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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/17/2025 has been entered.
Response to Amendment
The Amendment filed 10/17/2025 has been entered. Claims 1 and 3-16 remain pending in the application. Claims 7-15 have been withdrawn due to a restriction requirement. Claim 2 has been canceled. New claim 16 has been added.
Claim Interpretation
Claim 16 is considered a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
In this instance, the claimed processing limitation of forming a ceramic coating layer by a chemical vapor deposition (CVD) process without applying an annealing separator does not necessarily impart any type of fixed structural limitation that distinguishes it from the cited prior art.
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.
Claims 1, 3-6, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “wherein the grain-oriented electrical steel sheet has a weather resistance of less than 35% under the conditions of 65°C, 95% humidity and 72 hours: in lines 4-5. This limitation renders the claim indefinite. It is unclear what is intended and encompassed by the term “weather resistance” and what types of “weather” are included by the phrase. It is further unclear what is intended and encompassed by the term "resistance", as it is unclear if this means that there is no deterioration, or some deterioration, and if the latter, how much and within what time period would be required in order to meet the required "resistance" property. The instant specification recites “weather resistance means a rust-generating region formed on the surface of a base steel sheet” (page 18, lines 1-5). However, this does not state that rust is actually formed, but only that it has the potential to generate rust. Therefore, it is unclear how this would further limit and explain the claimed phrase with respect to "weather resistance".
The instant specification further recites “weather resistance indicates the area of rust generated on the surface of the steel sheet” (page 27, lines 15-19). However, the instant specification only states a base steel sheet “may have a weather resistance of less than 35% under the conditions of 65°C, 95% humidity and 72 hours (page 17, line 21 - page 18, line 1) and does not explain how one may determine and calculate this percentage.
The information provided in the instant specification therefore also relies upon relative and indefinite terminology, and does not provide a specific definition sufficient to define the claimed invention.
Claims 3-6 and 16 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding claim 1, the limitation “weather resistance of less than 35%” renders the claim indefinite since it is unclear whether this refers to 35% of the surface area, and if so, whether this is intended to be a continuous surface area, a total of unconnected areas, a thickness of the coating removed under the stated conditions (i.e. at least 65% remaining), or some other interpretation.
Claims 3-6 and 16 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding claim 1, the limitation “weather resistance of less than 35%” renders the claim indefinite since it is unclear what the 35% refers to with respect to the resistance; i.e. it is unclear if only 35% or less of the steel sheet resists weather, or if this is intended to mean something different.
Claims 3-6 and 16 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
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, 3-4, 6, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2004/060029 A of Hina (as cited in prior Office action with reference to provided translation) in view of US 2005/224142 A1 of Hayakawa (as cited in prior Office action).
Regarding claims 1 and 3, Hina teaches a method for producing a low iron loss grain-oriented electrical steel sheet in which excellent coating adhesion is maintained in the coating (Abstract).
Hina teaches a base steel sheet and a ceramic coating layer located in contact with a surface of the base steel sheet ([0015]-[0016], a coating of nitrides, carbides, etc. is formed on the surface of the base steel sheet; nitrides and carbides are ceramics). Hina teaches the steel sheet is free of forsterite coating (Example 1, [0047], [0053]).
Hina teaches a ceramic coating is formed by chemical vapor deposition on the base steel sheet ([0015]) with a coating thickness of 0.01 μm to 5 μm ([0029]).
Hina therefore reads on the limitation of a grain-oriented electrical steel sheet comprising: a base steel sheet; and a ceramic coating layer located in contact with a surface of the base steel sheet of claim 1.
Hina teaches the coating material thus obtained is, for example, a nitride, carbide, carbonitride, or oxide of Ti, Zr, V, Nb, Ta, Cr, Mo, W, Mn, Co, Ni, Al, B, or Si, and two or more of these may be laminated ([0028], TiO2, Al2O3, ZrO2, SiO2, and Ti3O4 are included since they are oxides of Ti, Al, Zr, and Si).
Hina therefore reads on the limitation wherein the ceramic coating layer is at least one selected among TiO2, Al2O3, ZrO2, MgO, SiO-2 and Ti3O4 of claim 1.
Hina teaches a base steel sheet with a chemical composition of 0.06 mass% C, 3.5 mass% Si, 0.022 mass% Al, 81 mass ppm N, 0.02 mass% Sb, 0.04 mass% Mn, 0.02 mass% Se and 0.03 mass% Bi (page 4, lines 193-194). Hina teaches N has an upper limit of about 100 ppm to prevent the occurrence of blister defects and that it is economically difficult to industrially reduce the concentration to 20 ppm or less ([0035]). Hina teaches the S content is limited to 0.003 mass % or less ([0038]). Hina teaches Sn is known to be an inhibitor component suitable for the production of known grain-oriented electrical steel sheets, and these elements can be contained alone or in combination ([0038]), but is silent to the content range of Sn.
Regarding the Sn content, it would have been necessary and obvious to look to the prior art for exemplary amounts of Sn used in grain-oriented electrical steel sheets. Hayakawa provides this teaching showing a grain oriented electromagnetic steel sheet suitably used for iron core materials of transformers, motors, electric generators, etc. ([0001]). Hayakawa teaches a Sn content of 0.01-1.50% for improving iron loss, where less than 0.01% results in the effect of improving iron loss being small, and exceeding 1.5% makes it difficult to obtain a good iron loss ([0157]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the grain-oriented electrical steel sheet of Hina, and adjust the Sn content, such as within the claimed ranges, as taught by Hayakawa, in order to form a base steel sheet using known and tested amounts of Sn predictably suitable for grain-oriented electrical steel sheets with good iron loss properties, as taught by Hayakawa.
Modified Hina therefore reads on the limitation wherein the base steel sheet comprises Si: 2.0 to 7.0 wt%, Sn: 0.01 to 0.10 wt%, Sb: 0.01 to 0.05 wt%, acid soluble Al: 0.020 to 0.040 wt%, Mn: 0.01 to 0.20 wt%, C: 0.04 to 0.07 wt%, N: 10 to 50 ppm, S: 0.001 to 0.005 wt%, the balance Fe and other inevitable impurities based on total 100 wt% of the base steel sheet of claim 3.
However, modified Hina is silent to wherein the grain-oriented electrical steel sheet has a weather resistance of less than 35% under the conditions of 65°C, 95% humidity and 72 hours.
The instant specifications recite weather resistance is 60% or more when the final annealing was completed by applying an existing MgO annealing separator since the ceramic layer formed was non-uniform and the rust generated worsened iron loss and surface quality (page 29, lines 11-17). The instant specifications further recite that weather resistance is excellent when the ceramic precursor is vapor-deposited, but when the ceramic coating layer is formed to be too thick, the weather resistance is shown to be inferior, which is considered to be due to the generation of film peeling (page 29, line 17 – page 30, line 7).
Since modified Hina teaches an overlapping composition and a ceramic coating formed by chemical vapor deposition and overlapping coating thickness between the prior art and the claimed invention, one of ordinary skill in the art would reasonably expect the steel sheet of modified Hina to have the claimed weather resistance, despite Hina not explicitly disclosing it.
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 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 (see compositional analysis above), 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).
Modified Hina therefore reads on the limitation wherein the grain-oriented electrical steel sheet has a weather resistance of less than 35% under the conditions of 65°C, 95% humidity and 72 hours of claim 1.
Regarding claim 4, modified Hina teaches the steel sheet of claim 1 as described above. Hina teaches the suitable thickness of the coating is in the range of 0.01 μm or more and 5 μm or less ([0029]), which overlaps 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. Modified Hina therefore reads on the limitation wherein the ceramic coating layer has a thickness of 0.1 to 10 μm of claim 4.
Regarding claim 6, modified Hina teaches the steel sheet of claim 1 as described above. Hina teaches further comprising an insulation coating layer on the ceramic coating layer ([0031]). Modified Hina therefore reads on the limitation further comprising an insulation coating layer on the ceramic coating layer of claim 6.
Regarding claim 16, modified Hina teaches the steel sheet of claim 1 as described above.
Hina teaches a base steel sheet and a ceramic coating layer located in contact with a surface of the base steel sheet ([0015]-[0016], a coating of nitrides, carbides, etc. is formed on the surface of the base steel sheet; nitrides and carbides are ceramics). Hina teaches the steel sheet is free of forsterite coating (Example 1, [0047], [0053]). Hina teaches a ceramic coating is formed by chemical vapor deposition on the base steel sheet ([0015], chemical vapor deposition reads on claimed chemical vapor deposition (CVD) process) with a coating thickness of 0.01 μm to 5 μm ([0029]). Hina teaches chemical vapor deposition is carried out on the surface of the steel sheet ([0043], reads on the claimed wherein the ceramic coating layer is formed on a portion or a whole of one surface or two sides of the base steel sheet). Therefore, the steel sheet of Hina has a coating on the steel sheet without an annealing separator, and the coating of Hina is applied using CVD and without applying an annealing separator.
Since the claim is interpreted as a product-by-process claim and modified Hina teaches a steel with overlapping composition, ceramic coating composition and thickness, and ceramic coatings formed by chemical vapor deposition with no annealing separator, modified Hina reads on the limitation wherein the ceramic coating layer is formed on a portion or a whole of one surface or two sides of the base steel sheet by a chemical vapor deposition (CVD) process without applying an annealing separator of claim 16.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2004/060029 A of Hina (as cited in prior Office action with reference to provided translation) in view of US 2005/224142 A1 of Hayakawa (as cited in prior Office action), as applied to claim 1 above, and further in view of KR 101736627 B1 of Posco (as cited in prior Office action with reference to provided translation).
Regarding claim 5, modified Hina teaches the steel sheet of claim 1 as described above.
Hina teaches minimizing surface roughness of the steel sheet surface through pickling, thermal etching, chemical polishing, etc. ([0029]). Hina teaches that coatings may also be smoothed to achieve ultra-low iron loss ([0031]), but does not explicitly disclose a surface roughness of the ceramic layer.
Therefore, Hina is silent to wherein the ceramic coating layer has a surface roughness of 1 μm or less.
Regarding the surface roughness of the ceramic layer, it would have been necessary and obvious to look to the prior art for exemplary amounts of surface roughness of ceramic coatings in grain-oriented electrical steel sheets. Posco provides this teaching showing a grain oriented electrical steel sheet having a low core loss and an excellent insulation property comprising a steel sheet and a ceramic layer (Abstract). Posco teaches the ceramic layer may have a surface roughness (Ra) of 1 μm or less ([0045]) and when the surface roughness exceeds 1 μm, the dot ratio may be poor, which may cause a problem in which the transformer no-load loss is reduced ([0046]). Posco teaches when the surface roughness exceeds 1 μm, a dense ceramic layer cannot be formed, and the magnetic properties and insulating properties are inferior ([0079]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the grain-oriented electrical steel sheet of Hina, and adjust the surface roughness of the ceramic layer, such as within the claimed ranges, as taught by Posco, in order to form a dense ceramic coating using known and tested amounts of surface roughness predictably suitable for grain-oriented electrical steel sheets with good magnetic and insulating properties, as taught by Posco.
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered but they are not persuasive.
Applicant argues that Hina and Hayakawa, either alone or in combination, fail to teach or suggest the ceramic coating layer comprises at least one selected among Al2O3, ZrO2, MgO, SiO2 and Ti3O4 as set forth in the claims and, in particular, Hina only discloses a deposition of TiC and TiN and does not teach or suggest the composition of the ceramic coating layer of the as set forth in the claims (remarks, page 5).
In response, Hina teaches the coating material thus obtained is, for example, a nitride, carbide, carbonitride, or oxide of Ti, Zr, V, Nb, Ta, Cr, Mo, W, Mn, Co, Ni, Al, B, or Si, and two or more of these may be laminated ([0028], TiO2, Al2O3, ZrO2, SiO2, and Ti3O4 are included since they are oxides of Ti, Al, Zr, and Si). While Hina teaches embodiments using a coating of TiC or TiN (Embodiments in Description section, pages 4-5), these embodiments do not negate the broader teaching where the ceramic coating is an oxide of Ti, Al, Zr, or Si, as described in this Office action. Patents are relevant as prior art for all they contain. See MPEP 2123. In this case, the embodiment of Hina with a ceramic coating using an oxide of Ti, Al, Zr, or Si, reads on the claimed ceramic coating layer, as described in this Office action.
Applicant argues that Hina describes a state without a forsterite film in paragraph [0030], however, this cannot be equated with intentionally excluding the formation of a forsterite layer as in the present embodiment (remarks, page 6). Applicant further argues Hina discloses in Examples 1 and 2 that final annealed coils without a forsterite film were produced using the "annealing separator" referred to as prior art (remarks, page 6).
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. In this case, it is unclear how the steel of Hina without a forsterite film cannot be equated with intentionally excluding the formation of a forsterite layer, as argued by the Applicant. As previously set forth in the Non-Final Rejection mailed 03/19/2025 and in this Office action, the steel of modified Hina reads on the claimed steel sheet as presently claimed.
Additionally, it is noted that the features upon which applicant relies (i.e. annealing separator) are not recited in the rejected claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, the claims are drawn to a steel sheet product and the steel of modified Hina has a chemical composition overlapping with the claimed invention and the claimed ceramic coating layer as previously set forth in the Non-Final Rejection mailed 03/19/2025 and in this Office action. Therefore, a prima facie case of obviousness has been established. Applicant is reminded that the instant claims are drawn to a product and not a method, that Hina explicitly teaches exclusion of a forsterite film, and that the use of an annealing separator, or lack of, in the manufacturing process for the claimed steel sheet is not claimed.
Regarding new claim 16, claim 16 is considered a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
In this instance, the claimed processing limitation of forming a ceramic coating layer by a chemical vapor deposition (CVD) process without applying an annealing separator does not necessarily impart any type of fixed structural limitation that distinguishes it from the cited prior art. Hina teaches the steel sheet is free of forsterite coating (Example 1, [0047], [0053]) and further teaches a ceramic coating is formed by chemical vapor deposition on the surface of the base steel sheet ([0015], [0043], chemical vapor deposition is commonly abbreviated as CVD). Therefore, the steel sheet of Hina has a coating on the steel sheet and does not include an annealing separator. The coating of Hina is applied using CVD and without applying an annealing separator, and therefore modified Hina reads on the new claim 16 as described in this Office action.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733