`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`13/820,557
`
`03/04/2013
`
`Junji Fujiwara
`
`MAT—10584US
`
`6854
`
`RATNERPRESTIA
`PO. BOX 980
`VALLEY FORGE, PA 19482-0980
`
`CALVETTI, FREDERICK F
`
`ART UNIT
`
`3742
`
`PAPER NUIVIBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/06/2015
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/820,557 FUJIWARA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`Frederick Calvetti it?“ 3742
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 3/4/2013.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|Z| This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-13 is/are pending in the application.
`5a) Of the above cIaim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-13 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'I’vaIW.uscI‘.0. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 3/4/2013 is/are: a)lX| accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date 9/11/2014'3/4/2013.
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20150327
`
`

`

`Application/Control Number: 13/820,557
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`Page 2
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`Art Unit: 3742
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`DETAILED ACTION
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Double Parenting
`
`1.
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the claims at issue are not identical, but at least
`
`one examined application claim is not patentably distinct from the reference claim(s)
`
`because the examined application claim is either anticipated by, or would have been
`
`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
`
`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
`
`1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
`
`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321(d)
`
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`
`double patenting ground provided the reference application or patent either is shown to
`
`be commonly owned with this application, or claims an invention made as a result of
`
`

`

`Application/Control Number: 13/820,557
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`Page 3
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`Art Unit: 3742
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`activities undertaken within the scope of a joint research agreement. A terminal
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`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
`
`The USPTO internet Web site contains terminal disclaimer forms which may be
`
`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
`
`determine what form should be used. A web-based eTerminal Disclaimer may be filled
`
`out completely online using web-screens. An eTerminal Disclaimer that meets all
`
`requirements is auto-processed and approved immediately upon submission. For more
`
`information about eTerminal Disclaimers, refer to
`
`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
`
`2.
`
`Claims 1-13 are rejected on the ground of nonstatutory double patenting over
`
`claims 1-14 of U.S. Patent No. 8993925 since the claims, if allowed, would improperly
`
`extend the “right to exclude” already granted in the patent.
`
`The subject matter claimed in the instant application is fully disclosed in the
`
`patent and is covered by the patent since the patent and the application are claiming
`
`common subject matter, as follows: a predetermined frequency, velocity referenced to a
`
`wire feed speed based on a set current with a waveform (sinusoidal or trapezoidal) and
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`a difference in waveform in forward or backward motion which is optimization at best.
`
`Furthermore, there is no apparent reason why applicant was prevented from
`
`presenting claims corresponding to those of the instant application during prosecution of
`
`the application which matured into a patent. See In re Schnel/er, 397 F.2d 350, 158
`
`USPQ 210 (CCPA 1968). See also MPEP § 804.
`
`

`

`Application/Control Number: 13/820,557
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`Page 4
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`Art Unit: 3742
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`3.
`
`Claims 1-13 are rejected on the ground of nonstatutory double patenting over
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`claims 1-23 of U.S. Patent No. 8,513,568 since the claims, if allowed, would improperly
`
`extend the “right to exclude” already granted in the patent.
`
`The subject matter claimed in the instant application is fully disclosed in the
`
`patent and is covered by the patent since the patent and the application are claiming
`
`common subject matter, as follows: the cyclic change of the feed speed is a sinusoidal
`
`or trapezoidal change and a difference is optimization at best.
`
`Furthermore, there is no apparent reason why applicant was prevented from
`
`presenting claims corresponding to those of the instant application during prosecution of
`
`the application which matured into a patent. See In re Schnel/er, 397 F.2d 350, 158
`
`USPQ 210 (CCPA 1968). See also MPEP § 804.
`
`Claim Rejections - 35 USC § 1 12
`
`4.
`
`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.
`
`5.
`
`Claims 1-13 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 pre-AIA the
`
`applicant regards as the invention. Claims 1-6 are method claims that do not recite
`
`steps or a transitional phrase like “comprising” making the scope of the claims unclear
`
`

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`Application/Control Number: 13/820,557
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`Page 5
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`Art Unit: 3742
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`and indefinite. Claims 7-13 recite substantial functional language making the scope of
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`the claims to cover all structures which makes the scope of the claims indefinite.
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`Use of the word “means” (or “step for”) in a claim with functional language
`
`creates a rebuttable presumption that the claim element is to be treated in accordance
`
`with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that
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`35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when
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`the function is recited with sufficient structure, material, or acts within the claim itself to
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`entirely perform the recited function.
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`Absence of the word “means” (or “step for”) in a claim creates a rebuttable
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`presumption that the claim element is not to be treated in accordance with 35 U.S.C.
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`112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f)
`
`(pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim
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`element recites function but fails to recite sufficiently definite structure, material or acts
`
`to perform that function.
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`

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`Application/Control Number: 13/820,557
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`Page 6
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`Art Unit: 3742
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`Claim elements in this application that use the word “means” (or “step for”) are
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`presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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`Similarly, claim elements that do not use the word “means” (or “step for”) are presumed
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`not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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`6.
`
`Claim limitations containing the term “for” in claim 7 has/have been interpreted
`
`under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they
`
`use a generic placeholder for” coupled with functional language thereafter without
`
`reciting sufficient structure to achieve the function. Furthermore, the generic
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`placeholder is not preceded by a structural modifier. Term like “setting unit”, “feed
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`motor , switching motor” etc in claim 7 are not sufficient structure to extract the
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`recitations from paragraph 6/f construction. Claim 7 recites substantial functional
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`language.
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`Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph, claim(s) 7-13 has/have been interpreted to cover the corresponding
`
`structure described in the specification that achieves the claimed function, and
`
`equivalents thereof.
`
`A review of the specification shows that the following appears to be the
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`corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-
`
`AIA 35 U.S.C. 112, sixth paragraph limitation: none apparently.
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`If applicant wishes to provide further explanation or dispute the examiner’s
`
`interpretation of the corresponding structure, applicant must identify the
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`corresponding structure with reference to the specification by page and line
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`

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`Application/Control Number: 13/820,557
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`Page 7
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`Art Unit: 3742
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`number, and to the drawing, if any, by reference characters in response to this
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`Office action.
`
`If applicant does not intend to have the claim limitation(s) treated under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the
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`claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient
`
`structure, material, or acts for performing the claimed function to preclude application of
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`For more information, see MPEP § 2173 et seq. and Supplementary Examination
`
`Guidelines for Determining Compliance With 35 U. S. C. 112 and for Treatment of
`
`Related Issues in PatentApp/ications, 76 FR 7162, 7167 (Feb. 9, 2011).
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`8.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter
`
`of the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the obligation
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`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`

`

`Application/Control Number: 13/820,557
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`Page 8
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`Art Unit: 3742
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`not commonly owned at the time a later invention was made in order for the examiner to
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`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
`
`102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
`
`9.
`
`Claims 1-13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Fujiwara et al (WO 2011/013321, counterparts EP 2402104 and US
`
`2012/0111842, supplied by applicants) in view of Narayanan et al (US 2006/0070983)
`
`and Huismann et al (US 7,102,099). Reference for Fujiwara is to US counterpart for
`
`convenience.
`
`10.
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`Fujiwara discloses: An (typo) consumable electrode arc welding control method
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`in which short-circuit welding is performed by alternating short-circuits and arcs while a
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`welding wire is fed automatically(abstract), wherein a short-circuit state and an arc state
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`are alternately generated by feeding the welding wire in periodically alternating fonNard
`
`and backward directions at a predetermined frequency and a predetermined velocity
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`amplitude with reference to a basic wire feed speed based on a set current(abstract);
`
`and
`
`11.
`
`a speed of periodic feeding of the welding wire is controlled in such a manner
`
`that a waveform to feed the welding wire is different between the forward and backward
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`directions (fig 1,5,para 60-64).
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`12.
`
`The claims at best differ in that there is a difference between waveforms for a
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`particular direction.
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`13.
`
`Huismann shows a welding wire feeding rate having a trapezoidal form (see
`
`Figure 8) having a combination of slowing, stopping, and retracting advancement of a
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`

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`Page 9
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`Art Unit: 3742
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`feed wire as the welding operations are performed (see column 4, lines 6-22, col 8 line
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`44-52), and Huismann also shows a welding operation that is timed to a peak time, a
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`rising time, or a falling time, having the upper and lower limits as shown in Figure 8,
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`wherein the welding operation includes an arc state and a short circuit state that is
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`repeated or cycled. See also Narayanan para 2, 71, fig 14. The references show
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`changing and different waveforms for different directions and effects therefor.
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`14.
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`It would have been obvious at the time of the invention to modify Fujiwara, if
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`necessary, with the feeding wire rate having different trapezoidal or sinusoidal
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`waveforms as known in Huismann and Narayanan that show the rate at which the
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`feeding wire is advanced including a sloped rise and fall of the rate that is the
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`representative of the feeding wire supplied by a motor to optimize, to improve spatter,
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`defective beads and penetration. A different waveform to feed the wire between forward
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`and backward directions is not critical or produces any new or unexpected results and is
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`optimization. See Fujiwara para 12,62, Huismann column 4, lines 6-22, col 8 line 44-52,
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`Narayanan para 2, 71, fig 14.
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`15.
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`For claim 2: wherein the speed of periodic feeding of the welding wire is
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`controlled in such a manner that the predetermined velocity amplitude is different
`
`between the forward and backward directions(fig 1,5).
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`16.
`
`For claim 3: wherein a velocity amplitude in the forward direction is smaller than
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`a velocity amplitude in the backward direction(fig 1,5).
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`17.
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`For claims 4,8: wherein a ratio of a short circuit period to an arc period is
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`adjusted by setting a velocity amplitude in the forward direction to a product of a velocity
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`

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`Application/Control Number: 13/820,557
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`Page 10
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`Art Unit: 3742
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`amplitude in the backward direction and a ratio smaller than 1, thereby making the
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`velocity amplitude in the forward direction smaller than the velocity amplitude in the
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`backward direction(fig 1,5).
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`18.
`
`For claims 5,9: wherein the ratio is determined based on at least one of a set
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`current, a diameter of the welding wire, a type of the welding wire, an extension of the
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`welding wire(abstract, and shielding gas(expedient in the art) to be used.
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`19.
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`For claims 6,10-13: wherein the welding wire is fed in such a manner that the
`
`waveform to feed the welding wire is changed either sinusoidally or trapezoidal with
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`reference to the basic wire feed speed. See the rejection of claim 1.
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`20.
`
`For claim 7: An arc welding device alternately generating arcs and short circuits
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`between an object-to-be-welded and a welding wire used as a consumable electrode,
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`the arc welding device comprising:
`
`21.
`
`a welding condition setting unit for setting at least a set current;
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`22.
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`a wire feed motor for feeding the welding wire;
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`23.
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`a switching unit for controlling a welding output;
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`24.
`
`a welding voltage detector for detecting a welding voltage;
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`25.
`
`a short-circuit/arc detector for detecting whether a welding process is in a short-
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`circuit state or in an arc state based on an output of the welding voltage detector;
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`26.
`
`a short-circuit controller for outputting a welding output control signal indicating
`
`that the welding process is in the short-circuit state;
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`27.
`
`an arc controller for outputting a welding output control signal indicating that the
`
`welding process is in the arc state;
`
`

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`Application/Control Number: 13/820,557
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`Art Unit: 3742
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`28.
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`a drive unit for controlling the switching unit based on one of the welding output
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`control signal from the short-circuit controller and the welding output control signal from
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`the arc controller; and
`
`29.
`
`a wire-feed-motor controller for controlling the wire feed motor in such a manner
`
`that the welding wire is fed in periodically alternating fonNard and backward directions at
`
`a predetermined frequency and a predetermined velocity amplitude, wherein the wire-
`
`feed-motor controller comprises:
`
`30.
`
`a basic wire feed speed controller for outputting a basic wire feed speed based
`
`on the set current, the basic wire feed speed being a reference of a periodic feeding of
`
`the welding wire;
`
`31.
`
`a motor polarity switching controller for outputting a signal indicating a direction
`
`of rotation of the wire feed motor, the direction of rotation corresponding to one of the
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`fonNard and backward directions in which the welding wire is fed;
`
`32.
`
`a wire-feed velocity amplitude controller for outputting a velocity amplitude in the
`
`backward direction with reference to the basic wire feed speed, and
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`33.
`
`a velocity amplitude in the forward direction smaller than the velocity amplitude in
`
`the backward direction; and
`
`34.
`
`a wire feed speed/frequency controller for outputting a wire feed frequency based
`
`on the set current, wherein the wire-feed-motor controller controls the wire feed motor
`
`based on the basic wire feed speed, the signal indicating the direction of rotation of the
`
`wire feed motor, the velocity amplitudes in the fonNard and backward directions in which
`
`the welding wire is fed, and the wire feed frequency, allowing the arc welding device to
`
`

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`Application/Control Number: 13/820,557
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`Page 12
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`Art Unit: 3742
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`control a speed of periodic feeding of the welding wire in such a manner that a
`
`waveform to feed the welding wire is different between the fonNard and backward
`
`directions. See fig 4,6, abstract, para 46,70,71 and the rejection of claim 1.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure. See WO 2007/094090 (US 2008/0314884) supplied by
`
`applicants.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Frederick Calvetti whose telephone number is (571 )272—
`
`5501. The examiner can normally be reached on Monday-Friday 8:30-5:00 EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Tu Hoang or Dana Ross can be reached on 571 -272—4780/571 -272—
`
`4856/571-272—4480. The fax phone number for the organization where this application
`
`or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`

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`Application/Control Number: 13/820,557
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`Page 13
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`Art Unit: 3742
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`/ Frederick Calvetti/
`
`Examiner, Art Unit 3742
`
`/DANA ROSS/
`
`Supervisory Patent Examiner, Art Unit 3742
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`