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 1-3 and 7, in the reply filed on 01 June 2026, is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-6 and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 01 June 2026.
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.
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.
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 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. (WO 2022/131652, using US 2023/0105155 as an equivalent English translation).
Claim 1: Bae teaches a welded member obtained by overlapping a portion of two base materials and performing fillet welding (paragraph 0011). Bae discusses the background as being for the automobile field, such as chassis parts, which require high-strength steel material assembled by overlap joint welding between parts (paragraph 0002) (i.e. a welded joint of two or more base steel sheets and a weld portion joining the base steel sheets). The base material preferably has a tensile strength of 780 MPa or more (paragraph 0011) and a thickness of 1.0-2.0 mm (paragraph 0022) (i.e. both base steel sheets having these properties would be an obvious choice). These ranges for tensile strength and thickness overlap the instantly claimed ranges and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. During welding, the protective gas contains 5-10% by volume of CO2 and a remainder of Ar to secure penetrability of molten metal during arc welding and ensure excellent fatigue characteristics (paragraph 0052). The weld bead may include a microstructure of at least one of acicular ferrite and bainite for securing the strength and toughness of the welding metal and simultaneously securing sufficient strength and toughness of the weld bead and the reinforcing welding metal in the root portion by refining the crystal grains(paragraph 0025). Since the base material is also required to have high strength (i.e. at least 780 MPa) and Bae teaches that the base material may preferably have an alloy composition similar to the alloy composition of the welding material (paragraph 0021), then it would have been obvious to one of ordinary skill in the art for the base material similarly to contain at least one of acicular ferrite and bainite (i.e. bainite would have been an obvious choice) in order to secure the strength and toughness of the base material. Although Bae does not teach the percentage of bainite, one of ordinary skill in the art would be capable of optimizing the amount of bainite (i.e. through routine experimentation using a basic understanding in the field of how to obtain phase transformations in steel) to obtain the desired high strength. See MPEP § 2144.05(II). The oxygen content is also not specified, but Bae teaches that when an amount of oxygen generated according to dissociation reaction of CO2 during arc welding (i.e. understood to also be due to oxygen present from other sources), then the number of oxides increases and increases transformation of grain boundary ferrite, which is unfavorable to securing toughness (paragraph 0057). This teaching provides reasoning for one of ordinary skill in the art to optimize the oxygen content in the weld portion through routine experimentation (i.e. obvious sources of oxygen would be in the metal materials and the environment of welding). See MPEP § 2144.05(II). Bae teaches that the weld bead and reinforcing welding metal in the root portion (i.e. collectively these are the weld metal in the weld portion) may have an average Vickers hardness of 280 to 320 Hv, which overlaps the instantly claimed range. See MPEP § 2144.05.
While not teaching a singular example of the instantly claimed welded joint, it would have been obvious to one of ordinary skill in the art before the effective filing date based on the teachings of Bae and through routine experimentation as outlined above, and one would have had a reasonable expectation of success.
Claim 2: Bae teaches the welded member is obtained by overlapping a portion of two base materials and performing fillet welding (i.e. a lap fillet welded joint) (paragraph 0011).
Claims 3 and 7: Bae teaches that the base material (i.e. each of the base steel sheets) may have an alloy composition that may include 0.01 to 0.12% (by weight) of Ti and 0.01 to 0.1% of Al (paragraph 0021). These ranges overlap the instantly claimed ranges. See MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Otsuka et al. (US 2022/0154319, previously cited) teaches an automobile undercarriage part having a welded joint in which a first steel sheet and a second steel sheet (i.e. two or more base steel sheets) are overlapped and a fillet weld is formed between an end surface of the first steel sheet and a surface of the second steel sheet (i.e. a weld portion joining the base steel sheets) (paragraph 0013). A sheet thicknesses of the steel sheets are both 0.8 mm or more and 4.0 mm or less (paragraph 0032), which overlaps the instantly claimed range. See MPEP § 2144.05. The first steel sheet and second steel sheet each have a tensile strength of 780 MPa or higher (paragraph 0013), and example steel sheets include one having rated has a 980 MPa steel sheet (i.e. at least one of the base steel sheets has a tensile strength of 980 MPa or more) (paragraph 0111). Otsuka teaches that the welding method includes using a shielding gas of Ar gas containing 20 vol% CO2 (paragraph 0107). Otsuka teaches that the kind of steel sheet that forms the base metal for the automobile undercarriage part is not particularly limited as long as the tensile strength is 780 MPa or high, but does not disclose the steel microstructure of the base steel sheets or the oxygen content and Vickers hardness of the weld metal in the weld portion.
Ishikawa et al. (US 2010/0028717) teaches a welded joint of steel plates wherein Ti oxides are essential for improving the fracture toughness of the weld metal and HAZ by refinement of the microstructure by the Ti oxides (paragraph 0094). Ishikawa teaches that O is also required for forming Ti oxides, but must be contained in the weld metal in at least 20 ppm or more and preferably 250 ppm or less to satisfy conditions of the grain size and number of Ti oxides in the weld metal (i.e. after welding) (paragraph 0095).
Copending application number 18/995,428 is noted as reciting a large portion of overlapping subject matter. A nonstatutory double patenting rejection is not being made at this time due to slight differences in the recited properties and features, but will be monitored during the course of prosecution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIM S. HORGER/Examiner, Art Unit 1784
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