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 II, Claims 3-12 in the reply filed on 6/26/26 is acknowledged.
Claim Interpretation
Examiner notes that elected claims 3-12 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 (BPAI 1987) (MPEP 2114). Furthermore, examiner notes that, “inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” (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 apparatus. In this case, two parts having metal layers or synthetic layers with different material properties are workpiece materials (claims 3-7) which do not structurally limit the claimed welding apparatus.
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 3-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carter (US 6758382).
Regarding claim 3, Carter discloses a friction stir welding device configured to join two parts along a butt joint weld line, the friction stir welding device (fig. 1) comprising: a probe assembly including a first probe 20 (shoulder member) and a second probe 22 (pin), wherein the first probe 20 is configured to friction stir weld a first layer in each of the two parts along the butt joint weld line 16 between two workpieces 12-14 (figs. 1, 3; col. 2, lines 45-55), wherein the second probe 20 (pin) is configured to friction stir weld a second layer in each of the two parts along the butt joint weld line (col. 3, lines 15-30, 47-50; col. 4, lines 3-15). The friction stir welding device of Carter is configured to join two parts along a butt joint weld line to form a laminate in which the first layers have different material properties than the second layers. Examiner notes that parts having layers of different material properties relates to workpieces and does not structurally limit the claimed apparatus.
As to claims 4-5, the friction stir welding device of Carter is configured to join two parts with first layers of the two parts having a different thermal conductivity than second layers of the two parts, wherein the first probe is configured to stir weld two metal layers, and wherein the second probe is configured to stir weld two synthetic layers having a thermoplastic matrix embedded with reinforcing fibers. The parts having different layers (metal, synthetic) relates to workpieces and does not structurally limit the claimed apparatus.
As to claim 6, Carter discloses that the first probe 20 and the second probe 22 are arranged coaxially (fig. 1). The friction stir probe assembly of Carter is designed to be moved along a butt joint weld line by the controller 46 (fig. 1), as known in conventional butt joint FSW (col. 4, lines 3-15).
As to claim 7, Carter shows that the first probe includes a first probe body having an axial length adapted to a thickness of the first layers of the two parts, and the second probe includes a second probe body adapted to a thickness of the second layers of the two parts (fig. 1). Examiner notes that claim is open to any thickness of the first layers and the second layers.
As to claim 8, Carter shows that the first probe body (shoulder member) includes a first hollow shaft 20 and the second probe body includes a second shaft 22 coaxial with and extending through the first hollow shaft (fig. 1).
As to claim 9, Carter discloses that the first probe body 20 has a first outer diameter and the second probe body has a second outer diameter, wherein the first outer diameter is larger than the second outer diameter (fig. 1).
As to claim 10, Carter discloses the friction stir welding device further comprising a driver actuator 18/42 configured to rotate the first probe body 20 (shoulder) and simultaneously rotate the second probe 22 (pin) at different rotational speeds as they can be independently attached (col. 2, lines 45-55).
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Carter as applied to claim 3 above, and in view of Litwinski et al. (US 6726085, “Litwinski”).
As to claim 11, Carter does not explicitly mention the first probe body and the second probe body including a sprocket or gear for driving/rotation of the probe body. However, examiner takes official notice with respect to this feature since a gear mechanism is conventionally known to an ordinary skilled artisan. As evidence, Litwinski teaches a stirring probe tool 40 comprising a first probe body 28 (pin) and a second probe body 28, each engaging with gears 43/48 for rotation of the probe body to at least partially stir the workpiece (fig. 15; col. 9, lines 41-65; col. 10, lines 50-63). Therefore, it would have been obvious to one of ordinary skill in the art to incorporate any suitable cogwheel, gear or pinion engaged with the actuator in the first & second probe body of Carter since such gear element is common knowledge as shown by Litwinski and doing so would only have yielded predictable results of providing rotation of the probe body.
Claims 3-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Haruna et al. (US 11292077, hereafter “Haruna”) in view of Burton et al. (US 7641096, hereafter “Burton”).
Regarding claim 3, Haruna discloses a friction stir welding (FSW) device configured to join two parts W1-W2 (fig. 1, abstract), the friction stir welding device comprising: a probe assembly including a first probe 7 (shoulder member) and a second probe 6 (pin), wherein the first probe is configured to friction stir weld a first layer in each of the two parts/workpieces W1-W2 and the second probe is configured to friction stir weld a second layer in each of the two parts (figs. 4-5; col. 4, lines 41-48, 63-67; col. 5, lines 1-22).
Haruna shows lap joint (figs. 4-5), being silent concerning joining two parts along a butt joint line, however, such feature is known the art. Burton (also directed to FSW apparatus) discloses a probe assembly including a first probe and a second probe coaxial with the first probe (fig. 4). Burton teaches that it has been known in the FSW art that welding tool is rotated and pressed into a butt joint, lap joint or other similar type of joint between two workpieces, commonly used for joining sheets of metal (Background- col. 1, lines 13-15, 28-35). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to utilize the FSW device of Haruna to join two parts along a butt joint line with a motivation to form a desired structure, such as welding metal sheets as evidenced by Burton. Thus, the friction stir welding device of Haruna is configured to join two parts along a butt joint weld line to form a laminate in which first layers have different material properties than second layers. Examiner notes that parts having layers of different material properties relates to workpieces and does not structurally limit the claimed apparatus.
As to claims 4-5, the friction stir welding device of Haruna is configured to join two parts with first layers of the two parts having a different thermal conductivity than second layers of the two parts, wherein the first probe is configured to stir weld two metal layers, and wherein the second probe is configured to stir weld two synthetic layers having a thermoplastic matrix embedded with reinforcing fibers. The parts having different layers (metal, synthetic) relates to workpieces and does not structurally limit the claimed apparatus.
As to claim 6, Haruna discloses that the first probe 7 and the second probe 6 are arranged coaxially (fig. 1). The friction stir probe assembly of Haruna is configured to be moved along a butt joint weld line as buttressed by teachings of Burton above.
As to claim 7, Haruna shows that the first probe includes a first probe body having an axial length adapted to a thickness of the first layers of the two parts, and the second probe includes a second probe body adapted to a thickness of the second layers of the two parts (figs. 4-5). Examiner notes that claim is open to any thickness of the first layers and the second layers.
As to claim 8, Haruna shows that the first probe body (shoulder member) includes a first hollow shaft 7 and the second probe body includes a second shaft 6 (pin) coaxial with and extending through the first hollow shaft (figs. 1, 4).
As to claim 9, Haruna discloses that the first probe body 7 has a first outer diameter and the second probe body 6 has a second outer diameter, wherein the first outer diameter is larger than the second outer diameter (figs. 1, 4).
As to claim 12, Haruna discloses the friction stir welding device further comprising a third probe 8 with a third probe body coaxial with the first probe body 7 and the second probe body 6 (figs. 4-5). Examiner notes that claim does not require the third probe to friction stir any part or layer.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/12/26, 7/3/25 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 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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/DEVANG R PATEL/
Primary Examiner, AU 1735
Prosecution Insights