DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on July 26, 2026 have been entered into the file. Currently claim 2 is amended, resulting in claims 1-14 pending for examination.
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) 1-4, 6, 9-10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over MacInnis (US 3262293)1.
With respect to claims 1 and 4, MacInnis teaches a tungsten wire with a thin but continuous coating of tungsten oxide on the surface (col. 2, lines 44-57).
MacInnis does not explicitly teach the thickness of the oxide film. However, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the oxide layer thickness to include the claimed range. One would have been motivated to provide an oxide layer that is thick enough to cover to wire, allowing the lubricant to stick evenly (MacInnis; col. 1, lines 22-25) but not so thick that excessive oxidation is needed (MacInnis; col. 1, lines 49-55). It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II).
MacInnis teaches the claimed invention above but does not expressly teach the tungsten wire having a tensile strength of at least 3500 MPa, preferably at least 4000 MPa. It is reasonable to presume that the tensile strength is inherent to MacInnis. Support for said presumption is found in that as discussed above MacInnis teaches the claimed structure of a tungsten wire coated with a tungsten oxide, and therefore is expected to have the same properties of the claimed invention. See MPEP 2112.
With respect to claims 2 and 10, MacInnis teaches a tungsten wire with a thin but continuous coating of tungsten oxide on the surface (col. 2, lines 44-57). The oxidized wire was then coated with graphite (col. 2, lines 58-68).
MacInnis does not explicitly teach the thickness of the oxide film. However, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the oxide layer thickness to include the claimed range. One would have been motivated to provide an oxide layer that is thick enough to cover to wire, allowing the lubricant to stick evenly (MacInnis; col. 1, lines 22-25) but not so thick that excessive oxidation is needed (MacInnis; col. 1, lines 49-55). It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II).
MacInnis teaches the claimed invention above but does not expressly teach the tungsten wire having a tensile strength of at least 3500 MPa, preferably at least 4000 MPa. It is reasonable to presume that the tensile strength is inherent to MacInnis. Support for said presumption is found in that as discussed above MacInnis teaches the claimed structure of a tungsten wire coated with a tungsten oxide, and therefore is expected to have the same properties of the claimed invention. See MPEP 2112.
McInnis teaches the claimed invention above but does not expressly teach the tungsten oxide layer contains graphite wherein a content of the graphite contained in the tungsten oxide layer increases with decreasing distance from the graphite film. It is reasonable to presume that the presence of graphite in the tungsten oxide layer is inherent to MacInnis. Support for said presumption can be found in that the instant specification at paragraph [0087] describes applying a graphite dispersion in water to the surface of the oxide film and heating. The graphite dispersion solution impregnates the oxide film and after heating forms the oxide film and the graphite film. Similarly, MacInnis teaches coating the graphite layer by passing the wire with the oxide coating through a bath of an aqueous emulsion containing colloidal graphite and heating (MacInnis; col. 2, lines 53-68). Since the same composition and method of applying the graphite layer is used directly on the oxide layer, the tungsten oxide layer of MacInnis is expected to have some impregnated graphite in the layer which increases with decreasing distance from the graphite film as in the claimed invention. See MPEP 2112.
With respect to claims 3 and 9, MacInnis teaches all the limitations of claims 1 and 2 above. MacInnis further teaches the tungsten wire has a diameter of 1.420 mils (36 microns) (col. 2, lines 41-43).
With respect to claims 6 and 12, MacInnis teaches all the limitations of claims 1 and 2 above. MacInnis further teaches the invention relates to a method of producing a wire (col. 1, line 8), therefore the wire is a single wire.
Claim(s) 5, 7-8, 11, and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over MacInnis (US 3262293)2 as applied to claims 1 and 2 above and further in view of Otaka (JP 2015-089672)1,3.
With respect to claims 5, 7-8, 11, and 13-14, MacInnis teaches all the limitations of claims 1 and 2 above.
MacInnis is silent as to the tungsten wire being used as a warp yarn or weft yarn of a screen printing mesh.
Otaka teaches a metal mesh fabric and a screen plate used when printing high-definition patterns using screen printing (paragraph [0001]). The metal mesh fabric has warp and weft threads made of metal wires so as to interact with each other, wherein at least one of the warp threads and weft threads is tungsten or a tungsten alloy and a tungsten or tungsten alloy oxide film is formed on the surface of the tungsten or tungsten alloy threads (paragraph [0017]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tungsten wire of MacInnis to be used as the warp and/or weft yarn of a screen printing mesh because tungsten wire coated with a tungsten oxide coating is known in the art as a suitable material for the warp and/or weft yarn of a screen printing mesh.
Response to Arguments
Response – Claim Rejections 35 USC §103
Applicant’s arguments in the response filed July 26, 2026 have been fully considered and are not persuasive.
On pages 5-7 Applicant submits that MacInnis does not disclose or suggest that the thickness of the oxide film itself affects the amount of wear or that the amount of wear is reduced by selecting the claimed oxide film thickness.
In response to applicant's argument that MacInnis does not recognize the effect the oxide layer has on wear, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the instant case, as presented previously and above, one would have been motivated to provide an oxide layer that is thick enough to cover to wire, allowing the lubricant to stick evenly (MacInnis; col. 1, lines 22-25) but not so thick that excessive oxidation is needed (MacInnis; col. 1, lines 49-55).
On page 7 of the response Applicant submits that MacInnis provides no teaching or suggestion of the non-linear relationship of wear and oxide film thickness due to the oxide film containing WO3 as a major component.
In response to applicant's argument that MacInnis does not recognize the relationship between oxide layer thickness and wear, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the presence of WO3 and its resulting porosity structure) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On page 8 of the response Applicant submits that MacInnis describes graphite as a coating over or on the tungsten layer, however amended claim 2 requires the tungsten oxide layer itself contain graphite where the graphite content increases toward the graphite film. On page 9 of the response Applicant further submits that the Examiner’s inherency position is insufficient because MacInnis does not disclose the oxide-layer morphology, porosity, graphite penetration, heating conditions, or other process parameters that would necessarily produce the claimed internal structure.
The Examiner respectfully disagrees. As explained above, McInnis teaches the claimed invention above but does not expressly teach the tungsten oxide layer contains graphite wherein a content of the graphite contained in the tungsten oxide layer increases with decreasing distance from the graphite film. It is reasonable to presume that the presence of graphite in the tungsten oxide layer is inherent to MacInnis. Support for said presumption can be found in that the instant specification at paragraph [0087] describes applying a graphite dispersion in water to the surface of the oxide film and heating. The graphite dispersion solution impregnates the oxide film and after heating forms the oxide film and the graphite film. Similarly, MacInnis teaches coating the graphite layer by passing the wire with the oxide coating through a bath of an aqueous emulsion containing colloidal graphite and heating (MacInnis; col. 2, lines 53-68). Since the same composition and method of applying the graphite layer is used directly on the oxide layer, the tungsten oxide layer of MacInnis is expected to have some impregnated graphite in the layer which increases with decreasing distance from the graphite film as in the claimed invention. See MPEP 2112.
In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. See MPEP 2112(IV). When 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. See MPEP 2112.01(I). As identified above, MacInnis teaches the same composition and process, and therefore is expected to provide the claimed structure, as the instant specification discloses the above method is how the claimed structure is achieved.
Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. See MPEP 2112(V). In the response Applicant submits that MacInnis does not disclose the oxide-layer morphology, porosity, graphite penetration, heating conditions, or other process parameters that would necessarily produce the claimed internal structure. However the instant specification is silent as to the specific oxide-layer morphology, porosity, penetration, heating conditions or other parameters required to achieve the claimed structure. The instant specification is also silent to, and no additional evidence has been provided, which shows how these parameters affect the final graphite structure such that MacInnis does not necessarily teach the claimed structure when the same process of graphite application is used. Therefore, the inherency rejection is maintained.
On page 9 of the response Applicant submits that the tensile strength of a tungsten wire is not an inevitable result of providing a tungsten wire with an oxide coating and depends on factors such as composition, diameter, drawing history, heat treatment, and microstructure. Applicant concludes that MacInnis does not disclose those parameters in a manner establishing that the claimed tensile strength is necessarily present.
These arguments are not persuasive for reasons similar to the inherency rejection presented above. There is no evidence in the instant specification or provided otherwise which shows that the composition, diameter, drawing history, heat treatment, and microstructure of the tungsten wire affect the properties of the wire so significantly that the wire of MacInnis would not result in the claimed tensile strength. Arguments presented by the Applicant cannot take the place of evidence in the record. See MPEP 716.01(c)(II).
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 obvious has been established. See MPEP 2112.01(I). As discussed above, MacInnis teaches the claimed prior art structure and composition, and therefore is expected to have the same properties as the claimed invention.
Conclusion
Applicant's amendment necessitated any new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Larissa Rowe Emrich whose telephone number is (571)272-2506. The examiner can normally be reached Monday - Friday, 7:30am - 4:00pm EST.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Previously presented
2 Previously presented
3 Machine translation used as reference
Prosecution Insights