Prosecution Insights
Last updated: April 19, 2026
Application No. 18/347,069

ELECTRIC DISCHARGE MACHINING WIRE

Non-Final OA §103§DP
Filed
Jul 05, 2023
Examiner
TRAN, TIFFANY T
Art Unit
3761
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Proterial Ltd.
OA Round
1 (Non-Final)
55%
Grant Probability
Moderate
1-2
OA Rounds
4y 4m
To Grant
99%
With Interview

Examiner Intelligence

Grants 55% of resolved cases
55%
Career Allow Rate
130 granted / 236 resolved
-14.9% vs TC avg
Strong +61% interview lift
Without
With
+60.9%
Interview Lift
resolved cases with interview
Typical timeline
4y 4m
Avg Prosecution
34 currently pending
Career history
270
Total Applications
across all art units

Statute-Specific Performance

§101
0.9%
-39.1% vs TC avg
§103
49.9%
+9.9% vs TC avg
§102
16.2%
-23.8% vs TC avg
§112
29.6%
-10.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 236 resolved cases

Office Action

§103 §DP
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. Information Disclosure Statement The information disclosure statement (IDS) submitted on 07/05/2023 and 02/10/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Status of the Claims In the claim dated 7/5/2023, claims 1-4 are pending. 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 s 1 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 2 of copending Application No. 19244444 . Although the claims at issue are not identical, they are not patentably distinct from each other because : Current Application 18347069 Copending Application No. 19244444 (or US pub. US20260027635A1 ) An electric discharge machining wire, comprising: a core material composed of brass with zinc concentration of more than 40 mass%; and a coating layer provided around the core material, wherein zinc concentration of the coating layer is higher than the zinc concentration of the core material. 3. The electric discharge machining wire, according to claim 1, wherein the coating layer has a first zinc concentration at a surface which is higher than a second zinc concentration at an inner part. A wire electrical discharge machining (WEDM)-adapted wire electrode, comprising: a core material composed of brass having a zinc concentration of greater than 40 mass%; and a coating layer covering a periphery of the core material, wherein the coating layer … having a zinc concentration higher than the zinc concentration of the core material. the inner layer … having a zinc concentration … lower than a zinc concentration of brass constituting the outer layer. Th is is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 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 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 set forth in Graham v. John Deere Co. , 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for dete rmining 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. Claim s 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin KR20090034474 A (cited in 02/10/2026 IDS) Regarding claim 1, Shin discloses an electric discharge machining wire ( See description, page 1 ), comprising: a core material ( 10, see fig.2) composed of brass ( copper-zinc alloy, see description, page 8, lines 14-15: “it is preferable that the core wire (10) be formed … using a copper-zinc alloy containing 30 to 43 wt % of copper or zinc”) with zinc concentration of more than 40 mass% ; and a coating layer ( 20, see fig.2) provided around the core material (10, see fig.2), wherein zinc concentration of the coating layer ( see claim 3: “the coating layer contains 70 to 76 wt % of zinc”) is higher than the zinc concentration of the core material ( see claim 1 and page 8, lines 14-15: “the core wire (10) be formed … using a copper-zinc alloy containing 30 to 43 wt % of copper or zinc”). Shin does not expressly disclose the zinc concentration of the core material is more than 40 mass% . However, Shin teaches the zinc concentration of the core material is 30 to 43 wt % ( page 8, lines 14-15, the range 41-43 wt % overlaps with the claimed range “ more than 40 mass%. ”). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05). Thus, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the zinc concentration of the core material to be “ more than 40 mass% ” . Doing so allows to have “excellent discharge characteristics, high tensile strength, and outstanding precision machining” see page 3, lines 8-9 of Shin). Regarding claim 2, Shin further discloses the zinc concentration of the core material is 43 mass % or less ( see claim 1 and page 8, lines 14-15: “the core wire (10) be formed … using a copper-zinc alloy containing 30 to 43 wt % of copper or zinc”). Regarding claim 3, Shin further discloses the coating layer (20, see fig.2) has a first zinc concentration at a surface ( surface 23, see fig.2 ) which is higher than a second zinc concentration at an inner part (21, see fig.2 and page 9, lines 4-7: “the zinc content decreases as it gets closer to the core (10), and the third layer (23), which is the surface layer, is a part that comes into direct contact with the zinc of the molten metal and has a higher zinc content than other parts”). Regarding claim 4, Shin further discloses the coating layer (20) comprises a crack-free surface ( See page 8, lines 17-19: “…problems such as cracks or short circuits as in the prior art do not occur”). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : US20080179296A1 discloses an electrode wire according to the invention comprises a brass core ( 1 ) covered with a γ phase brass coating ( 2 ) having a structure fragmented into blocks ( 2 a ) between which the core ( 1 ) is exposed. The blocks ( 2 a ) have a thickness (E 2 ) with a narrow distribution and produce a coverage of the core ( 1 ) according to a coverage rate greater than 50%. This produces a regular fragmentation of the coating, which improves the finish state of the machined parts. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT TIFFANY T TRAN whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-3673 . The examiner can normally be reached on FILLIN "Work schedule?" \* MERGEFORMAT Monday - Friday, 10am - 6pm . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached on (571) 272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /TIFFANY T TRAN/ Primary Examiner, Art Unit 3761
Read full office action

Prosecution Timeline

Jul 05, 2023
Application Filed
Mar 20, 2026
Non-Final Rejection — §103, §DP (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
55%
Grant Probability
99%
With Interview (+60.9%)
4y 4m
Median Time to Grant
Low
PTA Risk
Based on 236 resolved cases by this examiner. Grant probability derived from career allow rate.

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