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 .
Applicant amended Claim 1. Support for the amendment is found in the original filing. No new matter is presented.
Continued Examination Under 37 CFR 1.114
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on 09/02/2025.
Information Disclosure Statements
The information disclosure statements (IDS) submitted on 06/15/2022, 07/13/2023, 10/27/2023, 03/11/2024, 10/24/2024, and 05/08/2025 have been considered by the examiner.
Election/Restrictions
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/09/2025.
Response to Amendment
Responsive to communications filed on12/29/2025, amendments to the claims have been acknowledged.
The rejections over Hamamamura et al. WO 2019164012 A1 are maintained under additional grounds necessitated by amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Regarding Claim 1, the phrase "may be present" renders the claim indefinite because it is unclear whether the limitations preceding the phrase are part of the claimed invention. Appropriate correction is required to delineate whether the presence of 1 to 10 sub boundaries are present per groove. The claim is drawn to a product and it is unclear whether the presence of 1 to 10 sub boundaries per groove is a tangible feature of the claimed product. See MPEP § 2173.05(d).
Claims 4-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for their dependency on rejected Claim 1.
Claim Rejections - 35 USC § 103
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 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Hamamura et al. WO 2019164012 A1 in view of Hamamura et al. JP 2005059014 A.
Regarding Claim 1, Hamamura et al. ‘012 teaches a grain-oriented electrical steel sheet comprising a groove present on a surface of the electrical steel sheet [0005]; and recrystallized grains in contact with a bottom of the groove [0006]. Hamamura et al. ‘012 does not expressly teach an average difference between recrystallized grains that are in contact with the bottom of the groove, and other recrystallized grains.
However, Hamamura et al. ‘012 does teach the Kernel Average Misorientation (KAM) value in the groove peripheral region of 0.1 or more and 3.0 or less [0032] and sets forth at [0055] “The KAM value is an index that represents the degree of relative difference in the orientation of adjacent crystal grains in a given cross section of a grain-oriented electrical steel sheet.” Hamamura et al. ‘012 further teaches at [0040] that the crystal orientation difference is 3 to 5 degrees in a region (R) (Fig. 2) corresponding to the sheet depicted in (Fig. 1).
These measurements overlap the claimed average degree of orientation difference between recrystallized grains that are in contact with the bottom of the groove, and other recrystallized grains being 0.5 to 10°, and the grain-oriented electrical steel sheet of Hamamura et al. ‘012 is expected to present the same about the same properties as the sheet instantly claimed. While the KAM value differs from the claimed measurement, this does not negate the KAM value of Hamamura et al. ‘012 indicates the properties of its steel sheet overlap and encompass the properties of the claimed sheet.
See MPEP 2144.05. 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).
It is known in the art, and was known at the time of filing the invention to one having ordinary skill in the art, to use Electron Backscatter Diffraction (EBSD) to measure crystal orientation difference between grains in a steel sheet having secondary recrystallization grains in contact with a groove. See Hamamura et al. ‘012 [0010]. Therefore, the electrical steel sheet of Hamamura et al. ‘012 is expected to present the same or about the same properties of the carbon nanotube film of the instant Claims.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id. See also MPEP § 2112.01 with regard to inherency and product-by-process claims and MPEP § 2141.02 with regard to inherency and rejections under 35 U.S.C. 103.
Regarding the newly amended limitations of Claim 1, Hamamura et al. ‘012 teaches the formation of a grain-oriented electrical steel sheet presenting high iron loss improvement with minimized deterioration of magnetic flux density having grooves formed with a laser beam which results in the formation of subgrain boundaries e.g. at [0037].
Hamamura et al. ‘012 teaches the presence of a single subgrain boundary (meeting the limitation for sub boundaries), and the formation of multiple subgrain boundaries in the groove at (Fig. 1)[0037-0040], meeting the limitation of the instant Claim for 1 to 10 sub boundaries.
See MPEP 2144.05. 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).
Hamamura et al. ‘012 does not expressly teach measuring the length of subgrain boundaries formed in its electrical steel sheet.
However, Hamamura et al. ‘014 teaches at [0007, 0029] using a laser beam to make grooves in a grain-oriented electrical steel sheet which result in the formation of subgrain boundaries in order to minimize the deterioration of magnetic flux density, wherein the laser beam has an energy density from 0.2 to 10 J/mm2.
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to form the grooves of Hamamura et al. ‘012 with the energy densities taught in Hamamura et al. ‘014 in order to improve iron loss and minimize deterioration of magnetic flux density within its sheet sheet based on the teachings of Hamamura et al. ‘014 at [0007].
It is noted the range of energy density taught in Hamamura et al. ‘014 overlaps the range of energy density used in the instant Specification e.g. at (Page 14) from 3.0 to 8.0 J/ mm2. See MPEP 2144.05. 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).
One of ordinary skill in the art at the time of filing the invention would expect the grooves within the steel sheet of Hamamura et al. ‘012 formed with a laser having the energy density taught in Hamamura et al. ‘014 to present the same or similar properties of the instantly claimed sub boundary length. That neither Hamamura et al. ‘012 or Hamamura et al. ‘014 measure the length of the sub boundary formed does not negate that sub boundaries are formed within the recovered, recrystallized region of the grooves formed with a laser having energy densities overlapping the densities used to form the instantly claimed grooves.
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 electrical steel sheet 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 (a grain-oriented electrical steel sheet), b) the claimed and prior art products are identical or substantially identical in structure (present recrystallized grains in contact with a bottom of a groove), and c) the claimed and prior art products are produced by identical or substantially identical processes (grooves are formed by a laser with overlapping energy densities).
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).
Regarding Claim 4, modified Hamamura et al. ‘012 teaches the limitations set forth above. Hamamura et al. ‘012 further teaches an insulating coating in contact with the groove [0030-0031], meeting the limitation of the instant Claim.
Regarding Claim 5, modified Hamamura et al. ‘012 teaches the limitations set forth above. Hamamura et al. ‘012 further teaches an exemplary groove width of 50 µm may be formed in the steel sheet at [0054]. Hamamura et al. ‘012 teaches a groove depth of 20 µm [0050] and a steel sheet thickness of not less than 0.15 mm (150 µm) and not more than 0.35 mm (350 µm). 20 µm representing between 5.71% and 13.33%, overlapping with the claimed range of 3 to 15% of a thickness of the steel sheet, meeting the limitation of the instant Claim.
See MPEP 2144.05. 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).
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
Applicant argues the prior art “does not disclose or suggest the annealing process as disclosed in the present application.” However, the examined art is drawn to a grain-oriented electrical steel sheet, a product, not to a method or process of making such a sheet. It remains that a grain-oriented electric steel sheet formed by the method of the prior art would be expected by one of ordinary skill in the art at the time of fling the invention to present the same or similar properties.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id. See also MPEP § 2112.01 with regard to inherency and product-by-process claims and MPEP § 2141.02 with regard to inherency and rejections under 35 U.S.C. 103.
Applicant’s own disclosure at Pages 14 and 15 of the instant Specification presents degree of orientation as a function of laser density. Hamamura et al. ‘014 expressly teaches the formation of a grain-oriented electrical steel sheet presenting high iron loss improvement with minimized deterioration of magnetic flux density having grooves formed with a laser beam having an energy density from 0.2 to 10 J/mm2, overlapping the range of energy density used in the instant Specification e.g. at (Page 14) from 3.0 to 8.0 J/ mm2. One of ordinary skill in the art at the time of filing the invention would expect the sheet of Hamamura et al. ‘012 having grooves formed by the method disclosed in Hamamura et al. ‘014 to overlap and encompass the instantly claimed electrical steel sheet. That Hamamura et al. ‘012 does not set out to measure the sub boundary length does not negate that sub boundaries are formed and that these sub boundaries, formed with the energy densities taught in Hamamura et al. ‘014 would be expected to present the same or similar grain-oriented electrical steel sheet with subgrain boundary lengths overlapping the instantly claimed range of 440 to 700 microns.
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) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990).
Since a reasonable case of obviousness exists, and the US Patent Office does not possess the laboratory facilities to test the reference alloy, the burden shifts to applicant 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). Applicant has not shown that the combined teachings do not yield a grain-oriented electrical steel sheet presenting properties overlapping and encompassing those of the claimed electrical-steel sheet.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 9187798 B2 teaches forming a grain oriented electrical steel sheet presenting recrystallized regions to obtain high magnetic flux density.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORIAH S. SMOOT whose telephone number is (571)272-2634. The examiner can normally be reached M-F 8:30am - 5pm EDT.
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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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733