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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-5, in the reply filed on 11/14/2025 is acknowledged.
Claims 6-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II, III, and IV, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/14/2025.
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, does not provide antecedent basis for 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) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimura (US 2012/0291927).
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).
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.
With respect to Claim 4, Hashimura teaches a steel wire rod comprising V, Mo, and C, and controlling the amount of coarse precipitate compounds. (see rejection of claims 1-3 above; 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.
Claim(s) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Akada (US 11186902).
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.
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 4, Akada teaches a steel wire rod comprising V, Mo, and C (see rejection of claims 1-3 above), 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.
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.
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 1-2 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of copending Application No. 18/566219(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: the instant and related claims are both drawn to wire rod for a spring having the same or overlapping compositional ranges, overlapping pearlite phase content, overlapping prior austenite average grain size, and the same tensile strength of 1400 MPa or less. 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 11203797 teaching a steel wire rod having a pearlitic microstructure, but failing to teach a composition comprising molybdenum (Mo).
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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/JOHN A HEVEY/Primary Examiner, Art Unit 1735