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 1-6 and 10, in the reply filed on 9 April 2026 is acknowledged.
Claims 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 9 April 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 16 January 2025, 18 November 2025, 19 November 2025, 16 December 2025, and 3 March 2026 were considered by the examiner.
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 1-6 and 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.
In regards to independent claim 1, this claim sets forth that “the joint includes a coarse-grained heat-affected zone and a fine-grained heat-affected zone”. The metes and bounds of these particular limitations cannot be determined since it is not clear what size of grains would qualify as coarse-grained and what size of grains would qualify as fine-grained. For the purposes of examination, the Office is interpreting this to mean that the coarse-grains are larger grains than the fine-grains.
Further regarding independent claim 1, this claim sets forth “[a] joining member having excellent workability” in the preamble of the claim. The metes and bounds of this particular phrase cannot be determined since it is not clear what amount of workability constitutes excellent workability. It is further not clear if the excellent workability derives from the limitations and structure set forth in the instant claims or if it arrives from other factors (e.g. selection of a steel plate that has excellent workability, particularly away from the weld zone). It is also not clear how this workability is being measured for the purposes of this phrase.
As to claims 2-6 and 10, these claims depend from independent claim 1 and incorporate the limitations therein. Accordingly, these claims are rejected for the reasons set forth above in regards to independent claim 1.
As to claim 6, this claim includes terminology within parentheses. It is not clear if the terminology included within the parentheses are merely exemplary or are intended to be further limiting. For the purposes of examination the Office is interpreting the terms within the parentheses to be further limiting. Applicant is encouraged to amend the claims to remove the parentheses and clearly indicate if these further limitations are required.
Claim Rejections - 35 USC § 103
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 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 1, 5, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2021/0379688 (Bae).
In regards to independent claim 1 and dependent claim 5 and 10, Bae is directed to manufacturing a flash butt welding member capable of improving strength and formability of a weld portion of a high strength hot rolled steel sheet for a light steel automobile wheel or the like. (¶1) Flash butt welding is mainly used for assembling a wheel rim of a vehicle and is a process of joining through melting and scattering of a joint target surface and upsetting a fusion zone by a flash arc. (¶3) This corresponds to a component having a joint.
The average grain diameter of a coarse-grained HAZ portion forming the weld portion may be 100 microns or less and an average diameter of the fine-grained HAZ portion may be 10 microns or less. (¶13) These ranges overlap that amounts wherein the diameters would meet the claimed difference and the claimed ranges. Therefore, a prima facie case of obviousness is established.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Bae as applied to claim 1 above, and further in view of JP S57-16122 (Toshio).
As set forth in regards to independent claim 1 above, Bae sets forth a flash butt welded steel plate that includes fine and coarse grains that overlap the claimed ranges such that the values would include those having a difference as set forth in the instant claims. However, this reference is silent on the composition of the steel.
In the same field of endeavor of flash butt welding steel plates, Toshio is directed to obtaining a wheel rim having excellent strength. (Abstract) The steel composition includes 0.02 to 0.20 wt. % C, 0.4 to 2.5 wt. % Mn, and 0.01 to 0.15 wt. % Al as requisite components. (Abstract) One or more elements may be selected from element group A consisting of 2.5% or less Si, 0.15% or less P, and 1.5% or less Cr, element group B consisting of small amounts of Ti, Nb, and V, and element group C consisting of small amounts of Ca and REM. (Abstract) Toshio sets forth a composition that falls within the claimed ranges. (See Table 2)
The steel provides high-tensile properties with higher strength. (Page 10) Therefore, the gauge of the wheel rim can be reduced and complex welding processes do not require high levels of control, resulting in good machinability during cold working and extremely low defect rates. (¶3, Page 10)
It would have been obvious to one of ordinary skill in the art to have utilized the steel composition of Toshio as the steel plate of Bae. One of ordinary skill in the art would have been motivated by the desire and expectation of combining prior art elements according to known methods to yield predicable results, including selecting a known steel composition that provides for high-tensile properties with increased strength, thereby allowing for narrower gauges to be utilized. This would result in lower costs associated with the materials being utilized and reduced weight of the wheel rims while providing the necessary properties for use as a wheel rim.
Allowable Subject Matter
Claims 2-4 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:
As set forth above, Bae sets forth a flash butt welded product that has grains that overlap the claimed amounts and includes values that would meet the claimed differences. This reference does not set forth the width of the heat-affected zones and Vickers hardness.
The process set forth within Bae does not appear to be identical or substantially identical to that set forth in the instant application. Therefore, the product of Bae would not necessarily or inherently possess these claimed features. In particular, the instant application sets forth controlling the flash speed to 5% or more and 20% or less and the travel length between the electrodes is controlled to 2.0 or more and 10.0 mm or less during upset heating. (¶52 of Specification) These properties affect the grain size of the heat-affected zone. (¶53 of Specification) These are not taught by the prior art. Therefore, the prior art fails to set forth these claimed properties or a process by which the properties would necessarily or inherently arise.
It is noted that the instant application corresponds to Korean Patent Application 20230095621, in which a Written Decision on Registration was issued on 22 September 2025.
Citation of Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Application Publication Number 2026/0027643 is directed to a flash butt joint member having a joint portion wherein the average hardness difference between a coarse grain heat-affected zone and a fine grain heat-affected zone is within 50 in Vickers hardness. (Abstract) This reference has a common inventor and common assignee.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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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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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784
Prosecution Insights