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 .
Claim Rejections – 35 U.S.C. § 103
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 C.F.R. § 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.
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.
Kanazawa2 in view of Cai and Tanaka
Claims 2-3 are rejected under 35 U.S.C. § 103 as being unpatentable over US 20190232404 A1 (“Kanazawa2”) in view of CN 210256788 U (“Cai”) and US 20180215074 A1 (“Tanaka”) (citations are to the translation filed 02/19/2026).
Kanazawa2 pertains to a saw wire and its method of manufacturing (Abstr.; Figs. 1-7). Cai pertains to a wire saw and its method of manufacturing (Figs. 1-2; ¶¶ 0002-0009). Tanaka pertains to a wire saw and its method of manufacturing (Abstr.; Figs. 1-6). These references are in the same field of endeavor.
Regarding claim 2, Kanazawa2 discloses a metal wire characterized by (Figs. 1-7; ¶¶ 0042-0051, metal wire 10; Examiner interprets “characterized by” to be synonymous with “comprising”):
being for use as a core wire of an electrodeposited wire for a saw wire (¶¶ 0042-0051, 0095, metal wire 10 contains tungsten and is capable of being used as a core for an electrodeposited wire with abrasive particles for use as a saw wire, “Saw wire 2 may include metal wire 10 and a plurality of abrasive particles included in a surface of metal wire 10. In this case, a nickel plating layer for holding the abrasive particles may be provided on the surface of metal wire 10.”);
having a tensile strength of at least 4800 MPa (¶¶ 0042-0045, metal wire 10 contains tungsten and has a tensile strength of “higher than or equal to 5000 MPa”, and is capable of the claimed straightness);
and being in a wound state around a winding frame (Fig. 7(d), wire 10 is shown in a wound state around a winding frame).
Kanazawa2 does not explicitly disclose:
including a carbon coating layer on a surface of the metal wire.
However, the Kanazawa2/Cai/Tanaka combination makes obvious this claim.
Cai discloses:
a metal wire characterized by: being for use as a core wire of an electrodeposited wire for a saw wire (Figs. 1-2; ¶¶ 0011-0022, tungsten metal wire is used as a core wire for a saw wire with electroplated diamond abrasive particles);
including a carbon coating layer on a surface of the metal wire (Fig. 2; ¶¶ 0038, the tungsten wire is put into a graphite emulsion that results in a carbon coating layer on the surface of the wire; ¶¶ 0036-0041);
and being in a wound state around a winding frame (Fig. 2, the metal wire is in a wound state around various “winding frames” during manufacturing, including elements 1, 9, and 10).
Tanaka discloses:
and being in a wound state around a winding frame (Fig. 5; ¶¶ 0081-0091, prior to degreasing and cleaning in tanks 21, 23, and 27, and electroplating and adding abrasives to the wire in tank 25, the metal wire is in a wound state around a winding frame (near reference arrow F)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Cai and Tanaka with Kanazawa2 by adding a carbon coating layer to the metal wire as taught by Cai. This would have been obvious to a person of ordinary skill in the art because a carbon coating layer (e.g., via a graphite emulsion) on a tungsten wire serves as a lubricant for the wire to reduce friction as it goes through the manufacturing process, including the drawing and storing process which includes winding the wire around rollers and wheels (Cai Fig. 2; ¶¶ 0036-0041, rollers/wheels 1, 7, 9, 10; ¶ 0038 “the lubricant 6 is graphite emulsion”; see JP H11207598 A (“Tani”) ¶¶ 0001, 0013, saw wire includes a lubricant coating that includes graphite; see also US 20180361017 A1 (“Roth”) ¶¶ 0003-0005, 0016, 0056, disclosing a tungsten alloy that can be used to make a metal wire, where “a lubricant has been used on the blank, rod, tube, etc. during a drawing process. Lubricants commonly include carbon compounds”). To the extent elements 1, 9, and 10 of Cai are not considered “winding frames”, Tanaka teaches that it is known to wind the metal wire on a spool for use in the next processing step of degreasing, cleaning, plating, and adding abrasive grains to the metal wire (Tanaka Fig. 5; ¶¶ 0081-0091) (see also US 20190091782 A1 (“Brosnan”) Figs. 1B-C, metal wire is wound on feed spool 110 prior to receiving abrasive particles via element 115). The storage (even if temporary) of metal wire wound on a spool would have been obvious because this is a recognized way of storing and transporting long strings of wire without damaging the wire. Thus, it would have been obvious to have the metal wire as recited in a wound state around a winding frame during the manufacturing process. It should be noted that the Fig. 2 of Cai does not pertain to any washing, degreasing, plating, or abrasive adding step, which are steps after those shown in Fig. 2 (see Cai ¶ 0041).
Regarding claim 3, the Kanazawa2/Cai/Tanaka combination makes obvious the metal wire of claim 2 as applied above. Kanazawa2 further discloses wherein the metal wire has a diameter of at most 100 μm (¶¶ 0048-0049, “Metal wire 10 has diameter φ less than or equal to 60 μm. For example, diameter φ of metal wire 10 may be less than or equal to 40 μm, or may be less than or equal to 30 μm. Diameter φ of metal wire 10 is 20 μm, specifically. However, it may be 10 μm.”).
The obviousness rationale for claim 3 is the same as for claim 2.
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 1-6 are pending. Claims 1 and 4-6 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Claims 2-3 are rejected.
Claims – In light of Applicant’s claim amendments, the § 112(b) rejection of claims 2-3 is hereby withdrawn.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive. Applicant’s arguments regarding amended claim 2 are addressed in the new rejection above due to the amended limitations. Applicant’s argument that the references fail to show certain features of the invention relies on limitations that are not recited in the rejected claims. Applicant refers to a particular state of the metal wire that is cleaned prior to electrodepositing abrasive particles (Reply at 5-6). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); MPEP § 2145(VI). Specifically, claim 2 as written does not reference any aspect of cleaning associated with the wire; and notably, claim 2 does not recite the presence of electroplating or abrasive particles (claim 2 pertains only to a metal wire as recited). Thus, the proposed Kanazawa2/Cai/Tanaka combination renders obvious claim 2, even if the proposed combination is only a temporary product during a manufacturing process and not the final product.
Applicant’s argument for the alleged benefits and the “remarkable and unexpected technical effect” of the claimed invention is not persuasive; actual evidence of secondary considerations (e.g., commercial success, long felt need, failure of others, skepticism of others, copying) would be required for further consideration. MPEP § 2145; see MPEP §§ 716.01-06. It should be noted that attorney argument cannot take the place of actual evidence. MPEP §§ 716.01(c)(I)-(II).
Applicant’s remaining arguments are conclusory and are not persuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 C.F.R. § 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 KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
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