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 .
Response to Amendment and Status of Claims
Applicant’s amendments to the claims, filed March 17, 2026, are acknowledged. Claim 1 is amended, and Claims 12-13 are cancelled. No new matter has been added.
Claims 1, 3-5, 10-11 and 14-17 are currently pending and considered in this office action.
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.
Claim 1, and dependent claims 3-5 and 10-17, 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.
Regarding Claim 1, the claim recites “primarily cold-rolling the hot-rolled steel sheet”, “decarburization-annealing the primarily cold-rolled steel sheet” and “secondarily cold-rolling the decarburization-annealed steel sheet”. The claim further recites “wherein the decarburization-annealing of the primarily cold-rolled steel sheet and the secondarily cold-rolling of the decarburization-annealed steel sheet are repeated at least thrice”.
One of ordinary skill in the art would interpret this claim language to require:
primarily cold-rolling
decarburization annealing of a)
secondary cold-rolling of b), and
repeating of step b) and step c) three times,
such cold-rolling occurs 5 time (a+c+c*3, equates to 5) and decarburization-annealing occurs 4 times (b+3*b, equates to 4).
However, the instant specification states “the step for decarburization-annealing the cold-rolled steel sheet and the step for secondarily cold-rolling the decarburization-annealed steel sheet may be repeated a plurality of times. For example, when the steps are repeated twice, they may be performed in order of performing primary cold-rolling, performing decarburization-annealing, performing secondary cold-rolling, performing decarburization-annealing, performing third cold-rolling, and performing final annealing”.
Thus, according to the specification, repeating twice results in 3 total cold rolling steps (including primarily cold-rolling) and 2 total decarburization annealing treatments.
Due to the discrepancy of between the description of the instant invention and what one of ordinary skill in the art would understand from the current claim language construction, it is unclear which number of cold rolling steps and decarburization annealing steps are required. Moreover, it appears that the word ‘repeated’ is being incorrectly used as ‘performed’.
The claims are interpreted as ‘primarily cold-rolling the hot-rolled steel sheet, decarburization-annealing the primarily cold-rolled steel sheet, secondarily cold-rolling the decarburization-annealed steel sheet, and wherein the decarburization-annealing of the primarily cold-rolled steel sheet and the secondarily cold-rolling of the decarburization-annealed steel sheet are performed at least thrice’, such that the claims require at least 4 cold rolling steps (including primary cold rolling) and 3 decarburization steps, as denoted by the instant specification.
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 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, 3-5, 10-11 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Takashima (previously cited, US 20030034092 A1) in view of Hecht (previously cited, US 20180237876 A), Iwamoto (previously cited, US 4439252 A), Toshiro (previously cited, JP 2535963 B2, English Machine Translation provided), Hayakawa (previously cited and cited by Applicant in IDS filed December 17, 2021, US 20030116236 A1), Yoshitomi (previously cited, JP 06306473 A, English Machine Translation provided), Toge (previously cited, 6,039,818 A), Inoue (previously cited, US 20160333435 A1) and Kurosaki (previously cited, US 20030183304 A1).
Regarding Claim 1, Takashima discloses a method for manufacturing an oriented electrical steel sheet (Abstract), comprising:
providing a slab including, by mass, at least 1.0% Si, 0.01-0.1% C, 0.03-2.5% Mn, and a balance including Fe and inevitably mixed and input impurities (para. [0025]; para. [0037]; para. [0046]; see para. [0085] for example, which reads on the claimed 4.0% or less (excluding 0 %) Si, 0.0001-0.4% C, and 0.001-2.0% Mn);
reheating the slab (para. [0049]);
manufacturing a hot steel sheet by hot-rolling the slab (para. [0025]; para. [0049]);
performing hot-rolled steel sheet annealing to the hot steel sheet (para. [0025]; para. [0050]);
primarily cold-rolling the hot-rolled steel sheet annealed hot steel sheet (para. [0025]; para. [0050]);
intermediate annealing the cold-rolled steel sheet (para. [0025]; para. [0050]); and
secondarily cold-rolling the intermediate-annealed steel sheet (para. [0025]; para. [0050]).
Regarding the composition, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Takashima discloses two or more cold-rolling steps, which is inclusive of four cold rolling steps, and discloses intermediate annealing in between, and therefore discloses three intermediate annealing steps when performing four cold rolling steps; however, Takashima does not expressly recite four cold rolling steps (see claim interpretation in 112b rejection above).
Hecht teaches conducting at least three cold rolling steps, including up to five cold rolling steps, with an intermedial anneal between the cold rolling steps, in order to eliminate the cold solidifications that arise in each preceding cold rolling step and to assure rollability for the subsequent rolling step (para. [0051]; para. [0078]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included at least three, including four and up to five, cold rolling steps with intermediate annealing between, and therefore three intermediate annealing steps, as taught by Hecht, for the invention disclosed by Takashima, in order to eliminate the cold solidifications that arise in each preceding cold rolling step and to assure rollability for the subsequent rolling step (see teaching above by Hecht).
Takashima discloses wherein the intermediate annealing occurs in a hydrogen containing atmosphere with a dew point from -40C to 65C and at temperatures such as 900C and 1100C (para. [0060], wherein dew point of intermediate annealing is controlled to progress decarburization; para. [0130], wherein intermediate annealing may occur in a hydrogen-nitrogen atmosphere with a dew point from -40C to 60C; and para. [0085] and para. [0101], wherein intermediate annealing occurs at a temperature of 900C and at 1100C).
Thus, one of ordinary skill in the art would appreciate that a dew point of -40C to 60C, and a temperature of 900C and 1100C, in a hydrogen containing atmosphere, reads on the claimed decarburization annealing parameters (atmosphere including hydrogen, dew point of 10C-70C, temperature of 800-1150C), and would be considered decarburization intermediate annealing.
Takashima, however, does not expressly recite the intermediate annealing as decarburization annealing.
Iwamoto discloses two or more cold-rollings with intermediate annealing therebetween, and teaches using decarburization annealing for the intermediate annealings in order to easily and uniformly adjust the carbon content before the final cold rolling, and because an ordinary annealing atmosphere can easily be made into a decarburizing atmosphere, thereby reducing installation and production cost (Abstract; Col. 10, line 57-65; Col. 11, lines 4-23). Iwamoto discloses wherein the intermediate annealing may occur in the temperature range 750-1100C (Col. 10, lines 15-17). One of ordinary skill in the art would appreciate that Iwamoto teaches an intermediate annealing between each cold-rolling step.
Additionally, Toshiro teaches wherein a weakly decarburizing atmosphere may be one of hydrogen with a dew point of 0C or less at temperatures of 850C or more, and a strong decarburizing atmosphere may be an atmosphere of hydrogen with a dew point of 0C or higher in a temperature range up to 900C (para. [0064]-[0065]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used decarburization annealing for the intermediate annealings, as taught by Iwamoto, and at temperature of 900C, as disclosed by Takashima and taught by Iwamoto and Toshiro, and to have further used strong decarburization annealing parameters including a dew point of 0C or more at a temperature up to 900C and comprising a hydrogen-containing atmosphere, as taught by Toshiro, for the invention disclosed by Takashima. One would be motivated to do this in order easily and uniformly adjust the carbon content before the final cold rolling, to more effectively reduce the carbon content using a strong decarburizing atmosphere, and because an ordinary annealing atmosphere can easily be made into a decarburizing atmosphere, thereby reducing installation and production cost (see teachings by Iwamoto and Toshiro above).
The decarburization annealing parameters disclosed by Takashima, and taught by Iwamoto and Toshiro, read on the claimed limitations requiring a hydrogen containing atmosphere, a dew point of 0C, and temperatures of 800-1150C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Thus, Takashima, Hecht, Iwamoto and Toshiro disclose performing cold rolling four, and further up to five times (see teaching by Hecht), with decarburization annealing utilized as intermediate annealing performed in between each cold rolling step (see teaching by Iwamoto), and therefore performing decarburization annealing at least three and up to four times, which reads on the claimed limitations (see claim interpretation and 112b rejection above).
Takashima further discloses subjecting the cold-rolled steel sheet to primary and secondary recrystallization annealing (first batch annealing), followed by a ‘continuous annealing after the first batch annealing’ and a second batch finish annealing, wherein ‘the continuous annealing after the first batch annealing’ and ‘the second batch (finishing) annealing’ read on a finally annealing including a first step and a second step, respectively, as claimed (para. [0054] and para. [0062], primary recrystallization continuous annealing and first batch secondary recrystallization annealing; para. [0068], continuous annealing after first batch (secondary recrystallization) annealing; para. [0077]-[0081], second batch (finishing) annealing).
Takashima discloses wherein:
the first step (continuous annealing after first batch annealing) includes annealing in an atmosphere with a dew point temperature of 10-70C at a temperature of 850-1150C, the first step being performed for equal to or less than 300 seconds (para. [0068], 1s-20min from 750-1100C; para. [0094], 2 minutes (120 seconds), dew point 30-60C; para. [0102], dew point of 65C); and wherein
the second step (second batch annealing) includes annealing in an atmosphere including hydrogen with a dew point temperature that is equal to or less than 10C at a temperature of 900-1200C, (para. [0081], 800-1300C, preferably 900-1060C; para. [0095], temperature of 1180C and dew point of -40C).
Takashima discloses wherein in the first step of finally annealing occurs by continuous annealing (see para. [0068]). One of ordinary skill in the art would appreciate therefore that the steel has not been batch annealed in the first step because it has been continuously annealed.
Takashima is silent towards coiling, and one of ordinary skill in the art would therefore appreciate that in the absence of designating a coiling step, the steel of Takashima has not been coiled, as claimed.
Takashima, however, does not exclude or disclose an alternative for batch-type annealing in the second step of finally annealing. Takashima therefore fails to disclose the claimed time duration for the second step of finally annealing to be 60-300s. Additionally, Takashima discloses wherein the atmosphere of the second step of finally annealing may be in a dry hydrogen atmosphere, but fails to disclose wherein the atmosphere of the second step of finally annealing may occur in a mixed gas atmosphere including both hydrogen and nitrogen, as claimed.
Hayakawa similarly teaches wherein, after secondary recrystallization annealing (equivalent to the first batch annealing of Takashima), that the steel is subjected to a continuous finally annealing including a first step of continuous decarburization annealing and a second step of high temperature annealing that is completed as a continuous annealing at a temperature of 800-1050C for 10 seconds or longer, in a mixed atmosphere of nitrogen and hydrogen, and a dew point of not greater than 0C (para. [0120]-[0122]; para. [0068]-[0070]; and para. [0104]; see also para. [0092] of Takashima regarding annealing steps).
Hayakawa teaches wherein this technique allows further reduction of the C content to be below 30ppm, further improvement to magnetic properties, and for the elimination of an annealing separator and formation of a forsterite coating, while performing the final annealing steps within the same continuous annealing line in order to improve process efficiency (para. [0080]; para. [0117]; para. [0121]; para. [0123]; para. [0008]-[0011]; para. [0013]).
Yoshitomi also teaches wherein the high temperature finally annealing step is performed in a mixed atmosphere with nitrogen, at a partial pressure of hydrogen above 25%, in order to improve iron loss characteristics (para. [0036]-[0038]).
Yoshitomi additionally teaches wherein continuous annealing may be used for the last step of finally annealing to improve magnetic properties and so that coiling is not performed during final annealing (Abstract; para. [0011]). Yoshitomi teaches wherein final annealing is preferably less than 10 minutes (less than 600s) (para. [0036]-[0037]), and as short as 5 minutes (300s) (para. [0020]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used continuous annealing for the second step and high temperature finally annealing step (second batch annealing) of Takashima, as taught by Hayakawa and Yoshitomi, and therefore one which excludes batch annealing in a coiled state, as taught by Yoshitomi. Further, it would have been obvious to have used a continuous annealing time greater than 10 seconds, as taught by Hayakawa, and up to 5 minutes (300s), as taught by Yoshitomi, for the invention disclosed by Takashima. One would be motivated to use continuous annealing for the second finally annealing step (second batch annealing) of Takashima and a time of 10-300s in order to improve magnetic properties of the steel (see teaching by Hayakawa and Yoshitomi above), eliminate the need for an annealing separator and forsterite coating, and to provide a more efficient process (see teaching by Hayakawa).
Moreover, it would have been obvious to one of ordinary skill in the art to have used continuous annealing in place of batch annealing, and therefore annealing without being in a coiled state) since it has been held that making a continuous process from a previously batch process only requires routine skill in the art absent a showing of unexpected results (see MPEP 2144. 04 (V) (E); In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963); Claim directed to a method of producing a cementitious structure wherein a stable air foam is introduced into a slurry of cementitious material differed from the prior art only in requiring the addition of the foam to be continuous. The court held the claimed continuous operation would have been obvious in light of the batch process of the prior art).
Additionally, it would have been obvious to one of ordinary skill in the art to have used a mixed atmosphere of nitrogen and hydrogen for the final (second step) annealing, as taught by Hayakawa and Yoshitomi, as a matter of industrial convenience and in order to further improve iron loss characteristics (Hayakawa, para. [0104]; see teachings above by Yoshitomi).
Takashima is silent towards grain size.
Toge discloses a similar invention (Col. 1, lines 32-47; Col. 5, lines 13-55), wherein up to 98% of grains after final annealing comprise a crystal grain diameter is smaller than 1mm (1000um) in order to reduce iron loss (see Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have limited the grain size such that 50% or more of the grains were 1mm or less, which reads on the claimed range of 20-1000um, as taught by Toge, for the invention disclosed by Takashima, Hayakawa, Yoshitomi and Inoue, in order to reduce iron loss in the steel sheet.
Takashima fails to teach a size 2L of a magnetic domain existing in a grain is less than a thickness D of the steel sheet.
Inoue teaches a similar invention (para. [0082]-[0084]; [0089]-[0090]) wherein the steel sheet exhibits a magnetic domain width (2L) to be less than a thickness of the finally annealed steel sheet (para. [0090], wherein thickness is up to 0.35mm; Table 1-1 through 1-4, wherein average magnetic domain widths (w) values are below 0.35mm (350um); for example, see Table 1-4 wherein average magnetic domain width is as low as 184um (0.184mm) in example 80). Inoue teaches wherein the magnetic domain refining leads to reduction in iron loss (para. [0003]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to obtain a domain width (2L) of less than the thickness of the steel sheet, as taught by Inoue, for the invention disclosed by Takashima, Hayakawa and Yoshitomi, in order to reduce iron loss of the finally annealed steel sheet.
Takashima discloses wherein the steel comprises Goss orientation (para. [0006]), and Inoue teaches wherein highly aligned grains in the Goss orientation (instantly claimed orientation) reduces iron loss (para. [0002]).
Takashima and Inoue are silent towards the amount of grains comprising Goss orientation.
Kurosaki teaches wherein 50% or more grains have an orientation within 15 degrees of the {110}<001> orientation in order to reduce magnetic field core loss (Abstract; para. [0048]; see also para. [0069]). One of ordinary skill in the art would appreciate that grains averaging orientations within 5 degrees of the [110]<001> orientation would be within the claimed range requiring 50% or more grains to be within 15 degrees of the [110]<001> orientation.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have had 50% or more grains within 15 degrees or less of the {110}<001> orientation, as taught by Kurosaki, for the invention disclosed by Takashima, Hayakawa, Yoshitomi and Inoue, in order to reduce magnetic core loss (see teaching by Inoue and Kurosaki above).
Regarding Claim 3, Takashima discloses wherein the slab further includes Al at equal to or less than 0.01wt% (excluding 0 wt%) (para. [0043]).
Regarding Claim 4, Takashima discloses wherein a reheating temperature of the slab is 1050C to 1350C (par. [0049]).
Regarding Claim 5, Takashima discloses wherein reduction rates in the primarily cold-rolling and the secondarily cold-rolling are respectively 50% to 70% (para. [0085]). One of ordinary skill in the art would appreciate that the reductions to achieve the described thicknesses involve cold rolling within the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Regarding Claim 10, Takashima, Hayakawa and Yoshitomi disclose wherein the finally annealing is continuously performed after the cold-rolling (Takashima, para. [0068] wherein the first step is continuous annealing and performed after cold rolling; see also para. [0094] wherein annealing is continuously performed on the cold-rolled sheet; see teachings above by Hayakawa and Yoshitomi wherein the final annealing (second step) is performed continuously as well). One of ordinary skill in the art would appreciate performing annealing continuously to mean continuous annealing (as opposed to batch annealing).
Regarding Claim 11, Takashima and Hayakawa disclose wherein an amount of carbon in the electrical steel sheet is equal to or less than 0.003 wt% (excluding 0 wt%) after the finally annealing (Takashima; para. [0084]; para. [0074]; Hayakawa, para. [0117]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Regarding Claim 15, Takashima discloses wherein the slab includes 1wt% Si, which reads on the claimed 0.0005-1.0wt% Si (para. [0037]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Regarding Claim 16, Takashima discloses wherein the first step, the atmosphere has a dew point temperature of 60C to 70C (para. [0094] and para. [0102], dew point up to 60C and 65C, respectively).
Regarding Claim 17, Takashima and Iwamoto disclose the primary cold-rolling of the hot-rolled steel sheet, the decarburization-annealing of the cold-rolled steel sheet, and the second cold-rolling of the decarburization-annealed cold-rolled steel sheet (see Claim 1 above), and Takashima and Iwamoto further disclose a decarburization-annealing of the secondary cold-rolled steel sheet, a third cold-rolling of the decarburization-annealed steel sheet from the decarburization-annealing of the secondary cold-rolled steel sheet, and final annealing the third cold-rolled steel sheet (para. [0025] and para. [0050], wherein cold rolling with intermediate annealing (decarburization-annealing – see Claim 1 rejection above and teachings by Iwamoto) occurs twice or more; see also Iwamoto, Col.10, lines 59-60, wherein two or more cold-rolling steps occurs with intermediate annealing in between).
Additionally, Hecht teaches performing at least 5 cold rolling steps with intermediate (and therefore decarburization annealing as taught by Iwamoto) in between, which further reads on the claimed cold rolling and decarburization annealing steps. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Takashima (previously cited, US 20030034092 A1) in view of Hecht (previously cited, US 20180237876 A), Iwamoto (previously cited, US 4439252 A), Toshiro (previously cited, JP 2535963 B2, English Machine Translation provided), Hayakawa (previously cited and cited by Applicant in IDS filed December 17, 2021, US 20030116236 A1), Yoshitomi (previously cited, JP 06306473 A, English Machine Translation provided), Toge (previously cited, 6,039,818 A), Inoue (previously cited, US 20160333435 A1) and Kurosaki (previously cited, US 20030183304 A1), as applied to Claim 1 above, in further view of Takenaka (previously cited, US 20130087249 A1).
Regarding Claim 14, Takashima discloses wherein the steel composition is not limited, and may preferably comprise about 0.1% C, but does not expressly disclose wherein the steel comprises 1.5-0.4% C (para. [0036]; para. [0038]).
Hayakawa discloses wherein it is difficult to reduce the C content in the steel making stage (steel slab manufacturing), and that the atmosphere and times used for hot rolling and intermediate annealing, as well as primary annealing, may be modified in order to further decarburize (reduce C) in the steel (para. [0107]). Hayakawa teaches wherein such modifications are a means to reduce the carbon content after secondary recrystallization to be 30ppm or less in order to avoid magnetic aging and to reduce iron loss (para. [0117]).
Takenaka teaches a slab comprising 0.020-0.15wt% C in order to improve the microstructure of the hot rolled steel sheet through austenite-ferrite transformation, while balancing for increased load experienced in decarburization and for magnetic aging (para. [0025]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a slab comprising up to 0.15%C, as taught by Takenaka, for the invention disclosed by Takashima. One would be motivated to use a slab with a slightly higher C content in order maximize the microstructural improvements of the hot-rolled steel sheet, while then modifying the annealing parameters during hot rolling, intermediate annealing and primary annealing to obtain the required carbon content after secondary recrystallization (see teachings by Hayakawa above).
Response to Arguments
Applicant’s arguments, filed March 17, 2026, have been fully considered but are respectfully not found persuasive.
Regarding the 112b rejection:
Applicant argues that specification discloses an example embodiment in which the repetition of secondarily cold rolling and decarburization annealing is performed twice, and therefore the rejection should be withdrawn.
This argument is not found persuasive.
The claims describe ‘repeating’ the steps of decarburization and secondary cold rolling twice, while it appears the specification describes ‘performing’ the steps of decarburization and of secondary cold rolling twice. There is a lack of clarity in Applicant’s and the claim’s usage of ‘repeating’ and ‘repetition’, and what is actually occurring in the instant invention. One of ordinary skill in the art would understand ‘repeating’ to be ‘performing again’ such that a step which is ‘repeated twice’ has been performed three total times.
Regarding Hecht, Takashima and Iwamoto:
Applicant argues that Hecht does not disclose decarburization-annealing for intermediate annealing, and does disclose the claimed decarburization annealing performed in hydrogen atmosphere with a dew point of 10-70C.
This argument is not found persuasive.
Hecht teaches performing cold rolling five times, with intermediate annealing therebetween, while Iwamoto and Toshiro are applied to teach that decarburization annealing can be applied as the intermediate annealings (see Iwamoto teaching), and wherein the decarburization annealing atmosphere comprises hydrogen and a dew point of greater than 0C (see Toshiro teaching). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that Takashima and Iwamoto only disclose, optionally, one more additional cold rolling or two or more cold-rollings with intermediate annealing. Applicant argues therefore that Takashima only performs a single ‘second cold rolling’ step.
This argument is not found persuasive.
The disclosure of Takashima and Iwamoto disclose ‘at least’ two or more cold-rollings, which is inclusive of more than one cold rolling step after the first cold rolling step. Additionally, Hecht discloses wherein ‘at least three or more cold-rollings’ includes five cold rollings. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that the some embodiments of the present application comprise desirable iron loss and magnetic flux density due to the claimed orientation of the grains and the claimed grain diameters.
This argument is not found persuasive.
Kurosaki teaches the claimed orientations and Toge discloses the claimed grain sizes. Further, iron loss and magnetic flux density are not currently claimed features and are therefore not commensurate in scope with the claims. 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., magnetic flux density, iron loss) 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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shimizu (previously cited, US 4579608 A): teaches a similar invention (Claim 2; Col. 10, lines 63-66) comprising an average crystal grain size as low as 1mm (1000um) after final annealing (Abstract).
Ichida (previously cited, US 4127429 A): teaches wherein final annealing may include multiple heating steps comprising heating at 850C (stage B), heating from 850C to 1200C (stage C), and maintaining at 1200C (stage D) (Col. 4, lines 18-22; see steps B, C and D respectively; see also Fig. 4). Ichida teaches wherein the dew points for stage C is up to 20C, and the dew point in stage D is not more than 10C, in order to form a forsterite film comprising a grain size of 0.7um or less and improved adhesion (see Abstract; Col. 1, lines 57- Col. 2, line 3; see Fig. 1).
Shumilov (previously cited, US 7736444 B1): teaches using steel slabs with C contents as high as 1%, and preferably 0.5% or less (Col. 3, lines 41-44). One would be motivated to use a slab with a higher C content in order to reduce cost in slab manufacturing wherein carbon removal is difficult.
Applicant's amendment necessitated the 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 CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached on Monday - Friday 9:00-4:00 MT.
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 Walker can be reached on (571)-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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