DETAILED ACTION
Claims 1, 3, and 5-8 are pending, and claims 1, 3, 5, and 8 are currently under review.
Claims 6-7 are withdrawn.
Claims 2 and 4 are cancelled.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/17/2026 has been entered.
Response to Amendment
The amendment filed 3/17/2026 has been entered. Claims 1, 3, and 5-8 remain(s) pending in the application.
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.
Claim(s) 1, 3, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi et al. (JPS5659597, machine translation referred to herein) alone, or alternatively further in view of Yamasaki et al. (JP2016183396, machine translation referred to herein) or further evidenced by either one of Zhang et al. (2002, Compositional dependent of the neel transition, structural stability, magnetic properties, and electrical resistivity in Fe-Mn-Al-Cr-Si alloys) or Rehman et al. (2026, Modeling the correlation between composition and neel transition temperature in Fe-Mn-Al-Cr-Si alloys).
Regarding claim 1, Takeuchi et al. discloses a welding rod (ie. wire rod) having a broad composition as seen in table 1 below [p.480-481 untranslated document]. The examiner notes that the composition of Takeuchi et al. overlaps with the claimed ranges. See MPEP 2144.05(I). Takeuchi et al. further discloses that non-recited elements such as Cu, etc. can be included in zero amounts (ie. not present), which meets the limitation of “consisting of…” as claimed. Takeuchi et al. does not expressly teach a Neel temperature or a coefficient of thermal expansion as claimed as claimed. However, the examiner notes that these features are intrinsic properties that would have naturally flowed from the metal composition as would have been recognized by one of ordinary skill. Accordingly, since Takeuchi et al. discloses an overlapping composition, an overlapping feature of Neel temperature would have also naturally flowed. See MPEP 2112 & MPEP 2144.05(I).
Alternatively, Takeuchi et al. does not expressly teach a neel temperature as claimed. Yamasaki et al. discloses that it is known to control neel temperature to be 180 or higher to achieve stably low permeability for austenitic steels [0001, 0041]. Therefore, it would have been obvious to one of ordinary skill to modify the wire rod of Takeuchi et al. to have a neel temperature range of Yamasaki et al. for the aforementioned benefit. The examiner notes that the overlap between the neel temperature range of Yamasaki et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Alternatively, as stated above, one of ordinary skill would understand neel temperature to be dependent upon alloy composition as evidenced by Zhang et al. and/or Rehman et al. [p.25 & p.1-2, respectively]. Accordingly, the overlapping composition of Takeuchi et al. would naturally achieve overlapping neel temperature ranges as evidenced above.
Takeuchi et al. does not expressly teach that the wire rod is for a core wire for a power line. However, the examiner notes that “for a core wire for a power line” is an instance of intended use which is not considered to impart any further significant structure to the claims because the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of wire rod, rather than any distinct definition of any of the wire rod limitations. See MPEP 2111.02(II). Accordingly, the wire rod of Takeuchi et al. having an overlapping composition and identical structure would be entirely capable of being utilized for a power line.
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Takeuchi et al. (wt.%)
Mn
31 – 42
19 – 40
C
0 – 0.35
0 – 0.8
Si
0 – 0.5
0 – 1
Nb
1.5 – 3.5
0 – 2
P
0 – 0.03
0 – 0.04
S
0 – 0.03
0
Fe & Impurities
Balance
Balance
Regarding claim 3, Takeuchi et al. discloses the wire rod of claim 1 (see previous). Takeuchi et al. further teaches that the metal composition is austenitic and is further silent regarding any other structures besides austenite [0002]. Accordingly, one of ordinary skill would understand that the metal of Takeuchi et al. has a single-phase austenite structure (ie. only austenite).
Regarding claim 5, Takeuchi et al. discloses the wire rod of claim 1 (see previous). Takeuchi et al. does not expressly teach a permeability as claimed. However, Takeuchi et al. discloses an overlapping composition and identical microstructure as stated above. Accordingly, overlapping values of coefficient of thermal expansion and permeability would have naturally flowed absent concrete evidence to the contrary, which is prima facie obvious. See MPEP 2112 & MPEP 2144.05(I).
Claim(s) 1, 3, 5, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jin et al. (US 2017/0349983) in view of either one of Daito et al. (WO2015186701, machine translation referred to herein) or Bekaert (2018); and alternatively further in view of Yamasaki et al. (JP2016183396, machine translation referred to herein) or further evidenced by either one of Zhang et al. (2002, Compositional dependent of the neel transition, structural stability, magnetic properties, and electrical resistivity in Fe-Mn-Al-Cr-Si alloys) or Rehman et al. (2026, Modeling the correlation between composition and neel transition temperature in Fe-Mn-Al-Cr-Si alloys).
Regarding claim 1, Jin et al. discloses a steel composition as seen in table 2 below [abstract, 0010, 0069-0070]. Jin et al. does not expressly teach any amounts of P or S, such that one of ordinary skill would understand these elements to be absent (ie. zero amount) or merely present in conventionally known impurity amounts, either of which still meets the instantly claimed ranges. The examiner notes that the overlap between the composition of Jin et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Jin et al. further does not expressly require any non-recited elements, which meets the limitation of “consisting of…” as claimed. Jin et al. also teaches a thermal expansion coefficient of 7.7 to 8.7x10^-6 m/m degrees C, which overlaps with the claimed range [table1]. See MPEP 2144.05(I).
Jin et al. further does not disclose any degree of magnetization and also teaches that the steel has very low magnetic permeability, which one of ordinary skill would understand to meet the claimed limitation of “non-magnetic” [0113]. Jin et al. does not expressly teach a Neel temperature as claimed. However, the examiner notes that this feature is an intrinsic property that would have naturally flowed from the metal composition as would have been recognized by one of ordinary skill. Accordingly, since Jin et al. discloses an overlapping composition, an overlapping feature of Neel temperature would have also naturally flowed. See MPEP 2112 & MPEP 2144.05(I).
Alternatively, Jin et al. does not expressly teach a neel temperature as claimed. Yamasaki et al. discloses that it is known to control neel temperature to be 180 or higher to achieve stably low permeability for austenitic steels [0001, 0041]. Therefore, it would have been obvious to one of ordinary skill to modify the wire rod of Jin et al. to have a neel temperature range of Yamasaki et al. for the aforementioned benefit. The examiner notes that the overlap between the neel temperature range of Yamasaki et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Alternatively, as stated above, one of ordinary skill would understand neel temperature to be dependent upon alloy composition as evidenced by Zhang et al. and/or Rehman et al. [p.25 & p.1-2, respectively]. Accordingly, the overlapping composition of Jin et al. would naturally achieve overlapping neel temperature ranges as evidenced above.
Jin et al. does not expressly teach that the steel a wire rod for a core wire for a power line. However, the examiner submits that this feature would have been obvious in view of the prior art. Daito et al. discloses that it is generally well known to utilize steel having high strength for core wires of overhead power line applications [p.1 “background” section]. Bekaert also discloses steel strength steels are known to be utilized for core wire reinforcement of overhead power lines to avoid excessive sagging [p.3]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Jin et al. by utilizing said steel for a core wire of a power line because high strength steels are disclosed to be useful for core wires of power lines as disclosed by the aforementioned prior art.
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Jin et al. (wt.%)
Mn
31 – 42
About 5 – 40
C
0 – 0.35
About 0.01 – 1.2
Si
0 – 0.5
0 – 10
Nb
1.5 – 3.5
0 – 10
P
0 – 0.03
n/a
S
0 – 0.03
n/a
Fe & Impurities
Balance
Balance
Regarding claim 3, the aforementioned prior art discloses the steel of claim 1 (see previous). Jin et al. further teaches that the steel can have a microstructure of entirely austenite [0056].
Regarding claim 5, the aforementioned prior art discloses the steel of claim 1 (see previous). As stated above, Jin et al. discloses that the steel has a low magnetic permeability [0113]. Jin et al. does not expressly teach a permeability value as claimed. However, Jin et al. discloses an overlapping composition and identical microstructure as stated above. Accordingly, overlapping values of permeability would have naturally flowed absent concrete evidence to the contrary, which is prima facie obvious. See MPEP 2112 & MPEP 2144.05(I).
Regarding claim 8, the aforementioned prior art discloses the steel of claim 1 (see previous). As stated above, Jin et al. discloses including Mn in an amount of about 40 weight percent, wherein one of ordinary skill would understand “about” to allow for values above 40 weight percent and therefore overlaps with the claimed range. See MPEP 2144.05(I).
Response to Arguments
Applicant's arguments filed 3/17/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art alloys are made using a different process and would therefore result in a different neel temperature range. The examiner cannot concur. Again, Neel temperature is an intrinsic property, wherein one of ordinary skill would understand that intrinsic properties, by definition, depend upon composition and specific lattice structure rather than any particular manufacturing steps (emphasis added). Nonetheless, the examiner cannot concur with applicant’s mere conclusory remarks absent concrete evidence that different structures due to sheet rolling vs. wire rolling would result in differences in neel temperatures. The examiner has already shown that the prior art discloses an overlapping composition and microstructure. See MPEP 2112.01. Accordingly, the burden shifts to applicant to show that different neel temperatures would be present. However, applicant has not shown or provided said evidence. Therefore, the specific method of manufacturing is irrelevant absent specific evidence or reasoning to the contrary which has not been provided.
Applicant further argues that Jin et al. requires a coefficient of thermal expansion of 7.9 to 9.6x10-6 and therefore teaches away from the claimed coefficient of thermal expansion range. The examiner cannot concur. The aforementioned range relied upon by applicant pertains to a “cryogenic high Mn steel”, which is not the inventive disclosure of Jin et al. (emphasis added) [table1]. The inventive high Mn steel of Jin et al. is expressly disclosed to achieve a thermal expansion coefficient range of about 7.7 to 8.7x10-6 as stated above.
Applicant’s arguments are further moot in view of the new ground(s) of rejection is made above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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