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 .
Election/Restrictions & Status of Claims
Claims 1 and 3-7 are examined of which claims 1 and 3-7 were amended in Applicant’s reply.
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
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.
Additionally, the last two lines of claim 1 now recite “whereby segregation of Sn is promoted, improving recrystallization structure of the hot rolled steel plate, and promoting grain size growth”. It is unclear if this is directed to a specific step or if it is a result of all of the recited steps. Moreover, all of the steps recites are generic steps and it is unclear what this promoting and improving is measured against as the claim does not indicate a standard for measuring this various “promoting” and “improving”. Claims 3-7 are dependents of claim 1, do not resolve the issue and therefore also indefinite.
Regarding claim 7, instant claim recites many types of steel. Instant claim recites “generally” followed by a range for the various properties. It is unclear whether the claim is requiring that range or some other range to be the comparison as the term “generally” means usually which can also infer cases that it is not followed. In other words, the term makes unclear of the range that is to be used for comparison.
Regarding claim 7, instant claim recites “characterized in that compared with conventional products of a same steel grade” and recites many types of steels. It is unclear what is meant or encompassed by “conventional products of a same steel grade” as the claim recites multiple grades thereby making it unclear what steel grade is to be compared with the instant steel.
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.
Claim Rejections - 35 USC § 102/103
Claim 7 is 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 2004-292829 A of Fujimura and its English machine translation (JP’829).
Regarding claim 7, the prior art is silent regarding the recited properties of “compared with conventional products of a same grade, the iron loss P15/50 of the non-oriented electrical steel plate is reduced by 0.2-0.8 W/kg on average, and a magnetic induction B50 of the non-oriented electrical steel plate is increased by 0.01-0.04 T on average”.
MPEP § 2112 provides that A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102 /103 rejection. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 /103 rejection is appropriate for these types of claims as well as for composition claims. See MPEP § 2112 I-IV.
Therefore, although the prior art does not explicitly teach its alloy having this as claimed in the instant claim, since the prior art teaches a substantially identical product as shown above, one skilled in the art would expect the steel of the prior art to have the properties as recited in the instant claim. 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).
Response to Arguments
Applicant's arguments filed 09/16/2025 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.
Regarding the arguments that the prior art would not have the claimed properties, instant claim recites generic steps and do not specify any specific temperatures, rates or times that would correlate to specific results. Moreover, as noted above, it is unclear what properties instant claim 7 is seeking. In addition, Applicant provides no data that would lead one to conclude that the prior art would not have the properties. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
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 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