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
An amendment, filed 4/15/2026, is acknowledged. Claim 1 is amended; Claim 4 is canceled. No new matter is present. Claims 1-3 and 5-19 are currently pending, claims 6-19 are withdrawn.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “in the C section.” It is unclear if the limitation is drawn to a cross-section of the wire rod or a section designated “C” to which the claim does not provide antecedent basis. Furthermore, if the term is interpreted as cross-section, it is unclear how the limitation modifies a wire rod having the claimed microstructure. Claims 2-5 are indefinite based on their dependency.
Claim 2 recites “an average grain size of prior austenite.” Claim 1, from which it depends, recites a content of pearlite but does not recite a content of prior austenite. It is unclear if the claim intends to require a content of prior austenite or merely limit the average size if such a phase is present in the wire rod. For the purposes of examination, the limitation is interpreted as limiting only an optional phase content of prior austenite.
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.
Claim(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimura (US 2012/0291927)(previously cited).
With respect to Claim 1, Hashimura teaches a steel wire (i.e. wire rod) for springs, the steel having a composition, by wt%, as follows (para. 33-43):
Claim 1
Hashimura
C
0.6-0.7
0.67-0.9
Si
2.0-2.5
2.0-3.5
Mn
0.2-0.5
0.5-1.2
Cr
0.9-1.6
1.3-2.5
P
≤ 0.015
≤ 0.025
S
≤ 0.01
≤ 0.025
Al
≤ 0.01
0.0005-0.003
N
≤ 0.007
0.003-0.007
Mo
0.1-0.25
0.05-0.30
V
0.01-0.25
0.03-0.10
Fe
Balance with inevitable impurities
Balance with unavoidable impurities
Compositional ranges including zero are interpreted as optional elements. Thus, Hashimura teaches a steel wire rod with compositional ranges overlapping each of the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Regarding the composition-based formulas in the instant claim (Cr+Mn and Mo/V ratio), the instantly claimed formulas fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as the steel wire rod of the prior art is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
Hashimura further teaches wherein the steel wire has a microstructure comprising 90% or more of pearlite, falling within the claimed range. (para. 140).
Hashimura teaches a steel wire rod comprising V, Mo, and C, and controlling the amount of coarse precipitate compounds. (para. 27-31). The reference is silent as to the number density of specific (V,Mo)C carbides and the recited properties of such carbides. However, as the reference teaches a steel wire rod with substantially the same composition, pearlitic microstructure, and drawn to the same utility as a wire rod for a spring with improved fatigue resistance, it would necessarily be expected to result in the same properties, including those recited in Claim 4.
"Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Finally, with respect to the preamble limitation reciting “for a spring with improved fatigue resistance and nitriding property.” This limitation is drawn to the intended use of the claimed wire rod (“for a spring”) and properties that have no required measurement or value. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As Hashimura teaches a wire rod for a spring having substantially the same composition and microstructure, it is deemed to be capable of the same intended use and/or would be expected to necessarily exhibit the same properties. See also MPEP 2112.01.
With respect to Claim 2, Hashimura teaches wherein the steel wire has a prior austenite grain size number of #10 or more, equivalent to a grain size of approximately 11 microns or less, falling within the claimed range. (para. 139).
With respect to Claim 3, the claim limits the number of VN precipitates having a certain grain diameter at 1 mm of surface depth per 10 mm of length, but does not require any minimum quantity. Hashimura is drawn to minimizing nitrogen content and limiting the content of vanadium to 0.1 wt% or less to avoid the formation of coarse nitrides that cause degradation of fatigue strength. (para. 16, 29-30, 82, 85). The reference does not specifically teach the formation of any VN precipitates meeting the claimed conditions. Therefore, Hashimura is deemed to teach a content of VN precipitates meeting the instant claim. Alternatively, it would have been obvious to one of ordinary skill in the art, in view of the teachings of Hashimura, to minimize the content of coarse VN precipitates, and thus, fall within the claimed range, as minimizing nitrogen and limiting vanadium content is taught to prevent the formation of coarse precipitates (and thus, including the claimed VN precipitates), and improve the fatigue strength of the wire rod.
Claim(s) 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Akada (US 11186902)(previously cited).
With respect to Claim 1, Akada teaches a steel wire (i.e. wire rod) for springs, the steel having a composition, by wt%, as follows (col. 1, ln. 56-67; col. 3, ln. 49 to col. 5, ln. 59):
Claim 1
Akada
C
0.6-0.7
0.5-1.0
Si
2.0-2.5
0.1-2.5
Mn
0.2-0.5
0.3-0.9
Cr
0.9-1.6
0.1-1.8
P
≤ 0.015
≤ 0.025
S
≤ 0.01
≤ 0.025
Al
≤ 0.01
-
N
≤ 0.007
-
Mo
0.1-0.25
0.1-0.4
V
0.01-0.25
0.05-0.3
Fe
Balance with inevitable impurities
Balance with unavoidable impurities
Other
-
Ni: 0.1-0.4
Compositional ranges including zero (e.g. claimed content of P, S, Al, and N) are interpreted as optional elements. Thus, Akada teaches a steel wire rod with compositional ranges overlapping each of the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Regarding the composition-based formulas in the instant claim (Cr+Mn and Mo/V ratio), the instantly claimed formulas fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as the steel wire rod of the prior art is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
Akada further teaches wherein the steel wire rod has a “pearlite structure,” and discloses no additional phases, and is therefore, interpreted such that the wire rod has a microstructure comprising up to 100% pearlite, overlapping the claimed range. (see abstract; col. 11, ln. 7-18). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Akada teaches a steel wire rod comprising V, Mo, and C, but is silent as to a number density of specific (V,Mo)C carbides and the recited properties of such carbides. However, as the reference teaches a steel wire rod with substantially the same composition, pearlitic microstructure, and drawn to the same utility as a wire rod for a spring with improved fatigue resistance, it would necessarily be expected to result in the same properties, including those recited in Claim 4.
"Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Finally, with respect to the preamble limitation reciting “for a spring with improved fatigue resistance and nitriding property.” This limitation is drawn to the intended use of the claimed wire rod (“for a spring”) and properties that have no required measurement or value. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As Akada teaches a wire rod for a spring having substantially the same composition and microstructure and having improved fatigue strength (see, e.g., col. 13, ln. 28-62), it is deemed to be capable of the same intended use and/or would be expected to necessarily exhibit the same properties. See also MPEP 2112.01.
With respect to Claim 2, the claim does not require that the wire rod contain any prior austenite. Akada teaches a wire comprising a pearlite microstructure, and therefore, does not require any prior austenite phase with an average grain size of more than 25 microns and is deemed to meet the instant limitation. (see rejection of claim 1 above).
With respect to Claim 3, the claim limits the number of VN precipitates having a certain grain diameter at 1 mm of surface depth per 10 mm of length, but does not require any minimum quantity. Akada teaches a steel wire rod that requires no nitrogen and thus, any nitrogen present would exist at a minimal unavoidable impurity level. As Akada teaches a wire rod free or substantially free of nitrogen, it would necessarily be free or substantially free of VN precipitates of any size, and consequently, is deemed to teach a structure meeting the instant claim. See also MPEP 2112.01.
With respect to Claim 5, Akada teaches wherein the wire rod has a tensile strength of 900-3000 MPa, overlapping the claimed range. It would have been obvious to one of ordinary skill in the art to select a wire rod with a tensile strength from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to the limitation “a reduction in area is 40% or more,” the limitation is interpreted as drawn to a product-by-process limitation describing the amount of reduction performed on the wire rod during its manufacture, for example, during a rolling or drawing step. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” While the limitation describes a relative dimension, no initial or final dimensions are claimed and therefore, the limitation does not limit the structure of the claimed product. As Akada teaches a wire rod meeting claim 1 and having a tensile strength meeting claim 5, it is deemed to meet the instant claim regardless of its method of manufacture.
Response to Arguments
Applicant's arguments filed 4/15/2026 have been fully considered but they are not persuasive.
With respect to the rejection of claims 1-5 under 35 U.S.C. 112(b), Applicant argues that “the claims have been amended to address” the 112(b) issues. (Remarks, p. 7). This argument is not found persuasive. The amendment to claim 1 does not relate to the substance of the 112(b) rejection, no amendment was made to claim 2, and Applicant provides no specific arguments to the rejection. As a result, the rejection is maintained.
Applicant’s arguments with respect to the rejections under 35 U.S.C. 103 have been fully considered but are not found persuasive.
Applicant argues that as prior art Hashimura and separately, Akada, fail to teach the same bloom heating temperature and time, the references would fail to teach the claimed (V,Mo)C carbide properties. These arguments have been fully considered but are not found persuasive.
The instant specification details inventive and comparative examples; however, this evidence does not show any relation between a heating temperature or time and the claimed carbide properties. Specifically, Tables 1-4 do not appear to distinguish the comparative examples by method of making and therefore, the method of making is not shown to be critical. As a result, Applicant’s arguments, which are drawn only to the relative methods of making, are not found persuasive.
Applicant’s argument with respect to the nonstatutory double patenting rejection is found persuasive and the rejection is withdrawn.
Finally, it is noted for the purposes of compact prosecution that claim 6 does not include a reference to a product claim (e.g., claim 1) and does not include all of the limitations of claim 1. Therefore, should claim subsequently be placed in condition for allowance, claims 6, and other claims that do not include all of the limitations of an allowable claim will be canceled.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP 2002327233A, drawn to an alloy with overlapping compositional ranges.
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 A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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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.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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