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 .
Request for Continued Examination
A request for continued examination under 37 C.F.R. § 1.114, including the fee set forth in 37 C.F.R. § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 C.F.R. § 1.114, and the fee set forth in 37 C.F.R. § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 C.F.R. § 1.114. Applicant’s submission filed on 07/31/2026 has been entered.
Information Disclosure Statement
The information disclosure statement filed on 09/01/2026 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. Specifically, the English-language publication indicated for the submitted foreign patent document does 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 publication is actually a translation of the listed foreign patent reference. 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. It has been placed in the application file, but the information referred to therein has not been considered.
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 2 recites the limitations “being in a wound state around a winding frame” and “having a straightness, expressed as a natural hanging length per 500 mm in length of the metal wire, of at least 400 mm.” (lines 5-7). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, it is unclear whether the “straightness” limitation of the wire is to be determined when the wire is in the recited “wound state around a winding frame” or at another time (e.g., before the wire is put into a “wound state”). Further, it is unclear how a straightness assessment (to meet the “straightness” limitation as recited) could be done if and when the wire is in a wound state as recited (see Spec. ¶ 0027 (referring to JIS H4460, which specifies a naturally hanging or drooping test method for determining straightness)). For examination purposes, this limitation is interpreted as best understood. 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, Tanaka, and Hayashi
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 02/19/2026), US 20180215074 A1 (“Tanaka”), and JP H06238522 A (“Hayashi”) (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). Tanaka pertains to a wire saw and its method of manufacturing (Abstr.; Figs. 1-6). Hayashi pertains to a tungsten wire and its method of manufacturing (Abstr.; ¶¶ 0008-0021). 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.”; Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II));
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;
and having a straightness, expressed as a natural hanging length per 500 mm in length of the metal wire, of at least 400 mm.
However, the Kanazawa2/Cai/Tanaka/Hayashi 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)).
Hayashi discloses:
having a straightness, expressed as a natural hanging length per 500 mm in length of the metal wire, of at least 400 mm (Table 1; ¶¶ 0019-0020, 0026-0028; wire containing tungsten with a straightness of “990mm or more” per 1000mm length, which is straighter than the 400mm per 500mm length as recited; Examiner notes that this “straightness” measurement is based on the length of a wire when hung naturally and expressed in the length it hangs relative to its actual length (e.g., if a metal wire of 1000 mm is not perfectly straight, it would curl upon itself and not be able to hang in free space to a full length of 1000 mm) (see Spec. ¶ 0027 (referring to JIS H4460, which specifies the test method for determining straightness)); see JP 2005015936 A (“Kogame”) (citations are to the translation filed herewith) ¶¶ 0008, 0012, describing a tungsten wire with a straightness of 850mm/1000mm per JIS H4460; see § 112(b) rejection above).
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, Tanaka, and Hayashi 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).
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to modify the wire of the Kanazawa2/Cai/Tanaka combination to make it as straight as possible, such as straighter than 400mm/500mm, as taught by Hayashi. This would have been obvious to a person of ordinary skill in the art because “if the straightness is too poor, problems such as twisting of the wire occur, and problems such as breaking of the wire…occur” (Hayashi ¶ 0019). Examiner notes that claim 2 as recited does not specify when the “straightness” limitation is to be determined, such as when the wire is in a wound state or in an unwound state (see § 112(b) rejection above).
Regarding claim 3, the Kanazawa2/Cai/Tanaka/Hayashi 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.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive. Applicant’s arguments with respect to claim 2 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the arguments. Applicant’s arguments pertaining to the “technical difficulty” of the claimed invention (Reply at 6-7) are not persuasive. Even assuming Applicant’s “technical difficulty” assertion is accurate, the question is not whether an invention was difficult for the Inventors, but whether the invention was obvious to a person of ordinary skill in the art before the effective filing date of the application. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, even if the claimed wire combination is technically difficult in the eyes of the Applicant or Inventors, this fact alone does not necessarily mean that the combination is not obvious if a person of ordinary skill could ascertain how the result could be accomplished based on the prior art in combination with the person’s logic, judgment, and common sense. Id. at 418 (“the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“an analysis of obviousness...also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”).
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.
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/KENT N SHUM/ Date: September 5, 2026Examiner, Art Unit 3723
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