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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/04/2026 has been entered.
Response to Amendment
The Amendment filed 02/04/2026 has been entered. Claims 1-9 and 11-17 remain pending in the application. Claims 1-6 and 11-14 have been withdrawn. Claims 10 and 18 have been canceled. Claims 7-9 and 15-17 are presented for examination on the merits. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Final Rejection mailed 11/06/2025.
Claim Interpretation
Examiner notes that the coating layer of instant claims 7 and 15 is a resulting effect of annealing the grain-oriented electrical steel sheet after applying the annealing separator with the claimed composition as recited in withdrawn claims 1 and 11, respectively. If prior art discloses an annealing separator with the composition as required by withdrawn claims 1 and 11 applied to a grain oriented electrical steel sheet substrate and then subjected the steel sheet to annealing, the claimed coating layer as required by instant claims 7 and 15, its composition as required by instant claims 7 and 15, and thickness as required by instant claims 9 and 17 would be expected, absent any evidence to the contrary.
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 15-17 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 7 recites “a grain-oriented electrical steel sheet comprising a coating layer” and further recites “a balance of O and unavoidable impurities”. The term “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). However, the balance of O and unavoidable impurities closes the composition. Claim 15 adds Al and mullite as further elements of the close-ended coating composition of claim 7. Claim 15 therefore fails 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 7. Claims 16 and 17 are also rejected due to their dependence on claim 15.
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 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/080168 A1 of Kwon (using US 2019/0276911 A1 as its English translation).
Regarding claims 7-9, Kwon teaches an annealing separating agent composition for a grain-oriented electrical steel sheet, a grain-oriented electrical steel sheet and a method for manufacturing a grain-oriented electrical steel sheet (Abstract). Kwon teaches a grain-oriented electrical steel sheet, having a Monticellite coating formed on one side or both sides of a grain-oriented electrical steel sheet substrate (claim 6, [0008], [0050], Monticellite coating reads on claimed coating; the steel sheet of Kwon reads on the claimed grain-oriented electrical steel sheet comprising a coating layer disposed on one or both surfaces of a grain-oriented electrical steel sheet substrate).
List 1
Instant claims (wt%)
Kwon (wt%)
Mg
1-20
3-80
Metal M (one or more of Be, Ca, Sr, Sn, Mn, Co, Ni, Cu, and Zn)
17.5-35
Ca: 0.5-90
Si
15-50
3-80
Fe
≤ 20
Balance
O
Balance (“and unavoidable impurities”)
3-80
“C may be included as an impurity” [0056]
Coating layer thickness
0.1-10 μm
0.1-10 μm
Ceramic layer thickness
0.5-5 μm
0.5-5 μm
Kwon teaches a ceramic layer is further formed on the Monticellite coating (claim 10, [0012], reads on claimed further comprising a ceramic layer disposed on the coating layer). Kwon teaches the steel sheet has a coating with a chemical composition (claims 7-8, [0052]-[0056]), a coating layer thickness (claim 9, [0058]), and ceramic layer thickness ([0060]) 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.
Kwon therefore reads on the limitation a grain-oriented electrical steel sheet comprising a coating layer disposed on one or both surfaces of a grain-oriented electrical steel sheet substrate, wherein the coating layer contains 1 to 20 wt% of Mg, 17.5 to 35 wt% of a metal M, 15 to 50 wt% of Si, 20wt% or less of Fe, and a balance of O and unavoidable impurities, and wherein the metal M is one or more of Be, Ca, Ba, Sr, Sn, Mn, Co, Ni, Cu, and Zn of claim 7, further comprising a ceramic layer disposed on the coating layer of claim 8, and wherein: a thickness of the coating layer is 0.1 to 10 μm and a thickness of the ceramic layer is 0.5 to 5 μm of claim 9.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/080168 A1 of Kwon (using US 2019/0276911 A1 as its English translation), as applied to claim 7 above, in view of KR 2018/083295 A of Choi (as cited in prior Office action and in IDS mailed 06/14/2022, with reference to provided English machine translation).
Regarding claim 15, Kwon teaches the steel sheet of claim 7 as described above.
Kwon teaches the annealing separating agent composition may further comprise 1 to 10% by weight of Al2O3 ([0047]). While Kwon does not teach the Al content of the resulting coating, one of ordinary skill in the art would reasonably expect Al to be present in the coating when adding Al2O3 to the annealing separating agent. See Claim Interpretation. Since the Al2O3 content added to the annealing separating agent of Kwon overlaps with that of the instant invention (page 13, lines 14-18 recites adding 0.5 to 10% Al2O3), one of ordinary skill in the art would reasonably expect the Al content of the resulting coating to overlap with the 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. 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.
Kwon therefore reads on the limitation wherein: the coating layer further contains 0.5 to 10wt% of Al of claim 15.
However, Kwon does not explicitly disclose wherein: the coating layer contains mullite in an amount of 5 to 45 area% of claim 15.
Choi teaches an annealing separator composition for grain-oriented electrical steel sheets, grain-oriented electrical steel sheets, and a method for manufacturing grain-oriented electrical steel sheets (Abstract). Choi and Kwon are considered analogous art since they are similarly concerned with grain-oriented electrical steel sheets using annealing separators, and both are grain-oriented electrical steel sheets with a coating layer and a ceramic layer.
Choi teaches a grain-oriented electrical steel sheet has a film including mullite and forsterite formed on one or both sides of a grain-oriented electrical steel sheet substrate ([0014]). Choi teaches adding mullite to the annealing separator improves the film tension-providing ability and insulation properties of the steel sheet ([0044]). Choi teaches the annealing separator composition contains 5 to 70 wt% of mullite based on solid content ([0046]). Choi teaches when the mullite content is small, the film tension-providing ability and insulation properties may not be sufficiently improved and if too much mullite is included, problems may arise in uniformly applying the annealing agent ([0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the annealing separator of Kwon, and consequently the resulting coating, by adding the mullite of Choi, and adjusting and varying the mullite content, such as within claimed ranges, to improve film tension and insulation properties of the grain-oriented electrical steel sheet while ensuring uniform application of the annealing agent, as taught by Choi.
While modified Kwon does not teach the mullite content in the coating in terms of area, one of ordinary skill in the art would reasonably expect mullite to be present in the resulting coating when adding mullite to the annealing separating agent. See Claim Interpretation. Since the mullite content added to the annealing separating agent of modified Kwon overlaps with that of the instant invention (page 5, lines 3-10 recites an annealing separator with 10 to 90 parts by weight mullite), one of ordinary skill in the art would reasonably expect the mullite content of the resulting coating to overlap with the 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. 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.
Kwon therefore reads on the limitation wherein: the coating layer contains mullite in an amount of 5 to 45 area% of claim 15.
Regarding claims 16-17, Kwon teaches a ceramic layer is further formed on the Monticellite coating (claim 10, [0012], reads on claimed further comprising a ceramic layer formed on the coating layer). Kwon teaches the steel sheet has a coating layer thickness (claim 9, [0058]) and ceramic layer thickness ([0060]) 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.
Kwon therefore reads on the limitation further comprising a ceramic layer formed on the coating layer of claim 16, and a thickness of the coating layer is 0.1 to 10 μm and a thickness of the ceramic layer is 0.5 to 5 μm of claim 17.
Response to Arguments
Applicant’s arguments with respect to claims 7-9 and 15-17 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.
The new ground of rejection was selected to address the amended claim 7 removing Fe as one of the possible metal M elements.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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