Detailed Office Action
Notice of Pre-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
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/08/2025 has been entered.
Response to Amendments
The amendment filed on 12/08/2025 has been entered. Claims 1 and 3 – 8 remain withdrawn. Claims 5 – 8 remain withdrawn. Claims 1 and 3 – 4 are under examination.
Applicant’s amendments have overcome the previous objections.
Terminal Disclaimer
The terminal disclaimer filed on 12/08/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12,264,379 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections – U.S.C. §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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (US 6,488,787) in view of Hwang (KR20100050037, using espacenet translation, cited in the OA on 11/26/24)
Regarding claim 1, Ochi teaches a steel material for a wire, meeting the limitation of wire rod [Title]. Ochi teaches that the wire can be subjected to spheroidization annealing [Col 3, line 40 – 41] and has a composition of:
Element
Claimed Range (wt%)
Prior Art Range (wt%)
Relationship
Reference
Carbon (C)
0.3 – 0.5%
0.1 – 0.5%
Overlap
Col 3, line 24 – 28
Silicon (Si)
0.15 – 0.4%
0.01 – 0.15%
Overlaps (endpoints)
Col 3, line 24 – 28
Manganese (Mn)
1.0 – 1.5%
0.2 – 1.7%
Overlaps
Col 3, line 24 – 28
Chromium (Cr)
0.3 – 0.7%
Up to 0.8 wt%
Overlaps
Col 3, line 47
Boron (B)
0.003% or less (≠0)
0.0003 – 0.007%
Overlaps
Col 3, line 24 – 28
Titanium (Ti)
0.03% or less (≠0)
0.005 – 0.07%
Overlaps
Col 3, line 24 – 28
Phosphorous (P)
0.03% or less
Up to 0.02%
Falls within
Col 3, line 29 – 30
Sulfur (S)
0.01% or less
0.003 – 0.15%
Overlaps
Col 3, line 44
Aluminum (Al)
0.02 – 0.05%
0.0005 – 0.05%
Overlaps
Col 3, line 24 – 28
Nitrogen (N)
0.001 – 0.01%
0.002 – 0.02%
Overlaps
Col 3, line 24 – 28
Iron (Fe)
Balance
Balance
Meets
Col 3, line 24 – 28
Ochi teaches that the microstructure is composed of ferrite, pearlite, and spheroidal carbides [Col 3, line 35 – 36, 60 – 61], meeting the claimed limitation of a balance of ferrite and pearlite and includes 5% or less (including 0%) of bainite and/or martensite. Ochi teaches that the content of pearlite is up to 170*C wt% (17 – 85% P) wherein the ferrite would be ~15 – 73%, which overlaps with the claimed range [Col 4, line 1 – 5].
Ochi does not explicitly teach the size of the pearlite colony/grains.
Hwang teaches a steel wire containing high – strength and high – toughness [page 3, line 203]. Hwang teaches that the steel wire contains a similar composition [page 3, line 200 – 203]. Hwang teaches that the average pearlite colony size should be 20 µm or less, which overlaps with the claimed range, and that this feature contributes to attaining a steel wire with excellent ductility, strength, and
toughness [page 7, line 381 – 386].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the steel wire of Ochi to have an average pearlite colony size of 20 µm or less, as taught by Hwang. Doing so helps attain excellent ductility, strength, and toughness. Given Ochi and Hwang are directed to round/wire steel material that possess a similar compositon [Ochi, Col 3, line 24 – 28 and Hwang, line 384], a person of ordinary skill in the art would have a reasonable expectation of success in attaining predictable results and would be motivated to apply the teachings of Hwang to Ochi to help attain ductility, strength and toughness.
Furthermore, in regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan, before the effective filing date of the claimed invention, to have selected the overlapping portion of the ranges disclosed. Selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05.I). Additionally, “The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range” In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (MPEP 2144.05 I)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (US 6,488,787) in view of Hwang (KR20100050037, using espacenet translation, cited in the OA on 11/26/24), as applied to claim 1, in further view of Lee (KR20180011427, using espacenet translation, henceforth “Lee 2018”, cited in the OA on 9/8/25)
Regarding claim 3, Ochi in view of Hwang teaches the invention as applied in claim 1. Ochi states that the ferrite grain size number of the steel should be at least No. 9 [Col 3, line 38 – 40] (wherein higher grain size number indicates smaller grain size), but does not explicitly teach the average grain size of ferrite.
Lee 2018 teaches a wire rod having a similar composition [0019] to Ochi that is subjected hot rolling [0016] and spheroidization annealing [0028]. Lee teaches that the wire rod contains a combination of ferrite and pearlite [0054] and that the pearlite and ferrite average grain size is 20 µm or less [0057] to ensure hydrogen delayed fracture resistance is achieved.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the steel wire of Ochi as-modified by Hwang and controlled the average grain size of ferrite to 20 µm or less, as taught by Lee 2018. Both Ochi and Lee 2018 are directed to steel wires for use in the automobile industry [Ochi, Col 1, line 5 – 10; Lee 2018, 0001 – 0003] (same field of endeavor), possess similar/overlapping compositions, and as noted above, Ochi suggests minimizing the ferrite grain size by controlling its size to at least a grain size number of 9. As such, an ordinarily skilled artisan would have a reasonable expectation of success in applying the teachings of Lee 2018 to the steel wire of Ochi as-modified by Hwang. Additionally, an ordinarily skilled artisan would have been motivated to apply the teachings to ensure hydrogen delayed fracture resistance.
Selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05.I).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi (US 6,488,787) in view of Hwang (KR20100050037, using espacenet translation, cited in the OA on 11/26/24), as applied to claim 1, in further view of Lee (KR20110033534, using espacenet translation, henceforth Lee 2011, cited in the OA on 9/8/25)
Regarding claim 4, Ochi in view of Hwang teaches the invention as applied in claim 1. Ochi teaches that the microstructure is composed of ferrite, pearlite, and spheroidal carbides [Col 3, line 35 – 36, 60 – 61]. However, Ochi does not expressly state that the average aspect ratio of iron carbide/cementite following spheroidization annealing.
Lee 2011 discloses a medium-carbon steel wire rod with a similar composition to Ochi and which has a microstructure of ferrite, pearlite, and spheroidized cementite [page 2 (translation), bottom]. Lee 2011 teaches that the wire rod is subjected to spheroidization annealing/softening treatment [Page 2, bottom]. Lee 2011 discloses that the softening treatment spheroidizes part or all of the cementite [page 4, top] and more than 50% of the cementite has an aspect ratio of 1 – 2.5, which overlaps/meets the claimed range. As discussed by Lee, the spheroidizing/softening to spheroidize cementite and induce homogenous particle distribution results in improved cold workability [page 1, top].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the steel wire of Ochi as-modified by Hwang and controlled the aspect ratio of more than 50% of the cementite to be 1 – 2.5, as taught by Lee 2011. Both Ochi and Lee 2011 are directed to steel wires (same field of endeavor) with similar/overlapping compositions and spherical carbides, and therefore, an ordinarily skilled artisan would have a reasonable expectation of success in applying the teachings of Lee 2011 to the steel wire of Ochi as-modified by Hwang. Additionally, an ordinarily skilled artisan would have been motivated to apply the teachings to ensure improved cold workability, a benefit that would be appreciated by Ochi [Claim 1]
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
Applicant argues that Si is added for the purpose of strength improvement and when Si is below 0.15% the strength is insufficient and when the content of Si is above 0.4%, the solid solution strengthening is excessively high and affects workability. This argument is not found persuasive because “Arguments presented by the applicant cannot take the place of evidence in the record”. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) (MPEP 716.01(c) II). The arguments presented do not provide objective evidence that the claimed range is critical for strength. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). (MPEP 716.02(d) II).
Applicant argues that Ochi’s inventive steels have a silicon below the claimed range, and similarly, Hwang does as well. This is not found persuasive because “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)” (MPEP 2123). Ochi teaches that the silicon content can be up to 0.15 wt% Si [Col 3, line 24 – 28], which shares overlapping endpoints with the claimed range. “The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range” In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (MPEP 2144.05 I).
Moreover, while Hwang is not relied upon for its composition disclosure, Hwang also teaches that silicon can be up to 0.15 mass% [Page 3 of translation, bottom].
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 6,475,306 – Hot rolled steel wire with overlapping composition
JP2002194495 – Overlapping composition and microstructure
KR20160076015 – Wire rod with similar composition and disclosure of pearlite colony size
KR20180072965 – Overlapping composition, microstructure, and grain size
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738