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 .
Priority
Receipt is acknowledged of a certified copy of JP 2021-061575 filed March 31, 2021 and of JP 2021-211501 filed December 14, 2021 as required by 37 CFR 1.55. Receipt is also acknowledged of WO 2022/210126, the WIPO publication of PCT/JP 2022/013281 filed March 22, 2022.
Response to February 23, 2026 Restriction Election
Applicant's election with traverse of Group N (Group I), claims 1-3, 6, and 9-20, drawn to a steel wire, in the reply filed on February 12, 2026 is acknowledged.
The traversal is on the grounds that there is a technical relationship that involves the same special technical feature in Groups I-III and a lack of unity of invention has not been met (Restriction Election pp. 2-4).
This is not found persuasive because in the December 23, 2025 Restriction Requirement on pages 3-5 Hirai in view of Yamashita discloses a method for manufacturing that renders obvious the method of claim 4, indicating a lack of unity of invention between Groups I-III. Applicant did not argue nor present evidence regarding how Hirai in view of Yamashita does not show a lack of unity of invention. Further, as presented below, claim 1 is been rejected over Sasaki in view of Kajiyama. This supports the lack of unity of invention amongst Groups I-III.
Therefore the restriction requirement is still deemed proper and is made FINAL.
Claims 4, 5, 7, and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventive group, there being no allowable generic or linking claim.
Claim Status
This Office Action is in response to Applicant’s Restriction Election filed February 23, 2026 and Claim Amendments filed December 27, 2023.
Claims Filing Date
December 27, 2023
Amended
1
New
9-20
Pending
1-20
Withdrawn
4, 5, 7, 8
Under Examination
1-3, 6, 9-20
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.
Claims 1-3, 6, and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki (US 2018/0105894) in view of Kajiyama (JP S52-71328 machine translation).
Regarding claim 1, Sasaki discloses a steel wire for machine structural parts ([0001]-[0002]), which satisfies the claimed chemical composition ([0013]-[0014], [0034]-[0052]),
Element
Claim 1 mass%
Sasaki mass%
Sasaki Disclosure
C
0.05 to 0.60
0.3 to 0.6
[0035]-[0036]
Si
0.005 to 0.50
0.05 to 0.5
[0037]-[0038]
Mn
0.30 to 1.20
0.2 to 1.7
[0039]-[0040]
P
More than 0 to 0.050
More than 0 to 0.03
[0041]-[0042]
S
More than 0 to 0.050
0.001 to 0.05
[0043]-[0044]
Al
0.001 to 0.10
0.005 to 0.1
[0045]-[0046]
Cr
More than 0 to 1.5
More than 0 to 0.5
[0050]-[0052]
N
More than 0 to 0.02
0 to 0.015
[0047]-[0048]
Fe
balance
balance
[0013]
wherein, when a C content (% by mass) of a steel is expressed as [C], an average circular-equivalent diameter of all the cementite is (1.668 - 2.13[C]) um or more and (1.863 - 2.13[C]) um or less (for [C] of 0.3 to 0.6, the average circular-equivalent diameter of all cementite calculated is 0.39 to 1.2 um (1.668-(2.13*0.3) to 1.863-(2.13*.3)), and disclosed is 0.3 um or more) ([0030], [0035]-[0036]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Sasaki discloses C secures the strength of the steel ([0035]-[0036]) and Cr and Mn increase the strength of the final product by improving hardenability ([0039]-[0040], [0051]-[0052]).
When a total content of Cr and Mn (% by mass) in cementite in the metallurgical microstructure is expressed as {Cr + Mn}, a total content of Cr and Mn (% by mass) in steel is expressed as [Cr + Mn], and a C content (% by mass) of the steel is expressed as [C], a concentration ratio {Cr + Mn}/[Cr + Mn] being (0.5[C] + 0.040) or more has been considered and determined to recite a property of the claimed steel wire that results from applicant’s disclosed processing (applicant’s specification [0047]-[0065]).
With respect to processing, Sasaki discloses spheroidizing annealing ([0064]-[0078]).
Sasaki is silent to cooling-heating during spheroidizing annealing.
Kajiyama discloses spheroidizing heat treatment in which the A1 transformation point of steel is repeatedly heated to (A1+25°C) for 60 seconds, (A1+20°C) for 60 seconds, (A1+15°C) for 60 seconds, then (A1+10°C) for 60 seconds and cooled to (A1-60°C) after each heating step (p. 1 para. 2, p. 2, Figs. 1, 5).
It would have been obvious to one of ordinary skill in the art to perform the spheroidizing annealing of Murakami by repeatedly heating and cooling above and below the A1 transformation point to complete sufficient spheroidization in a short time, resulting in excellent ductility and good cold workability (Kajiyama pp. 1-2).
Applicant’s Citation
Applicant’s Disclosure
Sasaki Disclosure
Sasaki Citation
[0065]
Wire Drawing
Area Reduction: more than 5%
Wire Drawing
Area Reduction: 30% or less
[0064]
[0063]
Spheroidizing Annealing: 1 or more times
Spheroidizing Annealing: at least 3
[0074]
[0050]-[0051]
Heating
Rate: 30 to 100 °C/hour
Temperature: (A1+8°C) to (A1+31°C)
Hod Time: 1 to 6 hours
Heating Rate: 50 to 200 °C/hour
Temperature: 730°C
Hold Time: 1 to 3 hours at 740°C
[0066]-[0070]
[0053]-[0061]
Cooling-Heating: 2 to 6 times
Cooling Temperature: 650°C to (A1-17°C)
Cooling Hold Time: 1 hour or less
Heating Rate: 75 to 160 °C/hour
Heating Temperature: (A1+8°C) to (A1+31°C)
Heating Hold Time: 1 hour or less
-
-
[0062]
Cooling
Rate: 5 to 100 °C/hour
Cooling Rate: 20 to 100°C/h to 720°C then 8 to 12 °C/h from 720°C to 640°C
[0071]-[0072]
[0064]
Wire Drawing
Area Reduction: 15% or less
Rough Wire Drawing Area Reduction: 15%
[0078]
The prior art discloses a steel wire (Sasaki [0001]-[0002]) with a composition (Sasaki [0013]-[0014], [0034]-[0052]) and circular-equivalent diameter of all cementite (Sasaki [0030], [0035]-[0036]) that render obvious that claimed. The prior art also discloses a spheroidizing annealing process (Sasaki [0064-[0078]; Kajiyama pp. 1-2, Figs. 1, 5) that is substantially similar to that disclosed by applicant (applicant’s specification [0047]-[0065]). Therefore, the claimed properties naturally flow from the disclosure of the prior art, including when a total content of Cr and Mn (% by mass) in cementite in the metallurgical microstructure is expressed as {Cr + Mn}, a total content of Cr and Mn (% by mass) in steel is expressed as [Cr + Mn], and a C content (% by mass) of the steel is expressed as [C], a concentration ratio {Cr + Mn}/[Cr + Mn] being (0.5[C] + 0.040) or more.
Regarding claim 2, Sasaki discloses the steel wire satisfies one or more of the following (a) to (c) ([0050]-[0052]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Element
Claim 2 mass%
Sasaki mass% [0051]-[0052]
one or more of
Cu
More than 0 to 0.25
More than 0 to 0.25
Ni
More than 0 to 0.25
More than 0 to 0.25
Mo
More than 0 to 0.50
More than 0 to 0.25
B
More than 0 to 0.01
More than 0 to 0.01
one or more of
Ti
More than 0 to 0.2
-
Nb
More than 0 to 0.2
-
V
More than 0 to 0.5
-
one or more of
Mg
More than 0 to 0.02
-
Ca
More than 0 to 0.05
-
Li
More than 0 to 0.02
-
REM
More than 0 to 0.05
-
Regarding claim 3, Sasaki discloses an average ferrite (bcc-Fe crystal) grain size is 30 um or less (30 um or less) ([0032], [0056]).
Regarding claim 6, Sasaki discloses an average ferrite grain size is 30 um or less (30 um or less) ([0032], [0056]).
Regarding claim 9, Sasaki discloses a C content of 0.10% by mass to 0.55% by mass (0.3 to 0.6%) ([0035]-[0036]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 10, Sasaki discloses a C content of 0.15% by mass to 0.50% by mass (0.3 to 0.6%) ([0035]-[0036]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 11, Sasaki discloses a Si content of 0.010% by mass to 0.40% by mass (0.05 to 0.5%) ([0037]-[0038]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 12, Sasaki discloses a Si content of 0.050% by mass to 0.35% by mass (0.05 to 0.5%) ([0037]-[0038]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 13, Sasaki discloses a Mn content of 0.35% by mass to 1.10% by mass (0.2 to 1.7%) ([0039]-[0040]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 14, Sasaki discloses a Mn content of 0.40% by mass to 1.00% by mass (0.2 to 1.7%) ([0039]-[0040]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 15, Sasaki discloses an Al content 0.010% by mass to 0.08% by mass (0.005 to 0.1%) ([0045]-[0046]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 16, Sasaki discloses a Cr content of 0.01% by mass to 1.40% by mass (more than 0 to 0.5%) ([0050]-[0052]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 17, Sasaki discloses a Cr content of 0.10% by mass to 1.25% by mass (more than 0 to 0.5%) ([0050]-[0052]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 18, Sasaki discloses a Mo content of 0.05% by mass to 0.40% by mass (more than 0 to 0.25%) ([0050]-[0052]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 19, Sasaki discloses an average ferrite grain size is 25 um or less (preferably 25 um or less) ([0032]).
Regarding claim 20, Sasaki discloses an average ferrite grain size is 20 um or less (more preferably 20 um or less) ([0032]).
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, and 9-20 of U.S. Patent No. 12,595,527 (US ‘527; US App No 18/551,541).
Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘527 claims a steel wire suitable for machine structural parts (claim 1) with an overlapping composition (claims 1-19) and an overlapping circular-equivalent diameter of all the cementite (claim 1).
When a total content of Cr and Mn (% by mass) in cementite in the metallurgical microstructure is expressed as {Cr + Mn}, a total content of Cr and Mn (% by mass) in steel is expressed as [Cr + Mn], and a C content (% by mass) of the steel is expressed as [C], a concentration ratio {Cr + Mn}/[Cr + Mn] being (0.5[C] + 0.040) or more has been considered and determined to recite a property of the claimed steel wire that results from applicant’s disclosed processing ([0047]-[0065]). US ‘527 claims a substantially similar spheroidizing annealing process (claims 4, 5, 7, 8). Therefore, the claimed properties naturally flow from the claims of US ‘527, including when a total content of Cr and Mn (% by mass) in cementite in the metallurgical microstructure is expressed as {Cr + Mn}, a total content of Cr and Mn (% by mass) in steel is expressed as [Cr + Mn], and a C content (% by mass) of the steel is expressed as [C], a concentration ratio {Cr + Mn}/[Cr + Mn] being (0.5[C] + 0.040) or more.
Related Art
Sasaki ‘459 (JP 2017-048459 machine translation)
Sasaki ’459, cited by applicant, discloses steel wire for mechanical structure components ([0001]) with an overlapping composition ([0009]-[0011], [0021]-[0034]), a bcc-Fe (ferrite) grain size of 1 um to 15 um ([0017]) and a cementite equivalent circular diameter of 0.1 um or more ([0019]). Sasaki ‘459 discloses a substantially similar spheroidizing annealing process ([0035], [0044]-[0053]).
Yamashita (JP 2015-094005 machine translation)
Yamashita, cited by applicant, discloses spheroidizing alloy steel ([0001]) wire rod ([0030]) with an overlapping composition ([0007]-[0009], [0031]-[0042]) and a substantially similar spheroidizing process ([0007], [0015]-[0019]).
Kanisawa (US 2003/0015264)
Kanisawa discloses a hot rolled steel wire rod ([0002]) with an overlapping composition ([0014]-[0028], [0050]-[0006]) and a ferrite grain size number defined under JIS G 0552 of 11 or higher ([0018], Table 3) that is softened as a result of granular carbide formed by spheroidizing ([0046]). In Kanisawa the carbide has a circle-equivalent diameter of 2 um or less ([0047]).
Sumitomo (JP S55-012082 machine translation)
Sumitomo discloses cementite spheroidizing heat treatment of repeatedly heating and cooling immediately above and below the A1 transformation point of the steel to obtain a good spheroidized structure in a relatively short time (Description, Fig. 1).
Tejima (JP 2016-172888 machine translation)
Tejima discloses a medium-high carbon steel wire rod in which it is possible to omit spheroidizing annealing ([0001], [0012], [0035]-[0050]) including an overlapping composition, 1 to 15 um ferrite particle size, and 1.5 um or less spheroidized cementite particle size ([0007]-[0010]). XXX discloses a long spheroidizing annealing ensures ductility, but places a heavy burden on productivity ([0018]).
Yasumoto (JP H11-256233 machine translation)
Yasumoto discloses spheroidizing annealing steel wire rods ([0001]) with an overlapping composition ([0012], [0015]-[0020]) manufactured by heating to (Ae1+20°C) to (Ae1+180°C), holding for 10 minutes or less, cooling to Ae1 to (Ae1-100°C) and holding for 5 to 120 minutes ([0012]), which shortens spheroidizing time ([0013], [0021]-[0025]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
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, KEITH WALKER can be reached at 571-272-3458. 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, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANI HILL/Examiner, Art Unit 1735
Prosecution Insights