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 .
DETAILED ACTION
Election/Restriction
Claims 6-8, 14, and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 28 July 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-5 and 9-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/267,556 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims teach an overlapping composition but do not include a limitation wherein a proportion of the area fulfilling one of the conditions is met. However applicant’s copending claims teach a overlapping microstructure, an overlapping composition, overlapping mechanical properties, and a processing schedule with times and temperatures that overlap the conditions in the instant claims disclosed as providing the wire rod having the claimed condition met. The claim limitations not enumerated in the copending claims would have flowed naturally from following the copending claims. Regarding the dependent claims, applicant’s copending application teaches the limitations required as well. For example instant claim 2 overlaps the range in copending claim 1, instant claim 3 overlaps copending claim 2, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-5 and 9-13 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.
The term “improved strength and fatigue limit” in claim 1 is a relative term which renders the claim indefinite. The term “improved” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
In this case there is no basis to determine what is meant by “improved strength and fatigue limit.” No values of either strength or fatigue limit are claimed, nor is there any description as to what is being improved upon. The point of infringement of claim 1 cannot be determined and the claim is indefinite. Each of claims 2-5 depends from claim 1 and is also indefinite. Claim 9 also recites ““improved strength and fatigue limit” and is indefinite for the same reasons. Each of claims 10-13 depends from claim 9 and is also indefinite.
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 1-5 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over US 20120291927 A1 (hereinafter “Hashimura”).
Regarding claim 1, Hashimura teaches a high strength steel wire for a spring (title). Hashimura teaches a steel wire rod having an overlapping composition, which has an overlapping microstructure (see EXAMPLES, [0033]-[0043] claim 1). The composition of Hashimura is compared with the claimed composition in the chart below (Values in mass percent).
Element
Claim 1
Hashimura
C
Si
Mn
Cr
P
S
Al
N
Mo
W
V
Nb
Fe/impurity
0.6-0.7
2.0-2.5
0.2-0.7
0.9-1.5
0.015 or less
0.01 or less
0.01 or less
0.01 or less
0.25 or less
0.25 or less
0.05-0.2
0.05 or less
Balance
0.67-0.9
2.0-3.5
0.5-1.2
1.3-2.5
0.025 or less
0.025 or less
0.0005-0.003
0.003-0.007
0.05-0.30
0.05-0.30
0.03-0.10
0.015 or less
Balance
The composition of the steel wire rod of Hashimura overlaps the claimed compositional ranges, establishing a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art at time of filing to have selected a composition in the range as claimed because Hashimura teaches the same utility over an overlapping range. Applicant is further directed to MPEP 2144.05.
Regarding wherein Mn+Cr ≤ 1.8 and 0.05 at% Mo+W ≤0.15 at%, Hashimura does not teach these features. However, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those of ordinary skill in the art. In re Austin, et al., 149 USPQ 685, 688.
Hashimura teaches that the steel wire prevents segregation of elements ([0134]-[0136]). Regarding wherein the wherein a proportion of the area fulfilling one of the conditions is met, Hashimura does not teach this feature. However Hashimura teaches a steel wire with overlapping composition, with overlapping microstructure, and used for springs. The features not contemplated by the prior art would have flowed naturally from following the teachings of the art.
Regarding claim 2, Hashimura teaches that the steel includes pearlite as claimed ([0140]).
Regarding claim 3, Hashimura teaches that a prior austenite grain size number is 10 or more (abstract), overlapping the claimed range.
Regarding claim 4, Hashimura teaches that a circle equivalent size of undissolved carbides is below 0.2 microns (see abstract), overlapping the claimed range.
Regarding claim 5, Hashimura does not teach a tensile strength of the wire rod prior to drawing with reduction at 35% or more, and only measures after the drawing ([0040]). However Hashimura teaches a steel wire with overlapping composition, with overlapping microstructure, and used for springs. The features not contemplated by the prior art would have flowed naturally from following the teachings of the art.
Regarding claim 9, Hashimura is applied to the claim as a stated above. Hashimura teaches a steel wire rod having overlapping composition. Hashimura teaches that the steel would have a structure of mostly tempered martensite with 15% or less of austenite in some conditions (see [0138]).
Regarding claim 10, Hashimura teaches that a prior austenite grain size number is 10 or more (abstract), overlapping the claimed range.
Regarding claim 11, Hashimura teaches that a circle equivalent size of undissolved carbides is below 0.2 microns (see abstract), overlapping the claimed range.
Regarding claim 12, The features not contemplated by the prior art would have flowed naturally from following the teachings of the art.
Regarding claim 13, Hashimura teaches that the wire has a strength of over 2100 MPa ([0040]). The reduction amount is not specified. However the reduction is considered to be a product-by-process limitation in this case. MPEP 2113. In this case Hashimura teaches an overlapping composition ,microstructure, strength, and use for the wire. The reduction, by itself, is not sufficient to patentably distinguish where the structure and composition and strength values would overlap.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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