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 with traverse of group I, claims 1-12 and 15 in the reply filed on 6/12/2026 is acknowledged. The traversal is on the ground(s) that there is not serious burden in searching both groups. This is not found persuasive because the inventions belong to two different classifications. There would be serious burden. Furthermore, the material worked up on is not required for the apparatus.
The requirement is still deemed proper and is therefore made FINAL.
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 1-12, 15 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 “gradually” in claim 1 is a relative term which renders the claim indefinite. The term “gradually” 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 much does the surface height have to either increase or decrease for to be considered gradual? Is there a set value or range for it to be considered gradual? The Examiner requests that the Applicant please clarify this limitation.
The term “gradually” in claim 10 is a relative term which renders the claim indefinite. The term “gradually” 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 much does the surface height have to either increase or decrease for to be considered gradual? Is there a set value or range for it to be considered gradual? The Examiner requests that the Applicant please clarify this limitation.
The term “gradually” in claim 15 is a relative term which renders the claim indefinite. The term “gradually” 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 much does the surface height have to either increase or decrease for to be considered gradual? Is there a set value or range for it to be considered gradual? The Examiner requests that the Applicant please clarify this limitation.
Claim 15 is indefinite because it is unclear if the preparing of the workpieces using a cutting tool is performed by the non-transitory computer-readable recording medium. There appears to be two different transitional phrases within this claim so it is unclear if the preparing step is actually required for the recording medium or if the recording medium is only actually performing the actual welding step. For the purpose of examination, the readable medium is performing the preparing step. The Examiner requests that the Applicant please remove one of the transitional phrases (comprises).
Allowable Subject Matter
Claims 1-12 and 15 would be allowable if rewritten or amended 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. Prior art was not found that taught or suggested the claimed friction stir welding steps that are performed on the claimed workpieces.
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.
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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.
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/ERIN B SAAD/Primary Examiner, Art Unit 1735
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