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 .
EXAMINER’S NOTE
Applicant filed a letter on 10/29/2025 and subsequently contacted the examiner via telephone on 11/04/2025 in order to notify the examiner the IDS filed 10/29/2025 was inadvertently submitted in this application and to disregard the reference. In light of the Applicant’s call and letter, the reference listed on the IDS filed 10/29/2025 is not considered.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12, in the reply filed on 12/04/2025 is acknowledged.
Claims 13 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/04/2025.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because of the following informalities:
In reference to claim 1, the limitation “EBSD” is recited in line 2 and “IPF” is recited in line 7. In order to avoid any misunderstanding of the abbreviations, Applicants are advised to provide a full term of each of the abbreviation in the claim language, i.e., electron backscattered diffraction (EBSD) and inverse pole figure (IPF). Appropriate correction is required.
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, 5, 7-8 and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 8, 10 and 13 of copending Application No. 19/320,369. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons set forth below.
In reference to claim 1, copending application 19/320,369 claims a tungsten wire comprising a tungsten alloy containing rhenium (claim 1). According to an EBSD analysis on a unit area of 40 µm
×
40 µm in a central portion located within 100 µm concentrically extending from a central axis in a cross section along a wire radial direction perpendicular to a wire drawing direction in a main body portion of the tungsten wire, an area ratio accounted for by crystal orientations having an orientation difference of 15 degrees or less from <101>, which is parallel to the wire drawing direction, to a measurement filed is 90% or more and 99.9% or less on an IPF map (claim 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 3, copending application 19/320,369 claims the limitations of claim 1, as discussed above. Copending application 19/320,369 further claims according to the EBSD analysis on the unit area of 40 µm
×
40 µm in an outer peripheral portion located within 50 µm from an outer periphery of the main body portion of the tungsten wire, an area ratio accounted for by crystal orientations having an orientation difference of 15 degrees or less from <101>, which is parallel to the wire drawing direction, to the measurement field is 70% or more and 93% or less on the IPF map (claim 3).
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 5, copending application 19/320,369 claims the limitations of claim 1, as discussed above. Copending application 19/320,369 further claims on the IPF map of the outer peripheral portion of the main body portion of the tungsten wire, an area ratio accounted for by crystal orientations having an orientation difference of 15 degrees or less from <227>, which is parallel to the wire drawing direction, to the measurement field is 3% or more and 20% or less (claim 5). While the copending claims further includes an area ratio for crystal orientations in an outer peripheral portion located within 50 µm from an outer periphery of a main body portion of the tungsten wire, in light of the open language of the present claims, i.e., “comprising” it is clear that the present claims would open the inclusion of the additional limitation of the copending claims.
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 7, copending application 19/320,369 claims the limitations of claim 1, as discussed above. Copending application 19/320,369 further claims on a crystal grain map of the central portion of the main body portion of the tungsten wire, a maximum grain size is 0.8 µm or more and 2.0 µm or less (claim 8).
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 8, copending application 19/320,369 claims the limitations of claim 1, as discussed above. Copending application 19/320,369 further claims on a crystal grain map of the central portion of the main body portion of the tungsten wire and the outer peripheral portion of the main body portion of the tungsten wire, a ratio of an average grain side of the central portion to an average grain size of the outer peripheral portion is greater than 1.00 and is less than 1.20 (claim 10). While the copending claims further includes an area ratio for crystal orientations in an outer peripheral portion located within 50 µm from an outer periphery of a main body portion of the tungsten wire, in light of the open language of the present claims, i.e., “comprising” it is clear that the present claims would open the inclusion of the additional limitation of the copending claims.
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 11, copending application 19/320,369 claims the limitations of claim 1, as discussed above. Copending application 19/320,369 further claims a diameter of the tungsten wire is 0.05 mm or more and 0.3 mm or less (claim 13).
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, copending application 19/320,369 claims the limitations of claim 1, as discussed above. While copending application 19/320,369 does not explicitly claim the tungsten wire is “for wire drawing”, however, the recitation in the present claims that the wire is “for wire drawing” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the copending claims and further that the copending claims structure is capable of performing the intended use. Given that the copending claims claim the wire as presently claimed, it is clear that the copending applications claimed wire would be capable of performing the intended use, i.e. wire drawing, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
This is a provisional nonstatutory double patenting rejection.
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 1-5, 9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Esaki (US 2011/0319931).
In reference to claims 1-5, 9 and 11, Esaki teaches a rhenium tungsten wire comprising 10 to 30 mass% rhenium and a balance of tungsten ([0016]) (corresponding to a tungsten wire comprising a tungsten alloy containing rhenium; the tungsten alloy contains rhenium in an amount of 1 wt% or more and 10 wt% or less). The wire has a diameter of 0.10-0.40 mm ([0016]) (corresponding to a diameter of 0.3 mm or more and 1.2 mm 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).
Esaki further teaches a method of manufacturing the rhenium tungsten wire including a powder mixing step, a molding step, a sintering step, a first swaging step for swagging the sintered body, an annealing step, a rolling step, a second swagging step, a recrystallizing step, a third swagging step and a drawing step ([0033]-[0045]).
The instant application discloses a process to produce the presently claimed tungsten wire including a powder mixing step, a molding step, a sintering step, a first swaging process (SW process), heat treatment, a rolling process, a second SW process, a recrystallization treatment, a third SW process and a drawing process ([0029]-[0038]).
Esaki teaches each of the sintering temperature, first swagging temperature, rolling temperature, third swagging temperature and reduction rate and drawing temperature overlapping the temperatures and reduction rate of the steps disclosed in the instant application’s Specification ([0058];[0060];[0067];[0068]). Therefore, it is clear within the overlapping portions, Esaki teaches a substantially identical method of manufacturing 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).
Given that the wire of Esaki is substantially identical to the present claimed tungsten wire in structure, composition and made by a substantially identical process, it is clear that the wire of Esaki would inherently have a unit area with crystalline orientations having an orientation difference of 15 degrees or less from <101> account for an area ratio of 70% or more and 90% or less to a measurement field on an IPF map, the unit area being a 40 µm
×
40 µm area located within a range of 100 µm concentrically extending from a central axis in a cross-section along a wire radial direction, an area ratio accounted for by crystalline orientation having an orientation difference of 5 degrees or less from the <101> to the measurement field of 40% or more and 55% or less, a unit area with crystalline orientations having an orientation difference of 15 degrees or less from the <101> account for an area ratio of 50% or more and 75% or less to the measurement field on the IPF map, the unit area being a 40 µm
×
40 µm area located within a range of 50 µm extending inwardly from an outer periphery of a main body of the tungsten wire, and an area ratio accounted for by crystalline orientations having an orientation difference of 15 degrees or less from <227> to the measurement field is 10% or more and 30% or less for an outer peripheral portion of a main body of the wire.
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).
In reference to claim 12, Esaki teaches the limitations of claim 1, as discussed above. Esaki teaches drawing and working the swaged sintered body to prepare a wire member ([0045]; [0071]). While Esaki teaches the wire for wire drawing, the recitation in the claims that the wire is “for wire drawing” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given Esaki teaches a wire as presently claimed, it is clear that the wire of Esaki would be capable of performing the intended use, i.e. for wire drawing, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Aoyama et al. (WO 2022/230455) (Aoyama).
The examiner has provided a machine translation of WO 2022/230455. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claims 1-5 and 9-11, Aoyama teaches a tungsten wire comprising a tungsten wire containing rhenium ([0011]) (corresponding to a tungsten wire comprising a tungsten alloy containing rhenium). The wire is drawn to a diameter of 0.7 to 1.2 mm ([0034]) (corresponding to a diameter of 0.3 mm or more and 1.2 mm or less). The amount of Re contained in the W wire is 1 wt% or more and less than 30 wt% ([021]) (corresponding to the tungsten alloy contains rhenium in an amount of 1 wt% or more and 10 wt% or less). The W wire contains 30 wtppm or more and 90 wtppm or less of K ([0022]) (corresponding to the tungsten alloy contains potassium (K) in an amount of 30 wtppm or more and 90 wtppm 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).
Aoyama further teaches a method for producing the wire. The method includes mixing W powder and Re powder, molding and sintering the powder to produce a sintered body, a first SW processing, a rolling process, a second SW process, a recrystallization treatment, a third SW processing and a drawing process ([0023]-[0033]).
The instant application’s Specification discloses a process to produce the presently claimed tungsten wire including a powder mixing step, a molding step, a sintering step, a first swaging process (SW process), heat treatment, a rolling process, a second SW process, a recrystallization treatment, a third SW process and a drawing process ([0029]-[0038]).
Aoyama teaches each of the sintering powder particle sizes, molding and sintering temperature, first SW processing temperature and reduction rate, rolling temperature and reduction rate, second SW processing temperature and reduction rate, recrystallization temperature, third SW processing temperature and reduction rate and the drawing temperature overlap those in the steps disclosed in the instant application's Specification. Therefore, it is clear within the overlapping portions Aoyama teaches a substantially identical method of manufacturing 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).
Given that the wire of Aoyama is substantially identical to the present claimed tungsten wire in structure, composition and made by a substantially identical process, it is clear that the wire of Aoyama would inherently have a unit area with crystalline orientations having an orientation difference of 15 degrees or less from <101> account for an area ratio of 70% or more and 90% or less to a measurement field on an IPF map, the unit area being a 40 µm
×
40 µm area located within a range of 100 µm concentrically extending from a central axis in a cross-section along a wire radial direction, an area ratio accounted for by crystalline orientation having an orientation difference of 5 degrees or less from the <101> to the measurement field of 40% or more and 55% or less, a unit area with crystalline orientations having an orientation difference of 15 degrees or less from the <101> account for an area ratio of 50% or more and 75% or less to the measurement field on the IPF map, the unit area being a 40 µm
×
40 µm area located within a range of 50 µm extending inwardly from an outer periphery of a main body of the tungsten wire, and an area ratio accounted for by crystalline orientations having an orientation difference of 15 degrees or less from <227> to the measurement field is 10% or more and 30% or less for an outer peripheral portion of a main body of the wire.
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).
In reference to claims 6-8, Aoyama teaches the limitations of claim 1, as discussed above. Given that the wire of Aoyama is substantially identical to the present claimed tungsten wire in structure, composition and made by a substantially identical process, as discussed above, it is clear that the wire of Aoyama would inherently on a crystal grain map for a central portion of a main body of the tungsten wire, an average grain size of 0.5 µm or more and 2.0 µm or less and a maximum grain size of 2.0 µm or more and 9.0 µm or less and a ratio of a grain size in the central portion to a grain size in the outer peripheral portion of more than 1.0 and 1.3 or less.
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).
In reference to claim 12, Aoyama teaches the limitations of claim 1, as discussed above. Aoyama further teaches the tungsten wire for wire drawing ([0013]) (corresponding to for wire drawing).
Conclusion
The prior art made of record and not relied upon, namely Mizobe et al. (WO 2020/196192), is considered pertinent to Applicant's disclosure. However, the rejection using this reference would be cumulative to the rejection of record set forth above.
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.
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, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARY I OMORI/Primary Examiner, Art Unit 1784