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/Restriction
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:
A product and a process specially adapted for the manufacture of said product.
A product and a process of use of said product.
A product, a process specially adapted for the manufacture of the said product, and a use of the said product.
A process and an apparatus or means specifically designed for carrying out the said process.
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, claims 1 and 2, drawn to a calcium-containing graphite steel wire rod.
Group II, claims 3-7, drawn to a method for manufacturing a calcium-containing graphite steel wire rod.
Group III, claims 8, 9, and 12, drawn to a calcium-containing graphite steel.
Group IV, claims 10, 11, 13, and 14, drawn to a method for making a calcium-containing 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:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the calcium-containing graphite steel wire rod, this technical feature is not a special technical feature as it does not contribute over the prior art in view of JP 2008-174830 (JP ‘830). JP ‘830 teaches a steel with 0.1-0.8% C, 0.001-2.5% Si, 0.1-3.0% Mn, 0.01-0.40% S, 0.005-0.5% Al, 0.0020-0.02% N (abstract), 0.002-2.0% Ti, and 0.0002-0.01% Ca [0012] in the form of a bar [0050].
Groups I and III lack unity of invention because the groups do not share the same or corresponding technical feature of the steel wire rod.
Groups I and IV lack unity of invention because the groups do not share the same or corresponding technical feature of the steel wire rod.
Groups II and III lack unity of invention because the groups do not share the same or corresponding technical feature of the steel wire rod.
Groups II and IV lack unity of invention because the groups do not share the same or corresponding technical feature of the steel wire rod.
Groups III and IV lack unity of invention because the groups do not share the same or corresponding technical feature of pearlite or ferrite.
During a telephone conversation with Hyunseok Park on 09/17/2026 a provisional election was made without traverse to prosecute the invention of I, claims 1 and 2. Affirmation of this election must be made by applicant in replying to this Office action. Claims 3-14 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 cancelation 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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-14 are as originally filed.
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 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 1 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2008-175830 A, based on the machine translation.
JP 2008-174830 (JP ‘830) teaches steel with 0.1-0.8% C, 0.001-2.5% Si, 0.1-3.0% Mn, 0.01-0.40% S, 0.005-0.5% Al, 0.0020-0.02% N (abstract), 0.002-2.0% Ti, and 0.0002-0.01% Ca [0012] in the form of a bar [0050]. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over JP ‘830 as applied to Claim 1 above, and further in view of G. Krauss in ASM International.
JP ‘830 discloses the invention substantially as claimed. JP ‘830 teaches heating and hot rolling into bars [0050]. However, JP ‘830 does not teach the area fraction is 95% pearlite or more or cooling after rolling. Krauss teaches forming pearlite in steel. Austenite containing 0.77% carbon transforms to 100% pearlite (page 57). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the steel in JP ‘830 could contain an area fraction of 95% or more pearlite, since JP ‘830 teaches substantially the same material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:00 am to 3:00 pm.
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, Keith D. Hendricks can be reached at (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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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
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