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 .
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okonogi et al. (US 2018/0016658 – previously cited).
Considering claims 1 and 7, Okonogi teaches a steel wire (abstract) including an example of a wire (e.g. a wire rod/part with improved delayed fracture resistance) with a composition by mass (Paragraphs 413-414) C: 0.25%, Si: 0.19%, Mn: 1.05%, P: 0.009%, S: 0.014%, Ti: 0.023%, B: 0.002%, N: 0.0035% (Table 1, Steel type F) the balance is Fe and impurities (Paragraph 44) having a relationship between the concentration of Si and Mn according to Formula 1 of 5.5×(0.19)+(1.05) = 2.095. The composition also comprises by mass (Paragraphs 413-414) Ti: 0.023% and N: 0.0035% (Table 1, Steel type F) having a relationship between the concentration of Ti and B according to Formula 2 of (0.023)/3.42(0.0035) = 1.921 falling within instant Formula 2 The composition disclosed by Okonogi and the relationship between Si and Mn according to instant Formulas 1 and 2 fall within and anticipate the instantly claimed ranges. See MPEP 2131.03.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (US 2015/0053315 – previously cited).
Considering claims 1 and 7, Matsumoto teaches steel wires rods (Paragraph 70) and high strength steel bolts formed therefrom (Paragraph 1) (e.g. a wire rod/part with improved delayed fracture resistance). The steel comprises by mass C: 0.23-0.40%, Si: 0.23-1.50%, Mn: 0.30-1.45%, P: 0.03% or less, S: 0.03% or less, Ti: 0.02-0.1%, B: 0.0003-0.0050%, N: 0.002-0.010%, etc., balance Fe and impurities (Paragraph 15). Examples are also disclosed with a Si content ranging from 0.22-0.23% and Mn 0.92-1.03% (Table 1, Steels L-N). These correspond to a range of 2.13-2.295 when using values of Si and Mn according to instant Formula 1. Additionally, Matsumoto teaches where a preferred Ti content is 0.02% or more (Paragraph 47) and a preferred N content is 0.003% or more and 0.004% or more (Paragraph 53). Using these values according to instant Formula 2 this results in a range of about 1.46-1.94.
While not teaching a singular example of the instantly claimed wire rod/part this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Matsumoto as this is considered a conventionally known steel wire/bolt with composition overlapping that which is claimed and a Si/Mn ratio overlapping instantly claimed Formulas 1-2 and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists and one of ordinary skill in the art would have had a reasonable expectation of success.
Considering claim 3, Matsumoto does not specifically teach the claimed TiN inclusion or size thereof. However, as outlined above, Matsumoto teaches a substantially identical composition as that which is claimed and where the billet is finish rolled at 800-1000 °C (Paragraphs 60-61) and then subjected to a spheroidization treatment (Paragraph 64) and quenched (Paragraph 65) and these conditions overlap those which applicant discloses as forming the claimed wire rod (Specification p.12 lines 18-20). As such, one would reasonably expect substantially identical TiN inclusions as that which is claimed as a substantially identical material treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.
Considering claim 9, Matsumoto teaches a mixed microstructure of the steel of ferrite and pearlite (Paragraph 15) which allows for 10 percent or less of other phases (Paragraph 16) including prior austenite (Paragraph 68) (e.g. retained austenite structure) and tempered martensite (Paragraph 64) (e.g. residual tempered martensite structure).
Response to Arguments
Applicant's arguments filed 17 March 2026 have been fully considered but they are not persuasive. Applicant’s arguments are addressed as follows:
Applicant argues that Okonogi is toward a different objective than the instant steel wire (remarks p.6, 4th paragraph). This is not persuasive as arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not ‘germane’ to a rejection under section 102." Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). See also State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) (The question of whether a reference is analogous art is not relevant to whether that reference anticipates. A reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims.) See MPEP 2131.05. As the instant rejection under Okonogi is under 35 USC 102(a)(1), this argument is not germane.
Applicant argues that, other than cited Example F of Okonogi, the other examples do not satisfy instant Formulas 1 and 2 (remarks p.6 last paragraph – p.7). This is not persuasive as "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)). See MPEP 2131.03 (I). Example F of Okonogi falls within the claimed ranges and Formulas 1 and 2 and therefore anticipates the claimed wire rod.
Applicant argues that, similarly, the examples of Matsumoto do not simultaneously satisfy Formulas 1 and 2 and therefore the instant invention cannot be easily derived (p.7, 2nd paragraph; p.8). This is not persuasive as first, applicant’s argument that the ranges of Matsumoto does not satisfy the claimed Formulas by only comparing the examples of Matsumoto overlooks the totality of the teachings thereof and prior art is relevant for all that it discloses. See MPEP 2123. As outlined above, the general teaching of Matsumoto overlaps that which is claimed. Second, the instant claims do not specifically recite any amount of delayed fracture resistance, rather they recite “with improved delayed fracture resistance”. Accordingly, applicant’s augment regarding the improved delayed fracture resistance being non-obvious of Matsumoto does not establish a nexus between the claimed Formulas and any particular delayed fracture resistance. See MPEP 2144.05 (III)(B). Absent an objective showing of non-obviousness commensurate with that which is claimed, the prior rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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