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 1-5 in the reply filed on 4/16/26 is acknowledged.
Claim Interpretation
Examiner notes that present claims 1-5 are drawn to an apparatus. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (MPEP 2114). Functional limitations are usually followed by a linking term “for”, “configured to”, “execute”, “operate”, “perform” etc. and concerns operation of the apparatus. In the instant case, “circuitry operates”, “circuitry determines (claim 1) are functional limitations which do not structurally contribute to the apparatus.
Examiner also notes that, “inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); (see MPEP 2115). A recitation with respect to the material intended to be worked upon by a claimed apparatus does not impose any structural limitations upon the claimed apparatus which differentiates it from a prior art apparatus satisfying the structural limitations of that claimed. In this case, first and second workpieces are workpiece materials.
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 1-5 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.
With respect to claim 1, feature “to weld the workpieces” (line 3) lacks sufficient antecedent basis. Based on fig. 1 in specification, first workpiece 61 and second workpiece 62 are being welded. It seems that claim should recite to weld the first workpiece and the second workpiece to avoid confusion. Moreover, it is ambiguous what is meant by “the pin and the shoulder press a welded portion of the workpiece” (line 11). According to the specification, front surface 60c is referred as a welded portion of the workpiece 60 (fig. 4, [0078]). However, this front, planar surface 60c of the first workpiece 61 is open and does not appear to be actually welded. Based on fig. 4, portion 62a appears be actually welded portion between two workpieces 61-62 by the pin & the shoulder. Therefore, it is unclear how 60C is a welded portion? The recited vague language fails to clearly set forth the scope, rendering the claims indefinite. For purpose of examination and in accordance with broadest reasonable interpretation consistent with the specification, the claim is taken to mean: the pin and the shoulder press a portion of the workpiece while rotating.
With respect to claim 5, limitation “the first position is a position away by 0.3 mm from the contact surface” (line 2) is ambiguous because previous claim 4 requires that the first position is reached after the tip of the pin reaches the contact surface. Consequently, it is not clear how the first position is away by 0.3 mm from the contact surface? The recited conflicting language fails to clearly set forth the scope, rendering the claim indefinite. For purpose of examination and in accordance with broadest reasonable interpretation consistent with the specification, the claim is taken to mean: the tip of the pin reaches a preset and predetermined first position in the second workpiece.
Appropriate corrections are requested.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al. (US 10201873, hereafter “Okada”).
Regarding claim 1, Okada discloses a friction stir spot welder 50 (fig. 1) that softens a workpiece including a first workpiece 61 and a second workpiece 62 by frictional heat to weld the workpieces, the friction stir spot welder comprising: a pin 11 that is columnar; a shoulder 12 that is cylindrical, the pin being within the shoulder; a rotary driver 57 that rotates the pin and the shoulder; an advance-retract driver 53 that advances and retracts the pin and the shoulder along the axis; and circuitry/controller 51 (fig. 2), wherein: the first workpiece is located so as to be opposed to the pin and the shoulder (col. 5, lines 15-40); the circuitry/controller operates the pin and the shoulder such that the pin and the shoulder press a portion of the workpiece while rotating; the circuitry operates the pin and the shoulder such that the pin and the shoulder stir the workpiece (fig. 2; col. 9, lines 3-29). Examiner notes that “preset and predetermined” time or rotating speed can be any selected value.
Okada merely differs from the claim by lacking explicit teaching of the circuitry/control unit operation step of determining tip contact using given a preset rotation speed for a preset time period. However, Okada teaches that the circuitry/controller is configured to determine tip contact based on position data detected by the position detector 21 and preset pressure value detected by the detector 33; the pin 11, shoulder 12 and the clamp member 54 are controlled contact surface 60c of the workpiece 60 (fig. 3; col. 9, lines 30-52). The controller can set a reference position of the pin or the shoulder at a time point when the position data output from the position detector 21 equals a value for a specified time (col. 9, lines 55-62). The controller controls the tool driving unit according to a relation formula between area of the tip end surface and a plunge depth of each of the pin and the shoulder to control the position of the tip end of the each of the pin 11 and the shoulder 12 (col. 9, line 63 thru col. 10, line 20; formula 1). Controlling the tool average position makes it possible to realize a good welding quality with a suitable accuracy and prevent generation of cavities in the materials (col. 12, lines 50-54). Okada discloses that pressing forces and rotational speeds of the pin and the shoulder are interrelated; the controller 51 drives the pin and the shoulder at a preset rotational speed (col. 14, lines 41-49, 60-66) and also changes setting(s) of the pressing forces and/or rotational speeds depending on tip end position (fig. 7- step 108; col. 16, lines 15-26; col. 18, lines 57 thru col. 19, line 5). For instance, the pin rotational speed would decrease upon coming into contact with a workpiece surface.
Given teachings of Okada, artisan of ordinary skill would appreciate and recognize that monitoring a preset rotational speed for a preset period of time are known, related parameters for the controller to determine the tip end position, including reaching a contact surface or an interface between the two workpieces. Moreover, there is only a finite number of predictable parameters to configure in the controller with respect to contacting workpiece- pin/shoulder plunge speed, pin/shoulder rotational speed, pin/shoulder tip position and time. The objective is to realize a good welding quality with a suitable accuracy and prevent generation of cavities in the workpieces. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to monitor preset rotation speed of the pin/shoulder for a preset time period in the controller of Okada in order to detect tip contact with a surface or interface at the workpieces. Moreover, the claim would have been obvious because a person of ordinary skill has good reason (to improve quality with a suitable accuracy and prevent generation of cavities in the workpieces) to pursue the known options (using preset rotating speed for a preset time) within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007) (See MPEP 2143- exemplary rationales).
As to claims 2-3, the circuitry/controller in Okada is designed to provide rotating speed within the claimed range of -0.5 mm/second or more and +0.5 mm/second or less and the first time period within the claimed range of 0.01 second or more and 0.5 second or less. Examiner notes that particular speed or time are operational features, which do not structurally limit the controller (see Claim Interpretation above).
As to claims 4-5, Okada discloses that the circuitry operates the advance-retract driver 53 and the rotary driver 57 such that the tip of the shoulder or the tip of the pin reaches a preset and predetermined first position in the second workpiece, after the tip end reaches the contact surface of the second workpiece (fig. 2; col. 9, lines 3-29). Examiner notes that any position meets “preset and predetermined” first position and the apparatus claims are not limited by the tip position.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVANG R PATEL whose telephone number is (571) 270-3636. The examiner can normally be reached on Monday-Friday 8am-5pm, EST.
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/DEVANG R PATEL/
Primary Examiner, AU 1735
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