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 certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 8/3/23 and 6/11/25 have been considered by the examiner.
Election/Restrictions
Applicant's election with traverse of claims 1-10 in the reply filed on 2/17/26 is acknowledged. The traversal is on the ground(s) that Applicant respectfully does not agree that the requirements of claim 1 related to the first partial recrystallization process and the second partial recrystallization process are merely related to a "manner of operating the disclosed apparatus" as at page 5 of the Restriction Requirement, and that these limitations related to the configuration and structure of the continuous annealer. Further, Applicant respectfully asserts there is no "serious" such burden of searching the claims of both Groups I and II. This argument appears based on restriction practice in accordance with 37 CFR §§ 1.141-1.146; and it is not found persuasive because only U.S. national applications filed under 35 U.S.C. § 111(a) are subject to restriction practice in accordance with 37 CFR §§ 1.141-1.146. See MPEP § 803. U.S. national stage applications (which entered the national stage from international applications after compliance with 35 U.S.C. § 371) (such as this current application) are subject to unity of invention practice in accordance with 37 CFR §§ 1.475 and 1.499 (effective May 1, 1993). As this current application was not filed under 35 U.S.C. § 111 (a) the examiner is not required to demonstrate a "serious burden". Though not required to make such a demonstration, as a courtesy, the examiner asserts that serious burden exists in the differing issues likely to arise during the prosecution of the different inventions. Additionally, Applicant states that “No admission is made as to the cited art or as to whether any feature constitutes a "special technical feature" within the meaning of PCT Rule 13.2, and Applicant expressly reserves all rights with respect to such issues” (Remarks, page 6). Without a special technical feature, Restriction is proper under PCT Rule 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/17/26.
Specification
The disclosure is objected to because of the following informalities:
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract exceeds 150 words.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “to subject the second wire portion to a recrystallization condition to produce a second partial recrystallization that is different from the first partial recrystallization”. The instant specification states that:
“The terms "first partial recrystallization process" and "second partial recrystallization process" are thereby not to be understood as the recrystallization ceasing after the first partial recrystallization process and restarting again with the second partial recrystallization process. Rather, the first and the second partial recrystallization process together form a physically continuous uninterrupted crystallization process which is only conceptually divided into two partial processes. In other words, the entire recrystallization process is started via the first partial recrystallization process and extended by the second partial recrystallization process.”
Page 4.
The instant specification is silent as to a second partial recrystallization that is different from the first partial recrystallization. Claims 2-10 are rejected due to their dependence on rejected claim 1.
Claim 1 recites “an annealing condition sufficient to produce a first partial recrystallization”. The instant specification is silent as to an annealing condition. Claims 2-10 are rejected due to their dependence on rejected claim 1.
Claim 1 recites “a recrystallization condition to produce a second partial recrystallization”. The instant specification is silent as to an recrystallization condition. Claims 2-10 are rejected due to their dependence on rejected claim 1.
Claims 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation whereby a first partial recrystallization process takes place in the first wire portion in the annealing zone, and the claim also recites wherein the annealing zone is configured to subject the first wire portion to an annealing condition sufficient to produce a first partial recrystallization of the metallic wire which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims 2-10 are rejected due to their dependence on rejected claim 1.
Claim Rejections - 35 USC § 102
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.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parentheses. Examiner explanations are shown in italics.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lohmuller et al. (US 5885523 A1), previously cited.
Regarding claim 1, Lohmuller teaches “a device for continuously heat-treating continuously cast or formed metallic goods, particularly wire and the like” (which reads on “a continuous annealer for wire for annealing and recrystallizing a metallic wire in a continuous process comprising”; abstract). Lohmuller teaches that “the device comprises a first annealing path in which the continuously formed metallic goods are guided by means of two contact rollers, and that the first and second contact rollers are arranged at first and second ends, respectively, of the first annealing path” (which reads on “at least two contact disks which are configured such that a first contact disk contacts a rear end of a first wire portion, as seen in the wire's direction of travel, and a second contact disk contacts a front end of the first wire position, as seen in the wire's direction of travel, the first wire portion extending between the first contact disk and the second contact disk, an annealing zone situated between the first contact disk and the second contact disk wherein the annealing zone is configured to subject the first wire portion to an annealing condition sufficient to produce a first partial recrystallization of the metallic wire”; abstract). Lohmuller teaches that “the first and second contact rollers are connected to a voltage source such that a current flows through the continuously formed metallic goods between the first and second contact rollers” (which reads on “annealing means for annealing the first wire portion in the annealing zone”; abstract). Lohmuller teaches that “the device further comprises a second annealing path similar to the first annealing path” (which reads on “a recrystallization zone disposed downstream of the second contact disk, in the wire's direction of travel, wherein the recrystallization zone is configured to receive a second wire portion, that has passed through the annealing zone and to subject the second wire portion to a recrystallization condition to produce a second partial recrystallization that is different from the first partial recrystallization”; abstract). Lohmuller teaches that “after processing, metals are usually subjected to an annealing treatment in order to recrystallize the structure” (column 1, lines 10-15). Lohmuller teaches that “by operating the switch 45, the device may be switched from two-path operation to three-path operation” (column 4, lines 33-39). Lohmuller teaches that “in two-path operation, the contact roller K1 is directly connected to the minus pole via the current rail 50 in switching position b, and that in this case, the potential difference between the roller K1 (minus pole) and the roller K2 (plus pole) effects a current flow in the piece of wire extending from K1 to K2” (column 4, lines 33-39). Lohmuller teaches that “between the contact roller K2 (plus pole) and the contact roller K3 (minus pole), a potential difference builds up which effects a current flow through this piece of wire, and that since the piece of wire extending from K2 to K3 is considerably shorter than the piece of wire extending from K1 to K2, the current flow between K2 and K3 is considerably higher than the current flow between K2 and K1” (column 4, lines 40-49; current flow, and thus heating, is dependent on the length of the wire between the contact rollers). Lohmuller teaches that “the position of the deviating rollers may be adjustable for changing the length of the wire between the contact rollers K1 and K2” (column 3, lines 25-32; the length of the wire between the contact rollers is adjustable, thus the current flow and heating is adjustable, accordingly the apparatus is capable of being operated such that some initial partial recrystallization occurs in the first annealing path). Regarding limitations which are directed to a manner of operating disclosed apparatus, such as to subject the first wire portion to an annealing condition sufficient to produce a first partial recrystallization of the metallic wire, whereby a first partial recrystallization process takes place in the first wire portion in the annealing zone, and to subject the second wire portion to a recrystallization condition to produce a second partial recrystallization that is different from the first partial recrystallization, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Regarding claim 2, Lohmuller teaches the annealer of claim 1 as stated above. Lohmuller teaches that “the first contact roller is connected to a first potential, i.e. in the usually adopted DC voltage at the minus or the plus pole, and the second contact roller which is arranged at the end of the first annealing path is connected to the opposite second potential” (column 2, lines 36-45).
Regarding claim 4, Lohmuller teaches the annealer of claim 1 as stated above. Lohmuller teaches that “said main annealing path may be arranged in an inert gas atmosphere so as to prevent the wire from being oxidized” (column 1, lines 42-51). Lohmuller teaches that “the second path is a main annealing path” (column 1, lines 60-67).
Regarding claim 5, Lohmuller teaches the annealer of claim 1 as stated above. Lohmuller teaches that “in annealing devices having three annealing paths, the first annealing path usually is a pre-annealing path, and the second annealing path is a main annealing path in which said wire is heated to the required annealing temperature” (column 1, lines 42-51; pre-annealing path reads on annealing zone and second or main annealing path reads on recrystallization zone). Lohmuller teaches that “following the main annealing path, the wire is cooled with water and thereafter in the third annealing path, i.e. the after-annealing path, is reheated again so as to remove the water and to dry the wire” (column 1, lines 42-51; cooling is after the second or main annealing path (recrystallization zone)).
Regarding claims 6-9, Lohmuller teaches the annealer of claim 1 as stated above. Lohmuller teaches that “preceding the contact roller K3, a water spraying means 12 is provided for cooling said wire” (column 3, lines 40-43). Lohmuller teaches that “following the main annealing path, the wire is cooled with water and thereafter in the third annealing path, i.e. the after-annealing path, is reheated again so as to remove the water and to dry the wire” (column 1, lines 42-51). Regarding the cooling medium, it is interpreted as contents of the apparatus. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Claim Rejections - 35 USC § 103
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 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 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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lohmuller et al. (US 5885523 A1), as applied to claim 1 above, and further in view of Massicot et al. (US 20170226609 A1).
Regarding claim 3, Lohmuller teaches the annealer of claim 1 as stated above. Lohmuller teaches that “the first contact roller is connected to a first potential, i.e. in the usually adopted DC voltage at the minus or the plus pole, and the second contact roller which is arranged at the end of the first annealing path is connected to the opposite second potential” (which reads upon “wherein the annealing means comprise heating means configured to heat the first wire portion”, as recited in the instant claim; column 2, lines 36-45).
Lohmuller is silent regarding wherein the annealing means comprise inductive heating means configured to inductively heat the first wire portion.
Massicot is similarly concerned with recrystallization annealing (abstract). Massicot teaches “recrystallization annealing in an annealing furnace” (which reads upon “wherein the annealing means comprise inductive heating means configured to inductively heat”, as recited in the instant claim; paragraph [0009]). Massicot teaches that “the second heating step III is then conducted in the annealing furnace for inductive or conductive heating” (paragraph [0051]). Massicot teaches that “for performance of the annealing cycle according to FIG. 3(a), induction or conduction heating 5 is additionally arranged in the downstream area of holding zone 2.” (paragraph [0060]).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Lohmuller to include induction heating, as taught by Massicot because Massicot teaches that either induction or conduction heating is suitable for recrystallization annealing. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lohmuller et al. (US 5885523 A1), as applied to claim 9 above, and further in view of Tsukamoto et al. (US 5458699 A).
Regarding claim 10, Lohmuller teaches the annealer of claim 9 as stated above. Lohmuller teaches that “preceding the contact roller K3, a water spraying means 12 is provided for cooling said wire” (column 3, lines 40-43).
A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01. Lohmuller is silent regarding a valve.
Tsukamoto is similarly concerned with rapid heating equipment (3), for example an induction heater, cooling equipment (2), for example water cooling equipment (column 6, lines 33-40). Tsukamoto teaches that “the wire rod is heated to a prescribed temperature by the rapid heating device such as an induction heater (3) as described above” (column 6, lines 50-63). Tsukamoto teaches that “it is then cooled to another prescribed temperature by a cooling device like the one described above” (column 6, lines 50-63). Tsukamoto teaches “controlling the cooling water flow, and adjusting the control valves at each roll stand in the micro-mill (5) in order to preserve the balance between heating of the wire rod by rolling and its cooling” (which reads upon “at least one apparatus for regulating the volumetric flow of the cooling medium in the cooling zone, wherein the apparatus includes at least one valve for introducing the cooling medium into the cooling zone and wherein the at least one valve is adjustable and designed as a proportional valve”, as recited in the instant claim; column 6, lines 50-53).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Lohmuller to include a control valve, as taught by Tsukamoto for controlling the cooling water flow.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
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. The Examiner requests that interviews not be scheduled during the last week of each fiscal quarter or the last half of September, which is the end of the fiscal year: Q2: 3/30-4/3/26; Q3: 6/22-6/26/26; Q4: 9/21-9/30/26.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733