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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/25/2025 has been entered.
Claim Objections
Claims 11-14 objected to because of the following informalities:
In reference to claim 11, it is suggested to amend “a ratio of Tw/Dw of a thickness Tw of the oxygen-enriched layer to a diameter Dw of the wire rod is set in a range of 1x10-3 to 1x10-1” to “a ratio of Tw/Dw is 1x10-3 to 1x10-1, where Tw is a thickness of the oxygen-enriched layer and Dw is a diameter of the wire rod”. Appropriate correction is required.
In reference to claim 12, in line 1, it is suggested to amend “wherein Al is in a range of 1 mass% to 9 mass%” to “the Ti alloy has the composition comprising: Al: 1 mass% to 9 mass%”, in order to ensure consistency in the claim language. Appropriate correction is required.
In reference to claim 13, it is suggested to (1) in lines 1-2, amend “wherein Al is in a range of 2 mass% to 8 mass%, and” to “the Ti alloy has the composition comprising: Al: 2 mass% to 8 mass%, and” and (2) in line 3, amend “wherein Si is in amount of 0.03 mass% to 0.7 mass%” to “Si: 0.03 mass% to 0.7 mass%”, in order to ensure consistency in the claim language. Appropriate correction is required.
In reference to claim 14, it is suggested to (1) in lines 3-6, amend “wherein N and O are in in a range of 0.08 mass% to 0.2 mass% in total, wherein Si is in amount of 0.05 mass% to 0.5 mass%, and wherein a ratio of Tw/Dw of a thickness Tw of the oxygen-enriched layer to a diameter Dw of the wire rod is set in a range of 1x10-3 to 1x10-1” to the following:
“wherein the Ti alloy has the composition comprising:
at least one of N and O: 0.08 mass% to 0.2 mass% in total,
Si: 0.05 mass% to 0.5 mass%, and
wherein a ratio of Tw/Dw is 1x10-3 to 1x10-1, where Tw is a thickness of the oxygen-enriched layer and Dw is a diameter of the wire rod”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
Claims 1, 4-6 and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Horio et al. (JP 2006-136940) (Horio) in view of Nakajoya et al. (JP 2005-021983) (Nakajoya).
The examiner has provided a machine translation of JP 2005-021983 with the Office Action mailed 03/20/2025. The citation of prior art in the rejection refers to the provided machine translation. Further, it is noted that when utilizing JP 2006-136940, the disclosures of the reference are based on AU 2005222500 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to JP 2006-136940 are found in AU 2005222500.
In reference to claims 1 and 15, Horio teaches a welding wire made of Ti or a Ti alloy having an oxygen enriched layer on a surface thereof and further having a metal compound having at least one metal selected from the group consisting of alkali metals and alkaline earth metals (p. 10, lines 5-9) (corresponding to a wire rod for forming a molten metal: comprising Ti or a Ti alloy, comprising an oxygen-enriched layer on a surface, comprising a metal compound containing at least one metal selected from the group consisting of an alkali metal and an alkaline earth metal). The content of the compound is 0.002 to 0.050 mass% with respect to the total mass of the welding wire (p. 10, lines 10-12) (corresponding to a total mass of the alkali metal and/or the alkaline earth metal is 0.002 mass% to 0.042 mass% with respect to a total mass of the wire rod). The wire has cracks on its surface and the metal compounds are present in the cracks (p. 10, lines 13-15) (corresponding to having cracks filled with the metal compound).
The welding wire is composed mainly of Ti and when the wire is a Ti alloy various additive elements can be contained as minor components (p. 18, line 21 – p. 19, line 7) (corresponding to the Ti alloy has a composition comprising: Ti as a main component). The additive elements include Al: 9% by mass or less, at least one of N and O: 0.5 mass% in total, one or more of V, Mo, Nb and Ta: 45 mas% or less in total, one or more of Cr, Fe, Ni, Mn and Cu: 15 mass% in total or less, at least one of Sn and Zr: 20 mass% or less in total, Si: 0.7% by mass or less and at least one of Pd and Ru: 0.5 mass% in total or less (p. 19, line 8 – p. 23, line 6) (corresponding to Al: 9 mass% or less, at least one of N and O: 0.5 mass% or less in total, one or more of V, Mo, Nb, and Ta: 45 mass% or less in total, one or more of Cr, Fe, Ni, Mn, and Cu: 15 mass% or less in total, at least one of Sn and Zr: 20 mass% or less in total, Si: 0.7 mass% or less, and at least one of Pd and Ru: 0.5 mass% or less in total).
FIG. 1, provided below, shows the surface of the welding wire covered with the oxygen-enriched layer and having fine surface cracks that are generated in the wire drawing process (p. 12, line 23 – p. 13, line 4). FIG. 1 shows 13 cracks present for a length of 100 µm. Thus, it is clear a length between cracks obtained by the predetermined length of 100 µm divided by the number of cracks present is about 7.7 µm (i.e., 100 µm/13 = 7.69 µm) (corresponding to a length between the cracks obtained by A/B being 12 µm or less where B represents the number of the cracks present per predetermined length A µm in a longitudinal direction of the wire rod; the length between the cracks obtained by A/B being 9 µm or less).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Horio does not explicitly teach an area ratio of the cracks is 7 to 20%, as presently claimed.
Nakajoya teaches a titanium-based wire rod for forming molten metal (Abstract). Cracks form in the Ti-based oxide film formed on the Ti-based wire rod, wherein the cracks can retain lubricant components ([0023]). Nakajoya further teaches it is desirable to control the area ratio of cracks formed in the Ti-based oxide film to 20% or less ([0024]). It is desirable for the area ratio of the cracks to be as small as possible, but if the thickness of the Ti-based oxide film is reduced too much for that purpose, the effects of improving the wire feedability and the arc stability will become insufficient, and if the area reduction rate in the wire drawing process is made too small, it will lead to a significant decrease in the production efficiency of the wire, so the lower limit will be appropriately determined to avoid such problems ([0024]).
In light of the motivation of Nakajoya, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the area ratio of the cracks of Horio be 20% or less, in order to ensure lubricant components can be retained in the cracks and ensure there is not a significant decrease in the production efficiency of the wire.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Horio in view of Nakajoya further teaches the cracks are formed in the oxygen-enriched layer, if cracks occur severely lubricants and other impurities from wire drawing tend to remain inside the cracks and there is a risk that these impurities may become mixed into the molten metal (Nakajoya, [0016]). The oxygen-enriched layer has a thickness from 0.8 µm to 10 µm (Horio, Tables 1, 4 and 6). Thus, it would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the depth of the cracks be 0.8 µm to 10 µm, in order to ensure the cracks are not too severe such that impurities are mixed with the molten metal and the oxygen-enriched layer does not peel off (corresponding to an extension depth of the cracks being 15 µm or less). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Alternatively, Horio in view of Nakajoya teaches filling the cracks with the metal compound includes mixing the metal compound into a lubricant (Horio,[0054]). Nakajoya further teaches, if cracks occur severely lubricants and other impurities from wire drawing tend to remain inside the cracks and there is a risk that these impurities may become mixed into the molten metal (Nakajoya, [0016]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the presently claimed invention to adjust the depth of the cracks, including over the presently claimed, in order to ensure lubricants and impurities from wire drawing do not remain inside the cracks and ensure no adverse effect on the strength or corrosion resistance of the weld bead, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
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A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.). It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
In reference to claim 4, Horio in view of Nakajoya teaches the limitations of claim 1, as discussed above. Horio further teaches the boiling point of the metal is 2000ºC or less (p. 10, lines 16-17) (corresponding to the metal has a boiling point of 2,000ºC or lower).
In reference to claim 5, Horio in view of Nakajoya teaches the limitations of claim 1, as discussed above. Horio further teaches the metal compound is a metal compound containing Ca (p. 10, lines 18-19) (corresponding to the metal compound is a metal compound containing Ca).
In reference to claim 6, Horio in view of Nakajoya teaches the limitations of claim 1, as discussed above. Horio further teaches the oxygen-enriched layer has an average oxygen concentration of 1 to 40 mass% (p. 11, lines 1-3) (corresponding to the oxygen-enriched layer has an average oxygen concentration of 1 mass% to 40 mass%).
In reference to claim 8, Horio in view of Nakajoya teaches the limitations of claim 1, as discussed above. Horio further teaches the content of the metal compound is preferably 0.002 to 0.050% by weight based on the total weight of the welding wire (p. 28, lines 13-15) (corresponding to the total mass of the alkali metal and/or the alkali earth metal is 0.003 mass% to 0.034 mass%). The area ratio of the cracks is less than 20%, the extension depth of the cracks is 0.8 to 10 µm, and the length between cracks is about 7.7 µm (i.e., 100µm/13) (corresponding to the area ratio of the cracks is 8% to 18%, the extension depth of the cracks is 5 µm to 14 µm, and the length between cracks is 5 µm to 11 µm).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 9, Horio in view of Nakajoya teaches the limitations of claim 8, as discussed above. Horio further teaches the content of the metal compound is preferably 0.002 to 0.050% by weight based on the total weight of the welding wire (p. 28, lines 13-15) (corresponding to the total mass of the alkali metal and/or the alkali earth metal is 0.003 mass% to 0.034 mass%).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 10, Horio in view of Nakajoya teaches the limitations of claim 8, as discussed above. Horio in view of Nakajoya teaches the depth of the cracks is 0.8 to 10 µm, as discussed above (corresponding to the extension depth of the cracks is 6 µm to 14 µm).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Alternatively, Horio in view of Nakajoya teaches filling the cracks with the metal compound includes mixing the metal compound into a lubricant (Horio,[0054]). Nakajoya further teaches, if cracks occur severely lubricants and other impurities from wire drawing tend to remain inside the cracks and there is a risk that these impurities may become mixed into the molten metal (Nakajoya, [0016]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the presently claimed invention to adjust the depth of the cracks, including over the presently claimed, in order to ensure lubricants and impurities from wire drawing do not remain inside the cracks and ensure no adverse effect on the strength or corrosion resistance of the weld bead, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.).
It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
In reference to claim 11, Horio in view of Nakajoya teaches the limitations of claim 1, as discussed above. Horio further teaches a value of Tw/Dw is 0.3 ×10-3 to 1×10-1, where Tw is a thickness of the oxygen concentrated layer and Dw is a wire diameter of the welding wire (p. 10, lines 20-23) (corresponding to a ratio Tw/Dw of a thickness Tw of the oxygen-enriched layer to a diameter Dw of the wire is set in a range of 1×10-3 to 1×10-1).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 12, Horio in view of Nakajoya teaches the limitations of claim 1, as discussed above. Horio further teaches Al is added in an amount of not less than 1% by weight and not more and 9% by weight (p. 19, lines 8-17) (corresponding to Al is in a range of 1 mass% to 9 mass%).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 13, Horio in view of Nakajoya teaches the limitations of claim 1, as discussed above. Horio further teaches Al is added within a range of 2 to 8% by weight (p. 19, line 18) (corresponding to Al is in a range of 2 mass% to 8 mass%). Si is added in an amount 0.03% by weight or more and 0.7% by wight or less (p. 22, lines 2-12) (corresponding to Si is in amount of 0.03 mass% to 0.7 mass%).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 14, Horio in view of Nakajoya teaches the limitations of claim 1, as discussed above. Horio further teaches at least one of N and O is in a range of 0.08 to 0.2% by weight in total (p. 20, line 4) (corresponding to N and O are in a range of 0.08 mass% to 0.2 mass% in total). Si is added in an amount in the range of 0.05 to 0.5 mass% (p. 22, lines 12-13) (corresponding to Si is in amount of 0.05 mass% to 0.5 mass%).
Horio further teaches a value of Tw/Dw is 0.3 ×10-3 to 1×10-1, where Tw is a thickness of the oxygen concentrated layer and Dw is a wire diameter of the welding wire (p. 10, lines 20-23) (corresponding to a ratio Tw/Dw of a thickness Tw of the oxygen-enriched layer to a diameter Dw of the wire is set in a range of 1×10-3 to 1×10-1).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Horio in view of Nakajoya teaches the depth of the cracks is 0.8 to 10 µm, as discussed above (corresponding to the extension depth of the cracks is 12 µm or less). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Alternatively, Horio in view of Nakajoya teaches packing the cracks with the metal compound includes mixing the metal compound into a lubricant (Horio, p.26, lines 3-21). Nakajoya further teaches if the lubricant in the cracks is sufficiently removed, it can be prevented from being mixed in as an impurity into the weld bead and there is no adverse effect on the strength or corrosion resistance of the weld bead ([0025]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the presently claimed invention to adjust the depth of the cracks, including over the presently claimed, in order to ensure lubricant can be sufficiently removed to prevent impurities from being mixed into the weld bead and ensure no adverse effect on the strength or corrosion resistance of the weld bead, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.). It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant primarily argues:
“First, the Examiner asserts ‘the data is not commensurate in scope with the presently claimed invention.’
However, it is difficult and rather impractical for inventors to collect and provide thorough experimental data to cover the entire scope of the claims, which should be considered as an undue requirement for the inventors. The data of the present Examples and Comparative Examples revealed that Ti and a Ti alloy demonstrated a similar tendency to show good long- time arc stability (ranked A) when all the claimed crack area ratio, crack extension depth, and length between cracks are satisfied, but show poor long-time arc stability (ranked B or C) when any of these requirements are not satisfied (although there are some exceptions, i.e., Examples 6, 10, and 11).
Regarding the types of the alkali metal and alkaline earth metal, according to the description of [0010] of the present application, a person of ordinary skill can expect that any alkali metal or alkaline earth metal has a similar arc-stabilizing effect.
Moreover, nowhere in the MPEP does it require that the entire range of the area ratio be shown in the data. For example, MPEP 716.02(a) shows such requirement is necessary.
The Primary Examiner noted in the last interview that it is not clear how the combination of area ratio, extension depth and length between cracks provided unexpectedly good results when each of Examples 4, 6-7, 9-15 and 21-23 have at least one of the area ratio, extension depth and length between cracks outside the claimed range but exhibit good arch stability and long-time arc stability.
However, respectfully, there is no such requirement that all the examples be in the claimed range as seen in MPEP 716.02(a).”
Remarks, p. 8
The examiner respectfully traverses as follows:
The data to establish unexpected results remains unpersuasive for the reasons of record and set forth below.
Firstly, as set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Therefore, it is clear the MPEP states the data must show the unexpected results occur over the entire claim.
The data is not commensurate in scope with the presently claimed invention. Specifically, the data shows using a wire rod having (1) a specific composition (i.e., pure Ti or Ti-6Al-4V), (2) a specific wire diameter (i.e., 1.0 mm), (3) a specific metal compound comprising specific alkali metals and alkaline earth metals in specific amounts, (4) a specific crack extension depth, (5) a specific crack area ratio and (6) a specific length between cracks. While the claims broadly encompass a wire rod comprising (1) any Ti or Ti alloy, wherein the Ti alloy comprises Ti as a main component any amount of Al less than 9 mass%, at least one of N and O in any amount less than 0.5 mass% or less in total one or more of V, Mo, Nb and Ta in any amount less than 45 mass% in total, one or more of Cr, Fe, Ni, Mn and Cu in any amount less than 15 mass% in total, at least one of Sn and Zr in any amount of 20 mass% or less in total, any amount of Si 0.7 mass% or less and at least one of Pd and Ru in any amount 0.5 mass% or less in total, (2) any wire diameter, (3) any metal compound containing at least one metal selected from the group consisting of alkali metal and alkaline earth metal in any amount between 0.002 mass% and 0.042 mass%, (4) any crack extension depth being any value of 15 µm or less, (5) any area ratio of any amount between 7 and 20% and (6) any length between the cracks being any value 12 µm or less.
Further, the data does not include (a) the upper and lower limit of the area ratio of the cracks, (b) the upper limit of the extension depth of the cracks or (c) the upper limit of the length between the cracks. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of the area ratio of the cracks, the extension depth of the cracks and the length between the cracks.
Lastly, there is no proper side-by-side comparisons between the working examples and the comparative examples. While the closest side-by-side comparison is Example 12 and Example 10, however, Example 12 (i.e., working) and Example 10 (i.e., comparative) differ in each of the content of the alkali metal, the crack extension depth, crack area ratio and length between cracks. Additionally, Example 10 includes a length between cracks outside the claim range and therefore is a comparative example but shows better results (i.e., A in both Arc stability and Long-time arc stability) than Example 12. Therefore, it is not clear that results for the claimed range demonstrate better or unexpected results and it is unclear if the good arc stability is from the amount of alkali metal, the crack extension depth, crack area ratio, length between cracks or a combination of some or all of the above.
Similar to Example 10, Examples 4, 6-7, 11-15 and 21-23 show good arc stability and long-term arc stability, but include one of a crack extension depth, crack area ratio or length between cracks outside the claimed range. Thus, it is not clear that the combination of crack extension depth, crack area ratio and length between cracks leads to the good long-time stability.
Even if there were proper side-by-side comparisons, the data to establish unexpected results remains unpersuasive for the reasons set forth above, i.e., the data is not commensurate in scope with the scope of the present claims.
Applicant further argues:
“Second, it is difficult to combine Horio (JP 2006-136940) and Nakajoya (JP 2005-021983).
Nakajoya requires the Ti oxide film to have a thickness of 1 µm or larger to exhibit a lubrication effect derived from the Ti oxide film and 5 µm or smaller to reduce crack area ratio and reduce remaining lubricant ([0017], [0023], [0024], etc.). Further, Nakajoya states in [0060] that ‘the lubricant remaining in the cracks should be removed sufficiently,’ and discloses in [0066] that ‘the remaining amount of the lubricant is 1 g or less per 10 kg of the rod material.’ The 1 g or less of the lubricant in 10 kg of the rod material means that the content of the lubricant should be 0.01% or less in the rod material. In addition, when the calculation is conducted based on this "0.01% or less" and the Nakajoya's disclosure (employing calcium hydroxide among calcium stearate (Mw: 607.02) and calcium hydroxide (Mw: 74.09) which are specific examples disclosed by Nakajoya), the content of the alkaline earth metal (Ca content) in the rod material of Nakajoya is 0.0054% or less (=0.01% or less/74.09 * 40.08 (at. wt. of Ca)).
That is, Nakajoya requires the removal of the lubricant as far as possible, which is quite different and rather explicitly teaches away from the claimed invention and Horio where the metal compound (lubricant) is intentionally made to remain in the cracks.
MPEP § 2143.03(VI) states that "[a] prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention." Accordingly, where cited art teaches away from a claimed feature, the cited art is not available for the purposes of an obviousness rejection.
In addition, based on the calculated content of the alkaline earth metal (Ca content) in the rod material of Nakajoya (i.e., 0.0054% or less), the new Claim 9 is clearly distinguished from Nakajoya.”
Remarks, p. 9
The examiner respectfully traverses as follows:
Firstly, Nakajoya is only used as teaching reference in order to teach an area ratio of cracks. It is noted that the “test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference...Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”, In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that “combining the teachings of references does not involve an ability to combine their specific structures”, In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Secondly, while Nakajoya teaches a washing step, this step is to remove residual lubricants from the wire not to remove all the lubricant held in the cracks. Additionally, [0026] states that some residual lubricant will remain even after cleaning of the wire. Further, the instant application’s Specification discloses a washing step to remove the lubricant from the surface cracks ([0057]). Thus, it is clear that the washing step does not remove all the lubricant from the cracks. Therefore, absent evidence to the contrary, it is the examiner’s position the washing step of Nakajoya does not criticize, discredit, or otherwise discourage an alkali metal or alkaline earth metal filled in the cracks, wherein the total mass of the alkali metal and/or alkaline earth metal is 0.002 to 0.050 mass% based on a total mass of the wire rod.
Therefore, Applicant's arguments filed 01/08/2025 have been fully considered but they are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784