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 1-7, in the reply filed on 30 March 2026 is acknowledged.
Claims 8-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 30 March 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10 December 2024 and 23 December 2024 were considered by the examiner.
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 1-7 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.
In regards to independent claim 1, this claim sets forth the term “a predetermined direction to all grains” in lines 16-21 of the claim. The metes and bounds of this particular limitation cannot be determined since it is not clear how this direction is determined or what direction would be considered to be predetermined. For the purposes of examination the Office is construing this to be in any direction since any direction can be a predetermined direction.
In further regards to independent claim 1, this claim sets forth the term “in an observation field” in lines 16-21 of the claim. The metes and bounds of this particular limitation cannot be determined since it is not clear what would be an observation field. It is not clear as to the shape, size, or other characteristics necessary to determine what would qualify as being the observation field within this claim. For the purposes of examination the office is construing this to refer to the entirety of the surface region as set forth in the instant claims.
As to claims 2-7, these claims depend from claim 1 and incorporate the limitations therein. Accordingly, claims 2-7 are rejected for the reasons set forth above in regards to independent claim 1.
As to claim 2, this claim sets forth the limitation “in the observation field of the surface region” in the first and second lines of the claim. The metes and bounds of this particular limitation cannot be determined since it is not clear what would be an observation field. It is not clear as to the shape, size, or other characteristics necessary to determine what would qualify as being the observation field within this claim. For the purposes of examination the office is construing this to refer to the entirety of the surface region as set forth in the instant claims.
Further as to claim 2, this claim refers to “a total orientation density” within the claim. The metes and bounds of this limitation cannot be determined since it is not clear how the total orientation density is determined. Density can be determined through a variety of methods or units. The claim does not set forth guidance on how the density is determined or the units that are being utilized. For the purposes of examination the Office is construing this to be any method of density determination so long as it is consistent among the different orientations.
Claim 4 depends from claim 2 and incorporates the limitations therein. Accordingly claim 4 is rejected for the reasons set forth above in regards to claim 2.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2017/0241000 (Daito) in view of U.S. Patent Number 6,715,331 (Zelin).
In regards to independent claim 1 and dependent claims 2-7, Daito is directed to a steel wire for drawing, which is appropriate for an extra fine wire having a small diameter of 0.15 mm to 0.40 mm. (¶2-3) This diameter overlaps the claimed ranges. Therefore, a prima facie case of obviousness is established.
The steel wire for drawing includes, as a chemical composition, by mass %, C: 0.9% to 1.2%, Si: 0.1% to 1.0%, Mn: 0.2% to 1.0%, Cr: 0.2% to 0.6%, Al: limited to 0.002% or less, N: limited to 0.007% or less, P: limited to 0.02% or less, S: limited to 0.01% or less, one or more selected from the group consisting of Mo: 0% to 0.20%, and B: 0% to 0.0030%, and a remainder of Fe and impurities, in which a metallographic structure includes a pearlite, and a volume fraction of the pearlite is 95% or higher. (¶50) These compositional ranges overlap the claimed ranges. Therefore, a prima facie case of obviousness is established.
Diato sets forth that the tensile strength is 4200 MPa or higher. (¶47) This range overlaps the claimed ranges. Therefore, a prima facie case of obviousness is established.
Diato is silent on longitudinal cross section, ratio A, and ratio B as set forth in the instant claims. Diato sets forth a method of producing the steel wire by casting and hot rolling the steel composition. (¶134) A wire rod obtained is subjected to dry cold drawing. (¶137) The intermediate steel wire is held for 5 to 10 seconds in a heating furnace and subjected to a patenting treatment. (¶138-139) The steel wire can then be used for further drawing. (¶140) A final wet drawing is used to produce the extra fine steel wire. (¶164) This reference does not set forth the use of a skin pass drawing.
In the same field of endeavor, Zelin is directed to a steel wire that is drawn from an initial diameter to a desired or final or intermediate diameter by use of a non-linear tapered draft. (Abstract) The wire may also be subject to a skin pass, reducing the wire by a diameter of less than 4%, following the reduction of the wire to either the final or the intermediate diameter. (Abstract)
A skin pass is employed following the fine drawing of the wire. (4:53-61) Skin passes may be employed whenever control of torsion properties is essential and may be employed also during rough drawing of the wire regardless of the type of drawing employed. Id.
It would have been obvious to one of ordinary skill in the art to have utilized a skin pass as set forth in Zelin when producing the product of Diato. One of ordinary skill in the art would have been motivated by the desire and expectation of combining prior art elements according to known methods to yield predictable results, including improving the properties of the resulting wire, including the torsion properties, of the resulting steel wire. This step would improve the quality of the resulting final product.
Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the Office can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the Office’s inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton and Shaw, 195 USPQ 430 (CCPA 1977).
As set forth above, Diato in view of Zelin teaches drawing, patenting, drawing, and skin pass process for producing a steel wire having an ultra-fine thickness. This is the same method used by applicants to produce the claimed product. In particular, applicant teaches utilizing a steel material that is subjected to a first drawing process, a patenting process, a second drawing process, and a skin pass drawing. (¶23 of Specification) Consequently, absent a showing to the contrary, it appears that the product in the prior art necessarily or inherently possesses the characteristics of the claimed product, including the claimed surface region, total ratio A, and total orientation density B as set forth within the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784
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