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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-2 and 8-9, drawn to a graphite steel.
Group II, claim(s) 3-7 and 10-14, drawn to method of making the graphite steel.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The shared special technical features between Group I and II are the graphite steel as recited in instant claims 1 and 8.
Such shared special technical feature is disclosed by Hashimura (JP2003034840). Hashimura discloses a free cutting steel having graphite rate exceeding 80% with C, Si, Mn, P, S, Al and Ti all overlapping with presently claims 1 and 8 required ranges.
Hence, the claimed inventions are said to lack unity “a posteriori,” because the special technical feature as required by instant claimed invention is anticipated by or obvious over cited prior art Hashimura.
During a telephone conversation with Mr Hyunseok Park on 06/25/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-2 and 8-9. Affirmation of this election must be made by applicant in replying to this Office action. Claims 3-7 and 10-14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Status of Claims
Claims 1-14 are pending. Claims 1-2 and 8-9 are presented for this examination. Claims 3-7 and 10-14 are withdrawn.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 06/03/2024, 01/02/2026 and 05/22/2026 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretations
Instant claimed “for TV PEM nut parts” is intended use and preamble according to MPEP 2111.02 II.
Because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II or if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
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.
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) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over JP’067 (JPH11350067A).
As for claims 1-2, JP’067 discloses a lead free hot worked 32 mm diameter steel bar [0068](i.e claimed steel wire rod) which have fine graphite particles in the hot worked steel bar.[0001] Hence, JP’067 discloses instant claim 1 required graphite steel wire rod.
The steel bar has overlapping compositions [0019] as illustrated in Table 4 below.
Table 4
Element
Applicant
(weight %)
JP’067 et al.
(weight %)
Overlap
(weight %)
C
0.6-0.79
0.7-1.5
0.7-0.79
Si
2-2.5
0.7-3
2-2.5
Mn
0.7-1.3
0.01-2
0.7-1.3
S
0.2-0.5
<=0.1
0.1 is close to 0.2
Al
0.01-0.05
0.001-0.5 [0023]
0.01-0.05
Ti
0.005-0.02
0.001-0.1
0.005-0.02
N
0.003-0.015
<=0.02
0.003-0.015
P
0.0001-0.015
<=0.05
0.0001-0.015
Pearlite %
>=95
>=90
With respect to claim 2 required pearlite %, Figure 1 illustrates relationship between hardness and cooling time. Paragraph [0059] expressly discloses if the material cooled to 700 degree C in less than one minute after hot work, the graphite particle size will be small and the metal structure will become pearlite which suggests 95% or more of pearlite.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over KR’400 (KR20150057400A) in view of Hashimura (JP2003034840A)
As for claims 1-2, KR’400 discloses a free-cutting steel having good graphitizing property with high pearlite fraction [0035] as much as possible such that proeutectoid cementite is controlled to be 10% or less, which suggests pearlite fraction is 90% or more. Hence, 90% or more overlaps instant claim 2 required area fraction of pearlite.
Graphitization rate is 100%. [0036]
Hence, KR’400 suggests instant claim 1 graphite steel by preparing a steel material comprising C, Si, Mn, S, P, and N all overlapping with instant claim 1 required ranges as illustrated in Table 1 below.[0034].
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Hence, based on the teaching of KR’400, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by XX in order to arrive at graphite steel of claimed invention.
It is noted KR’400 does not disclose graphite steel is in a steel wire rod form.
Changes in size or shape and in sequence of adding ingredients are not patentably distinct from prior art. See MPEP 2144.04 IV.
In the instant case, it would have been obvious to form a steel wire rod from KR’400’s graphite steel if a steel wire rod is desired as final product.
Table 1
Element
Applicant
(weight %)
KR’400 et al.
(weight %)
Overlap
(weight %)
C
0.6-0.79
0.8-1.5
0.8 is Close to 0.79
Si
2-2.5
2-5
2
Mn
0.7-1.3
0.5-1
0.7-1
S
0.2-0.5
0.2-0.4
0.2-0.4
Al
0.01-0.05
Ti
0.005-0.02
N
0.003-0.015
0.002-0.005
0.003-0.005
P
0.0001-0.015
<=0.1
0.0001-0.015
Pearlite %
>=95
>=90
>=90
KR’400 does not disclose presence of Al and Ti. Hashimura discloses a graphite steel for machine structure with superior in machinability. Hashimua discloses Al 0.001-0.01% as deoxidizing element to prevent surface scratches during rolling. (English translation Page 5 paragraph 7) Ti is 0.005-0.01% (English translation page 6 paragraph 8) for creating graphite precipitation nuclei by reducing the austenite grain size.
Hence, it would have been obvious to one skill in the art, at the time the invention is made, to add Al and Ti amount as suggested by Hashimura, in the graphite steel of KR’400 for the benefit of preventing surface scratches during rolling and for creating graphite precipitation nuclei.
Claim(s) 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimura (JP2003034840A).
As for claims 8-9, Hashimura discloses an annealed free cutting steel with graphite rate exceeding 80% (Abstract). Hence, Hashimura teaches instant claim 8 required graphite steel. graphite rate exceeding 80% overlaps instant claim 8 required 90% or more and instant claim 9 required 99% or more. The graphite steel of Hashimura comprises elemental compositions all overlapping claimed ranges as illustrated in Table 2 below. The pearlite fraction is expected to be 0% since the steel is a two-phase structure of ferrite + graphite which suggests graphite grains distributed in a ferrite matrix. [0002]
Table 2
Element
Applicant
(weight %)
Hashimura et al.
(weight %)
Overlap
(weight %)
C
0.6-0.79
0.3-2
0.6-0.79
Si
2-2.5
0.5-2
2
Mn
0.7-1.3
0.05-3
0.7-1.3
S
0.2-0.5
0.01-0.5
0.2-0.5
Al
0.01-0.05
0.001-0.01
0.01
Ti
0.005-0.02
0.005-0.01
0.005-0.01
N
0.003-0.015
0.001-0.006
0.003-0.006
P
0.0001-0.015
0.001-0.1
0.001-0.015
Graphite rate % (Claim 9)
>=99
>=80%
>=80%
Claim(s) 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP’850 (JPH07188850A) in view of Hashimura (JP2003034840A).
As for claims 8-9, JP’850 discloses a graphite free cutting steel comprising overlapping composition as illustrated in Table 3 below and the metallic structure mainly composed of ferrite and graphite [0006]. The preferred graphite content is 90-100% [0034]
Table 3
Element
Applicant
(weight %)
JP’850 et al.
(weight %)
Overlap
(weight %)
C
0.6-0.79
0.1-1.5
0.6-0.79
Si
2-2.5
0.5-2
2
Mn
0.7-1.3
0.1-2
0.7-1.3
S
0.2-0.5
0.5-2
0.5
Al
0.01-0.05
Ti
0.005-0.02
0.005-0.1
0.005-0.02
N
0.003-0.015
0.0015-0.015
0.003-0.015
P
0.0001-0.015
0.03-0.15%
0.03 is close to 0.015%
Graphite rate % (Claim 9)
>=99
90-00
99-100
JP’850 does not disclose presence of Al.
Hashimura discloses a graphite steel for machine structure with superior in machinability. Hashimua discloses Al 0.001-0.01% as deoxidizing element to prevent surface scratches during rolling. (English translation Page 5 paragraph 7)
Hence, it would have been obvious to one skill in the art, at the time the invention is made, to add amount as suggested by Hashimura, in the graphite steel of JP’850 for the benefit of preventing surface scratches during rolling.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jenny Wu whose telephone number is (571)270-5515. The examiner can normally be reached on 9am-5:30pm Monday through Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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