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 .
Status of Claims
Pending and under examination: claims 1-6
Amended: claim 1
Rejected: claims 1-6
Response to Arguments
Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive.
The argument that while Tanaka teaches an elongation of a wire being at least 5.5% in Figs 7 and 8, the wire diameter is not less than 40 µm (see page 3 of arguments) is not found persuasive because disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123 II.). Patents are relevant as prior art for all they contain (MPEP 2123 I.).
Regarding the arguments based on comparative examples 1-8 of the present invention, the arguments are not commensurate with the claims – none of the claims specify including Re as an element.
The arguments that the heating temperature in the heating apparatus is 800-1000°C in Tanaka, which is not high enough to achieve recrystallization, and that the strain removing heat processing at 2300°C is only performed for 1 second, which is not long enough to achieve recrystallization (see page 4 of arguments) are not found persuasive, because Tanaka specifically teaches performing recrystallization at 1800-2000°C [0030], [0069], which is in addition to the strain removal at 1200-2300°C [0033], [0070].
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (US 20040244879 A1; of record).
Regarding claim 1, with regard to the claimed “A metal wire, the metal wire having: a tungsten content of at least 90 wt%; a total elongation of at least 5.5% and at most 16%; a tensile strength of at least 1600 MPa and at most 2400 MPa; and a diameter of less than 40 μm”, Tanaka discloses a tungsten wire containing 1-30 mass% of rhenium [0022], meaning the tungsten content would be about 70-99% [0022], which overlaps with the claimed ranges; the wire diameter is 20-90 μm [0032], which overlaps with the claimed range. The elongation after electric heating is 5% or greater [0031], which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Tanaka does not explicitly disclose the tensile strength; however, the tungsten wire disclosed in has the same composition as that disclosed in the instant specification. See, for example, paragraph [0014] of instant specification – the alloy has 3% or 5% Re and a balance of W (see Table 1 of instant spec), compared to Tanaka who teaches multiple alloy compositions such as an Re-W alloy containing 3% Re with a balance of tungsten [0034]-[0035]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
The alloy is heated and elongated to the same extent as the invention of the present application after repeating a heating process and an elongation process in the same manner as the invention of the present application, such as wire drawing at 800-1000°C [0033], a temperature of 1800-2000°C for recrystallization [0030], [0069] and a temperature of 1200-2300°C for strain removal (see Tanaka, [0033, [0070]]; see instant specification [0025]-[0027], [0031], Tables 1-2), thus, it is prima facie expected for the tensile strength to be in the range of about 1600-2400 MPa. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
Regarding claims 2-3, Tanaka teaches the metal wire of claim 1, and as discussed above, teaches that the alloy contains rhenium which meets the claims.
Regarding claim 4, Tanaka teaches the metal wire of claim 1, and as discussed above, Tanaka teaches the same composition and teaches the same property of elongation, which is a property that indicates how long a material can deform before fracturing, which is a property that is related to the property being claimed. Other factors that would affect the claimed property are diameter of the wire and the temperature at which the bending occurs. Tanaka teaches a wire diameter range that overlaps with the claimed range, such as, as low as 20 µm; it is prima facie expected that the wire of Tanaka meets the claimed fracture resistance property absent persuasive technical reasoning or evidence to suggest otherwise, particularly in view of Tanaka being directed to a wire that can achieve a small wire diameter without breaking [0033].
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
Regarding claim 5, Tanaka teaches the wire of claim 1, and teaches that the ideal wire diameter range is in the range of approximately 20-90 µm, which is interpreted under BRI as reasonably encompassing values close to either bound, and 18 µm is close to the bound of ‘approximately 20 µm’
Regarding claim 6, Tanaka teaches the wire of claim 1. The limitation in claim 6 is a statement of intended use; to satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim (MPEP 2111.02 II). Therefore, because Tanaka’s wire is capable of performing the intended use, Tanaka meets the claim.
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 Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735