DETAILED ACTION
Response to Amendment
The Amendment filed 04/30/2026 has been entered. Claims 1-6 and 13 remain pending in the application and are presented for examination on the merits. Claims 10-12 have been withdrawn due to a restriction requirement. Claims 7-9 have been canceled. No new claims have been added. Applicant's amendments to the abstract have overcome the objections previously set forth in the Non-Final Rejection mailed 01/30/2026. Applicant's amendments to the claims have overcome the objections previously set forth in the Non-Final Rejection mailed 01/30/2026. The 112(d) rejections previously set forth in the Non-Final Rejection mailed 01/30/2026 are updated in this Office action in view of claim amendments.
Claim Interpretation
Regarding claim 1, the term “including” in line 1, synonymous with “comprising”, is inclusive or open-ended, and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). The term “consisting of” in line 3 is interpreted as excluding any element, step, or ingredient not specified in the claim. See MPEP 2111.03(II). As currently written, the balance “consisting of” Fe and inevitable impurities closes the composition of the claimed steel sheet.
Regarding the chemical composition of claims 1-5 and 13, elements including zero in their compositional range or including the limitation “or less”, including the claimed Ti, Zr, P, Sn, Sb, C, S, N, Cu, Ni, Cr, Mo, V, are interpreted as optional elements since the limitation “or less” includes a 0 wt% content.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-5 are 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 1 recites a steel sheet “including” Si, Mn, Al, Bi, Fe, Ti, and Zr, and a balance “consisting of” Fe and inevitable impurities. Claims 2-5, which depend on claim 1, recite further elements in the composition of the claimed steel sheet adding one or more of P, Sn, and Sb in claim 2, one or more of C, S, and N in claim 3, one or more of Cu, Ni, and Cr in claim 4, and one or more of Mo and V in claim 5. Since claim 1 closes the composition by reciting “balance consisting of Fe and inevitable impurities” (see Claim Interpretation section), the claim excludes any element not specified in the claim. See MPEP 2111.03(II). Claims 2-5 therefore fail to include all the limitations of the claim upon which it depends since it is attempting to re-open the close-ended composition recited in claim 1 by including additional elements not recited in claim 1.
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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2010/121150 A of Tanaka (as cited in prior Office action and in IDS mailed on 07/06/2022, with reference to its English machine translation, hereafter JP’150).
Regarding claims 1-6 and 13, JP’150 teaches a non-oriented electrical steel sheet which can be easily provided with excellent machining characteristics needed as a rotor and excellent magnetic characteristics needed as a stator (Abstract, reads on claimed non-oriented electrical steel sheet).
Element
Instant claims (wt%)
JP’150 (mass%)
Si
2.1-3.8
1.0-4.0
Mn
0.001-0.6
0.05-3.0
Al
0.001-0.6
≤ 2.5
Bi
0.0005-0.003
Optional: one or more of Sn, Sb, Se, Bi, Ge, Te and B
≤ 0.2
Preferable: 0.0002-0.2
Ge
0.0003-0.001
Optional: one or more of Sn, Sb, Se, Bi, Ge, Te and B
≤ 0.5
Preferable: 0.001-0.5
Ti
≤ 0.005
Optional: Contain Nb, Zr, Ti, or V that meets formula (2)
Zr
≤ 0.01
Optional: Contain Nb, Zr, Ti, or V that meets formula (2)
P
Claim 2: “one or more of”
≤ 0.08
≤ 0.25
Sn
Claim 2: “one or more of”
≤ 0.08
Optional: one or more of Sn, Sb, Se, Bi, Ge, Te and B
≤ 0.5
Preferable: 0.001-0.5
Sb
Claim 2: “one or more of”
≤ 0.08
Optional: one or more of Sn, Sb, Se, Bi, Ge, Te and B
≤ 0.5
Preferable: 0.0005-0.5
C
Claim 3: “one or more of”
≤ 0.01
≤ 0.02
S
Claim 3: “one or more of”
≤ 0.01
≤ 0.01
N
Claim 3: “one or more of”
≤ 0.01
≤ 0.01
Cu
Claims 4 and 13: “one or more of”
≤ 0.05
Optional: at least one of Cu, Ni, Cr, Mo, Co, W
≤ 8.0
Preferable: 0.01-15.0
Ni
Claims 4 and 13: “one or more of”
≤ 0.05
Optional: at least one of Cu, Ni, Cr, Mo, Co, W
≤ 2.0
Preferable: 0.01-2.0
Cr
Claims 4 and 13: “one or more of”
≤ 0.05
Optional: at least one of Cu, Ni, Cr, Mo, Co, W
≤ 15.0
Preferable: 0.01-15.0
Mo
Claim 5: “one or more of”
≤ 0.01
Optional: at least one of Cu, Ni, Cr, Mo, Co, W
≤ 4.0
0.005-4.0
V
Claim 5: “one or more of”
≤ 0.01
Optional: Contain Nb, Zr, Ti, or V that meets formula (2)
Nb
-
Optional: Contain Nb, Zr, Ti, or V that meets formula (2)
Co
-
Optional: at least one of Cu, Ni, Cr, Mo, Co, W
≤ 4.0
Preferable: 0.01-4.0
W
-
Optional: at least one of Cu, Ni, Cr, Mo, Co, W
≤ 4.0
Preferable: 0.01-4.0
Se
-
Optional: one or more of Sn, Sb, Se, Bi, Ge, Te and B
≤ 0.3
Preferable: 0.0005-0.3
Te
-
Optional: one or more of Sn, Sb, Se, Bi, Ge, Te and B
≤ 0.3
Preferable: 0.0005-0.3
B
-
Optional: one or more of Sn, Sb, Se, Bi, Ge, Te and B
≤ 0.01
Preferable: 0.0002-0.1
Optional: Ca, Mg, REM
Fe and inevitable impurities
Balance
Balance (“Fe and impurities”)
JP’150 teaches a steel with a chemical composition ([0020]-[0025], [0044]-[0064], claims 1 and 3-5) overlapping with the claimed steel, as shown in List 1. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the Bi and Ge content of claims 1 and 13, JP’150 teaches an embodiment where Bi: 0.0005% or more and Ge: 0.001% or more are preferably set to obtain a recrystallization suppression effect ([0062]). 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the Ti and Zr content of claims 1 and 13, while JP’150 does not explicitly disclose compositional ranges for Nb, Zr, Ti, or V, JP’150 teaches Nb, Zr, Ti and V are extremely important elements to achieve the desired magnetic properties ([0052]). JP’150 teaches in order to obtain these effects, it is necessary to contain Nb, Zr, Ti or V in a solid solution state in an amount greater than that of C or N in terms of atomic fraction and it is necessary to contain at least one element selected from the group consisting of Nb, Zr, Ti and V in an amount that satisfies the following formula (2):
0<Nb/93+Zr/91+Ti/48+V/51-(C/12+N/14) (2)
(In formula (2), Nb, Zr, Ti, V, C, and N represent the contents (mass%) of the respective elements ([0052]).
One can perform the calculations to identify possible contents of Nb, Zr, Ti, or V using the teachings and formula (2) of JP’150. As an example, assuming a C and N content of 0 mass% and a Ti and Zr content of 0.001 mass% and 0.005 mass% respectively, the value of formula (2) results in 7.6*10-5, which meets the requirements of JP’150 of formula (2) having a value greater than zero, and Ti and Zr amounts greater than C and N. As another example, assuming a C and N content of 0 mass% and a Ti content of 0.001 mass%, the value of formula (2) results in 2.1*10-5, which meets the requirements of JP’150 of formula (2) having a value greater than zero, and a Ti amount greater than C and N. Both of these examples have Ti and Zr contents which lie inside the claimed ranges and show that the Ti and Zr contents of JP’150 overlap or lie inside the claimed ranges of the instant invention. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
JP’150 therefore reads on the limitations a non-oriented electrical steel sheet including, in wt%, Si: 2.1 to 3.8 %, Mn: 0.001 to 0.6 %, Al: 0.001 to 0.6 %, Bi: 0.0005 to 0.003 %,and Ge: 0.0003 to 0.001 %, Ti: 0.005 wt% or less, Zr: 0.01 wt% or less and the balance consisting of Fe and inevitable impurities of claim 1, further comprising one or more of P: 0.08 wt% or less, Sn: 0.08 wt% or less, and Sb: 0.08 wt% or less of claim 2, further comprising one or more of C: 0.01 wt% or less, S: 0.01 wt% or less, and N: 0.01 wt% or less of claim 3, wherein one or more of Cu, Ni, and Cr are further included in an amount of 0.05 wt% or less, respectively of claim 4, and wherein one or more of Mo, and V are further included in an amount of 0.01 wt% or less, respectively of claim 5, and a non-oriented electrical steel sheet including, in wt%, Si: 2.1 to 3.8 %, Mn: 0.001 to 0.6 %, Al: 0.001 to 0.6 %, Bi: 0.0005 to 0.003 %, Ge: 0.0003 to 0.001 %, Ti: 0.005 wt% or less, Zr: 0.01 wt% or less, one or more of Cu, Ni, and Cr: 0.05 wt% or less, and the balance consisting of Fe and inevitable impurities of claim 13.
However, JP’150 does not explicitly disclose wherein in a region of 1/6 to 1/4 of a thickness of the steel sheet, a ratio (V{100}/V{411}) of a fraction (V{100}) of texture in which a {100} plane of the texture and a rolling plane are parallel within a 15° angle with respect to a fraction (V{411}) of the texture in which a {411} plane of the texture and the rolling plane are parallel within a 15° angle, is 0.150 to 0.450 of claims 1 and 13, wherein in a region of 1/6 to 1/4 of a thickness of the steel sheet, a ratio (V{100}/V{411}) of a fraction (V{100}) of texture in which a {100} plane of the texture and a rolling plane are parallel within a 10° angle with respect to a fraction (V{411}) of the texture in which a {411} plane of the texture and the rolling plane are parallel within a 10° angle, is 0.350 to 0.550 of claims 1 and 13, wherein in a region of 1/6 to 1/4 of a thickness of the steel sheet, a ratio (V{100}/V{411}) of a fraction (V{100}) of texture in which a {100} plane of the texture and a rolling plane are parallel within a 5° angle with respect to a fraction (V{411}) of the texture in which a {411} plane of the texture and the rolling plane are parallel within a 5° angle, is 0.450 to 0.650 of claims 1 and 13, and wherein when an Electron Backscatter Diffraction (EBSD) test is performed on a 1/6 to 1/4 region of a thickness of the steel sheet, a strength of a {111} plane facing a <112> direction based on a rolling direction on an Orientation Distribution Function (ODF) is 2 or less compared to a random orientation of claim 6.
JP’150 teaches a manufacturing method of non-oriented electrical steel sheet for rotating machines of the present invention is characterized by comprising: a hot rolling step, cold rolling step, intermediate annealing in between, and a soaking treatment ([0083]). JP’150 teaches a hot-rolled annealing step ([0094], corresponds to the hot-rolled plate annealing of the instant invention) of 1000°C for 90 seconds (Table 2, Example 1-2, temperature and time are within the ranges of the instant invention) and strain relief annealing of 700-950°C for 2 minutes to 5 hours ([0099], strain relief annealing corresponds to final annealing of the instant invention; 2 minutes is equivalent to 120 seconds; temperature and time are within the ranges of the instant invention).
Given the overlapping chemical composition, hot-rolled annealing, and final annealing steps of JP’150 and the instant invention, one of ordinary skill in the art would reasonably expect the steel sheet of JP’150 to necessarily possess the claimed ratios of texture, ODF values of the instant invention.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), and b) the claimed and prior art products are produced by identical or substantially identical processes (see processing analysis above). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Given the overlapping amounts of Si, Mn, Al, Bi, and Ge, and the similar processing conditions of the instant invention and JP’150, one of ordinary skill would reasonably expect the steel sheet of JP’150 to possess the claimed ratios and ODF values of the instant invention. JP’150 therefore reads on all the limitations of claims 1-6, 9, and 13.
As further evidence that one of ordinary skill in the art would reasonably expect the steel of JP’150 to possess the claimed properties, the instant specification recites that by appropriately controlling the addition amounts of Si, Mn, Al, Bi, and Ge, it is possible to improve the magnetism by selectively forming and controlling the precipitates to improve the texture (page 14, lines 4-6; page 15, lines 16-18).
The instant specification further recites inventive examples with hot-rolled plate annealing and final annealing steps (Inventive Material 1-11, Table 2, pages 22-24). Instant specifications recite a hot-rolled plate annealing at a temperature of 900 to 1195°C for 30 to 95 seconds (page 5, lines 12-14) and a final annealing may be performed at a temperature of 850 to 1080°C for 60 to 150 seconds (page 5, lines 15-16).
Response to Arguments
Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive.
Applicant argues that JP '150 merely discloses Bi and Ge as optional additional elements alongside others like Nb, Zr, Ti, V, Cu, Ni, Cr, Mo, Co, W, Sn, Sb, Se, Te, and B, without recognizing Bi and Ge as essential elements (remarks, page 8). Applicant argues that no example in JP '150 shows the simultaneous addition of Bi and Ge (remarks, page 8). Applicant argues that JP '150 is not focused on a specific steel composition but lists possible additives to secure broad protection (remarks, page 8).
In response, regarding the Bi and Ge content of claims 1 and 13, JP’150 teaches it is preferable to contain at least one element selected from the group consisting of Sn, Sb, Se, Bi, Ge, Te, and B, which has the effect of suppressing recrystallization through grain boundary segregation ([0062], at least one element includes embodiments where both Bi and Ge are included).
Furthermore, examples and preferred embodiments are not evidence of teaching away when acceptable broader ranges are taught by the prior art. See MPEP 2123(II). In other words, the invention of JP’150 is not limited in scope to the specific examples in its tables. The compositions and properties in the tables of JP’150 are representative of what JP’150's steels can achieve and should not be construed as only attainable and tied to the specific alloy compositions because the full scope of JP’150's invention covers whole ranges of chemical alloying components, including a steel composition with both Bi and Ge in amounts overlapping with the claimed invention, as described in the 35 U.S.C. 103 rejections in this Office action.
Applicant argues that JP '150 does not acknowledge that the simultaneous addition of Bi and Ge in specific amounts can enhance texture and magnetic properties (remarks, page 8).
In response to applicant's argument, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, the broader disclosure of JP’150 encompasses embodiments which include both Bi and Ge in amounts overlapping with the claimed invention.
Applicant argues that JP '150 does not disclose the V{100}/V{411} ratio at 15°, 100, and 5° and such texture is achievable only with appropriate Bi and Ge amounts, which JP '150 does not disclose (remarks, page 8).
In response, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the steel of JP’150 to possess the claimed properties given overlapping chemical compositions, particularly of Bi and Ge, as described in the 35 U.S.C. 103 rejections in this Office action. A prima facie case of obviousness has been properly established herein. As the Patent Office does not possess the laboratory facilities to test any differences in the claimed invention versus that of the reference, the burden shifts to applicant to demonstrate otherwise.
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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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