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 a certified copy of JP 2021-069178 filed April 15, 2021 as required by 37 CFR 1.55. Receipt is also acknowledged of WO 2022/220281, the WIPO publication of PCT/JP 2022/017810 filed April 14, 2022.
Response to Restriction Election
Applicant’s election without traverse of Group I, claim 1, in the reply filed on March 11, 2026 is acknowledged.
The applicant argues the wiredrawn products of claims 1-5 are produced by the methods of claims 6-7 (applicant’s specification [0022], [0051]), such that Groups I, VI, and VII should be examined together (para. spanning pp. 1-2).
Groups I, VI, and VII lack unity of invention as evidenced by Hirakami (US 2017/0166992). See pages 4-5 of the January 20, 2026 Restriction Requirement. Furthermore, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP 2113(III).
Claims 2-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventive group, there being no allowable generic or linking claim.
Claim Status
This Office Action is in response to Applicant’s Restriction Election filed March 11, 2026 and Applicant’s claims filed October 5, 2023.
Claims Filing Date
October 5, 2025
Pending
1-7
Withdrawn
2-7
Under Examination
1
Claim Interpretation
Claim 1 line 6 “GOS” is interpreted in light of applicant’s specification at [0013] and [0097] as referring to a Grain Orientation Spread value determined by calculating and averaging misorientation between two pixels within the same indicator grain. It is used as an indicator of strain.
Claim 1 line 8 “GAM” is interpreted in light of applicant’s specification at [0013] and [0104] as referring to a Grain Average Misorientation value that is the average value of the misorientation between adjacent pixels within a single crystal grain. It is one of the indicators of twist of the crystal orientation within the crystal grains.
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.
Claim 1 is 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 lines 6-8 “a GOS value/average crystal grain size at a grain boundary setting angle of 2° and a step number of 0.07 um is greater than or equal to -0.6 x GAM value + 1.5” renders the claim indefinite.
It is unclear whether the GOS value is divided by an average crystal grain size at a grain boundary setting angle of 2°, divided by an average crystal grain size at a grain boundary setting angle of 2° and a step number of 0.07 um, if a GOS value is an average crystal grain size at a grain boundary setting angle of 2°, or if a GOS value is an average crystal grain size at a grain boundary setting angle of 2° and a step number of 0.07 um.
It is also unclear whether the step number of 0.07 um relates to the GOS value, the average crystal grain size, and/or the GAM value.
In light of applicant’s specification at [0097] and [0104], claim 1 is interpreted as the GOS value being calculated for an average crystal grain size at a grain boundary setting angle of 2° and the GAM value being calculated for a step number of 0.07 um.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim 1 is rejected under 35 U.S.C. 102(a(1) and under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Geipel (US 3,506,468).
Regarding claim 1, Geipel discloses a wiredrawn product drawn from a heat-treated steel (1:29-31)) containing: 0.38 to 1.05% by mass of C (0.5 %); 0.0 to 1.0% by mass of Mn; 0.0 to 0.50% by mass of Cr; and 0.0 to 1.5% by mass of Si, with the remainder being Fe and unavoidable impurities (unalloyed steel) (3:29-30).
The limitation of the wiredrawn product characterized in that: a GOS value/average crystal grain size at a grain boundary setting angle of 2° and a step number of 0.07 um is greater than or equal to -0.6 x GAM value + 1.5 has been considered and determined to recite a property that results from processing the wiredrawn product as disclosed in [0021] and [0029]-[0032] of applicant’s specification. The prior art discloses a process (Geipel 2:38-40, 3:27-75, Fig. 1, Graphs b, c, e) that falls within the scope of applicant’s disclosed process.
Since the prior art composition (Geipel 3:29-30) and process (Geipel 2:38-40, 3:27-75, Fig. 1, Graphs b, c, and e) are within the scope of the claimed composition and applicant’s disclosed process (applicant’s specification [0021], [0029]-[0032]), then the wiredrawn product characterized in that: a GOS value/average crystal grain size at a grain boundary setting angle of 2° and a step number of 0.07 um being greater than or equal to -0.6 x GAM value + 1.5 is anticipated or rendered obvious by the prior art (Geipel).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristics. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims. MPP 2112(III).
Applicant’s Process
Geipel
Geipel
Geipel
[0021], [0029]-[0032]
Fig. 1, Graph e
Fig. 1, Graph b
Fig. 1, Graph c
Heat 800 to 975°C within a few seconds
Start 860°C
Start 860°C for about 0.2 seconds
Start 860°C for about 0.2 seconds
Cool 350 to 620°C within a few seconds
Cool to 550°C in 1.5 seconds
Cool to about 620°C in about 4 seconds
Cool to about 620°C in about 3 seconds
Draw the cooled steel
Draw treated wire
Draw treated wire
Draw treated wire
Claim Rejections - 35 USC § 103
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Wood (US 2,300,329) in view of Geipel (US 3,506,468).
Regarding claim 1, Wood discloses a wiredrawn product drawn from a heat-treated steel (1:1:23-31, 3:1:55-57) containing: 0.38 to 1.05% by mass of C (0.65-0.70); 0.0 to 1.0% by mass of Mn (0.45-0.50); 0.0 to 0.50% by mass of Cr; and 0.0 to 1.5% by mass of Si (0.16-0.21), with the remainder being Fe and unavoidable impurities (4:1:28-33).
The limitation of the wiredrawn product characterized in that: a GOS value/average crystal grain size at a grain boundary setting angle of 2° and a step number of 0.07 um is greater than or equal to -0.6 x GAM value + 1.5 has been considered and determined to recite a property that results from processing the wiredrawn product as disclosed in [0021] and [0029]-[0032] of applicant’s specification. The prior art discloses a process (Wood 3:1:55-72, 3:2:69 to 4:1:4, 4:1:27-41) that falls within the scope of applicant’s disclosed process.
During processing, Wood discloses cooling to a temperature within a desired narrow range (3:1:65-72) that is above rapid martensite formation (3:2:69 to 4:1:4).
Wood is silent to a temperature of 350 to 620°C.
Geipel discloses heat treating then cooling a wire (2:20-44) including rapidly cooling to generally between 500 and 550°C (2:22-26, 62-64, 3:30-33, 46-51).
It would have been obvious to one of ordinary skill in the art in the process of Wood for the desired narrow range cooling temperature that is above rapid martensite formation to be between 500 and 550°C to cool to a temperature within the austenite/pearlite transformation range (Geipel 2:23-26) to form a wire with high stress resistance along with the ductility that allows it to be drawn to the final diameter (Geipel 2:38-44) without appreciable quantities of bainite (Geipel 3:37-38).
Since the prior art composition (Wood 4:1:28-33) and process (Wood 3:1:55-72, 3:2:69 to 4:1:4, 4:1:27-41; Geipel 2:22-26, 62-64, 3:30-33, 46-51) are within the scope of the claimed composition and applicant’s disclosed process (applicant’s specification [0021], [0029]-[0032]), then the wiredrawn product characterized in that: a GOS value/average crystal grain size at a grain boundary setting angle of 2° and a step number of 0.07 um being greater than or equal to -0.6 x GAM value + 1.5 naturally flows from the disclosure of the prior art.
Applicant’s Process
Wood
[0021], [0029]-[0032]
3:1:55-72, 3:2:69 to 4:1:4, 4:1:27-41
Heat 800 to 975°C within a few seconds
Heat about 1475°F (802°C) with a second or two
Cool 350 to 620°C within a few seconds
Cool to a desired narrow range above martensite formation without about 4 seconds
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/285,813 (App ‘813, reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because App ‘813 discloses the same composition (claims 1, 3-13) processed the same way (claims 12, 13), such that the GOS value as related to the GAM value in the pending claim naturally flows form the App ‘813 claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Related Art
Ishida (JP 2017-066435 machine translation)
Ishida discloses steel wire ([0001]) heating a wire to 900 to 1100°C and cooling to 480 to 630°C at an average rate of 100 to 300°C/s (up to 9.2 seconds to cool, 1100-480°C/100°C/s) ([0009], [0036]-[0044]) with an overlapping composition ([0010], [0016]-[0033]).
Maegerle (WO 2011/113165 machine translation)
Maegerle discloses a wire ([0002]) heated by a first method of transfer of thermal energy and a second method of electrical resistance ([0010]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
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/STEPHANI HILL/Examiner, Art Unit 1735
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