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 .
Response to Arguments
Applicant's arguments filed 5/18/2026 have been fully considered but they are not persuasive.
Applicant argues that Tang fails to disclose or teach claim 1 because “there is no evidence that the properties disclosed in Tang necessarily or inherently result in the claimed fatigue test performance, nor has the Office Action established that such performance would be achieved by Tang’s wire” (page 3-4, Arguments). Applicant argues that “Tang provides no basis for concluding that the wire would withstand at least 20,000 cycles in the claimed fatigue test”, and “fatigue performance under the claimed high-stress cyclic conditions is not a predictable result of the tensile strength or other properties disclosed in Tang”.
Applicant also compares the piano wire and the tungsten or tungsten alloy wires according to the instant invention (page 4, Arguments). Examiner respectfully points out that the composition of the piano wire of the specification differs from a tungsten or tungsten alloy wire, and that Examiner did not rely upon a piano wire as prior art. Examiner also notes that even a piano wire provided in Applicant’s Table 1 Specification was able to withstand 21,746 cycles.
Examiner’s prima facia case for obviousness is not solely limited to tensile strength properties, but a culmination of the overlapping physical properties shared between the prior art and the instant specification’s disclosure of the wire physical properties. The wherein clause of claim 1 reciting, “wherein when a fatigue test is conducted on the metal wire at a maximum stress of 4400 MPa in accordance with Japanese Industrial Standard (JIS) C6821, a total number of cycles required to break the metal wire is at least 20,000 cycles” limits the claim to the extent of what the metal wire comprising tungsten or tungsten alloy is capable of. Given that the claimed invention is directed towards an apparatus/product, i.e. a metal wire, and the claim limits the structure based on capability, Examiner reflected upon the specification in order to determine the structure of the wire required to fulfill the recited capabilities. For example, not all metal wires comprising a tungsten or tungsten alloy are subjected to testing, but a tungsten or tungsten alloy wire that has the same parameters as the instant invention would be capable of passing the same test. Below is a table comparing the tungsten or tungsten alloy wire as disclosed by the specification and the wire of Tang. Examiner notes that these features were pointed out in the previous office action’s Claim Interpretation section.
Instant Application Wire
(Relying on Specification)
Wire of Tang
Tungsten or tungsten alloy material:
[0015]: tungsten or tungsten alloy, comprising at least 90-99.99 wt% tungsten content
[0016]: rhenium is at most 10 wt %, at least 1 wt %, at least 3 wt %, or at least 5 wt %
[0018]: other contemplated metals for the alloy include osmium, ruthenium, or iridium
[0120]: The content of tungsten may also be greater than 95 wt%, and 95-99.5 wt%
[0061]: content of tungsten may be 97.0-99.9 wt%, and the content of the rate earth oxide is 0.1-3.0 wt%
At least [0010], [0064], [0112], [0328] disclose rhenium within the range disclosed by the instant specification
Shape and diameter:
[0019]: substantially constant diameter, circular cross-sectional shape, and diameter is 10-100 μm.
[0052] discloses a diameter of approximately 37 μm
[0021]: diameter is at least 5 μm
[0049]: wire diameter uniformity
[0045]: the diameter is less than or equal to 40 μm with a tensile strength greater than 4,800 MPa
[0046]: wire diameter is equal to or less than 25 μm, with a tensile strength greater than 5,000 MPA
Tensile Strength:
[0022]: tensile strength of at least 4800 MPa (4.8 GPa). Can be measured using JIS H 4460 8 but disclosing the tensile strength ‘may’ be measured by JISH 44608 leaves the tensile strength determination method open (and not critical)
0045]: the diameter is less than or equal to 40 μm with a tensile strength greater than 4,800 MPa
[0046]: wire diameter is equal to or less than 25 μm, with a tensile strength greater than 5,000 MPA
Abrasive Particles:
[0025]: abrasive electrodeposited or plated, can be particles of diamond or CBN
[0369]: electroplating of abrasive particles comprising diamonds on the alloy wire rod
Porosity:
[0066]: 0.25% or less
[0063]: Calculated by observing a cross-sectional image of the metal wire produced by using a scanning electron microscope (SEM)
*see also below regarding potassium content, which effects porosity*
See combination statement as applied below to claim 3, i.e. the variables which affect the porosity of the wire.
[0347], [0349] disclose measuring the properties by employing an electron microscope
Manufacturing Considerations:
[0069-0070]:
A mixture of tungsten powder and metal powder (for example, rhenium powder) is mixed in a predetermined proportion
Swaging processing is performed, i.e. the tungsten ingot is press-forged from its periphery and extended. Instead of swaging, the tungsten may be subjected to rolling processing by repeatedly applying the swaging processing.
Annealing is performed intermediately.
[0072]: Wire drawing at a temperature at, for example, 1000 ° C
[0073]: Electrolytic polishing is performed after drawing
[0101]: Metal wire may be doped with a minute amount of potassium (at most 0.01 wt%), and similar effects can be obtained with other substances such as cerium or lanthanum
[0019-0022], [0087]: alloy powder and powder mixing
[0087-0092]: powder preparation and mixing, sintering and cogging at temperatures greater than 1000° C, rolling by the multi-roll mill and multi-pass rotary forging, then drawing processing
[0093]: alloy wire rods can be subjected to annealing within 1000 ° C
[0144]: obtaining a tungsten powder doped with a lanthanum salt
[0117]: cerium oxide at a low wt%
[0094], [0159]: wire rods after drawing can be subjected to electrolytic polishing
[0152]: powder mixing machine
[0336]: the tungsten wires are subjected to annealing treatment
[0113]: content of potassium is less than 80 ppm, wherein [0064] discloses that rhenium is an alternative to potassium
Regarding Applicant’s arguments directed towards the rejection of claim 3, i.e. the porosity of the wire, Examiner has not found persuasive. The composition of the wire, in addition to manufacturing processes, are factors which determine the porosity of the tungsten or tungsten alloy wire. These were considerations made by Tang, as explained below. For the above stated reasons, Examiner has not Applicant’s arguments persuasive, and this action is made final herein.
Claim Interpretation
Claim 1 recites, inter alia, a metal wire comprising tungsten or a tungsten alloy, combined with testing parameters which are correlated with physical properties, i.e. the capabilities of the wire to withstand the recited fatigue stress. Given that the statutory category of the claimed invention is an apparatus (i.e. a metal wire), Examiner has carefully reviewed the specification in order to determine what physical characteristics a tungsten or tungsten alloy wire has in order to meet the claimed invention. In essence, while a prior art may not explicitly state the fatigue test results in accordance with Japanese Industrial Standard (JIS) C6821, a prior art wire having the same characteristics as those described within the specification would read onto the claimed invention under broadest reasonable interpretation, and in light of the specification. Examiner referenced the following paragraphs for clarification: [0015-0022], [0025], [0026], [0052], [0066], [0101]. Examiner has provided the prior art rejections below in light of these considerations. Please also refer to the table provided in the response to Arguments section above regarding the properties disclosed by the prior art and the properties disclosed by the instant Specification.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang (US 20230374634).
Regarding claim 1, Tang (US 20230374634) teaches of a metal wire comprising:
tungsten or a tungsten alloy (see Abstract, as well as [0057], [0061-0062], wherein tungsten may be present in the content of 95-99.9 wt %; wherein [0064] discloses an alloy which may include rhenium), wherein when a fatigue test is conducted on the metal wire at a maximum stress of 4400 MPa in accordance with Japanese Industrial Standard (JIS) C6821, a total number of cycles required to break the metal wire is at least 20,000 cycles (wherein [0045] teaches the diameter is less than or equal to 40 μm, tensile strength is greater than 4800 Mpa; wherein [0046] also teaches wire diameter is equal to or less than 25 μm, with a tensile strength greater than 5,000 MPA; [0049]: wire diameter may be uniform; [0061-0064]: content of potassium is less than 80 parts per million, content of tungsten is 97.0-99.5 wt %, allow may be rhenium; [0094]: the wire rods after drawing can be subjected to electrolytic polishing and cleaning, so as to make the surface of the wire rods smooth; [0087-0094] discloses the manufacturing steps; wherein Tang discloses that sintering is preferably conducted at a temperature of 1,800-2,400° C in [0089], in addition to electrolytic polishing and cleaning so as to smooth the surface of the rods; Examiner also notes herein that a push-pull toughness testing device is shown in Figure 1).
Examiner notes herein that this rejection is made under 35 U.S.C. 103 due to the explanation provided in the Claim Interpretation section above, as the structure of the metal wire as taught by Tang reads onto the structure of the metal wire which enables a metal wire to behave as recited. Please see the table comparison replicated below for clarification purposes.
Instant Application Wire
(Relying on Specification)
Wire of Tang
Tungsten or tungsten alloy material:
[0015]: tungsten or tungsten alloy, comprising at least 90-99.99 wt% tungsten content
[0016]: rhenium is at most 10 wt %, at least 1 wt %, at least 3 wt %, or at least 5 wt %
[0018]: other contemplated metals for the alloy include osmium, ruthenium, or iridium
[0120]: The content of tungsten may also be greater than 95 wt%, and 95-99.5 wt%
[0061]: content of tungsten may be 97.0-99.9 wt%, and the content of the rate earth oxide is 0.1-3.0 wt%
At least [0010], [0064], [0112], [0328] disclose rhenium within the range disclosed by the instant specification
Shape and diameter:
[0019]: substantially constant diameter, circular cross-sectional shape, and diameter is 10-100 μm.
[0052] discloses a diameter of approximately 37 μm
[0021]: diameter is at least 5 μm
[0049]: wire diameter uniformity
[0045]: the diameter is less than or equal to 40 μm with a tensile strength greater than 4,800 MPa
[0046]: wire diameter is equal to or less than 25 μm, with a tensile strength greater than 5,000 MPA
Tensile Strength:
[0022]: tensile strength of at least 4800 MPa (4.8 GPa). Can be measured using JIS H 4460 8 but disclosing the tensile strength ‘may’ be measured by JISH 44608 leaves the tensile strength determination method open (and not critical)
0045]: the diameter is less than or equal to 40 μm with a tensile strength greater than 4,800 MPa
[0046]: wire diameter is equal to or less than 25 μm, with a tensile strength greater than 5,000 MPA
Abrasive Particles:
[0025]: abrasive electrodeposited or plated, can be particles of diamond or CBN
[0369]: electroplating of abrasive particles comprising diamonds on the alloy wire rod
Porosity:
[0066]: 0.25% or less
[0063]: Calculated by observing a cross-sectional image of the metal wire produced by using a scanning electron microscope (SEM)
*see also below regarding potassium content, which effects porosity*
See combination statement as applied below to claim 3, i.e. the variables which affect the porosity of the wire.
[0347], [0349] disclose measuring the properties by employing an electron microscope
Manufacturing Considerations:
[0069-0070]:
A mixture of tungsten powder and metal powder (for example, rhenium powder) is mixed in a predetermined proportion
Swaging processing is performed, i.e. the tungsten ingot is press-forged from its periphery and extended. Instead of swaging, the tungsten may be subjected to rolling processing by repeatedly applying the swaging processing.
Annealing is performed intermediately.
[0072]: Wire drawing at a temperature at, for example, 1000 ° C
[0073]: Electrolytic polishing is performed after drawing
[0101]: Metal wire may be doped with a minute amount of potassium (at most 0.01 wt%), and similar effects can be obtained with other substances such as cerium or lanthanum
[0019-0022], [0087]: alloy powder and powder mixing
[0087-0092]: powder preparation and mixing, sintering and cogging at temperatures greater than 1000° C, rolling by the multi-roll mill and multi-pass rotary forging, then drawing processing
[0093]: alloy wire rods can be subjected to annealing within 1000 ° C
[0144]: obtaining a tungsten powder doped with a lanthanum salt
[0117]: cerium oxide at a low wt%
[0094], [0159]: wire rods after drawing can be subjected to electrolytic polishing
[0152]: powder mixing machine
[0336]: the tungsten wires are subjected to annealing treatment
[0113]: content of potassium is less than 80 ppm, wherein [0064] discloses that rhenium is an alternative to potassium
Regarding claim 2, Tang teaches the claimed invention as applied above, wherein Tang further teaches wherein when the fatigue test is conducted on the metal wire at a maximum stress of 4400 MPa in accordance with Japanese Industrial Standard (JIS) C6821, a total number of cycles required to break the metal wire is at least 60,000 cycles (please refer to the rejection of claim 1 as provided above, as well as the claim interpretation section; see also [0045], [0049], [0061-0064], [0087-0094] of Tang).
Regarding claim 3, Tang teaches the claimed invention as applied above. However, Tang does not explicitly teach a specific porosity for the tungsten, i.e. wherein a porosity that is a percentage of voices included in the metal wire is at most 0.25%.
However, Tang does describe distributing metal material at grain boundaries of the tungsten matrix phase (see [0056], [0164]). Furthermore, Tang also describes temperature at which processes take place, including sintering at a temperature of 1,800-2,400° C ([0154-0155]), i.e. temperatures at which tungsten recrystallization takes place, and also describes additional processes which serve to smooth the surfaces of wire rods ([0094]). The temperatures at which operations take place, combined with the consideration of how the material matrixes are formed, directly affects the porosity of the device, and thus porosity is recognized as a result effective variable. The porosity also alters the behavior of the wire rod, wherein the ultimate goal of Tang is to achieve a wire rod having an improved strength and toughness ([0164]). Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the wire rod of Tang to have a porosity within the claimed range, as it involves adjusting preexisting parameters which are already adjusted and contemplated by Tang. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Tang to have a porosity as claimed, as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 4, Tang teaches the claimed invention as applied above, wherein Tang further teaches wherein the metal wire has a tensile strength of at least 4.8 Gpa (see at least [0045-0046] disclosing a tensile strength of at least 4800 MPa, or 5000 MPa).
Regarding claim 5, Tang teaches the claimed invention as applied above, wherein Tang further teaches a saw wire comprising: the metal wire according to claim 1 (please refer to the rejection as applied to claim 1 above); and
abrasive particles electrodeposited on a surface of the metal wire ([00369]: wherein electroplated diamond particles can be provided on the alloy wire rod for cutting materials).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAKENA S MARKMAN whose telephone number is (469)295-9162. The examiner can normally be reached Monday-Thursday 8:00 am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
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