DETAILED ACTION
Claims 1, 3, and 7-14 are pending, and claims 1 and 3 are currently under review.
Claims 2 and 4-6 are canceled.
Claims 7-14 are withdrawn.
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 9/30/2025 has been entered. Claims 1, 3, and 7-14 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every 112 rejections previously set forth in the Non-Final Office Action mailed 6/30/2025.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (CN103834858, machine translation referred to herein) alone, or alternatively further evidenced by or in view of Bae et al. (WO9308313) and in view of Kono et al. (JP2009167480, machine translation referred to herein).
Regarding claim 1, Zhou et al. discloses a non-oriented steel sheet for use in electrical applications [0004, 0008]; wherein said steel has a composition as seen in table 1 below [0011]. Zhou et al. is silent regarding any oxygen amounts, which one of ordinary skill would understand to mean that oxygen is minimized or only present as an impurity, which overlaps with the claimed ranges or meets the feature of “inevitable impurities”. The examiner notes that the overlap between the steel composition of Zhou et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Zhou et al. does not expressly teach the formula limiting O, S, and Ca as claimed. However, the examiner notes that this formula merely further limits O, S, and Ca amounts, which are already overlapping as stated above. See MPEP 2144.05(I).
Alternatively, Zhou et al. does not expressly teach an amount of O as claimed. However, the examiner submits that O is known to be an impurity amount which is minimized to an amount of below 0.005 weight percent in non-oriented steels as evidenced by Bae et al. [p.18]. Alternatively, Bae et al. discloses minimizing O to the aforementioned amount because O deteriorates magnetic properties [p.18]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Zhou et al. by controlling O for the aforementioned benefit as taught by Bae et al. In either situation, the examiner notes that the overlap between the O amount of Bae et al. and that as recited in the claimed ranges is prima facie obvious. See MPEP 2144.05(I).
Zhou et al. further teaches that the steel includes 20% of the (100) phase, which falls within the claimed range [0009]. Zhou et al. also teaches achieving exemplary B50 magnetic induction values of up to approximately 1.69, which overlaps with the claimed range [table3]. See MPEP 2144.05(I). Although these specific embodiment compositions of Zhou et al. are not currently relied upon in the rejections, one of ordinary skill would readily understand that inventive examples and property ranges therein would be reasonably encompassed by the disclosure of Zhou et al.
Zhou et al. does not expressly teach an iron loss value as claimed. However, since Zhou et al. discloses an overlapping steel composition and identical crystal phase texture (ie. structure) as claimed, the examiner submits that a substantially similar, overlapping value of iron loss would have naturally flowed absent concrete evidence to the contrary. See MPEP 2144.05(I) & MPEP 2112. The examiner’s position is further bolstered by the overlapping B50 values of Zhou et al. as stated above, wherein one of ordinary skill would understand that both iron loss and B50 properties are directly influenced by steel composition and microstructure and therefore meeting the claimed B50 property range also indicates that the disclosure of Zhou et al. meets the claimed iron loss property range.
Zhou et al. does not expressly teach a steel thickness as claimed. However, the examiner submits that the claimed range overlaps with well-known and conventional thickness ranges for non-oriented steels that would have been readily recognized by one of ordinary skill. See MPEP 2144.05(I). Alternatively, Kono et al. discloses that it is known to roll non-oriented steels to final desired thicknesses of 0.05 to 0.25 mm to improve ductility and achieve stable production [0036]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Zhou et al. by utilizing the thickness range of Kono et al. for the aforementioned benefit. The examiner notes that the thickness range of Kono et al. overlaps with that as claimed. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1
Zhou et al.
C
0 – 0.003
0 – 0.002
Si
1.6 – 3.4
2 – 4.5
Mn
0.1 – 1.2
0.1 – 2.5
S
0 – 0.003
0 – 0.002
Al
0.1 – 3
0.005 – 2.5
Sn
0.005 – 0.2
0 – 0.2
Ca
0.0005 – 0.01
0 – 0.003
O
0 – 0.003
Impurity
0 – 0.005 (Bae et al.)
N
0 – 0.003
0 – 0.002
Fe & Impurities
Balance
Balance
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (CN103834858, machine translation referred to herein) alone, or alternatively further evidenced by or in view of Bae et al. (WO9308313).
Regarding claim 3, Zhou et al. discloses a non-oriented steel sheet for use in electrical applications [0004, 0008]; wherein said steel has a composition as seen in table 2 below [0011]. Zhou et al. is silent regarding any oxygen amounts, which one of ordinary skill would understand to mean that oxygen is minimized or only present as an impurity, which overlaps with the claimed ranges or meets the feature of “inevitable impurities”. The examiner notes that the overlap between the steel composition of Zhou et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Zhou et al. does not expressly teach the formula limiting O, S, and Ca as claimed. However, the examiner notes that this formula merely further limits O, S, and Ca amounts, which are already overlapping as stated above. See MPEP 2144.05(I).
Alternatively, Zhou et al. does not expressly teach an amount of O as claimed. However, the examiner submits that O is known to be an impurity amount which is minimized to an amount of below 0.005 weight percent in non-oriented steels as evidenced by Bae et al. [p.18]. Alternatively, Bae et al. discloses minimizing O to the aforementioned amount because O deteriorates magnetic properties [p.18]. Therefore, it would have been obvious to one of ordinary skill to modify the steel of Zhou et al. by controlling O for the aforementioned benefit as taught by Bae et al. In either situation, the examiner notes that the overlap between the O amount of Bae et al. and that as recited in the claimed ranges is prima facie obvious. See MPEP 2144.05(I).
Zhou et al. further teaches that the steel includes 20% of the (100) phase, which falls within the claimed range [0009]. Zhou et al. also teaches achieving exemplary B50 magnetic induction values of up to approximately 1.69, which overlaps with the claimed range [table3]. See MPEP 2144.05(I). Although these specific embodiment compositions of Zhou et al. are not currently relied upon in the rejections, one of ordinary skill would readily understand that inventive examples and property ranges therein would be reasonably encompassed by the disclosure of Zhou et al.
Zhou et al. does not expressly teach an iron loss value as claimed. However, since Zhou et al. discloses an overlapping steel composition and identical crystal phase texture (ie. structure) as claimed, the examiner submits that a substantially similar, overlapping value of iron loss would have naturally flowed absent concrete evidence to the contrary. See MPEP 2144.05(I) & MPEP 2112. The examiner’s position is further bolstered by the overlapping B50 values of Zhou et al. as stated above, wherein one of ordinary skill would understand that both iron loss and B50 properties are directly influenced by steel composition and microstructure and therefore meeting the claimed B50 property range also indicates that the disclosure of Zhou et al. meets the claimed iron loss property range.
Zhou et al. further teaches limiting Nb, V, and Ti to be less than 0.006 weight percent [0011]. The examiner notes that this range overlaps with and falls within the claimed ranges, respectively. See MPEP 2144.05(I).
Table 2.
Element (wt.%)
Claim 1
Zhou et al.
C
0 – 0.003
0 – 0.002
Si
1.6 – 3.4
2 – 4.5
Mn
0.1 – 1.2
0.1 – 2.5
S
0 – 0.003
0 – 0.002
Al
0.1 – 3
0.005 – 2.5
Sn
0.005 – 0.2
0 – 0.2
Ca
0.0005 – 0.01
0 – 0.003
O
0 – 0.003
Impurity
0 – 0.005 (Bae et al.)
N
0 – 0.003
0 – 0.002
Fe & Impurities
Balance
Balance
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zaizen et al. (WO2018147044, US 2020/0010918 referred to as English translation) in view of either one of Zhou et al. (CN103834858, machine translation referred to herein) or Heo et al. (US 2014/0216606).
Regarding claim 3, Zaizen et al. discloses a non-oriented electrical steel sheet [abstract]; wherein said steel has a composition as seen in table 3 below [0027-0030, table1]. Zaizen et al. also teaches limiting Ti, Nb, and V to be below 0.003 weight percent, 0.005 weight percent, and 0.005 weight percent respectively. The examiner notes that the overlap between the steel composition of Zaizen et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Zaizen et al. does not expressly teach the formula limiting O, S, and Ca as claimed. However, the examiner notes that this formula merely further limits O, S, and Ca amounts, which are already overlapping as stated above. See MPEP 2144.05(I).
Zaizen et al. further teaches that the steel achieves magnetic properties of B50 of up to approximately 1.73 and iron loss W10/400 of as low as 9.5 W/kg [table2]. Although these particular values pertain to specific examples which are not specifically relied upon in the current rejections, the examiner submits that one of ordinary skill would understand that the general disclosure of Zaizen et al. to suggest ranges of magnetic properties encompassed by specific examples, which overlaps with the claimed ranges. See MPEP 2144.05(I).
Zaizen et al. further teaches that it is desirable to promote formation of the {100} grain orientation; however, Zaizen et al. does not expressly teach an amount as claimed. Zhou et al. discloses that known to control crystal orientation in non-oriented steels in order to control magnetic properties, wherein including at least 20% or more of the (100) phase achieves a desirable isotropic structure [0009]. Alternatively, Heo et al. discloses that non-oriented steels having a (100) phase achieve excellent magnetic properties and further discloses increasing (100) phase amount to be up to 100% as desired [0018, 0028-0029, examples] Therefore, it would have been obvious to one of ordinary skill to modify the steel of Zaizen et al. by specifying an amount of (100) phase for the aforementioned benefits as taught by Zhou et al. or Heo et al.
Table 3.
Element (wt.%)
Claim 1
Zaizen et al.
C
0 – 0.003
0 – 0.005
Si
1.6 – 3.4
2 – 7
Mn
0.1 – 1.2
0.05 – 2
S
0 – 0.003
0 – 0.005
Al
0.1 – 3
0 – 3
Sn
0.005 – 0.2
0.005 – 0.2
Ca
0.0005 – 0.01
0.001 – 0.01
O
0 – 0.003
0.0014 – 0.0028
N
0 – 0.003
0 – 0.005
Fe & Impurities
Balance
Balance
Response to Arguments
Applicant's arguments filed 9/30/2025 have been fully considered but they are not persuasive.
Applicant argues that Zhou et al. is directed to conventional steels and one of ordinary skill would not be able to apply the teachings of Zhou et al. to a thin steel as claimed. The examiner cannot concur. Zhou et al. does not specifically teach or require any particular thickness, and so the examiner cannot consider Zhou et al. to teach away from the claimed thickness.
Applicant then argues that the prior art does not contemplate the specific manufacturing steps of the instant application. In response, the examiner notes that the instant claims are directed to a product, not a process, such that applicant’s arguments are moot. If applicant is of the position that the claimed product can only be made exclusively by the method of the instant application, the examiner cannot concur absent concrete evidence to the contrary which has not been presented.
Applicant argues that the previous determination of inherency/overlapping properties naturally flowing from the prior art is unfounded because magnetic properties depend upon thickness and manufacturing, both of which are not disclosed by Zhou et al. The examiner cannot concur. As stated previously, Zhou et al. discloses an overlapping composition, microstructure, and magnetic properties. One of ordinary skill would understand that metal properties are directly affected by metal composition and microstructure, such that overlapping magnetic properties would have naturally flowed. See MPEP 2112 & MPEP 2144.05(I). The specific method of manufacture is irrelevant when the claims are not directed to a method and the prior art already teaches an overlapping, substantially similar composition and microstructure as explained above. Regarding the aforementioned thickness allegation, the examiner cannot concur because Zhou et al. does not particularly limit thickness as stated above and furthermore because applicant has not provided any evidence that changing thickness would necessarily result in changes in properties.
Applicant then alleges on p.7-8 that changing thickness would result in different properties “according to example 5-3 of Zhou et al.” However, the specific compositional and manufacturing parameters relied upon by applicant on p.7-8 do not pertain to any of the examples of Zhou et al. or the instant specification, much less that of example 5-3 of Zhou et al. Therefore, it is not entirely clear to the examiner as to what point applicant is making. If applicant is providing new data that was not previously presented in the specification as originally filed, the examiner cannot consider said data absent submission of an affidavit or declaration.
Applicant then argues that Zhou et al. requires P to improve steel properties, which does not meet the claimed limitation of “consisting of…” The examiner cannot concur. Zhou et al. merely teaches P in an amount of up to 0.2 weight percent (ie. including 0%), which one of ordinary skill would understand to overlap with the claim scope of “inevitable impurities”. The mere disclosure of a particular effect of P inclusions by the prior art is irrelevant absent any further limiting recitations in the claim.
Applicant argues that Bae et al. can include O and further than there is no motivation to apply the teachings of Bae et al. because Zhou et al. does not teach limiting O. The examiner cannot concur. Bae et al. expressly teaches an overlapping O amount and provides an express motivation to do so, such that prima facie obviousness has been established. Accordingly, the claimed O amount and O relationship is obvious over the prior art. If applicant is of the position that the claimed O amount and O relationship is critical, the examiner cannot concur absent concrete evidence to the contrary which applicant has not provided.
Applicant argues that Kono et al. does not teach several features of the independent claim. 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).
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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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734