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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/31/2024, 07/08/2025, 12/10/2025, 01/17/2024, 04/13/2026, and 06/25/2026 are being considered by the examiner.
Election/Restrictions
Applicant’s election of Group I, claims 1-3 and 6-7, drawn to a product, a steel wire for spring, without traverse in the reply filed on 06/17/2026 is acknowledged.
Group II, claims 4-5 and 8-9, drawn to a method of manufacturing a steel wire for spring, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
Therefore, claims 1-3 and 6-7 are currently under examination on the merits.
Claim Rejections - 35 USC § 112 (b)
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 1-3 and 6-7 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 and 6 recites the limitation, "the dislocation density" without reciting any upper limit of the range renders the claim indefinite because, it is unclear what would be the upper limit of the claim, and therefore, the scope of the claim is not clear. The specification also does not provide any guideline about this limitations.
Appropriate corrections are required.
Claim 2-3 and 7 are dependent of claim 1 and 6 respectively and therefore, rejected for the same reason.
Claim Rejections - 35 USC § 102
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 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.
Claim 1-3 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kui Chen et.al. [“Effect of quenching and tempering temperature on microstructure and tensile properties of microalloyed ultra-high strength suspension spring steel”, Materials Science & Engineering A 766 (2019) 138272] (Chen hereafter).
Regarding claims 1-2, Chen discloses a steel wire for spring (an ultra-high strength suspension spring steel, (see Chen’s Title) spring steels made from hot-rolling into wire rods, to improve the elastic limit, strength limit and yield ratio, see Chen’s Introduction) having excellent permanent deformation resistance (sample tempered at 300 °C, 350 °C and 400 °C, have better deformation resistance compared to the samples tempered at 500°C has high plasticity and deformed as shown Chen’s Fig. 6l and deformed radial cracks are generated during tensile, see Chen’s 3.2.2. Effect of tempering temperature, Fig.6), comprising based on weight percent, (composition of the 55SiCrVNb steel, wt.%, see Chen’s Table 1) and claimed composition have been shown in following table.
Element
Instant claim 1 (wt.%)
Instant claim 2 (wt.%)
Chen's composition (wt.%) (Table 1)
Within/Overlaps with claimed range
C
0.4 to 0.7
0.563
Within
Si
1.2 to 2.3
1.482
Within
Mn
0.2 to 0.8
0.71
Within
Cr
16.0 to 20.0
0.709
Within
One or more elements selected from the following V, Nb, Ti, or Mo
V
0.01 to 0.3
0.148
Nb
0.005 to 0.05
0.011
Within
Ti
0.001 to 0.15
0.0011
Within
Mo
0.01 to 0.4
-
Fe and inevitable impurities
Balance
Balance
Balance
Within
Properties of the steel wire or steel
Average grain diameter
8.4 µm or less
7.0 µm or less
Within
Chen’s composition of the steel for spring including all elements and the average grain size fall within the range as recited in the instant claims.
Therefore, it is anticipatory when the prior art is within a claimed range. [See MPEP § 2131.03].
Although, Chen is silent about the carbon concentration in martensite, Chen teaches the following method steps to produce the austenite stainless steel sheet (below table includes citations to the present specification and Chen):
Process steps
Present Invention [specification page, line]
Chen’s process [ref]
Comparison
manufacturing a steel wire step
manufacturing a steel wire by drawing steel [page 12, line 25]
the 55SiCrVNb spring steel and a samples are forged and machined by electro-spark wire-electrode cutting (see Chen’s page 2, 3. 2.1. Materials and heat treatment).
analogous process
heating step
heating the drawn steel wire to 850 to 1000°C [page 12, line 25]
austenitized in temperature (AT) of 850°C to 1000°C
(see Chen’s page 2, 3. 2.1. Materials and heat treatment)
austenitizing temperature is within the invention and analogous process
holding step
maintaining the steel wire for 1 second or more to austenitize [page 13, line 25]
austenitized holding time 30 minutes (see Chen’s page 2, 3. 2.1. Materials and heat treatment)
austenitized holding time is within the invention and analogous process
Quenching/cooling step
quenching the steel wire at 25 to 80 °C
oil-quenched down to room temperature (25°C) (QT) (see Chen’s page 2, 3. 2.1. Materials and heat treatment)
quenching temperature is within the invention and
analogous process
tempering step
tempering the steel wire at 350 to 500°C [page 13, line 1-20]
tempering temperatures (TT) of 350°C to 500°C (see Chen’s page 2, 3. 2.1. Materials and heat treatment)
tempering temperature is within the invention and analogous process
As shown above, prior art Chen teaches the similar identical steps with all the temperature and time falls within the range as invented.
Chen also teaches the relationship between dislocation density (ρ) and carbon concentration in martensite can be expressed by M − H equation: ρ × 10−15 = 0.7 + 3.5C% (see Chen’s page, 9, right col., 4. Discussions), i.e. therefore, dislocation density ρ = 0.7 + 3.5C% × 1015/m2. Although, Chen is silent about the carbon concentration in martensite, Chen teaches with tempering temperature increased (at 500°C and above), the solid solution strengthening is weakened, as more carbon elements precipitated with higher tempering temperature, also resulting in a decrease of dislocation. However, the substructure of dislocation provides positions for carbides to nucleate during tempering process, so that more dispersed carbide will precipitate to obtain a good precipitation strengthening and to improve the tensile strength of the spring steel, therefore, the optimum tempering temperature is about 400°C, having optimum dislocations and solution strengthening, that improves the strength and toughness of the matrix, as well as high tensile strength and other mechanical properties (see Chen’s page 9, right col., 4. Discussions, page 10, right col., 5. Conclusions).
Given all these teachings of the composition, grain size, as well as the process of making the steel wire for spring of Chen, i.e. Chen’s product is identical to the claimed product, as well as Chen’s process of making the steel wire for spring, is also identical to the process as used in the present invention, in addition, Chen’s teaching of dislocation density dependent on tempering temperature, wherein the tempering temperature range is also identical and within the as recited in the instant claim, as set forth above, therefore, Chen would inherently possesses dislocation density 1.16 × 1015/m2 and more, as presently claimed, because,
“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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).[ See MPEP 2112.01 (I)]”. “[W]hen the PTO shows 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.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Regarding claim 3, although Chen is silent about the claimed hysteresis loop area obtained by a Bauschinger torsion test is 206 mm2 or more, all the above discussions regarding claim 1 are applicable to claim 3, wherein given all the above teachings of the composition, grain size, as well as the process of making the steel wire for spring of Chen, Chen’s product is identical to composition the grain size, i.e. the claimed product, as well as Chen’s process of making the steel wire for spring, is also identical to the process as used in the present invention, in addition, instant disclosure of the specification does not provide any other information how the hysteresis loop area obtained the claimed value, except the composition and process of making the claimed product, as set forth above, therefore, the steel wire for spring of Chen would inherently possesses a hysteresis loop area obtained by a Bauschinger torsion test is 206 mm2 or more, as presently claimed, because,
“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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).[ See MPEP 2112.01 (I)]”. “[W]hen the PTO shows 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.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Regarding claims 6-7, Chen discloses a steel for spring (an ultra-high strength suspension spring steel, (see Chen’s Title) spring steels made from hot-rolling into wire rods, to improve the elastic limit, strength limit and yield ratio, see Chen’s Introduction) having excellent permanent deformation resistance (sample tempered at 300 °C, 350 °C and 400 °C, have better deformation resistance compared to the samples tempered at 500°C has high plasticity and deformed as shown Chen’s Fig. 6l and deformed radial cracks are generated during tensile, see Chen’s Abstract, 3.2.2. Effect of tempering temperature, Fig.6), comprising based on weight percent, (composition of the 55SiCrVNb steel, wt.%, see Chen’s Table 1) and claimed composition have been shown in following table,
Element
Instant claim 6 (wt.%)
Instant claim 7 (wt.%)
Chen's composition (wt.%) (Table 1)
Within/Overlaps with claimed range
C
0.4 to 0.7
0.563
Within
Si
1.2 to 2.3
1.482
Within
Mn
0.2 to 0.8
0.71
Within
Cr
16.0 to 20.0
0.709
Within
One or more elements selected from the following V, Nb, Ti, or Mo
V
0.01 to 0.3
0.148
Nb
0.005 to 0.05
0.011
Within
Ti
0.001 to 0.15
0.0011
Within
Mo
0.01 to 0.4
-
Fe and inevitable impurities
Balance
Balance
Balance
Within
Properties of the steel wire or steel
Average grain diameter
9.6 µm or less
7.0 µm or less
Within
Chen’s composition of the steel for spring including all elements and the average grain size fall within the range as recited in the instant claims.
Therefore, it is anticipatory when the prior art is within a claimed range. [See MPEP § 2131.03].
Although, Chen is silent about the carbon concentration in martensite, Chen teaches the following method steps to produce the austenite stainless steel sheet (below table includes citations to the present specification and Chen):
Process steps
Present Invention [specification page, line]
Chen’s process [ref]
Comparison
Process for producing steel for spring
manufacturing a billet
manufacturing a billet [page 11, line 19-20]
an ingot is prepared by vacuum induction melting (see Chen’s page 2, 3. 2.1. Materials and heat treatment).
analogous process
heating step
heating the billet to 960 to 1100°C [page 12, line 6-15]
he ingot was reheated at deform temperature (DT) of 1150°C (see Chen’s page 2, 3. 2.1. Materials and heat treatment)
heating temperature is 50°C higher than the invention
finish deformation step
finish rolling the billet at 855 to 920°C [page 12, line 16-21]
hot-forging into a bar with a finish-forging temperature at around 950°C (see Chen’s page 2, 3. 2.1. Materials and heat treatment)
finish rolling temperature is 30°C higher than the invention
Process for producing a steel wire for spring
manufacturing a steel wire step
manufacturing a steel wire by drawing steel [page 12, line 25]
the 55SiCrVNb spring steel and a samples are forged and machined by electro-spark wire-electrode cutting (see Chen’s page 2, 3. 2.1. Materials and heat treatment).
analogous process
heating step
heating the drawn steel wire to 850 to 1000°C [page 12, line 25]
austenitized in temperature (AT) of 850°C to 1000°C
(see Chen’s page 2, 3. 2.1. Materials and heat treatment)
austenitizing temperature is within the invention and analogous process
holding step
maintaining the steel wire for 1 second or more to austenitize [page 13, line 25]
austenitized holding time 30 minutes (see Chen’s page 2, 3. 2.1. Materials and heat treatment)
austenitized holding time is within the invention and analogous process
Quenching/cooling step
quenching the steel wire at 25 to 80 °C
oil-quenched down to room temperature (25°C) (QT) (see Chen’s page 2, 3. 2.1. Materials and heat treatment)
tempering step
tempering the steel wire at 350 to 500°C [page 13, line 1-20]
tempering temperatures (TT) of 350°C to 500°C (see Chen’s page 2, 3. 2.1. Materials and heat treatment)
As shown above, prior art Chen teaches the identical steps with all the temperature and time both falls within the range as invented for process for producing a steel wire for spring, while the process for producing steel for spring is similar, the temperature of the heating and deformation/forging slightly higher than the claimed invention.
With respect to meet this difference, according to page 12, of the specification of the instant disclosure, the claimed heating temperature and finish deformation/rolling temperature are required to keep the austenite grain size smaller. However, Chen teaches controlling the austenitizing temperature and tempering temperature, as shown in Chen’s Fig. 12, the effective grain size distribution is similar under different tempering temperatures, and the grain size is still within the range as recited in the instant claim. In addition, it is to be noted,
"[E]ven 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 claim 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020).
In this case although the temperature of the heating and finish deformation steps are slightly different, Chen’s steel for spring is still capable to produce the same identical product of wire rod for the spring.
Chen also teaches the relationship between dislocation density (ρ) and carbon concentration in martensite can be expressed by M − H equation: ρ × 10−15 = 0.7 + 3.5C% (see Chen’s page, 9, right col., 4. Discussions), i.e. therefore, dislocation density ρ = 0.7 + 3.5C% × 1015/m2, but Chen is silent about the carbon concentration in martensite. Chen further teaches with tempering temperature increased (at 500°C and above), the solid solution strengthening is weakened, as more carbon elements precipitated with higher tempering temperature, also resulting in a decrease of dislocation. However, the substructure of dislocation provides positions for carbides to nucleate during tempering process, so that more dispersed carbide will precipitate to obtain a good precipitation strengthening and to improve the tensile strength of the spring steel, therefore, the optimum tempering temperature is about 400°C, having optimum dislocation and solution strengthening, that improves the strength and toughness of the matrix, as well as high tensile strength and other mechanical properties (see Chen’s page 9, right col., 4. Discussions, page 10, right col., 5. Conclusions).
Given all these teachings of the composition, grain size, as well as the process of making the steel wire for spring of Chen, Chen’s product is identical to composition the grain size, i.e. the claimed product of the steel wire for spring, as well as Chen’s process of making the steel wire for spring, is substantially identical to the process as used in the present invention, in addition, Chen’s teaching of dislocation density dependent on tempering temperature, wherein the tempering temperature range is also identical and within the as recited in the instant claim, as set forth above, therefore, the austenitic stainless steel of Chen would inherently possesses dislocation density 0.11 × 1015/m2 and more, as presently claimed, because,
“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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).[ See MPEP 2112.01 (I)]”. “[W]hen the PTO shows 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.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Claims 1-3, and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim Kwan-Ho, et.al. CN107523752 A (machine translation, provided in the IDS) (Kim hereinafter).
Regarding claims 1-3, and 6-7, Kim teaches a spring wire rod and steel wire having the following composition, in weight percent (Kim, [0049-0064], [0074], and foreign disclosure Table 1):
Element
Instant claim 1 and 6 (wt.%)
Instant claim 2 and 7 (wt.%)
Kim’s composition (wt.%) [0045]
Kim’s Example B6 (Table 1)
C
0.4-0.7
0.4-0.7
0.52
Si
1.2-2.3
1.2-2.2
1.26
Mn
0.2-0.8
0.1-1.0
0.28
Cr
0.2-0.8
0.1-1.0
0.25
One or more elements selected from the following V, Nb, Ti, or Mo
V
0.01-0.2
0.01 to 0.3
0.001-0.15
0.09
Nb
0.01-0.1
0.005 to 0.05
0.001-0.1
0.05
Ti
0.01-0.15
0.001 to 0.15
0.001-0.2
-
Mo
0.01-0.4
0.01 to 0.4
0.001-0.5
0.18
Balance
Fe and Impurities
Fe and Impurities
Fe and Impurities
The composition of Example B6 falls within the ranges of claims 1, and 6. Moreover, the amount of one or more of V Nb T and Mo of Kim falls within the ranges of claims 2 and 7.
In addition, Kim teaches the following method for making a wire rod and steel wire, heating a billet, hot-rolling at a hot finishing temperature of (A1 + 200°C) to (A1 + 50°C) to obtain a wire rod, Kim’s example steel B6 hot rolled at a finish hot rolling temperature at 901°C (see Kim’s example steel B6 on Table 2), stretching a wire rod to obtain a steel wire, heating the steel wire for more than one second, cooling the heated steel wire at a temperature of 25-80°C, and heating and tempering the cooled steel wire at a temperature of 350-500°C (Kim, [0088-0105]), Kim’s tempering temperature for the example steel B6 is 393°C (see Kim’s example steel B6 on Table 2). Moreover, while Kim teaches the billet heating can be performed at a temperature of 950-1100°C, Kim does not teach away from utilizing a lower heating temperature (Kim, [0090]).
Given that the composition and method of making the wire rod and steel wire of Kim are substantially identical to the composition and method as used in the present invention, as set forth above, it is clear that the wire rod and steel wire of Kim would inherently have an average grain diameter 8.4 µm or less (claim 1) and 9.6 µm or less (claim 6) and dislocation density 1.16 × 1015/m2 and more (claim 1), dislocation density 0.11 × 1015/m2 and more (claim 6) and a hysteresis loop area obtained by a Bauschinger torsion test is 206 mm2 or more (claim 3) as presently claimed.
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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I). “[W]hen the PTO shows 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.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
M. ASSEFPOUR-DEZFULY, et.al. [Parameters Affecting Sag Resistance in Spring Steels, METALLURGICAL TRANSACTIONS A, VOLUME 20A. OCTOBER 1989] (DEZFULY hereinafter), DEZFULY teaches a spring wire rod and steel wire having the following composition, in weight percent (DEZFULY, [0049-0064], [0074], and foreign disclosure Table 1):
Element
Instant claim 1 and 6 (wt.%)
Instant claim 2 and 7 (wt.%)
DEZFULY’s composition (wt.%) 9254 (V)-1 of Table 1
Within/Overlaps with claimed range
C
0.4-0.7
0.59
Within
Si
1.2-2.3
1.55
Within
Mn
0.2-0.8
0.46
Within
Cr
0.2-0.8
0.54
Within
One or more elements selected from the following V, Nb, Ti, or Mo
V
0.01-0.2
0.01 to 0.3
0.17
Within
Nb
0.01-0.1
0.005 to 0.05
<0.005
Within
Ti
0.01-0.15
0.001 to 0.15
0.003
Within
Mo
0.01-0.4
0.01 to 0.4
0.01
Within
Balance
Fe and Impurities
Fe and Impurities
Within
Properties of the steel wire or steel
average, grain size
claim 1: 8.4 µm or less
claim 6: 9.6 µm or less
8.0
Within
The composition of Example B6 falls within the ranges of claims 1, and 6. Moreover, the amount of one or more of V, Nb, Ti and Mo of DEZFULY falls within the ranges of claims 2 and 7. DEZFULY further teaches the relaxation behavior of a number of standard and microalloyed spring steels through a closer examination of their inherent resistance to plastic deformation and to study the effects of a number of parameters, such as steel composition, strength level, prior austenite grain size, austenitizing temperature, and warm prestressing, on such properties. The hysteresis loops in tension or compression,l221 which are a measure of the Bauschinger effect, were used as a means of determining the steel's resistance to plastic deformation, which, in tum, can be related to the relaxation behavior of the spring. (page 1952, Fig.1, right col.). Increasing the hardness to 54 HRC causes a decrease in loop width compared to the 50 HRC level; i.e., the material's inherent ability to oppose plastic deformation on reloading beyond the yield point, as reflected by the Bauschinger loops, is reduced at this higher strength level. This is possibly related to the type and morphology of the (page 1957, right col.). The optimum value for the hysteresis loop width occurred at a hardness of 50 HRC and for an austenitizing temperature of 900 °C for most of the spring steels. (page 1955 Table II, page 1958, right col. V. Conclusions). The greater the Si content of the steel, the larger the hysteresis loop width and area and the greater the expected sag resistance of the spring steel. Microalloying with V and/or Nb did not increase the optimum size of the hysteresis loops (at 50 HRC) nor did it influence the microyielding characteristics of the steels. This is not surprising, as the secondary precipitation of V and Nb carbonitrides cannot take place, to any significant extent, at tempering temperatures below about 500 °C (hardness levels of 50 HRC and above) (page 1958, right col. V. Conclusions)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM - 7:00PM (EST).
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
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