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 .
DETAILED ACTION
Claim 2 has been amended; Claims 1-2 remain for Examination, wherein claim 1 is an independent claim.
Information Disclosure Statement
IDS filed on 12/09/2025 has been recorded.
Previous Claim Objections/Rejections
Previous rejection of claim 2 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joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/6/2026.
Previous rejection of claims 1-2 on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-4 of copending application No. 17/754748 (US 11,952,650 B2) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/6/2026.
Previous rejection of claims 1-2 on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-2 of copending application No. 17/754566 (US 12,181,012 B2) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/6/2026.
Previous rejection of claims 1-2 on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 5-12 of copending application No. 17/904444 (US-PG-pub 2023/0085279A1) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/6/2026.
Claim Rejections - 35 USC § 103
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(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ibakaki et al (US-PG-pub 2003/0024610 A1, listed in IDS filed on 6/5/2025, thereafter PG’610) in view of Masuda et al (JP 2017179524 A1, with on-line translation, thereafter JP’524).
JP’231 in view of PG’790 is applied to the instant claims 1-3 and 9 for the same reason as stated in the previous office action dated 9/19/2025.
Regarding the amended features in claim 2, the example #A in table 1 of PG’610 including 0.23 mass% Ni, which reads on the claimed limitation as recited in the instant claim.
Notes: Oura et al (US-Pg-pub 2018/0216214 A1) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-2 have been considered but they moot in view of the new ground rejection as stated above.
The Applicant’s arguments are summarized as following:
1, the cited prior art(s) indicates different dimensions of number density of V-based precipitates compare to the claimed limitation in the instant claim 1.
2, JP’524 teaches about 300 pieces/mm3, which is 10 times below the claimed density.
3, the surface Rz is directly related to the claimed density of V-based precipitates.
In response,
Regarding the Applicant arguments 1-2, Firstly, as pointed out in the rejection for the instant claims in the previous office action dated 12/10/2025, JP’524 specify the precipitates including maximum diameter of V-based carbonitride of 20 nm or less and number density of V-based carbonitride with longer diameter of 20 nm or less of 30/μm2 or more in order to obtain outstanding fatigue-resistant properties (Abstract, claims, par.[0008], [00190]-[0027] of JP’524), which overlaps the claimed density of V-based precipitates since JP;524 indicates the precipitates is in the steel wire material and not limit only one analysis layer of the alloy (Abstract, claims, par.[0008], [00190]-[0027] of JP’524). Secondly, overlapping in density of V-based precipitates creates a prima facie case of obviousness. MPEP 2144 05 I.
Regarding the argument 3, it is noted that the argued surface Rz is not included in the instant claims and the figure on page 8/11 of the Applicant’s “Arguments/Remarks with amendment” filed on 3/6/2026 is not in the instant application. Proper “132 Declaration” with comparison data with the prior art(s) is suggested to show the criticality of the claimed density of V-based precipitates.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIE YANG/Primary Examiner, Art Unit 1734
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