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/Restriction
Applicant’s election of Invention II is acknowledged. Election was made without traverse in the reply filed on 02/04/2026. Claims 1-6 are pending. Claims 1 and 4-6 are withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention.
Information Disclosure Statement
The information disclosure statement filed on 09/08/2025 (and the corrected version filed on 09/24/2025) fails to comply with 37 C.F.R. § 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 C.F.R. § 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. Regarding the Korean Office Action, the only thing submitted is the original Korean Office Action in the Korean language. Regarding the Korean patent document, the English-language publication indicated for the submitted foreign patent documents do not fulfill the concise-explanation requirement. MPEP § 609.04(a)(III) states, “An English-language equivalent application may be submitted to fulfill this requirement if it is, in fact, a translation of a foreign language application being listed” (emphasis added). Applicant makes no statement that the English-language publications are actually translations of the listed foreign patent references. Patent application publications may differ from their so-called foreign counterpart applications because subject matter is commonly added, modified, or deleted, including entirely different abstracts and claims, and therefore, are not necessarily translations of the foreign counterpart applications. Further, if the submitted English-language publications are actually translations of the listed foreign patent references, then there should not be any need to submit the foreign patent references. 37 C.F.R. § 1.56(b) (“Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application”). It has been placed in the application file, but the information referred to therein has not been considered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 C.F.R. § 1.55.
Claim Rejections – 35 U.S.C. § 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 2-3 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 19 recites the limitation “being wound around a winding frame.” This claim is indefinite because it is a single claim that claims both an apparatus and method steps of using the apparatus. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (“it is unclear whether infringement...occurs when one creates a system that allows the user to change the predicted transaction information...or...when the user actually uses the input means to change transaction information”); MPEP § 2173.05(p). As written, this limitation requires the metal wire to be wound around a winding frame (a method step). Claim 3 is rejected on the basis it incorporates this limitation of claim 2.
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
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”) (citations are to the translation filed herewith).
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). 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 wound around a winding frame (Fig. 7(d), wire 10 is wound 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 combination makes obvious this claim.
Cai discloses:
a metal wire...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).
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 with Kanazawa2 by including a carbon coating layer 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”).
Regarding claim 3, the Kanazawa2/Cai 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.
Status of Claims
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.
Conclusion
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.
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, 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.
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.
/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723