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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 APR 2026 has been entered.
Election/Restrictions & Status of Claims
Claims 1 and 3-7 are examined of which claims 1 and 7 were amended in Applicant’s reply.
Claims 8 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 29 May 2025.
Specification
The disclosure is objected to because of the following informalities: Instant disclosure recites “a low-cost non-oriented electrical steel plate” throughout the abstract and specification. However, based on the methods of making the steel, the steel at the end have a thickness associated with the art accepted term of a “sheet” rather than a “plate”. As one skilled in the art recognizes, the term “plate” as employed in the art mean thicknesses of 6 mm and above whereas steel thicknesses below 6mm is referred to as “sheet”.
Appropriate correction is required.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities: The amendment to the claims are in gray lines and not in the required “high contrast, with black lines and a white background”. Appropriate correction is required.
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.
Claims 1 and 3-7 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.
Regarding claims 1 and 3-7, claim 1 was amended to recite process steps. However, it is unclear how the composition is employed in the steps to result in the steel plate. In other words, there is a gap between the various steps and the product recited in the claim making it unclear how the product is manufactured with the recited steps as the instant process steps do not indicate how the steel with the specific composition is arrived at.
Regarding claims 1 and 3-7, instant claims require a “non-oriented electrical steel plate” and the process steps within the product claim recites a final thickness of 0.5 mm ± 0.1 mm. The term “plate” is used in the art to mean thicknesses of 6 mm and above whereas steel thicknesses below 6mm is referred to as “sheet”. Therefore, it is unclear whether the claims are requiring the art accepted term of the steel “plate” or whether it is requiring a sheet.
Regarding claim 7, instant claim requires “compared with conventional products of a same steel grade selected from the group consisting of conventional grades B50A1300, B50A800, and B50A600, the iron loss P15/50 of the non-oriented electrical steel plate is reduced by 0.2-0.8 W/kg, and a magnetic induction B50 of the non-oriented electrical steel plate is increased by 0.01-0.04 T” and provides ranges for iron loss P15/50 and a magnetic induction B50 for each of the three grades B50A1300, B50A800, and B50A600 as shown in table below.
Table 1
grade
iron loss P15/50
magnetic induction B50
B50A1300
5.5-6.5 W/kg
1.74-1.76 T
B50A800
5.0-5.5 W/kg
1.71-1.73 T
B50A600
3.9-4.5 W/kg
1.68-1.71 T
As the three grades recite different ranges for iron loss and magnetic induction, it is unclear what values of iron loss and magnetic induction would be required of the instant non-oriented electrical steel plate by the instant claim.
Claim 1 recites the limitations “the initial rolling temperature”, “the finish rolling temperature”, “the coiling temperature”, “the soaking and heat preservation temperature”, “the heat preservation time” and “the target thickness of hot rolling” “the trace element Sn”, “the average grain size”, “the recrystallization structure” and “the hot rolled steel plate” in lines 14-22. There is insufficient antecedent basis for these limitations in the claim. Claims 3-7 depend on claim 1, do not resolve the issue and thereby also indefinite.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
List 1
Element
Instant Claims
(mass%)
Prior Art
No. 2
(mass%)
Prior Art
Range
(mass%)
C
0.003 or less claims 1, 2
0.0025
≤ 0.004
Si
0.1 – 1.2 claims 1, 2
0.78
0.7 – 1.5
Mn
0.1 – 0.4 claims 1, 2
0.20
0.15 – 0.8
P
0.01 – 0.2 claims 1, 2
0.092
0.06 – 0.2
S
0.003 or less claims 1, 2
0.0018
≤ 0.005
Al
0.001 or less claims 1, 2
0.0005 or less claim 3
0.0001
≤ 0.0005
O
0.003 – 0.01 claims 1, 2
0.0045 – 0.007 claim 4
0.0085
≤ 0.012
N
0.003 or less claims 1, 2
0.0015
≤ 0.003
Sn
0.005 – 0.05 claims 1, 2
0.005 – 0.05 claim 5
0.017
0 – 0.03
Fe +
impurities
Balance
Balance
Balance
Claims 1, 3 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2004-292829 A of Fujimura and its English machine translation (JP’829).
Regarding claims 1, 3 and 5-6, JP 2004-292829 A of Fujimura and its English machine translation (JP’829) “a non-oriented silicon steel sheet which is composed of steel having minimal Al content and has excellent magnetic properties” “a non-oriented electrical steel sheet having excellent magnetic properties by using a steel having an Al content as low as possible and advantageous for recycling” “a steel sheet having a thickness of 2.3 mm. After pickling, it was cold-rolled to a thickness of 0.5 mm” having a component composition wherein a specific example, Steel No. 2 in Table 1, that lies within the claimed compositional range of the instant claims as shown in the List 1 above thereby anticipating the alloy of the instant claims. {abstract, [0001], [0014], [0025]-[0038], [0052]-[0057], Table 1}. A specific example in the prior art which is within a claimed range anticipates the range. “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) See MPEP § 2131.03 I.
Regarding the Si2/P ranges of a) 0.89-26.04 (claim 1) and 0.89-16.67 (claim 6), the prior art sample with 0.78 Si and 0.092 P provides 6.6130 for the formulaic expression thereby anticipating the claimed range. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75.
Regarding claim 1, it is noted that it was amended with process steps thereby making it a product-by-process claim. MPEP provides the guidance that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. As the prior art teaches a product, “a non-oriented silicon steel sheet which is composed of steel having minimal Al content and has excellent magnetic properties” “a non-oriented electrical steel sheet having excellent magnetic properties by using a steel having an Al content as low as possible and advantageous for recycling” “a steel sheet having a thickness of 2.3 mm. After pickling, it was cold-rolled to a thickness of 0.5 mm”, as shown above, the product of the prior art reads on the instant claimed product thereby meeting the structure implied by the steps or in other words the non-oriented steel sheet.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2004-292829 A of Fujimura and its English machine translation (JP’829).
Regarding claim 4, claim 4 depends on claim 1 and the relevance of JP 2004-292829 A of Fujimura and its English machine translation (JP’829) regarding claim 1 is set forth supra.
Instant claim requires an upper limit of 0.007 for O (claimed range is 0.0045-0.007 mass% of O) while the specific sample of the prior art discloses an O amount of “0.0085”. MPEP § 2144.05 I provides the guidance that Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner,778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). It is also noted that the instant specification provides no distinguishable properties between 0.007 and the value provided by the prior art of 0.0085 as the instant specification teaches O range of 0.003 – 0.01 (see claim 1) and does not provide criticality of the claimed narrow range of the instant claim. Therefore, the claimed range of the instant claim is obvious over that of the prior art since the claimed value is so close to the value provided by the prior art and there is no evidence on the record that the difference of 0.007 vs 0.0085 for O would provide different distinguishable properties.
In the alternative, JP’829 teaches “a non-oriented silicon steel sheet which is composed of steel having minimal Al content and has excellent magnetic properties with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. {abstract, [0001], [0014], [0025]-[0038], [0052]-[0057], Table 1}. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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.
Response to Arguments
Applicant's arguments filed 27 APR 2026 have been fully considered but they are not persuasive.
With respect to arguments regarding the process limitations in the product claim, MPEP provides the guidance that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. As the prior art teaches a product, ) “a non-oriented silicon steel sheet which is composed of steel having minimal Al content and has excellent magnetic properties” “a non-oriented electrical steel sheet having excellent magnetic properties by using a steel having an Al content as low as possible and advantageous for recycling” “a steel sheet having a thickness of 2.3 mm. After pickling, it was cold-rolled to a thickness of 0.5 mm”, as shown above, the product of the prior art reads on the instant claimed product thereby meeting the structure implied by the steps or in other words the non-oriented steel sheet.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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