify.
The term “generally perpendicular” in claim 1 is a relative term which renders the claim indefinite. The term “generally” 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. Perpendicular is 90 degrees. How can something be generally perpendicular? Does this mean it can be other values other than 90 degrees? If so, how far off from the perpendicular can it be for it to be considered “generally”. The Examiner requests that the Applicant please clarify.
The term “generally triangular” in claim 4 is a relative term which renders the claim indefinite. The term “generally” 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. Does something that is generally triangular mean that it can be other shapes other than triangular? What shapes would meet this claim limitation. The Examiner requests that the Applicant please clarify.
The term “sharp” in claim 12 is a relative term which renders the claim indefinite. The term “sharp” 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. How sharp does the edge have to be for it to meet the claim limitation. Sharp is defined to be adapted to cutting or piercing. Anything can be considered sharp depending on the material it is cutting or piercing. The Examiner requests that the Applicant please clarify.
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) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stol et al. (2008/0217377A1) in view of Boon et al. (6,325,273).
Regarding claim 1, Stol discloses a friction stir additive welding screw comprising: a first portion 20 configured to be coupled to a friction stir additive welding device; and a second portion 30 configured to penetrate a work-piece, the second portion comprising: a plurality of large threads 34, each large thread extending in a generally longitudinal direction; a plurality of fine threads 32 positioned along an edge of each large thread (figures 1a-1j, paragraph 0049).
Stol does not disclose a plurality of teeth at a tip of the second portion. However, Boon discloses a friction stir welding probe/second portion 3 with a plurality of teeth/protrusions 2 on the tip of the probe/second portion (figures 1, 5). To one skilled in the art at the time of the invention it would have been obvious to have teeth/protrusions on the tip of the second portion (probe) in order to help mix the plasticized material to form a joint with optimal strength and appearance (column 3 lines 25-52).
The term “additive welding” is intended use and does not further limit the structure of the apparatus.
Regarding claim 2, Stol discloses that the plurality of fine threads 32 extend generally perpendicular to a longitudinal axis of the friction stir additive welding screw (figures 1a-1j).
Regarding claim 3, Stol discloses wherein each thread of the plurality of large threads 34 curves from a first height at a first position along a longitudinal axis of the friction stir additive welding screw to a second height at a second position along the longitudinal axis of the friction stir additive welding screw, the second position different than the first position (figures 1a, 1h).
Regarding claim 4, Stol discloses that each thread of the plurality of fine threads 32 has a generally triangular shape (figure 1j).
Regarding claim 5, Stol discloses a smooth surface positioned between adjacent edges of the plurality of large threads (shown below).
PNG
media_image1.png
311
532
media_image1.png
Greyscale
Regarding claim 6, with the teeth of Boon, the tip of the second portion would not be flat.
Regarding claim 7, since Stol discloses the plurality of fine threads as structurally claimed it is the Examiner’s position that they are configured to cut and break material into smaller pieces of material.
Regarding claim 8, since Stol discloses the plurality of large threads as structurally claimed it is the Examiner’s position that they are are configured to compress the smaller pieces of material and move the compressed smaller pieces toward the tip.
Regarding claim 9, since Boon discloses the plurality of teeth as structurally claimed, it is the Examiner’s position that they are configured to plasticize and compress material along a weld line.
Regarding claim 10, since Boon discloses the plurality of teeth as structurally claimed, it is the Examiner’s position that the plurality of teeth are configured to move plasticized material toward a weld line.
Regarding claim 11, Stol discloses that each large thread of the plurality of large threads comprises a first portion extending in a first direction away from a central axis of the screw and a second portion extending in a second direction toward the central axis of the screw. Since “portion” is not defined, any amount of area on the large thread can be considered a “portion”. The first portion can be considered to be moving away from the tapered portion of the probe/pin and; therefore; is extending in a direction away from a central axis. The second portion shown below curves inward which would be toward a central axis.
PNG
media_image2.png
311
369
media_image2.png
Greyscale
Regarding claim 12, Stol discloses that each thread of the plurality of fine threads comprises a sharp edge (figure 1j).
Regarding claim 13, Stol discloses that the plurality of fine threads are recessed into surfaces of the plurality of large threads (figure 1b). The fine threads 32 extend into 34.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIN B SAAD whose telephone number is (571)270-3634. The examiner can normally be reached Monday-Thursday 7:30a-6p.
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 at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIN B SAAD/Primary Examiner, Art Unit 1735
Prosecution Insights