DETAILED ACTION
Claims 1-22 are pending, and claims 1-13 and 20 are currently under review.
Claims 14-19 and 21-22 are withdrawn.
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/Restrictions
Applicant’s election of group I, claims 1-13 and 20, in the reply filed on 7/13/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 14-19 and 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/13/2026.
Claim Interpretation
The examiner considers the rest (ie. balance) of the composition of claim 1 to be iron and impurities by nature of being a steel material.
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 1-13 and 20 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. Claims 1-13 recite the term “flat”, which is indefinite because “flat” is a relative term of degree that is not further defined by the specification or claims. It is unclear as to what degree of flatness is required by the claim or what degree of unevenness is allowed for in the claim. The examiner interprets the claim to be met by any shape/orientation that could be considered to be flat in any way by one of ordinary skill.
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.
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 CFR 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.
Claim(s) 1, 5-13, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krainer et al. (DE2325631, machine translation referred to herein).
Regarding claim 1, Krainer et al. discloses a cold working steel for cutting tools such as a band saw having a composition as seen in table 1 below [0006, 0029]. The examiner notes that the overlap between the composition of Krainer et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). One of ordinary skill would further readily understand that a bandsaw blade is flat and elongated (ie. flat wire).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Krainer et al. (wt.%)
C
0.45 – 0.7
0.45 – 1.5
Si
1.2 – 2.5
0.2 – 1.8
Mn
0.2 – 1.1
0.2 – 2
Cr
0.5 – 1.4
0 – 1
V
0.05 – 0.4
0 – 0.5
Mo
0.05 – 0.4
0 – 1
W
0.05 – 0.4
0 – 1
Fe & Impurities
Balance
Balance
Regarding claims 2-4, Krainer et al. discloses the steel of claim 1 (see previous). Krainer et al. does not expressly teach a rolled wire or a thickness and width as claimed. However, the examiner notes that rolling is a well-known and conventional means of forming steel blades that would have been readily obvious to one of ordinary skill. Furthermore, specific recitations of size dimensions of the steel are not considered to be patentable because one of ordinary skill would understand that any desired sizes (ie. thickness and widths) would have been an obvious engineering design choice depending on the desired cutting application. See MPEP 2144.04(IV).
Regarding claims 5-11, Krainer et al. discloses the steel of claim 1 (see previous). The examiner notes that the aforementioned composition of Krainer et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 12, Krainer et al. discloses the steel of claim 1 (see previous). Krainer et al. further teaches an inclusion of 0.05 to 2.5 weight percent Nb, which is substantially close with the claimed range such that prima facie obviousness still exists because similar properties would be present such as being in a flat, elongated form [0029]. It is further not apparent as to how a mere difference of 0.01 weight percent between the claims and disclosed amount of Krainer et al. would have any patentably distinct significance. See MPEP 2144.05(I).
Regarding claim 13, Krainer et al. discloses the steel of claim 1 (see previous). Krainer et al. does not expressly teach the presence of P, S, Cu, or Al, which one of ordinary skill would understand to mean that these elements are not present (ie. 0 percent) or merely included in conventional impurity amounts which meets the instant claim. The examiner’s position is further bolstered by the recitation of “consisting” of Krainer et al., such that non-recited elements (ie. P, S, Cu, Al) are not considered to be present.
Regarding claim 20, Krainer et al. discloses the steel of claim 1 (see previous). The examiner notes that the aforementioned Nb amount of Krainer et al. further overlaps with the claimed Nb range [0029]. Krainer et al. further teaches up to 2 weight percent Ni and no Ti, which further overlaps with the claimed ranges of up to 0.4 weight percent Ni and up to 0.002 weight percent Ti (ie. claimed range includes zero percent) [0029]. See MPEP 2144.05(I).
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krainer et al. (DE2325631, machine translation referred to herein) in view of Berggren et al. (US 3,930,426).
Regarding claims 2-4, Krainer et al. discloses the steel of claim 1 (see previous). Krainer et al. further discloses using the steel for band saw blades as stated above; however, Krainer et al. does not expressly teach a rolled steel. Berggren et al. discloses that it is known to utilizing rolling to manufacture and form band saw blades to achieve blade dimensions of 2 mm thickness and width of 40 mm [col.4 ln.6-15]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Krainer et al. by rolling said steel to the dimensions of Berggren et al. to obtain a band saw blade as taught by Berggren et al. The examiner notes that the aforementioned dimensions of Berggren et al. meet the claimed ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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