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 .
Status of Claims
Claims 1-4 are pending where claim 1 has been amended.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims have been maintained.
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008001977 A to Ushigami et al (cited by applicant in IDS, the English language machine translation provided by applicant has been relied upon for examination purposes) in view of EP 0589418 A1 to Honma et al.
Regarding claims 1-4, Ushigami discloses, a method for manufacturing a grain-oriented electrical steel sheet, characterized in that the method comprises a reheating step in which a steel slab comprising the following chemical components which lie within the instantly claimed range as follows (Ushigami, abstract, Examples, para [0050-0065], specifically Example 5, para [0060]).
Element
Claimed wt%
Ushigami wt%
Lies within?
Si
2.00-4.00
3.1
Yes
C
0-0.085
0.05
Yes
Al
0.01-0.065
0.027
Yes
N
0.004-0.012
0.008
Yes
Mn
0.05-1.00
0.1
Yes
S
0.003-0.015
0.007
Yes
Fe
Balance
Balance
Yes
B
0-0.0100
≤impurity
Yes
Cr
0-0.30
0.1
Yes
Cu
0-0.40
0.2
Yes
P
0-0.50
0.03
Yes
Sn
0-0.30
0.05
Yes
Sb
0-0.30
≤impurity
Yes
Ni
0-1.00
≤impurity
Yes
Mo
0-0.1
≤impurity
Yes
Bi
0-0.01
≤impurity
Yes
is heated at a temperature of 1150 °C (within the claimed range of 1280 °C or lower), a hot rolling step of hot rolling the heated steel slab, a hot rolled sheet annealing step of annealing the hot rolled sheet obtained by the hot rolling step, a cold rolling step of cold rolling the hot rolled sheet after the hot rolled sheet annealing step, a decarburization annealing step of decarburization annealing the cold rolled sheet obtained by the cold rolling step, and a final annealing step of final annealing the cold rolled sheet after performing the decarburization annealing step,
wherein the decarburization annealing step comprises a heating step to heat the cold rolled sheet from an inlet side temperature TO °C of the cold rolling temperature (within the claimed range of 600 °C or lower) to a soaking temperature T2 °C of 840 °C (within the claimed range of a temperature higher than the inlet side temperature TO °C), and a soaking step to maintain the temperature of the cold rolled sheet at the soaking temperature T2 °C, wherein at the heating step in the decarburization annealing step, a heating rate HR1 at which rate the cold rolled sheet is heated from the inlet side temperature TO °C to an attained temperature T1°C of 720 °C (within the claimed range of in the range from 700 to 900°C, and lower than the soaking temperature T2 °C) is set to 100 °C/sec (within the claimed ranges of 40 °C/sec or more and 75 to 125 °C/sec), and a heating rate HR2 at which rate the temperature of the cold rolled sheet changes from the attained temperature T1 °C to the soaking temperature T2 °C is set to 20 °C/sec (within the instantly claimed range of higher than 15°C/sec and up to 30°C/sec).
(Ushigami, abstract, Examples, para [0050-0065], specifically Example 5, para [0060]).
Regarding the instantly claimed limitation of “wherein at a heating step in the final annealing step, a heating rate HR3 is 15 °C/h or less in the temperature range of 1000 °C to 1100 °C, and the temperature within the temperature range of 1000 °C to 1100 °C is kept for 10 hours or more,” Ushigami discloses that the final annealing step is conducted at 1200 °C (Ushigami, para [0060]) but is silent as to a heating rate HR3 in the temperature range of 1000 °C to 1100 °C or holding duration.
Honma discloses that during final annealing of a grain oriented sheet at a temperature between 1100 and 1300 °C (as is the case in the annealing of Ushigami) the heating rate to the final annealing temperature should be limited to 30°C/hr or less in order to avoid inhibitors escaping before satisfactory recrystallization occurs (Honma, page 8 line 53 – page 9 line 19).
Regarding claims 1-4, it would have been obvious to one of ordinary skill in the art at the time the invention was made to set the heating rate to the final 1200 °C annealing of Ushigami, including in the range from 1000 °C to 1100 °C, to 30 °C/hr or less (overlapping the instantly claimed range of 15 °C/h or less) as suggested by Honma. The motivation for doing so would be to avoid inhibitors escaping before satisfactory recrystallization occurs (Honma, page 8 line 53 – page 9 line 19). Regarding the overlapping heating rates, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of final annealing heating rate including the instantly claimed because Ushigami in view of Honma discloses the same utility throughout the disclosed ranges.
Regarding the limitation “the temperature within the temperature range of 1000 °C to 1100 °C is kept for 10 hours or more,” this limitation corresponds to an average heating rate of 10 °C/hr or less in the range of 1000 °C to 1100 °C. Thus, the disclosed heating rate of Ushigami of 30 °C/hr or less overlaps the instantly claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of final annealing heating rate including the instantly claimed because Ushigami in view of Honma discloses the same utility throughout the disclosed ranges.
Regarding the instantly claimed limitation of “having a grain size after secondary recrystallization of 1.5mm or less and an iron loss of approximately 0.85 (W/kg) or less,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the steel of Ushigami in view of Honma would be expected to have the same or similar properties as the instantly claimed steel because the steel of Ushigami in view of Honma has the same or substantially the same composition and method of manufacturing.
Response to Arguments
Applicant's arguments filed 8/28/2025 have been fully considered but they are not persuasive.
Applicant argues that Ushigami in view of Honma does not disclose the limitation “having a grain size after secondary recrystallization of 1.5mm or less and an iron loss of approximately 0.85 (W/kg) or less.” This is not found persuasive because regarding the instantly claimed limitation of “having a grain size after secondary recrystallization of 1.5mm or less and an iron loss of approximately 0.85 (W/kg) or less,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the steel of Ushigami in view of Honma would be expected to have the same or similar properties as the instantly claimed steel because the steel of Ushigami in view of Honma has the same or substantially the same composition and method of manufacturing.
Applicant argues that Ushigmai in view of Honman does not disclose the instantly claimed limitation of “the temperature within the temperature range of 1000 °C to 1100 °C is kept for 10 hours or more.” This is not found persuasive because regarding the limitation “the temperature within the temperature range of 1000 °C to 1100 °C is kept for 10 hours or more,” this limitation corresponds to an average heating rate of 10 °C/hr or less in the range of 1000 °C to 1100 °C. Thus, the disclosed heating rate of Ushigami of 30 °C/hr or less overlaps the instantly claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of final annealing heating rate including the instantly claimed because Ushigami in view of Honma discloses the same utility throughout the disclosed ranges.
Applicant argues that Honma teaches a thickness of a primary film to be 0.3 µm or less whereas the present application and Ushigami do not specify a thickness of the primary film. This is not found persuasive because one of ordinary skill in the art would follow the practice of Honma to ensue the primary film thickness of Ushigami is 0.3 µm or less, which is not excluded by the instant claims.
Applicant argues that the instant claims are patentable over Ushigami in view of Honma because the specific examples of the heating rate of Honma are outside of the instantly claimed ranges. This is not found persuasive because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 [R-5]). Although Honma does not explicitly list specific examples of heating rate falling within the instantly claimed ranges, the broader teachings of Honma reasonably suggest heating rates falling within the instantly claimed ranges and as such Ushigami in view of Honma presents a prima facie case of obviousness over the instantly claimed heating rate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP 2008001977 and US 20130306202, both cited by applicant in IDS, both appear to disclose methods for manufacturing a grain-oriented electrical steel sheet relevant to instant claims 1-4.
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 BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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