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 .
Priority
Receipt is acknowledged of a certified copy of CN 202110077980.5 filed January 20, 2021 as required by 37 CFR 1.55. Receipt is also acknowledged of WO 2022/156437, the WIPO publication of PCT/CN 2021/138514 filed December 15, 2021.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed December 23, 2025.
Claims Filing Date
December 23, 2025
Amended
1
New
19, 20
Pending
1-20
Withdrawn
7-18
Under Examination
1-6, 19, 20
The applicant argues support for the claim 1 amendment in [0056] of applicant’s published specification (Remarks p. 5 para. 3) and for new claim 20 in Tables 3 and 5.
Response to Remarks filed December 23, 2025
Kodama
Applicant’s arguments, see Remarks p. 5 para. 4, filed February 16, 2026, with respect to Kodama have been fully considered and are persuasive. The 35 U.S.C. 102(a)(1) and 102(a)(2) rejections of Kodama have been withdrawn.
The applicant persuasively argues Kodama is silent to the distribution of oxide of cerium within the alloy wire rod (Remarks p. 5 para. 4).
Watanabe
Applicant’s arguments, see Remarks p. 6 para. 6, filed February 16, 2026, with respect to Watanabe have been fully considered and are persuasive. The 35 U.S.C. 103 rejection of Watanabe has been withdrawn.
The applicant persuasively argues Watanabe is silent to the distribution of oxide of cerium within the alloy wire rod (Remarks p. 6 para. 6).
Kushimoto
Applicant’s arguments, see Remarks p. 6 para. 6, filed February 16, 2026, with respect to Kushimoto have been fully considered and are persuasive. The 35 U.S.C. 103 rejection of Kushimoto has been withdrawn.
The applicant persuasively argues Kushimoto is silent to the distribution of oxide of cerium within the alloy wire rod (Remarks p. 7 para. 8).
Double Patenting
The applicant argues the double patenting rejection be held in abeyance (Remarks p. 8 para. 3).
The double patenting rejection is maintained.
New Claim 20
Applicant's arguments filed February 16, 2026 with respect to New Claim 20 have been fully considered but they are not persuasive.
The applicant argues Kodama discloses a tungsten wire diameter of 100 um or less ([0038]) and a tensile strength of 3500 MPa or more ([0038]), such that the possible combinations are nearly limitless (Remarks p. 8 para. 5), and in Kodama [0056] tensile strength is just higher than 3,500 MPa with no tensile strengths of 4,000 MPa and not in combination with a wire diameter of less than or equal to 60 um (Remarks p. 9 para. 2).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. MPEP 2123(I). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. MPEP 2123(II).
Kodama discloses a diameter of 20 to 100 um, including that “The diameter of the tungsten wire may be…60 um or less” ([0021], [0032]-[0034]) and a tensile strength of 3,800 MPa or more or 4000 MPa or more ([0038]-[0039]). Kodama discloses finite ranges for the alloy wire rod diameter and tensile strength which overlap with that claimed such that a prima facie case of obviousness exists. MPEP 2144.05(I).
The applicant argues Watanabe discloses a wire diameter of 30 um or more and 50 um or less and a tensile strength of 3400 N/mm2, such that the combinations are nearly limitless (Remarks p. 8 para. 7) and in the table in Watanabe [0062] a tensile strength of no more than 3800 N.mm2 is achieved, such that no examples achieve a tensile strength of 4000 MPa alone or in combination with a wire diameter of less than or equal to 60 um (Remarks p. 9 para. 3).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. MPEP 2123(I). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. MPEP 2123(II).
Watanabe discloses a diameter of 30 to 50 um (p. 2 para. 13), which falls entirely within the claimed range of equal to or less than 60 um, and a tensile strength of 3,400 N/mm2 (MPa) or more (p. 2 para. 13). Watanabe discloses finite ranges for the alloy wire rod diameter and tensile strength which overlap with that claimed such that a prima facie case of obviousness exists. MPEP 2144.05(I).
The applicant argues tensile strength of a wire is not an inherent characteristic because it is also a function of the method used to manufacture the wire (Remarks p. 9 para. 4), where applicant’s Examples 1.1 and 2.1 in Tables 3 and 5 have the same composition, but different tensile strengths, Comparative Example 1.1 in Table 4 cannot be processed to less than 100 um thickness, and Example 1.2 exhibits a higher tensile strength than Kodama Example 1 (Tables 3-5) (Remarks spanning pp. 9-10).
Both Kodama and Watanabe explicitly disclose tensile strength ranges that overlap with that claimed (Kodama [0038]-[0039]; Watanabe p. 2 para. 13), such that a prima facie case of obviousness exists. MPEP 2144.05(I).
Kushimoto discloses an alloy wire rod (Kushimoto [0001]-[0002]) that renders the claimed composition (Kushimoto [0035], [0040], Table 2) and structure (diameter) (Kushimoto [0022]) obvious, such that, absent evidence to the contrary, the claimed tensile strength naturally flows.
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. MPEP 716.02. Applicants also have the burden of explaining proffered data. MPEP 716.02(b)(II). An explanation of how applicant’s Examples 1.1 and 2.1, applicant’s Comparative Example 1.1, and Kodama’s Example 1 provide evidence that the claimed tensile strength distinguishes over the disclosed alloy wire rod of Kushimoto has not been provided.
New Grounds
In light of claim amendment and upon further search and consideration new grounds of rejection are made over Kodama in view of Hara, Watanabe in view of Hara, and Kushimoto in view of Hara.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed April 11, 2023 cites Foreign Patent Document No. 28 JP 2019-530461 titled Three-dimensional (3D) printing ink made from natural extracellular matrix. This document does not appear to be relevant to the claimed alloy wire rod made of a tungsten alloy.
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.
Claims 1-5 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kodama (WO 2021/033500 machine translation filed July 28, 2020.) in view of Hara (Hara. The characteristics of cerium tungsten. Nippon Tungsten Review (1985), 18, 26-30.).
Regarding claim 1, Kodama discloses an alloy wire rod ([0001], [0005]), wherein
the alloy wire rod is made of a tungsten alloy, and the tungsten alloy contains tungsten and an oxide of cerium ([0006], [0026]-[0031]);
the alloy wire rod has a wire diameter of equal to or less than 100 um (20 to 100 um) ([0021], [0032]-[0034]); and
the alloy wire rod has a tensile strength of greater than 3,800 MPa (3,800 MPa or more) ([0038]-[0039]).
Kodama is silent to the oxide of cerium being distributed in the alloy wire rod in lines.
Hara discloses an alloy wire rod made of tungsten wherein the oxide of cerium is distributed in the alloy wire rod in lines (STN Abstract).
It would have been obvious to one of ordinary skill in the art in the alloy wire rod of Kodama for the oxide of cerium to be distributed in lines so that it disperses evenly in and around the tungsten grains (Hara STN Abstract).
Regarding claim 2, Kodama discloses a content of the oxide of cerium in the alloy wire rod is 0.1-1.5 wt% (0.2 to 0.4 wt%) ([0026]-[0030]).
Regarding claim 3, Kodama discloses
the alloy wire rod has a wire diameter of equal to or less than 60 um (60 um or less) ([0021], [0032]-[0034]); and
the alloy wire rod and a tensile strength of greater than 4,200 MPa (4,200 MPa or more) ([0038]-[0039]).
The limitations of the alloy wire rod having a diameter of a push-pull core wire of the alloy wire rod of less than 350 um and an elastic ultimate strength of greater than 2,500 MPa have been considered and determined to recite properties of the claimed alloy wire rod. The prior art discloses an alloy wire rod (Kodama [0001], [0005]) that renders the claimed composition (Kodama [0006]) and structure (diameter) (Kodama [0021], [0032]-[0034]) obvious, such that the claimed properties naturally flow from the disclosure of the prior art, including the alloy wire rod having a diameter of a push-pull core wire of the alloy wire rod of less than 350 um and an elastic ultimate strength of greater than 2,500 MPa.
Regarding claim 4, Kodama discloses the tungsten alloy further contains a metallic element M, and the metallic element M is selected from at least one of potassium (0.003 to 0.008 wt%), rhenium (0.1 to 10 wt%), molybdenum, iron, cobalt, or rare earth metals ([0078]-[0079]).
Regarding claim 5, Kodama discloses a content of the potassium is less than 80 ppm (0.003 to 0.008 wt%, 30 to 80 ppm) ([0079]). 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).
Regarding claim 20, Kodama discloses the alloy wire rod has a diameter of equal to or less than 60 um (60 um or less) ([0021], [0032]-[0034]); and
the alloy wire rod has a tensile strength of greater than 4,000 MPa (4,000 MPa or more) ([0038]-[0039]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kodama (WO 2021/033500 machine translation filed July 28, 2020.) in view of Hara (Hara. The characteristics of cerium tungsten. Nippon Tungsten Review (1985), 18, 26-30.) as applied to claim 1 above, and further in view of Yuan (CN 106834780 machine translation).
Regarding claim 6, Kodama is silent to the tungsten alloy further containing one or more of rare earth oxides other than the oxide of cerium.
Yuan discloses a tungsten alloy ([0002]) that contains one or more of rare earth oxides (lanthanum oxide and yttrium oxide) other than the oxide of cerium ([0010]).
It would have been obvious to one of ordinary skill in the art in the cerium oxide containing tungsten alloy of Kodama to further include lanthanum oxide and cerium oxide because lanthanum oxide improves the arc starting performance and yttrium oxide improves stability under high power conditions (Yuan [0006]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kodama (WO 2021/033500 machine translation filed July 28, 2020.) in view of Hara (Hara. The characteristics of cerium tungsten. Nippon Tungsten Review (1985), 18, 26-30.) as applied to claim 1 above, and further in view of Zhang (CN 102392169 machine translation).
Regarding claim 19, Kodama is silent to the tungsten alloy further containing a metallic element M, the metallic element M being selected from at least one of iron or cobalt.
Zhang discloses a tungsten alloy ([0002], [0008]-[0010]) that further contains a metallic element M, and the metallic element M is selected from at least one of iron and cobalt (binder phase including iron and cobalt) ([0011]-[0013], [0024]-[0025]).
It would have been obvious to one of ordinary skill in the art for the tungsten alloy of Kodama to further include a binder phase including iron and cobalt to provide an improved high-density tungsten alloy with excellent comprehensive performance (Zhang [0006]), where the binder phase helps bind tungsten particles and cerium oxide (Zhang [0023]), and problems of density, microstructure, and mechanical properties are solved (Zhang [0026]).
Claims 1, 2, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (WO 2014/203795 machine translation, WO 2014/203795 was also published as JP 2015-003347) in view of Hara (Hara. The characteristics of cerium tungsten. Nippon Tungsten Review (1985), 18, 26-30.).
Regarding claim 1, Watanabe discloses an alloy wire rod (electrode wire made of a material containing tungsten) (p. 1 para. 1), wherein
the alloy wire rod is made of a tungsten alloy, and the tungsten alloy contains tungsten and an oxide of cerium (p. 4 para. 8, p. 5 para. 9, Table 2);
the alloy wire rod has a wire diameter of equal to or less than 100 um (30 um) (p. 5 paras. 5, 9, Table 2) and
the alloy wire rod has a tensile strength of greater than 3,800 MPa (3800 N/mm2 is 3800 MPa) (p. 6 para. 2, Table 2 (0.8) 30 um and (1.0) 30 um). A tensile strength of 3800 MPa is so close to the claimed greater than 3800 MPa, such that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close. MPEP 2144.05(I).
Watanabe is silent to the oxide of cerium being distributed in the alloy wire rod in lines.
Hara discloses an alloy wire rod made of tungsten wherein the oxide of cerium is distributed in the alloy wire rod in lines (STN Abstract).
It would have been obvious to one of ordinary skill in the art in the alloy wire rod of Watanabe for the oxide of cerium to be distributed in lines so that it disperses evenly in and around the tungsten grains (Hara STN Abstract).
Regarding claim 2, Watanabe discloses a content of the oxide of cerium in the alloy wire rod is 0.1-1.5 wt% (0.8 mass% or 1.0 mass%) (p. 5 para. 9, Table 2).
Regarding claim 20, Watanabe discloses the alloy wire rod has a diameter of equal to or less than 60 um (30 um) (p. 2 para. 13, p. 5 paras. 5, 9, Table 2); and
the alloy wire rod has a tensile strength of greater than 4,000 MPa (3,400 N/mm2 or more) (p. 2 para. 13, p. 6 para. 2, Table 2).
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).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (WO 2014/203795 machine translation) in view of Hara (Hara. The characteristics of cerium tungsten. Nippon Tungsten Review (1985), 18, 26-30.) as applied to claim 1 above, and further in view of Miao (CN 102816963 machine translation).
Regarding claim 4, Watanabe is silent to the tungsten alloy further containing a metallic element M, and the metallic element M is selected from at least one of potassium, rhenium, molybdenum, iron, cobalt or rare earth metals.
Miao discloses a tungsten alloy ([0002]) that contains a metallic element M, and the metallic element M is selected from at least one of potassium (65 to 75 ppm), rhenium (0.45 to 0.55 wt%), molybdenum, iron, cobalt or rare earth metals ([0007]).
It would have been obvious to one of ordinary skill in the art for the tungsten alloy of Watanabe to include 65 to 75 ppm potassium and 0.45 to 0.55 wt% rhenium because rhenium within this range increases the recrystallization temperature without decreasing the melting point of the alloy, deteriorating high temperature performance, and potassium within this range improves high-temperature performance with reducing processing performance (Miao [0007]).
Regarding claim 5, Watanabe in view of Miao discloses a content of the potassium is less than 80 ppm (65 to 75 ppm) (Miao [0007]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (WO 2014/203795 machine translation) in view of Hara (Hara. The characteristics of cerium tungsten. Nippon Tungsten Review (1985), 18, 26-30.) as applied to claim 1 above, and further in view of Yuan (CN 106834780 machine translation).
Regarding claim 6, Watanabe is silent to the tungsten alloy further containing one or more of rare earth oxides other than the oxide of cerium.
Yuan discloses a tungsten alloy ([0002]) that contains one or more of rare earth oxides (lanthanum oxide and yttrium oxide) other than the oxide of cerium ([0010]).
It would have been obvious to one of ordinary skill in the art in the cerium oxide containing tungsten alloy of Watanabe to further include lanthanum oxide and cerium oxide because lanthanum oxide improves the arc starting performance and yttrium oxide improves stability under high power conditions (Yuan [0006]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (WO 2014/203795 machine translation) in view of Hara (Hara. The characteristics of cerium tungsten. Nippon Tungsten Review (1985), 18, 26-30.) as applied to claim 1 above, and further in view of Zhang (CN 102392169 machine translation).
Regarding claim 19, Watanabe is silent to the tungsten alloy further containing a metallic element M, the metallic element M being selected from at least one of iron or cobalt.
Zhang discloses a tungsten alloy ([0002], [0008]-[0010]) that further contains a metallic element M, and the metallic element M is selected from at least one of iron and cobalt (binder phase including iron and cobalt) ([0011]-[0013], [0024]-[0025]).
It would have been obvious to one of ordinary skill in the art for the tungsten alloy of Watanabe to further include a binder phase including iron and cobalt to provide an improved high-density tungsten alloy with excellent comprehensive performance (Zhang [0006]), where the binder phase helps bind tungsten particles and cerium oxide (Zhang [0023]), and problems of density, microstructure, and mechanical properties are solved (Zhang [0026]).
Claims 1-6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kushimoto (JP 2011-125961 machine translation) in view of Hara (Hara. The characteristics of cerium tungsten. Nippon Tungsten Review (1985), 18, 26-30.).
Regarding claim 1, Kushimoto discloses an alloy wire rod ([0001]-[0002]), wherein
the alloy wire rod is made of a tungsten alloy, and the tungsten alloy contains tungsten and an oxide of cerium (CeO2) ([0035], [0040], Table 2); and
the alloy wire rod has a wire diameter of equal to or less than 100 um (0.005 mm to 0.25 mm, 5 um to 250 um) ([0022]). 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).
Kushimoto is silent to the oxide of cerium being distributed in the alloy wire rod in lines.
Hara discloses an alloy wire rod made of tungsten wherein the oxide of cerium is distributed in the alloy wire rod in lines (STN Abstract).
It would have been obvious to one of ordinary skill in the art in the alloy wire rod of Kushimoto for the oxide of cerium to be distributed in lines so that it disperses evenly in and around the tungsten grains (Hara STN Abstract).
The limitation of the alloy wire rod having a tensile strength of greater than 3,800 MPa has been considered and determined to recite a property of the claimed alloy wire rod. The prior art discloses an alloy wire rod (Kushimoto [0001]-[0002]) that renders the claimed composition (Kushimoto [0035], [0040], Table 2) and structure (diameter, cerium oxide distribution) (Kushimoto [0022]; Hara STN Abstract) obvious, such that the claimed properties naturally flow from the disclosure of the prior art, including the alloy wire rod having a tensile strength of greater than 3,800 MPa.
Regarding claim 2, Kushimoto discloses a content of the oxide of cerium (CeO2) in the alloy wire rod is 0.1-1.5 wt% (0.1 mass%, 0.3 mass%, 0.5 mass%, 1.0 mass%, or 1.2 mass%) ([0035], [0040], Table 2).
Regarding claim 3, Kushimoto discloses the alloy wire rod has a wire diameter of equal to or less than 60 um (0.005 mm to 0.25 mm, 5 um to 250 um) ([0022]). 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).
The limitations of the alloy wire rod having a diameter of a push-pull core wire of the alloy wire rod of less than 350 um; an elastic ultimate strength of greater than 2,500 MPa; and a tensile strength of greater than 4,200 MPa have been considered and determined to recite properties of the claimed alloy wire rod. The prior art discloses an alloy wire rod (Kushimoto [0001]-[0002]) that renders the claimed composition (Kushimoto [0035], [0040], Table 2) and structure (diameter, cerium oxide distribution) (Kushimoto [0022]; Hara STN Abstract) obvious, such that the claimed properties naturally flow from the disclosure of the prior art, including the alloy wire rod having a diameter of a push-pull core wire of the alloy wire rod of less than 350 um; an elastic ultimate strength of greater than 2,500 MPa; and a tensile strength of greater than 4,200 MPa.
Regarding claim 4, Kushimoto discloses the tungsten alloy further contains a metallic element M, and the metallic element M is selected from at least one of potassium, rhenium (0.1 mass%, 0.3 mass%, 0.5 mass%, 1.0 mass%, 1.5 mass%, 2.0 mass%), molybdenum, iron, cobalt or rare earth metals ([0035], [0040], Table 2).
Regarding claim 5, Kushimoto discloses a content of the potassium is less than 80 ppm (0 ppm) ([0035], [0040], Table 2).
Regarding claim 6, Kushimoto discloses the tungsten alloy further contains one or more of rare earth oxides (Y2O3, La2O3) other than the oxide of cerium ([0010]-[0011], [0015], [0019], [0040], Table 2).
Regarding claim 20, Kushimoto discloses the alloy wire rod has a diameter of equal to or less than 60 um (0.005 mm to 0.25 mm, 5 um to 250 um) ([0022]). 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).
The limitation of the alloy wire rod having a tensile strength of greater than 4,000 MPa has been considered and determined to recite a property of the claimed alloy wire rod. The prior art discloses an alloy wire rod (Kushimoto [0001]-[0002]) that renders the claimed composition (Kushimoto [0035], [0040], Table 2) and structure (diameter, cerium oxide distribution) (Kushimoto [0022]; Hara STN Abstract) obvious, such that the claimed properties naturally flow from the disclosure of the prior art, including the alloy wire rod having a tensile strength of greater than 4,000 MPa.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kushimoto (JP 2011-125961 machine translation) in view of Hara (Hara. The characteristics of cerium tungsten. Nippon Tungsten Review (1985), 18, 26-30.) as applied to claim 1 above, and further in view of Zhang (CN 102392169 machine translation).
Regarding claim 19, Kushimoto is silent to the tungsten alloy further containing a metallic element M, the metallic element M being selected from at least one of iron or cobalt.
Zhang discloses a tungsten alloy ([0002], [0008]-[0010]) that further contains a metallic element M, and the metallic element M is selected from at least one of iron and cobalt ([0011]-[0013], [0024]-[0025]).
It would have been obvious to one of ordinary skill in the art for the tungsten alloy of Kushimoto to further include a binder phase including iron and cobalt to provide an improved high-density tungsten alloy with excellent comprehensive performance (Zhang [0006]), where the binder phase helps bind tungsten particles and cerium oxide (Zhang [0023]), and problems of density, microstructure, and mechanical properties are solved (Zhang [0026]).
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 19, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 19-26 of copending Application No. 18/248,592 (App ‘592) in view of Yuan (CN 106834780 machine translation).
App ‘592 discloses an alloy wire rod made of a tungsten alloy with an overlap wire diameter, tensile strength, diameter of a push-pull core wire, and elastic ultimate strength (claims 1, 3) containing an oxide of lanthanum (rare earth oxide), at least one or potassium, rhenium, molybdenum, iron, cobalt, or rare earth metals, and one or more other rare earth oxides (claims 4-6).
App ‘592 is silent to the one or more other rare earth oxides being cerium oxide.
Yuan discloses a tungsten alloy ([0002]) that contains lanthanum oxide and cerium oxide ([0010]).
It would have been obvious to one of ordinary skill in the art in the cerium oxide containing tungsten alloy of Kodama to further include cerium oxide to advantageously improve processing performance while being low cost (Yuan [0006]).
This is a provisional nonstatutory double patenting rejection.
Related Art
Tanabe (JP H06-346171 machine translation)
Tanabe discloses an oxide dispersion tungsten alloy used in an electrode wire ([0001]) manufactured by mixing 0.1 wt%, 0.7 wt%, or 1.0 wt% cerium oxide powder with W powder ([0016]) where the cut wire is ultra-fine with a diameter of 50 um and has few breaks and no cuts on the surface ([0026]).
Li (CN 106906396 machine translation)
Li discloses a tungsten rod ([0002]) with 0.01 to 0.35 wt% rhenium and 40 to 80 ppm potassium ([0010]) to form a uniform fine-grained rod that solves problems of uneven grain structure, low recrystallization temperature, and poor high-temperature creep resistance ([0008]).
Xu (CN 106801178 machine translation)
Xu discloses tungsten alloy material ([0002]) including 3 to 7% of Fe and 0.5-1% rare earth element (cerium) oxide ([0009]-[0010]).
The following references cited by the applicant in the April 11, 2023 information disclosure statement (IDS) disclose a tungsten alloy wire with a tensile strength and diameter that are within the scope of claim 1:
Reference
Tensile Strength
Wire Diameter
Claim 1
Greater than 3800 MPa
Equal to or less than 100 um
WO 2020/137255
(related to TW 2020/24348)
Not less than 4800 MPa
Not more than 100 um
CN 108858837
At least 3500 MPa
At most 60 um
CN 209955028
4000 MPa or more
60 um or less
JP 2020-105548
4800 MPa or more
100 um or less
JP 2018-122599
4200 MPA or more
5 um or more
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.
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/STEPHANI HILL/Examiner, Art Unit 1735