DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16th, 2013 is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Sheet
The information disclosure statements (IDS’s) submitted on 01/09/2024, 06/17/2024, and 11/28/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Claim Objections
Claims 1 and 4 are objected to because of the following informalities:
Regarding claim 1, the claim recites “wherein a chemical component of the solid wire consists of…” However, the phrase “a chemical component” typically refers to a single constituent element (like Carbon or Manganese), and not an alloy matrix. The applicant likely intents to claim “wherein the chemical composition of the solid wire consists of…” for improved clarity.
Regarding claim 4, the claim recites “wherein a content of the Ti is Ti…” which is redundant. The applicant likely intended to claim “wherein the Ti content is…”
Appropriate correction is required.
Claim Rejections – 35 USC §112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1-5 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the claim relies on a specific parameter: an fcc fraction of 70% or more. The specification at ¶ [0041] defines how to calculate this by measuring the bcc fraction using a highly specific, trademarked device (“FERITSCOPE (registered trademark) FNP30 (manufactured by FISCHER INSTRUMENTS K.K.)”) and a specific proprietary probe (“FGAB 1.3-Fe”). If a person of ordinary skill in the art cannot accurately determine the fcc fraction to determine infringement without relying on this specific, proprietary third-party “black box” device – which could change in calibration over time or become unavailable – the specification fails to support the full scope of the invention. Therefore, it is deemed that claim 1 lacks proper written description.
Regarding claims 2-5, these claims are also rejected under 35 USC 112(a) due to their dependence upon rejected claim 1.
Claim Rejections – 35 USC §112(b)
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.
Claims 1-5 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, the claim recites “a chemical component… consists of” followed by a list of elements ending in “balance: Fe and impurities” with respect to the “total mass of the solid wire” which creates a contradiction. It is unclear if the claim is directed to a wire where only one physical part (e.g., a sheath or a core) has this composition, or if the entire wire consists of this composition. The transition phrase “consists of” is closed, but applying it to “a chemical component” rather than the wire itself blurs the boundary of the claim.
Further regarding claim 1, the limitation “a fraction of fcc as determined by a magnetic induction method is 70% or more” renders the claim indefinite. The claim recites a generic “magnetic induction method” without specifying the calibration, the specific standard applied, or the equipment type. If different magnetic induction methods (or different calibrations) yield different fcc fraction results, the scope of the claim cannot be reliably ascertained by a person having ordinary skill in the art.
Regarding claims 2-5, these claims are also rejected under 35 USC 112(b) due to their dependence upon rejected claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Okabe (WO 2022130759) teaches a submerged arc welding wire that is suitable as a welding material, including the composition as claimed in claim 1. However, Okabe does not specifically teach a fraction of fcc as determined by a magnetic induction method is 70% or more.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB A SMITH whose telephone number is (571) 272-3974 and email address is Jacob.Smith@uspto.gov. The examiner can normally be reached on M-F 7:30AM - 5:30PM.
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, Anna Kinsaul can be reached at (571) 270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JACOB A SMITH/Examiner, Art Unit 3731
Prosecution Insights