DETAILED ACTION
Claims 1-3 are pending.
Claims 1-3 are rejected.
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 § 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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Suda et al. (US 2006/0201588) (Suda) in view of Nakakubo et al. (JP 2017082251A) and Nagao et al. (US 2004/0129354) (Nagao).
Nakakubo et al. (JP 2017082251A) is cited in the IDS filed 02/01/2024. Citations to Nakakubo may be found in the translation provided by Applicant.
Regarding claims 1-3
Suda teaches a steel wire for a spring. The steel wire comprises a main body made of steel and a grain boundary layer possessing a depth of about 10 microns or less. The grain boundary layer constitutes the outer peripheral surface of the steel wire. Since the steel wire is a straight, one-dimensional figure, it follows the steel wire inherently possesses a line shape. The steel constituting the main body comprises 0.53 to 0.68% by mass C, 1.2 to 2.5% by mas Si, 0.2 to 1.5% by mass Mn, 1.4 to 2.5% by mas Cr, and 0 to 0.4% by mass V, with the remainder consisting of iron and inevitable impurities. The steel wire comprises tempered martensite. See, e.g., abstract and paragraphs [0001], [0009], [0012-017], [0020], and [0023].
It should be noted that in the case where the claimed ranges 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Suda does not explicitly teach the presence of an oxidized layer (A) or the concentration of silicon in the oxidized layer (B).
With respect to the difference, Nakakubo (A) teaches a steel wire for a spring comprising a main body made of a steel and having line shape. The steel constituting the main body possesses 0.1 to 1.5% by mass of carbon, 1.0 to 2.5% by mass Si, 0.01 to 2% by mass Mn, 0.01 to 3% by mass Cr, and 0 to 1% by mass vanadium, with the balance being iron and unavoidable impurities. The steel wire further includes a scale acting as a lubricant at the time of bending in order to improve bending workability. By optimizing conditions of the temperature treatment, especially the heating condition, the component composition can be controlled to produce a steel wire comprising a scale with good adhesion on the steel wire surface for springs. The scale has a thickness of 2.5 to 6 microns. The scale composition includes 95-100% by volume of Fe3O4 and 0 to 5% by volume of Fe2O3. See, e.g., abstract and paragraphs [0001], [0013], [0025-0037], [0042], , and claims 1-2. The scale composition includes 89 to 100% by mass Fe3O4 and 11 to 0% by mass of Fe2O3. Mass of Fe3O4 = (volume of Fe3O4 * density of Fe3O4)/((volume of Fe3O4 * density of Fe3O4)+ (volume of Fe2O3 * density of Fe2O3)) = (90*5.17)/((90*5.17)+(10*5.24))=89%.
Nakakubo and Suda are analogous art as they are both drawn to steel wires for springs.
In light of the motivation as provided by Nakakubo, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to deposit a scale possessing a thickness 2.5 to 5 microns and comprising 95-100% by volume of Fe3O4 and 0 to 5% by volume of Fe2O3 on the main body of the steel wire of Suda, in order to improve bending workability and ensure the scale has good adhesion, and thereby arrive at the claimed invention.
It should be noted that in the case where the claimed ranges 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
With respect to the difference, Nagao (B) teaches a steel wire comprising a scale layer deposited on the surface of the base metal portion. The Si average concentration in the interface portion of the scale layer is not less than 2.0 times the Si content of the base metal portion in view of favorable peelability. See, e.g., abstract and paragraphs [0012], [0021], [0036-0044], and [0059].
Nagao and Suda in view of Nakakubo are analogous art as they are both drawn to steel wires.
In light of the motivation as provided by Nagao, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to ensure the Si average concentration of the interface portion of the scale layer of Suda in view of Nakakubo is not less than 2.0 times the Si content of the base metal portion, in view of favorable peelability, and thereby arrive at the claimed invention.
It should be noted that in the case where the claimed ranges 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 11,807,923 in view of Yoshihara et al. (JP 2007138260A) (Yoshihara) and Nagao et al. (US 2004/0129354) (Nagao). Although the claims at issue are not identical, they are not patentably distinct from each other for reasons set forth below.
The present claims require a steel wire for springs, comprising a main body made of a steel and having a line shape; and an oxidized layer covering an outer peripheral surface of the main body; the steel constituting the main body containing not less than 0.6 mass % and not more than 0.7 mass % carbon, not less than 1.7 mass % and not more than 2.5 mass % silicon, not less than 0.2 mass % and not more than 1 mass % manganese, not less than 0.6 mass % and not more than 2 mass % chromium, and not less than 0.08 mass % and not more than 0.25 mass % vanadium, with the balance consisting of iron and unavoidable impurities,
the steel constituting the main body having a tempered martensitic structure, the oxidized layer including a high silicon concentration layer having a maximum concentration of silicon of not less than 2.5 times and not more than 5.5 times that of the main body,
the main body including an intergranular oxidized layer arranged to constitute the outer peripheral surface and having a thickness of not less than 0.5 μm and not more than 2.5 μm.
The present claims further require the oxidized layer has a thickness of not less than 2 μm and not more than 5 μm.
The present claims further require the oxidized layer contains not less than 80 mass% triiron tetraoxide.
The patented claims, claims 1 and 4, require a spring steel wire comprising:
a main body made of a steel and having a line shape; and
an oxidized layer covering an outer peripheral surface of the main body;
the steel constituting the main body containing not less than 0.62 mass % and not more than 0.68 mass % C, not less than 1.6 mass % and not more than 2 mass % Si, not less than 0.2 mass % and not more than 0.5 mass % Mn, not less than 1.7 mass % and not more than 2 mass % Cr, and not less than 0.15 mass % and not more than 0.25 mass % V, with the balance being Fe and unavoidable impurities, a value obtained by dividing a sum of a Si content and a Mn content by a Cr content being not less than 0.9 and not more than 1.4,
the steel constituting the main body having a tempered martensite structure;
wherein the oxidized layer contains Fe3O4 in a percentage of not less than 80 mass %, and
wherein the oxidized layer has thickness of not less than 2 μm and not more than 5 μm.
The patented claims do not require an intergranular oxidized layer arranged to constitute the other peripheral surface and having a thickness of not less than 0.5 μm and not more than 2.5 μm or a maximum concentration of silicon of not less than 2.5 times and not more than 5.5 times of the main body.
With respect to the difference, Yoshihara teaches a steel wire for a spring. The steel wire includes a grain boundary oxide layer, i.e., corresponding to an intergranular oxide layer, due to the large amount of Cr used in the steel. Cr is present in the steel body in an amount from 0.5 to 1.9% by mass in view of strength, hardenability, and drawability. The grain boundary oxide layer possesses a depth of 8 µm or less. See, e.g., abstract and page 1, lines 10-15 and 36-49, page 2, lines 4-10, page 3, lines 31-35, and page 5, lines 25-26.
Yoshihara and the patented claims are analogous art as they are both drawn to steel wires for springs.
In light of the motivation as provided by Yoshihara, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use 0.5 to 1.9% by mass of Cr in the steel body, and therefore form a grain boundary layer possessing a depth of 8 µm or less, in the steel wire of the patented claims, in order to provide strength, hardenability, and drawability, and thereby arrive at the claimed invention.
It should be noted that in the case where the claimed ranges 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
With respect to the difference, Nagao teaches a steel wire comprising a scale layer deposited on the surface of the base metal portion. The Si average concentration in the interface portion of the scale layer is not less than 2.0 times the Si content of the base metal portion in view of favorable peelability. See, e.g., abstract and paragraphs [0012], [0021], [0036-0044], and [0059].
Nagao and the patented claims in view of Yoshihara are analogous art as they are both drawn to steel wires.
In light of the motivation as provided by Nagao, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to ensure the average concentration of Si in the oxidized layer of the patented claims in view of Yoshihara is not less than 2.0 times the Si content of the base metal portion, in view of favorability, and thereby arrive at the claimed invention.
It should be noted that in the case where the claimed ranges 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Conclusion
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/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789