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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-6) in the reply filed on 07/23/2026 is acknowledged.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/23/2026.
Status of Claims
Pending: 1-10
Withdrawn: claims 7-10
Under examination: claims 1-6
Rejected: claims 1-6
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 6 are rejected 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.
Claim 4 recites “a cross-sectional reduction rate of 20% or more”, which is indefinite because it is unclear due to the absence of any relevant product-by-process limitation. It is unclear what the basis for being 20% reduced is, in view of there being no antecedent basis for a product-by-process limitation that would result in a 20% reduction rate of a cross section.
Claim 6 recites “after the wire drawing and spheroidization heat treatment”. There is insufficient antecedent basis for these limitations in the claim.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US 20160333438 A1).
Regarding claim 1, with regard to the claimed “A wire rod having excellent drawability including by weight %:
C: 0.8 to 1.2%, Si: 0.01 to 0.6%, Mn: 0.1 to 0.6%, Cr: 0.8 to 2.0%, Al: 0.01 to 0.06%, N: 0.02% or less (excluding 0), with a balance of Fe and inevitable impurities,”
Sakamoto teaches a wire rod (Abstract, [0073]) having the following composition which overlaps with the claimed ranges:
Element
Instant claim 1(wt. %)
Sakamoto composition(wt. %)
Location in reference
Fe
Balance
Balance
Abstract
C
0.8-1.2
0.95-1.1
Abstract
Si
0.01-0.6
0.10-0.70
Abstract
Mn
0.1-0.6
0.2-1.20
Abstract
Cr
0.8-2.0
0.90-1.60
Abstract
Al
0.01-0.06
0.010-0.100
Abstract
N
>0 to 0.02
0.003-0.030
Abstract
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.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
With regard to the claimed “wherein a microstructure includes a pearlite main structure and proeutectoid cementite,” Sakamoto teaches that the hot rolled wire rod has preferably 90% or more of pearlite, and 5% or less of proeutectoid cementite [0073].
With regard to the claimed “and includes at least 20 AlN particles with an average particle diameter of 30 nm or less per unit area (μm2), and
the following Relational Expression 1 is satisfied,
[Relational Expression 1]
(Average block grain size (μm))2/Proeutectite cementite length (μm/1200μm2)) ≤ 0.5”, although Sakamoto does not explicitly teach these limitations, Sakamoto teaches a substantially similar process of making to that of the instant invention (see paragraphs [0021]-[0026] of the instant spec).
Sakamoto teaches a manufacturing method for the wire rod for a bearing component, comprising the steps of:
performing a soaking treatment by heating a steel slab to preferably 1100°C to 1200°C for preferably 10 hours to 20 hours [0085],
heating the billet prior to hot rolling, to a temperature of 900-1300°C [0086];
hot rolling the heated billet to a prepare a wire rod to a temperature of 850°C [0087]-[0088]; and
winding the wire rod at a temperature of 800°C or less [0090],
cooling the wire rod at an average cooling rate of 0.5°C/s to 3.0°C/s to 600°C [0094],
wherein the wire rolling is performed so that an prior austenite grain size (AGS) is 8.0 µm or less (Abstract)
and the finish rolling is performed at a temperature range of 850°C or less [0088].
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01 I.). 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 (MPEP 2112.01 I.).
Regarding claims 2-6, as discussed in the rejection of claim 1 above, Sakamoto teaches a substantially similar (overlapping) composition, and a substantially similar process of making. 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.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01 I.). 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 (MPEP 2112.01 I.).
Therefore, the limitations in claims 2-6 are taught as discussed in the rejection of claim 1 above, and/or are otherwise prima facie expected to be present, absent evidence and/or technical reasoning to demonstrate otherwise.
Citation of Pertinent Prior Art
Kim et al. (CN108220773A; Espacenet English machine translation cited and attached). teaches The invention relates to a high-strength wire having excellent drawability, a thermal-treated wire, and a manufacturing method for same. The wire contains, by weight, 0.9-1.2% of carbon, 0.8-1.4% of silicon, 0.2-0.6% of manganese, 0.3-0.7% of chromium, 0.05-0.1% of vanadium, 0.02-0.05% of soluble aluminum, not more than 0.015% of phosphorus, not more than 0.015% of sulfur, 0.002-0.01% of nitrogen, not more than 0.01% of oxygen, and iron as residual component and unavoidable impurities, wherein in the 1/4 r zone in the direction from the center to the surface of the wire, the length of proeutectoid cementite having maximum length is less than or equal to 10% of grain boundary length of austenite grains which are separated out from the proeutectoid cementite having the maximum length, wherein the r is the radius of the wire.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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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.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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