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 .
Response to Arguments
The amendment of the specification and claims to recite “400 µm × 100 µm”:
Applicant has amended the specification and claims to change a reference frame of “400 µm × 50 µm” with “400 µm × 100 µm.” Applicant argues that this this is not new matter, and is instead the correction of an obvious error (pp. 5–7).
To support this claim, Applicant argues that fig. 5 (which Applicant argues is mostly, though not entirely, to scale, which is mostly sensible since the figure shows a photograph) shows its reference frame 6 having an aspect ratio more like 4:1 than 8:1.
The Office finds this part of Applicant’s argument unpersuasive. The “100 µm” scale bar in fig. 5 clearly provides an opportunity to show that the length of the reference frame is 400 µm (since, in whatever way the image was shrunk as Applicant describes, the length of the entire image would also presumably be shrunk). But, by the standard set by the image itself, the length of reference frame 6 would be about 333 µm, meaning that the aspect ratio of reference frame 6 is not to scale, and is instead more properly judged as an approximate indication of the type of area that reference claim 6 is supposed to capture.
However, Applicant also argues that the originally submitted fig. 5 in the PCT application unambiguously show a reference frame with an aspect ratio of 4:1. These figures also explain what Applicant means when discussing how the figures published in the PCT application differ from those originally submitted (in how the scale bar is separated from the image, and then the image is cropped and shrunk disproportionately along its width and length). We can clearly see that the outline of reference frame 6 is clearly to scale along the length, while its width is very clearly ¼ of the length. The presence, and accuracy, of the “100 µm” scale bar suggests adequate original support for this idea, since this scale bar should also be accurate in the wire width direction. However, given that fig. 5 and other figures are presented as to-scale, but are not, a new objection to the drawings is below.
The objection to the specification:
Applicant’s arguments regarding the objection to the specification, and amendment in response thereto, are persuasive, and that objection has been withdrawn.
The rejection of the claims under § 102(a)(1) (now § 103) due to an alleged sale:
Applicant argues that the reference frame from the Metallurgical Evaluation is significantly smaller than what is claimed.
Applicant argues that the Metallurgical Evaluation to determine the proportion of the surface formed by the block-like particles, and the proportion of the surface area of all block-like particles made of block-like particles that each have a surface area in the range of 25–250 µm2, was performed on an area much smaller than the 400 × 100 µm frame claimed.
The Office understands Applicant’s point, but does not find that this conclusively proves that the claimed proportion features are less than likely to be present in the evaluated wire, since the features are percentage-based and are likely to be present on all but drastically smaller reference frames.
Applicant also argues that it's unclear whether the image sections are symmetrical to the longitudinal axis of the wire, but given the mention of the “longitudinal axis” on p. 16 of the Evaluation, the Office does not find that this raises a sufficient concern about the applicability of the Evaluation to the claim.
Applicant argues that the wire properties were not established before the priority date.
Applicant argues that the properties of the wire were not tested prior to Applicant’s priority date. In the absence of evidence suggesting that the properties of the wire were likely to change during the time between its packaging and its evaluation date, this argument is unpersuasive.
Applicant argues that the product allegedly sold prior to the priority date is not clearly the product tested in the Metallurgical Evaluation.
Applicant argues that there is insufficient evidence that the wire evaluated (“Plasma 4”) is the same as the “PLASMA BRASS .006″ PS 6 KG” allegedly shipped prior to the effective filing date of the claimed invention. Applicant argues that the cited references only show that a wire coil was delivered by GIP to the TraskBritt law firm in October of 2023; whereafter, the firm sent a sample with an alleged item number “HFL 13056CB2” to the laboratory for evaluation.
The Office has reviewed the evidence, and finds it more likely than not that the wire coil evaluated at the laboratory was the 0.15 mm/0.006 in. wire at issue. The affidavit of B. Ramsay (items 15–20) and the affidavit of J. Jeffrey Gunn (items 9–18) establish a sufficiently clear record of possession and transfer of the wire received before the priority date.
Applicant argues that no clear date of manufacture can be found on the packaging of the coil itself, arguing that there is no sufficient reason to find the number “201844” on the packaging to correspond to a relevant date. While it is broadly true that this number may not be related to any relevant date, the standard for review is based on the preponderance of evidence (MPEP § 706.I.). The affidavit of B. Ramsay proffers that this number refers to the 44th week of the year 2018, and aligns this conclusion with other dates proximate to what this time would be (item 19.d.). Given at least how the proposed date interpretation in the affidavit aligns neatly with the other relevant purchase and transport dates, and given the absence of stronger countervailing reasons and evidence to find to the contrary, the Office does not find Applicant’s arguments persuasive.
Along the same lines, the Office does not find Applicant’s arguments regarding the item number “HFL13056CB2” persuasive, as the argument is too grounded in speculation.
Applicant argues that the wire electrode was not “on sale, or otherwise available to the public”
Applicant argues that the evidence suggests that the order and delivery of the plasma wire was of a sample, and not a commercially available product. Applicant notes that an email of record explains that the 0.15 mm wire was not yet in production, and was being worked on by a research and development team. Applicant notes that the wire sample was returned by GIP to Thermocompact, the successor parent company of FSP one, further validating that these were samples send for testing purposes.
This part of Applicant’s arguments is unpersuasive. MPEP § 2152.02(d) explains that “on sale activity will bar patentability if the claimed invention was: (1) the subject of a commercial sale or offer for sale, not primarily for experimental purposes; and (2) ready for patenting.”
Regarding prong (1), the evidence of record suggests that the commercial sale was not primarily for experimental purposes. By this, the Office means that the sale was not conducted by the seller for the purpose of validating the workability of the product. While email evidence of record discloses that a research and development team was working on the product for testing to be able to validate it before production, the evidence does not suggest that the sale of the sample itself was part of furthering this validation.
Applicant also argues that the return of the wire sample originally provided by FSP-one to GIP points to the wires sample being originally sent for testing purposes rather than a commercial sale, and argues that there is no apparent reason in the documents why GIP would return the wire spools to FSP one or Thermocompact other than the sample never being intended to stay with GIP. This argument is unpersuasive because, first, a plain reading of the evidence suggests that something that qualifies as a sale took place (i.e. money was exchanged for the wire product), and second, numerous other reasons for the return are possible (e.g. a change of mind about needing the product).
Regarding prong (2), the evidence of record suggests that the claimed invention was ready for patenting because the metallurgical evaluation shows proof that it had been reduced to practice. See MPEP § 2133.03(c). Although the email says that the wire needed “testing to be able to validate before production,” the fact that the email also says “0.15mm is a new diameter that we haven’t produced before,” followed by this diameter actually being produced, and in addition no meaningful differences found between the claimed invention and the evaluated wire, suggests that the claimed invention was ready for patenting.
Applicant also provides a price list from GIP from December of 2018 only showing wires with diameters of 0.25 mm and 0.30 mm. This part of Applicant’s argument is unpersuasive as only evidence directly related to what would be the 0.15 mm wire is truly relevant. Furthermore, for example, MPEP § 2152.02(d) explains that the “‘on sale’ provision has been interpreted as including commercial activity even if the activity is secret,” and MPEP § 2133.03(b).III.A. explains that the sale activity need not be public (“there is no requirement that ‘on sale’ activity be ‘public’”).
Applicant argues that the patent bar from sales does not apply to a third party secret sample testing of a third party product.
Applicant cites to Helsinn to show that there is insufficient proof that courts have found that a third party’s secret sale or sending of a sample of a third party’s product constitutes prior art under § 102(a)(1).
This argument is unpersuasive because MPEP § 2133.03(b).IV.A provides that “sales or offers for sale by independent third parties may be prior art,” and lists only one exception that does not apply here.
Drawings
In light of the pertinent discussion in the Response to Arguments section above, the drawings are objected to because the record suggests that fig. 5 should be to-scale, but fig. 5’s scale bar does not show a length of 400 µm of the reference frame as per the specification, and instead fairly clearly shows a length of about 333 µm. The figure should be corrected to show a proper scale.
As figs. 4 and 6–8 also differ in how they’ve been modified compared to the original drawings from Applicant’s priority document (i.e. by separating the scale bar from the image, and then cropping and shrinking the main focus of the image, likely disproportionately along its length and width), it’s clear that these too also present a false scale which should be also corrected.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
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.
Claims 1–14 are rejected under 35 U.S.C. 103 as being unpatentable based upon a public use or sale or other public availability of the invention.
The Office supplies four pieces of non-patent literature:
Facts and Supporting Documents for the Revocation of Patent EP 4028194, submitted by Innov-Group in the prosecution of European Patent Application No. 21714902.
Metallurgical Evaluation of Plasma 4 EDM Wire prepared by Element Materials Technology.
Affidavit of B. Ramsay of Global Innovative Products.
Affidavit of J. Jeffrey Gunn of TraskBritt, Regarding Plasma Wire.
The documents overall clearly allege that the claimed wire electrode was on sale in 2018. The documents detail that product sold and obtained from that year (identified as “PLASMA BRASS,” “PLASMA™,” and “SUPER EDM BRASS”) was delivered to Element Materials Technology for metallurgical evaluation. Using the findings of this evaluation, the Facts and Supporting Documents, on pp. 7–13, detail how the evaluated wire had features that matched the European patent claims 1–14, which match original claims 1–14 of this US patent application. Both the Metallurgical Evaluation, and the portions of the Metallurgical Evaluation cited in the Facts and Supporting Documents, are in the English language.
The claims have now been amended to recite that the features of the proportion of the surface formed by the particles, and the proportion of particles with a surface area in the range of 25–250 µm2, are now defined with respect to a 400 µm × 100 µm reference frame. As indicated above the Response to Arguments section, although the Metallurgical Evaluation seems to make its conclusions with respect to a reference frame that could be as small as about a quarter of the claimed reference frame, given that the claimed details concern percentage-based features of this reference frame, and given that the reference frame is not drastically smaller than the claimed reference frame, the Office finds it more likely than not that the evaluation of the wire features in the Evaluation proves that the claimed percentage-based features would match those within the claimed reference frame.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, this action is made final. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward (Ned) F. Landrum can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN J NORTON/Primary Examiner, Art Unit 3761
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