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 2, 3 and 6 are canceled. Claims 1, 4, 5 and 7-17 are pending where claim 1 has been amended. Claims 9-15 are withdrawn from consideration and claims 1, 4, 5, 7, 8, 16 and 17 remain for examination on the merits.
Status of Previous Rejections
The previous 35 USC § 102/103 rejections of the claims over JP 2004197217 A to Kubota et al and 35 USC § 103 rejections of the claims over JP 2017036491 A to Kataoka have been maintained.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 5, 7, 8, 16 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2004197217 A to Kubota et al (cited by applicant in IDS, an English language machine translation has been relied upon for examination purposes).
Regarding claim 1, Kubota discloses a non-oriented electrical steel sheet comprising the following composition (Kubota, abstract, Example 4, Para [0050-0051], Table 12, Steel D), which lies within the instantly claimed composition as follows:
Element
Claimed wt%
Kubota D wt%
Lies within?
C
0-0.005
0.0013
Yes
Si
2.5-4.0
2.96
Yes
P
0-0.1
≤impurities
Yes
Al
0.1-2.0
0.31
Yes
Mn
0.2-2.5
0.30
Yes
N
0-0.003
0.0012
Yes
Ti or Nb
0-0.005
Ti: 0.0005
Nb: 0.0021
Yes
S
0-0.003
0.0009
Yes
V
0.005-0.025
0.0051
Yes
Cu
0-0.02
≤impurities
Yes
Fe
Balance
Balance
Yes
51C/12 – V*
-0.002-0.002
0.000425
Yes
*Expression 1 rewritten as a range
Kubota further discloses that the steel is manufactured by a method comprising hot rolling, cold rolling, and final annealing (Kubota, abstract, para [0050]).
Regarding the limitation “wherein, in the non-oriented electrical steel sheet, a density of VC precipitates is 4*1015 to 1*1019 number/m3, wherein in the non-oriented electrical steel sheet, an average particle diameter of VC precipitates is 1 to 10 nm, wherein in the non-oriented electrical steel sheet, a density of one or more precipitates of NbC and TiC is 15 × 10-15 number/m3 or less, wherein in the non-oriented electrical steel sheet, an average particle diameter and a density of CuS precipitates are 10 nm or less and 10 x 1015 number/m3 or less, respectively” 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 non-oriented steel sheet of Kubota would be expected to have the same or similar density and size of VC, CuS, NbC and TiC precipitates as the instantly claimed non-oriented steel sheet because the non-oriented steel sheet of Kubota has the same or similar composition, structure, and method of manufacturing. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Regarding claims 4, 5, 7, 8, 16 and 17, 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 non-oriented steel sheet of Kubota would be expected to have the same or similar precipitate size and density, grain diameter and iron loss as the instantly claimed non-oriented steel sheet because the non-oriented steel sheet of Kubota has the same or similar composition, structure, and method of manufacturing. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Claim Rejections - 35 USC § 103
Claim(s) 1, 4, 5, 7, 8, 16 and 17 is/are rejected under 35 U.S.C. 103 as obvious over JP 2017036491 A to Kataoka et al (an English language machine translation has been relied upon for examination purposes).
Regarding claim 1, Kataoka discloses a non-oriented electrical steel sheet comprising the following composition (Kataoka, abstract, para [0001, 0020-0033]) which overlaps the instantly claimed composition range as well as a specific example A13 (Kataoka, para [0061], Table 1A, Example A13) which lies close to the instantly claimed composition as follows:
Element
Claimed wt%
Kataoka wt%
Kataoka A13 wt%
Overlaps/Lies within?
C
0-0.005
0.0001-0.01
0.0034
Yes/Yes
Si
2.5-4.0
0.05-3.5
2.56
Yes/Yes
P
0-0.1
0.001-0.20
0.142
Yes/No
Al
0.1-2.0
0.002-2.0
1.54
Yes/Yes
Mn
0.2-2.5
0.01-2.0
1.61
Yes/Yes
N
0-0.003
0.0005-0.02
0.0007
Yes/Yes
Ti or Nb
0-0.005
Ti: 0.002-0.10
Nb: 0.002-0.20
Ti: 0.003
Nb: 0.007
Yes/No
S
0-0.003
0.0010-0.05
0.0017
Yes/Yes
V
0.005-0.025
0.002-0.20
0.014
Yes/Yes
Cu
0-0.02
0.01-3.00
0.06
Yes/No
Fe
Balance
Balance
Balance
Yes/Yes
51C/12 – V*
-0.002-0.002
-0.199575-0.0405
0.00045
Yes/Yes
*Expression 1 rewritten as a 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 each element including the instantly claimed because Kataoka discloses the same utility throughout the disclosed ranges.
Regarding the limitation “wherein, in the non-oriented electrical steel sheet, a density of VC precipitates is 4*1015 to 1*1019 number/m3, wherein in the non-oriented electrical steel sheet, an average particle diameter of VC precipitates is 1 to 10 nm, wherein in the non-oriented electrical steel sheet, a density of one or more precipitates of NbC and TiC is 15 × 10-15 number/m3 or less, wherein in the non-oriented electrical steel sheet, an average particle diameter and a density of CuS precipitates are 10 nm or less and 10 x 1015 number/m3 or less, respectively,” Kataoka further discloses that the steel is manufactured by a method comprising hot rolling, cold rolling, and final annealing (Kataoka, abstract, para [0061]). 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 non-oriented steel sheet of Kataoka would be expected to have the same or similar density and size of VC, CuS, NbC and TiC precipitates as the instantly claimed non-oriented steel sheet because the non-oriented steel sheet of Kubota has the same or similar composition, structure, and method of manufacturing.
Regarding claims 4, 5, 7, 8, 16 and 17, Kataoka further discloses that the steel is manufactured by a method comprising hot rolling, cold rolling, and final annealing (Kataoka, abstract, para [0061]). 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 non-oriented steel sheet of Kataoka would be expected to have the same or similar precipitate size and density, grain diameter and iron loss as the instantly claimed non-oriented steel sheet because the non-oriented steel sheet of Kubota has the same or similar composition, structure, and method of manufacturing.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
Applicant argues that Kubota and Kataoka fails to disclose the limitation “wherein, in the non-oriented electrical steel sheet, a density of VC precipitates is 4*1015 to 1*1019 number/m3, wherein in the non-oriented electrical steel sheet, an average particle diameter of VC precipitates is 1 to 10 nm, wherein in the non-oriented electrical steel sheet, a density of one or more precipitates of NbC and TiC is 15 × 10-15 number/m3 or less, wherein in the non-oriented electrical steel sheet, an average particle diameter and a density of CuS precipitates are 10 nm or less and 10 x 1015 number/m3 or less, respectively.” This is not found persuasive because 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 non-oriented steel sheet of Kubota and Kataoka would be expected to have the same or similar density and size of VC, CuS, NbC and TiC precipitates as the instantly claimed non-oriented steel sheet because the non-oriented steel sheet of Kubota and Kataoka has the same or similar composition, structure, and method of manufacturing.
Applicant argues that Kubota and Kataoka do not disclose any specific data satisfying the claimed composition ranges. This is not found persuasive because Kubota discloses Kubota example D which has a composition lying wholly within the instantly claimed ranges (Kubota, abstract, Example 4, Para [0050-0051], Table 12, Steel D) and Kataoka discloses a non-oriented electrical steel sheet comprising an overlapping composition (Kataoka, abstract, para [0001, 0020-0033]) as well as a specific example A13 (Kataoka, para [0061], Table 1A, Example A13) which lies close to the instantly claimed composition.
Applicant argues that the instantly claimed C content of 0.005 wt% or less is critical for achieving the instantly claimed VC precipitate size. This is not found persuasive because Kubota example 4 has a C content of 0.0013 wt% (Kubota, abstract, Example 4, Para [0050-0051], Table 12, Steel D) and Kataoka example A13 has a C content of 0.0034 wt% (Kataoka, abstract, para [0001, 0020-0033]), both within the instantly claimed range of 0.005 wt% or less.
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 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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