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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/10/2025 has been entered.
Response to Amendment
The Amendment filed 10/10/2025 has been entered. Claims 1-6 and 9-13 remain pending in the application. Claims 10-12 have been withdrawn due to a restriction requirement. Claims 7-8 have been canceled. New claim 13 has been added. Claims 1-6, 9, and 13 are presented for examination on the merits. Applicant's amendments to the claims have overcome the objections previously set forth in the Final Rejection mailed 07/10/2025.
Specification
The disclosure is objected to because of the following informalities: the instant abstract is 42 words, which is less than the minimum of 50 words in length.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Appropriate correction is required.
Claim Objections
Claim 5 is objected to because of the following informalities: claim 5 recites “Mo, and V” when commas are not typically added when only two elements are listed. Appropriate correction is required.
Claim Interpretation
Regarding claim 1, the term “consisting of” in line 1 is interpreted as excluding any element, step, or ingredient not specified in the claim. See MPEP 2111.03(II).
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 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.
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 “consisting of” Si, Mn, Al, Bi, Fe, Ti, Zr, 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 recites the transitional phrase “consisting of”, 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 because additional elements are included when claim 1 explicitly excludes any element not specified in the claim.
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.
Claims 1-6, 9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2010/121150 A of Tanaka (as cited in IDS mailed on 07/06/2022 and with reference to its English machine translation, hereafter JP’150).
Regarding claims 1-6, 9, 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 ([0063]). 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 consisting of 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 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 consisting of, 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 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 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, and 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 claim 9.
Instant specifications recite 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).
Instant specifications recite 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).
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.
Response to Arguments
Applicant’s arguments with respect to claims 1-6 and 9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733