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
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/04/2026 has been entered.
Status of claims
Claim 3 is added as new claim, claims 1-3 remain for examination, wherein claim 1 is an independent claim. It is acknowledged of the receipt of the Applicant’s “132 Declaration” filed on 9/4/2026.
Allowance Subject matter
Claim 3 includes allowable subject matter.
Claim 3 is still objected to as depending from rejected independent claim(s) but would be allowed if rewritten in independent form including all of the limitations of the base claim and any intervening claims since the cited prior art(s) does not specify the claimed “average roughness Rz of a surface of the steel material after a shaving treatment is 5.0 µm or less” as recited in the instant claim. (Refer to the Applicant’s “132 Declaration” filed on 9/4/2026).
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).
PG’610 in view of JP’524 is applied to the instant claims 1-2 for the same reason as stated in the previous office action dated 4/7/2026 and 12/10/2025. The rejection is listed as following:
Regarding claims 1-2, PG’610 teaches a steel wire rod for hard-drawn springs capable of exhibiting fatigue strength and sag resistance equivalent to or higher than springs made of an oil-tempered wire (Abstract of PG’610), which reads on the claimed steel material as claimed in the instant claims. The comparison between the claimed alloy composition ranges and microstructure with the example #A in table 1 of PG’610 has been listed in following table. All of the essential alloy composition ranges and microstructures in example #A in table 1 of PG’610 are within the claimed ranges as recited in the instant claims. Since example #A in table 1 of PG’610 teaches all of the essential alloy composition as claimed in the instant claims, which reads on the “consisting of” language as claimed in the instant claims. PG’610 teaches including each precipitant has a diameter of 50 nm or less in terms of a hypothetical circle, is ten/mm2 or more (par.[0041]-[0042] of PG’610), which overlap the claimed precipitates range as claimed in the instant claim 1. Overlapping in range of precipitates creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the precipitates range from the disclosing of PG’610 since PG’610 teaches the same steel material as claimed throughout whole disclosing range. PG’610 does not teach the precipitates are V-based precipitates as claimed in the instant claim 1. JP’524 teaches a steel wire material which becomes a raw material of a steel wire having excellent fatigue resistance and excellent toughness and a manufacturing method. (Abstract of JP’524). All of the alloy composition ranges disclosed by JP’524 (Claims, par.[0028]-[0044], and examples of JP’524) overlap the claimed alloy composition ranges. MPEP 2144 05 I. 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). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to obtain the precipitates with V-based precipitates from the disclosing of JP’524 for the alloy of PG’610 since both PG’610 and JP’524 teach the same steel material as claimed throughout whole disclosing range and JP’524 in order to obtain outstanding fatigue-resistant properties (Abstract, claims, par.[0008], [00190]-[0027] of JP’524).
Element
From instant Claim 1 (mass%)
Example #A in table 1 of PG’610 (mass %)
within range
(mass %)
C
0.50-0.80
0.59
0.59
Si
1.20-2.90
1.95
1.95
Mn
0.25-1.00
0.88
0.88
Cr
0.40-1.90
0.90
0.90
V
0.05-0.60
0.11
0.11
P
0.02 or less
Not intended included
0-impurity level
S
0.02 or less
Not intended included
0-impurity level
N
0.00100 or less
Not intended included
0-impurity level
Mo
0-0.50
Not intended included
0-impurity level
Nb
0-0.05
Not intended included
0-impurity level
W
0-0.60
Not intended included
0-impurity level
Ni
0-0.50
0.23
0-impurity level
Co
0-0.30
Not intended included
0-impurity level
B
0-0.0050
Not intended included
0-impurity level
Cu
0-0.050
Not intended included
0-impurity level
Al
0-0.0050
Not intended included
0.021
Ti
0-0.050
Not intended included
0-impurity level
Fe
Balance + impurities
Balance + impurities
Balance + impurities
Microstructure
Area%
Pearlite: 90% or more
Pearlite: More than 90% (Fig.1)
Pearlite: 90% or more
V-based precipitates
2-20 nm
3000-80000 pieces/mm3
Precipitates: 50 nm or less 10 pieces/mm2 or more
Overlapping
From claim 2
Example #A in table 1 of PG’610 (mass %)
One or more from group consisting of
Mo: 0.01-0.50;
Nb: 0.001-0.050;
W: 0.01-0.60;
Ni: 0.01-0.50;
Co: 0.01-0.30;
B: 0.0001-0.005
Ni: 0.23
Ni: 0.23
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-2 have been considered but they are not persuasive. Regarding the Applicant’s “132 Declaration” filed on 9/4/2026, since the Applicant ahs provides evidence to show the criticality of claimed surface Rz in the instant claim 3 related to the V-based precipitates, therefore claim 3 includes allowable subject matter. It is noted that Claims 1-2 do not include property of surface Rz. Therefore the Applicant’s “132 Declaration” filed on 9/4/2026 is insufficient overcome to the rejection of claim 1-2 since claims 1-2 include claim limitations of a steel material composition and microstructure (having no property limitations).
The Applicant’s arguments are summarized as following:
Regarding the rejection of claims 1-2 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), (similar arguments as previous arguments dated 7/6/2026)
1. The number density described in JP'524 is an areal density expressed in pieces/µm² (a two-dimensional quantity), whereas the number density of Claim 1 is a volumetric number density expressed in pieces/µm³ (a three- dimensional quantity); the two cannot be directly compared.
2. The Office argued that the JP'524 precipitates "exist in the steel wire material and are not limited to a single analysis layer," and on that basis concluded that they overlap the V-based precipitate density range of Claim 1. That explanation is an insufficient basis for converting an areal density into a volumetric density and finding overlap with the claimed range.
3. Even if, arguendo, the "30 pieces/µm² or more" of JP'524 were converted to a volumetric density on the basis of some assumed observation thickness, and that converted value were treated as an open-ended range that could encompass the "3000 pieces/µm³ or more" of Claim 1, JP'524 provides no teaching of the technical significance of selecting the lower limit of 3000 pieces/µm³ recited in Claim 1.
4. JP'524 regulates V-based carbonitride in order to obtain excellent fatigue resistance and does not suggest the suppression of surface roughening after a shaving treatment, which is the problem addressed by the present Application.
5. Based on Table 2 of the present Specification, in Test Nos. 1-15, in which the volumetric number density of V-based precipitates is 3000 pieces/µm³ or more, the post-shaving surface roughness Rz is 5.0 µm or less and the surface- deterioration-suppression evaluation is favorable; whereas in Test Nos. 16-27, in which the density is less than 3000 pieces/µm³, Rz exceeds 5.0 µm and the evaluation is unfavorable.
6. Therefore, based on Table 2, the lower limit of 3000 pieces/µm³ is not a mere routine optimization but a numerical value having critical significance with respect to the effect of suppressing surface roughening after a shaving treatment.
7. The figure attached to the response to the previous Office Action merely visualized the data of Table 2 of the present Specification in an easily understandable form and did not add any new experimental data.
In response, (refer to the response in office action dated 7/22/2026).
Regarding the Applicant arguments 1-3, the Examiner disagree with the Applicant's argument since It would have been obvious to one of ordinary skill in the art at the time the invention was made to analysis 3-dimensional precipitated particles density from the 2-dimensional picture analysis. Furthermore, as pointed out in the rejection for the instant claims in the previous office actions dated 12/10/2025 and 4/7/2026, 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). Overlapping in density of V-based precipitates creates a prima facie case of obviousness. MPEP 2144 05 I.
Regarding the argument 4-7, it is noted that the argued fatigue property, and surface Rz are not included in the instant claims. It is noted that claims 1-2 include claim limitations of a steel material composition and microstructure without property limitations.
Regarding the arguments related to the Applicant’s “132 Declaration” filed on 9/4/2026, the response can refer to the discussion for the response of the Applicant’s “132 Declaration” above.
Conclusion
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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