Detailed Office Action
Notice of Pre-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 Amendments
The amendment filed on 06/11/26 has been entered. Claims 1 – 2 and 5 remain pending and under examination.
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (US2022/0359108, cited with OA of 10/17/25) in view of Tec Science (“Recrystallization annealing of steel”, NPL, cited with OA on 08/08/24), Murakami (JP2006/199999, using espacenet translation, cited with OA on 10/17/25), and Oda (WO2013/080891, using espacenet translation, cited with OA on 08/08/24)
Regarding claim 1, Tanaka teaches a process for producing a non-oriented steel sheet [Title]. The steel sheet contains a composition of:
Element
Claimed Invention (mass%)
Tanaka (mass%)
Reference
Relationship
Carbon (C)
0.01%% or less
Not more than 0.005%
[0050]
Falls within
Silicon (Si)
1.5 – 4.0%
2 – 5%
[0052]
Overlaps
Aluminum (Al)
0.3 – 1.0%
0.015 – 2%
[0060]
Overlaps
Sulfur (S)
0.01% or less
Not more than 0.01%
[0058]
Falls within
Nitrogen (N)
0.01% or less
Not more than 0.005%
[0062]
Falls within
Mn, Ni, Co, Pt, Pb, Cu, and Au
2.5 – 5.0% total
Mn: 0.05 – 5%
Ni: 0.01 – 3.0%
Cu: 0.05 – 0.5%
Total: 0.05 – 8.5%
[0054]
[0073]
[0074]
Overlaps
Tin (Sn)
0.0 – 0.4%
0% or 0.001 – 0.2%
[0071]
Falls within
Antimony (Sb)
0.0 – 0.4%
0% or 0.001 – 0.2%
[0071]
Falls within
Phosphorous (P)
0.0 – 0.4%
Not more than 0.1%
[0056]
Falls within
Mg, Ca, Sr, Ba, Ce La, Nd, Pr, Zn, and Cd
0.0 – 0.01% total
Zn: 0.0003 – 0.005%
Ca, Mg, and REM (Ce, La, Nd, Pr): 0.001 – 0.01%
Total: 0.0003 – 0.015%
[0064]
[0069]
Overlaps
Iron (Fe)
Remainder
Balance
[0013]
Meets
*Shaded indicates that element is optional
In reference to the claimed formula/relationship (i.e. formula (1)), the claimed invention is not distinguished from the prior art solely because the prior art does not disclose the claimed formula/relationship, where the prior art teaches a composition that overlaps with or anticipates the claimed range and claimed relationship/formula. That is, the claimed invention is not distinguished from the prior art if the prior art discloses a composition range/values that satisfies/overlaps with the claimed formula, even if the prior art does not disclose the formula itself. “Patentability of the claims may not rest solely on the fact that the…contents…are calculated from the formula”. See In Re Cooper, 134 F.2d 630, 631–32 (CCPA 1943). In regards to this, Tanaka teaches/suggests that the total range of silicon and aluminum would be 2.015 – 7.0 wt% and the total content of Mn, Ni, Co, Pt, Pb, Cu, and Au would be 0.05 – 8.5%. As such, Tanaka teaches a compositional range that overlaps/satisfies the claimed formula and therefore, a prima facie case of obviousness exists.
Tanaka teaches the process for producing the steel sheet including subjecting the steel slab to:
Hot – rolling at a temperature of 1000 – 1200°C [0098], meeting the claimed limitation of obtaining a hot-rolled steel sheet.
Finish rolling at a temperature of 800 – 950°C [0098], which is interpreted as overlapping the Ar1 temperature based on Table 2 of the specification, cooling at a rate of 20 – 100°C/s [0098], which overlaps with the claimed range, to a coiling temperature range of 400 – 700°C [0098], which falls within the claimed stop temperature range.
Cold – rolling [0104], meeting the claimed limitation of first cold – rolling on the hot – rolled sheet.
Intermediate annealing between cold-rolling [0104], meeting the claimed limitation of first annealing on a first cold – rolled sheet.
Cold-roll annealing after cold-rolling from 700 – 850°C [0106].
Tanaka teaches that hot rolled/hot-band annealing is optional [0100]
Tanaka does not expressly state the cumulative reduction range for cold-rolling. However, Tanaka teaches in the examples that following hot – rolling the thickness is 2.0 mm [0119] and that the final thickness after cold-rolling ranges from 0.1 – 0.5 mm [Table 2]. As such, Tanaka reasonably suggests that the cumulative reduction range of cold-rolling is 75 – 95% (1.5 mm/2mm to 1.9 mm/2mm), which overlaps with the claimed range.
Tanaka teaches performing intermediate annealing (interpreted as the first annealing step) between cold – rolling steps and that it should be performed as the usual conditions. However, Tanaka does not explicitly teach these conditions. Tanaka teaches performing finishing rolling, cooling, and coiling but does not teach that following the finish rolling, the sheet is cooled within 0.1 sec to a temperature of 400°C – 700°C (i.e. the coiling temperature range of Tanaka). Tanaka discloses that cold-rolling can be performed in multiple steps [0104], meeting the claimed limitation of a second cold rolling step, but does not expressly teach the reduction ratio of the second cold-rolling step.
Tec Science discusses recrystallization annealing of steel [Title]. Tec Science states that recrystallization annealing is also known as intermediate annealing [Page 3] because it is performed between multi-stage forming processes [Page 3]. Tec Science states that recrystallization annealing/intermediate annealing is a process of heating below the PSK line (i.e. the Ac1).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the intermediate heating step discussed by Tanaka to be below the Ac1 line/temperature, as disclosed by Tec Science. As discussed in Tec Science, intermediate/recrystallization annealing is performed within this temperature range for multi-stage forming processes. As such, an ordinarily skilled artisan would have been motivated to apply this temperature range to the method of Tanaka and would have had a reasonable expectation of success in doing so.
Tanaka as-modified does not teach that following the finish rolling, the sheet is cooled within 0.1 sec to a temperature of 400°C – 700°C (i.e. the coiling temperature range of Tanaka). Tanaka as-modified does not expressly teach the reduction ratio of the second cold-rolling step.
Murakami teaches a non-oriented steel sheet with small in-plane anisotropy of magnetic properties and excelled magnetic flux density [0007]. Murakami teaches that optimized manufacturing conditions were determined to minimize in-plane anisotropy of magnetic properties, in particular during hot – rolling [0007]. Murakami teaches that the passes of the hot – rolling, including finish rolling, should be 1000°C or less [0097] and in particular 850 to 950°C [0082].
Murakami teaches that another optimized condition is to minimize the time between the final pass of hot rolling and water-cooling commencement, Murakami teaches that this is optimally 0.2 seconds or less [0085], which overlaps with the claimed range, and that the cooling rate is preferably 40°C/sec or more [0086], to the particular coiling temperature. Murakami describes that both of these conditions are significant in order to prevent recrystallization from occurring following hot rolling [0085, 0086]. Murakami teaches that the coiling temperature should be 650°C or less in order to prevent recrystallization from occurring [0086]
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the method of Tanaka to initiate cooling within 0.2 seconds or less following finish rolling as taught by Murakami. Tanaka and Murakami are directed to the production of non-oriented electrical steel sheets (same field of endeavor) and teach similar production method steps and parameters. As such, an ordinarily skilled artisan would have considered the teachings of Murakami to be pertinent to the method of Tanaka. Moreover, Tanaka and Murakami teach finish rolling and coiling in a similar temperature range and Tanaka does not teach or suggest a time between finish rolling and initiation of cooling and as such, an ordinarily skilled artisan would have had a reasonable expectation of success. Lastly, an ordinarily skilled artisan would be motivated to apply the teachings of Murakami to Tanaka because Murakami teaches that controlling these conditions suppresses recrystallization during/immediately following hot-rolling.
Tanaka as-modified does not expressly teach the reduction ratio of the second cold-rolling step.
Oda teaches a method of producing a non-oriented steel sheet including hot-rolling, cold rolling with recrystallization annealing, and stress/distortion relief annealing [Page 7 of translation]. Oda teaches that a secondary cold-rolling step performed is skin pass rolling which is prior to annealing after cold-rolling [Page 7 of translation, line 296 – 307]. Oda suggests that skin pass rolling is applied in order to introduce strain energy and affect the iron loss as well as magnetic flux density [Page 7 of translation, line 300 – 306; Fig 7 and 8]. Oda teaches that the skin – pass rolling is performed at a reduction of 1 – 15%, which overlaps with the claimed. Oda states that this range is important for introducing strain energy in a proper amount such that growth of Goss orientation can be observed [Page 7 of translation, line 300 – 306]
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the method of Tanaka to possess a second/final cold-rolling step of skin pass rolling in a range of 1 – 15%, as taught by Oda. Tanaka and Oda are directed to the production of non-oriented electrical steel sheets (same field of endeavor) and teach similar production method steps including cold-rolling with recrystallization/intermediate annealing. As such, an ordinarily skilled artisan would have considered the teachings of Oda to be pertinent to the method of Tanaka. Moreover, Tanaka does not teach or suggest a particular restriction on cold-rolling and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Oda to Tanaka.
Lastly, an ordinarily skilled artisan would be motivated to apply the teachings of Oda to Tanaka because Oda teaches that controlling this cold-rolling step is beneficial for controlling the magnetic flux density and iron loss and that the particular range is advantageous for introducing strain energy in an amount such that growth of Goss orientation can observed.
In regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan, before the effective filing date of the claimed invention, to have selected the overlapping portion of the ranges disclosed. Selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05.I).
Regarding claim 2, Tanaka in view of Tec Science, Murakami and Oda teaches the invention as applied above in claim 1. Tanaka teaches that tin (Sn) can be included in a range of 0.001 – 0.2% [0071] (which overlaps with the claimed range) and antimony (Sb) in a range of 0.001 – 0.2% [0071] (which overlaps with the claimed range).
Tanaka teaches that Zn is provided in a range of 0.0003 – 0.005% [0064] and that Ca, Mg, and REM (Ce, La, Nd, Pr) are provided in a range of 0.001 – 0.01% [0069]. Wherein the total would be 0.0003 – 0.015%, which overlaps with the claimed range.
Selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05.I).
Regarding claims 5, Tanaka in view of Tec Science, Murakami and Oda teaches the invention as applied in claim 1. Tanaka teaches that a step of cold-roll annealing after cold-rolling is performed [0106], meeting the claimed limitation of second annealing. Tanaka teaches that the annealing is completed in a temperature range from 700 – 850°C [0106], which is interpreted as overlapping the Ac1 temperature based on Table 2 of the specification.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the combination of Tanaka and Oda would result in arriving at an aluminum content of less than 0.01%. This is not found persuasive. Tanaka teaches that the aluminum content is 0.015 – 2% [0060], which overlaps with the claimed range. Oda is not relied upon for a teaching of the composition. Oda is relied upon for the teaching that when a secondary cold-rolling step of skin pass rolling is performed prior to annealing after cold-rolling at a reduction of 1 – 15% (which overlaps with the claimed) [Page 7 of translation, line 296 – 307], it introduces strain energy and affects the iron loss as well as magnetic flux density [Page 7 of translation, line 300 – 306; Fig 7 and 8]. Oda states that this range is important for introducing strain energy in a proper amount such that growth of Goss orientation can be observed [Page 7 of translation, line 300 – 306]. Tanaka teaches the cold-rolling step is not particularly limited and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Oda to Tanaka. While the examiner agrees that Oda teaches a differing composition for the non-oriented steel sheet, as shown in Fig 6 and 7 of Oda, the skin pass rolling described both increases magnetic flux density and decreases iron loss which provides strong motivation to a person of ordinary skill in the art to apply the skin pass rolling step.
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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