DETAILED ACTION
Claims 1, 4-12, and 14-15 are pending, and claims 1, 4, and 12 are currently under review.
Claims 5-11 and 14-15 are withdrawn.
Claims 2-3 and 13 are canceled.
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
The amendment filed 9/23/2025 has been entered. Claims 1, 4-12, and 14-15 remain(s) pending in the application.
Claim Interpretation
The term “primary grain” is interpreted to refer to primary recrystallized grains after decarburization annealing as expressly stated by applicant in [p.5] of the remarks filed 9/23/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 12 is dependent upon previous dependent claim 2, which has been canceled in the amendments filed 9/23/2025. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (JP2019127616, machine translation referred to herein).
Regarding claim 1, Watanabe et al. discloses a grain oriented electrical steel sheet [0013]; wherein said steel sheet has a composition as seen in table 1 below [0027-032]. The examiner notes that Watanabe et al. does not require any non-recited compositional inclusions, which one of ordinary skill would understand to meet the limitation of “consisting of…”
Watanabe et al. does not expressly teach a primary grain size feature as claimed. However, the examiner submits that this feature would have naturally flowed from the prior art. See MPEP 2112 & MPEP 2144.05(I). One of ordinary skill would understand that steel microstructure such as grain parameters are directly affected by steel composition and manufacturing parameters. Specifically, the instant specification discloses obtaining the claimed grain features by controlling the steel composition to meet the claimed Al, N, Nb, and S ranges [p.5-6, 8-9, 11 instant spec.], as well as controlling decarburization annealing to be within 800 to 1000 degrees C and within 90 to 170 seconds [table3 instant spec.]. Watanabe et al. discloses overlapping Al, N, Nb, and S inclusions as stated above. Watanabe et al. further teaches that the steel material is processed with a decarburization annealing step at 780 to 950 degrees C for 80 to 200 seconds, which overlaps with the aforementioned annealing of the instant specification [0040-0041]. Since Watanabe et al. discloses an overlapping steel composition and method of manufacture, the examiner submits that substantially similar, overlapping primary grain size features overlapping with that as claimed would have naturally flowed absent concrete evidence to the contrary. See MPEP 2112 & MPEP 2144.05(I). The examiner’s position is further bolstered by the fact that the disclosure of Watanabe et al. already meets the claimed magnetic properties as shown further below, which is the direct effect of achieving the claimed primary grain features as disclosed by applicant [tables 2-7 spec.].
Table 1.
Element (wt.%)
Claim 1
Watanabe et al.
Si
2 – 4
2.5 – 4.5
C
0.03 – 0.07
0.01 – 0.1
Al
0.015 – 0.035
0.01 – 0.04
N
0.003 – 0.01
0.003 – 0.015
Nb
0.001 – 0.05
0.001 – 0.01
Fe & impurities
Balance
Balance
S
0 – 0.005 (excl.)
0.002 – 0.03
V
0 – 0.005
0.001 – 0.01
Ti
0 – 0.005
0.001 – 0.01
Mn (optional)
Mn: 0.05 – 0.2
0.01 – 0.5
P (optional)
0.01 – 0.08
0.005 – 0.5
Cr (optional)
0.05 – 0.4
0.01 – 0.4
Sn (optional)
0.03 – 0.3
0.005 – 0.5
Cu (optional)
0.01 – 0.4
0.01 – 0.5
Regarding claim 4, Watanabe et al. discloses the steel of claim 1 (see previous). Watanabe et al. further teaches achieving a range of magnetic flux density B8 values of up to approximately 1.968 T, which one of ordinary skill would understand to correspond to induction, as well as an iron loss W17/50 values of up to approximately 0.79 at a thickness of 0.23 mm [table3]. As determined by the examiner, this overlaps with the claimed iron loss range of up to 0.855 when using a sheet thickness of 0.23 mm. See MPEP 2144.05(I).
Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masui et al. (JPH07258802, machine translation referred to herein) alone or alternatively further in view of Watanabe et al. (JP2019127616, machine translation referred to herein).
Regarding claim 1, Masui et al. discloses a grain-oriented silicon steel sheet having a composition seen in table 2 below [0005, 0032-0034, table4]. Masui et al. further teaches an average primary grain size of 5 to 35 micrometers, and a standard deviation of 10% to 70% of said average grain size value, which results in an overlapping variation coefficient [0006]. The examiner notes that the overlap between the steel composition and grain sizes of Masui et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Alternatively, Masui et al. does not expressly require a particular amount of S as claimed. Watanabe et al. discloses that it is known to limit S to below 0.005 weight percent to reduce inhibitor forming components in oriented silicon steels [0031]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Masui et al. by controlling S for the aforementioned benefit as taught by Watanabe et al.
Table 2.
Element (wt.%)
Claim 1
Masui et al.
Si
2 – 4
1 – 7
C
0.03 – 0.07
0 – 0.03
Al
0.015 – 0.035
0 – 0.1
N
0.003 – 0.01
At least 60 ppm
Nb
0.001 – 0.05
0.001 – 0.5
Fe & Impurities
Balance
Balance
S
0 – 0.005 (excl.)
0 (not expressly included)
V
0 – 0.005
0 (not expressly included)
Ti
0 – 0.005
0 (not expressly included)
Mn (optional)
Mn: 0.05 – 0.2
0 – 0.5
P (optional)
0.01 – 0.08
0.02 – 0.3
Cr (optional)
0.05 – 0.4
0.02 – 0.3
Sn (optional)
0.03 – 0.3
0.02 – 0.2
Cu (optional)
0.01 – 0.4
0.001 – 0.5
Regarding claim 4, Masui et al. discloses the steel of claim 1 (see previous). Masui et al. further teaches that the steel achieves an iron loss of less than 1.1 W/kg and a magnetic flux density of greater than 1.92 T, which overlaps with the claimed ranges [0005]. The examiner alternatively notes that Masui et al. discloses an overlapping steel composition and steel microstructure, such that overlapping magnetic properties would have naturally flowed. See MPEP 2144.05(I) & MPEP 2112.
Response to Arguments
The previous 112b rejections are withdrawn in view of applicant’s remarks.
The previous 102 rejections over Watanabe et al. have been withdrawn in view of applicant’s amendments. However, new rejections over Watanabe et al. over U.S.C. 103 are now presented and applicant’s arguments will be addressed for a clear record.
Applicant argues that Watanabe et al. teaches including Se and/or Te among other elements. The examiner notes that Watanabe et al. teaches inclusions of Se as an alternative such that Se is not required, which meets the claim scope of “consisting of…”
The previous 103 rejections over Han et al. have been withdrawn in view of applicant’s amendments.
Applicant's arguments 9/23/2025 regarding the rejections over Masui et al. have been fully considered but they are not persuasive.
Applicant argues that Masui et al. does not meet the claimed S amount because the examples of Masui et al. all have S amounts above the claimed range. The examiner cannot concur. It is noted that specific examples do not constitute a teaching away from the broader disclosure of the prior art. See MPEP 2123. Although the examples of Masui et al. include S as alleged by applicant, Masui et al. never expressly requires any inclusions of S, such that one of ordinary skill would understand S to be either absent or merely included in impurity amounts, either of which meets the claims.
Conclusion
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734