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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-2 and 8-9) in the reply filed on 09/15/2026 is acknowledged.
Claims 3-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 09/15/2026.
Status of Claims
Pending: claims 1-9
Elected: claims 1-2 and 8-9
Withdrawn: claims 3-7
Rejected: claims 1-2 and 8-9
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 9 is 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.
Claim 9 recites “and a total of 5% or less of MnS inclusions and pearlite are included”, which lacks written description requirement, because the claim limitation at face value appears to state that less than 5% of pearlite is included; however, based on the context of the rest of the specification, it appears that the 5% or less should only refer to MnS and not both MnS and pearlite. The Examiner believes that this may be due to a direct machine translation error. Specifically, all of the examples, both comparative and inventive examples in Table 2 of the instant specifications have pearlite area fractions of no lower than 93%; thus, it appears unlikely for the pearlite content to be less than 5% as claimed. The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. “Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement” (MPEP 2163.03 V.).
In the interest of compact prosecution and clarity of the record, the limitation should be amended to “…pearlite, and a total of 5% or less of MnS inclusions, are included”.
If the applicant believes the above § 112(a) rejection is made in error, the applicant is recommended to provide reasoning and/or evidence to the contrary.
Specification
The disclosure is objected to because of the following informalities:
Paragraphs [00011] and [00058] recites “and a total of 5% or less of MnS inclusions and pearlite are included”, the description at face value appears to state that less than 5% of pearlite is included; however, based on the context of the rest of the specification, it appears that the 5% or less should only refer to MnS and not both MnS and pearlite. The Examiner believes that this may be due to a direct machine translation error. Specifically, all of the examples, both comparative and inventive examples in Table 2 of the instant specifications have pearlite area fractions of no lower than 93%; thus, it appears unlikely for the pearlite content to be less than 5% as claimed.
In the interest of compact prosecution and clarity of the record, the description should be amended to “…pearlite, and a total of 5% or less of MnS inclusions, are included”.
If the applicant believes the objection is made in error, the applicant is recommended to provide reasoning and/or evidence to the contrary.
Appropriate correction is required.
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.
Claims 1-2 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nam et al. (KR 20200075643 A; Espacenet English machine translation).
Regarding claim 1, Nam teaches a graphite steel (Abstract) for a wire rod for graphitization heat treatment [0001] having the following composition that has elemental compositional ranges that overlap with the claimed range, except for S, which is close, but not overlapping with the claimed range.
Element
Instant claim 1(wt. %)
Nam(wt. %)
Location in reference
Fe
Balance
Balance
Abstract
C
0.60-0.90
0.6-0.9
Abstract
Si
2.0-2.5
2.0-2.5
Abstract
Mn
0.1-0.6
0.1-0.6
Abstract
P
>0 to 0.015
0-0.015
Abstract
S
0.031-0.3
0-0.03
Abstract
Al
0.01-0.05
0.01-0.05
Abstract
Ti
0.005-0.02
0.01-0.02
Abstract
B
0.0005-0.0020
0.0005-0.002
Abstract
N
0.0030-0.0150
0.003-0.015
Abstract
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). The claimed S content, which only differs by 0.001 wt.%, is close to the extent that it is obvious absent a showing of unexpected results or criticality of ranges; "It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree."); In re Wells, 56 F.2d 674, 675 (CCPA 1932) (MPEP 2144.05 III. A.). The burden is on the applicant to establish that results are unexpected and significant (MPEP 716.02(b)).
With regard to the claimed “having superior cutting performance”, because Nam teaches a substantially identical composition, Nam meets the limitation absent any other specific details.
Regarding claim 2, Nam further teaches that the area fraction of pearlite can be 95% or more [0012].
Regarding claim 8, Nam teaches a graphite steel wire (Abstract) for a wire rod for graphitization heat treatment [0001] having the following composition that has elemental compositional ranges that overlap with the claimed range, except for S, which is close, but not overlapping with the claimed range.
Element
Instant claim 8(wt. %)
Nam(wt. %)
Location in reference
Fe
Balance
Balance
Abstract
C
0.60-0.90
0.6-0.9
Abstract
Si
2.0-2.5
2.0-2.5
Abstract
Mn
0.1-0.6
0.1-0.6
Abstract
P
>0 to 0.015
0-0.015
Abstract
S
0.031-0.3
0-0.03
Abstract
Al
0.01-0.05
0.01-0.05
Abstract
Ti
0.005-0.02
0.01-0.02
Abstract
B
0.0005-0.0020
0.0005-0.002
Abstract
N
0.0030-0.0150
0.003-0.015
Abstract
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). The claimed S content, which only differs by 0.001 wt.%, is close to the extent that it is obvious absent a showing of unexpected results or criticality of ranges; "It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree."); In re Wells, 56 F.2d 674, 675 (CCPA 1932) (MPEP 2144.05 III. A.). The burden is on the applicant to establish that results are unexpected and significant (MPEP 716.02(b)).
With regard to the claimed “having superior cutting performance”, because Nam teaches a substantially identical composition, Nam meets the limitation absent any other specific details.
Regarding claim 9, Nam teaches a graphite steel wire (Abstract) for a wire rod for graphitization heat treatment [0001] having the following composition that has elemental compositional ranges that overlap with the claimed range, except for S, which is close, but not overlapping with the claimed range.
Element
Instant claim 9(wt. %)
Nam(wt. %)
Location in reference
Fe
Balance
Balance
Abstract
C
0.60-0.90
0.6-0.9
Abstract
Si
2.0-2.5
2.0-2.5
Abstract
Mn
0.1-0.6
0.1-0.6
Abstract
P
>0 to 0.015
0-0.015
Abstract
S
0.031-0.3
0-0.03
Abstract
Al
0.01-0.05
0.01-0.05
Abstract
Ti
0.005-0.02
0.01-0.02
Abstract
B
0.0005-0.0020
0.0005-0.002
Abstract
N
0.0030-0.0150
0.003-0.015
Abstract
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). The claimed S content, which only differs by 0.001 wt.%, is close to the extent that it is obvious absent a showing of unexpected results or criticality of ranges; "It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree."); In re Wells, 56 F.2d 674, 675 (CCPA 1932) (MPEP 2144.05 III. A.). The burden is on the applicant to establish that results are unexpected and significant (MPEP 716.02(b)).
With regard to the claimed “having superior cutting performance”, because Nam teaches a substantially identical composition, Nam meets the limitation absent any other specific details.
With regard to the claimed “wherein as a microstructure, graphite grains are distributed in a ferrite matrix, a graphitization rate is at least 95%”, Nam teaches that the graphite grains are distributed in a ferrite matrix and graphitization rate is 100% (Abstract, [0119]).
With regard to the claimed “and a total of 5% or less of MnS inclusions”, Nam teaches a substantially identical Mn and S range, therefore it is prima facie expected that the MnS range of Nam meets the claimed range, particularly in view of the substantially similar process of making.
With regard to the claimed “and pearlite are included”, Nam teaches that the area fraction of pearlite can be 95% or more [0012].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 I.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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