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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/14/2025, 11/19/2025 and 12/16/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Election/Restrictions
Applicant’s election of Group I, claims 1-6 and 9, in the reply filed on 02/18/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/18/2026.
Claim Objections
Claim 5 is objected to because of the following informalities:
It appears in line 2 “average effect grain” should be “average effective grain”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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.
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.
Claim 2 is 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.
In claim 2 it is unclear what the limitation of the soft phase having an average width of within 100 microns. Does the limitation mean the average of the width of the soft phase varies on an average of 100 µm? Or does it mean the average width is 100 µm or less or the width is about 100 µm? It appears based on the Instant Spec. ¶ 0042 that it is meant to imply that the average width is less than 100 µm.
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.
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bae et al. (US 20210379688 A1) [IDS dated: 01/14/2025], herein Bae.
In regards to claim 1, Bea teaches a flash butt welding member with excellent formability including a weld portion obtained by flash butt welding two steel plates using an electrode [Abstract, Claim 1, 0010, Fig. 2]. The weld portion having a HAZ comprising coarse and fine grained portions on the left and rights sides of the joint and the hardness of the weld portion is 220 to 270 Hv [0010, 0013, 0018, 0033, 0038, Fig. 2, Table 1 examples 1-3]. The difference is then within 50 Hv as the hardness across the weld portion would include both the coarse and fine grained portions. The excellent formability is considered to bring excellent processibility.
In regards to claim 9, Bae teaches a wheel rim weld portion comprising the joint [Claim 1].
Claims 1 and 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weibin et al. (Study on the Flash Butt Welding of 400 MPa Ultra-Fine Grain Steel) [IDs dated 01/14/2025], herein Weibin.
In regards to claims 1 and 9, Wang teaches a flash butt welded component comprising a weld joint formed of two steel sheets/bars including a weld portion having a HAZ comprising coarse and fine grained portions on the left and rights sides of the joint as well as a fusion zone in the center [Abstract, Intro, Sec. 2, Figs. 2-3]. Wang teaches the joint have excellent properties and thus are considered to have excellent processability [Conclusion]. The average hardness difference between the coarse grained HAZ portion and the fine grained HAZ portion is with 50 HV [Fig. 3].
Claims 1, 5-6 and 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (Acquisition of HSLA steel weld joints with excellent mechanical performance through flash butt welding physical simulation) [IDs dated 01/14/2025], herein Wang.
In regards to claims 1 and 9, Wang teaches a flash butt welded component comprising a weld joint formed of two steel sheets including a weld portion having a HAZ comprising coarse and fine grained portions on the left and rights sides of the joint as well as a weld zone in the center [Abstract, Intro, Experimental, Figs. 1-2 and 4(a)]. Wang teaches the joint have excellent formability and thus are considered to have excellent processability [Conclusion]. The average hardness difference between the coarse grained HAZ portion and the fine grained HAZ portion is with 50 HV [Fig. 4 (a)].
In regards to claims 5, Wang further teaches wherein the joint portion has an average effect grain size of the coarse grain heat-affected zone of 17 μm or less, and an average effective grain size of the fine grain heat-affected zone of 7 μm or less [Fig. 2].
In regards to claim 6, Wang teaches the steel comprises in wt. %: 0.08 C, 1.188 Mn, 0.06 Si, 0.025 Al, 0.017 Cr, 0.017 Ti, 0.014 P, 0.019 S, 0.007 Nb, 0.005 N, and the balance Fe [Experimental]. This composition meets the claimed steel composition. It is noted that the claim is framed under the transitional phrase “including” and the MPEP in 1211.03 teaches that including is synonymous with comprising and thus the claim is open to additional elements present such as the N, Nb and Ti.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. (US 20210379688 A1) [IDS dated: 01/14/2025], herein Bae, as applied to claim 1 above.
In regards to claims 2-4, Bae does not expressly teach the formation of the soft phase. Its width or its hardness difference. However, it is expected to meet or overlap the ranges for the reasons that follow.
Bea teaches substantially similar materials and microstructures and method of formation such that one would expect that the resultant properties to be substantially similar those of the claimed joint. Bea teaches similar welding method including current ranges: 30 to 40% for preheating, 60 to 70% for flash, 30 to 40% for upset heat as well as the upset length of 7.0 to 7.5 mm [0029, 0031]. As such it’s expected that the width of the soft phase, it’s location between the coarse-grained and hardness difference are expected to overlap the claimed ranges based on the similar process conditions, see In re Best.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
In regards to claim 5, Bae further teaches the coarse-grained HAZ portion forming the weld portion is preferably 100 μm or less, and an average grain diameter of the fine-grained HAZ portion is preferably 10 μm or less [0039]. These ranges overlap the claimed ranges.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. (US 20210379688 A1) [IDS dated: 01/14/2025], herein Bae, as applied to claim 1 above, and further in view of Gon et al. (KR101281294B1) [DIS dated 1/14/2025], herein Gon.
The Examiner has provided a machine translation of (KR101281294B1). The citation of the prior art in this rejection refers to the machine translation.
In regards to claim 6, Bea teaches the steel is a high strength hot-rolled steel having tensile strength of 780 MPa but does not teach the steel’s composition[0008].
Gon teaches a 780 MPa hot-rolled steel sheet for flash butt welding [Title, lines 18-23, 201-206]. The steel comprising in wt%: 0.04 C, 1.0 Si, 1.7 Mn, 0.01 P, 0.003 S, 0.7 Cr, 0.03 Al, 0.03 Nb, 0.06 Ti, 0.007 N with the remainder Fe and unavoidable impurities [lines 189-206]. This composition meets the claimed steel composition. It is noted that the claim is framed under the transitional phrase “including” and the MPEP in 1211.03 teaches that including is synonymous with comprising and thus the claim is open to additional elements present such as the Nb and Ti.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the steel of Gon as the steel of Bae. One would have been motivated to do so as it would have been the simple substitution of one 780 MPa steel sheet for butt welding for another to obtain predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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/ELIZABETH COLLISTER/ Primary Examiner, Art Unit 1784