DETAILED ACTION
Response to Amendment
The Amendment filed 11/06/2025 has been entered. Claims 1-2 remain pending in the application. Claim 2 has been withdrawn due to a restriction requirement. Claim 1 is currently amended. Applicant’s arguments, see pages 4-7, filed 11/06/2025, with respect to the objection to the specification and 112(a) rejection previously set forth in the Non-Final Rejection mailed 08/22/2025 have been fully considered and are persuasive. Examiner acknowledges the explanation that six linear grooves are included in the sample and five linear grooves are measured (emphasis added). The objection to the specification and 112(a) rejection of claim 1 previously set forth in the Non-Final Rejection mailed 08/22/2025 has been withdrawn.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 9396872 B2 of Inoue (as cited in prior Office action).
Inoue teaches a grain oriented electrical steel sheet with linear grooves formed thereon for magnetic domain refinement (Abstract).
Inoue teaches a grain-oriented electrical steel sheet comprising a plurality of grooves on one side of the steel sheet that extend linearly across a rolling direction and are lined up at intervals in the rolling direction with a forsterite film in the surface of the steel sheet, and a thickness of the forsterite film at bottom portions of the linear grooves is 0.3 μm or more (Col. 2, line 3-13, “linear grooves are formed at intervals of 2 to 10 mm in a rolling direction with a depth of each of the linear grooves of 10 μm or more” reads on the claimed plurality of grooves across a rolling direction).
Inoue teaches the thickness of the forsterite film that is necessary to increase the magnetic charge and improve the magnetic domain refining effect is 0.3 μm or more, preferably 0.6 μm or more, at the bottom portions of linear grooves (Col. 4, line 63-66). Inoue teaches the upper limit of the thickness of the forsterite film is preferably about 5.0 μm without limitation, because the adhesion with the steel sheet deteriorates and the forsterite film comes off more easily if the forsterite film is too thick (Col. 4, line 66 – Col. 5, line 3).
Inoue further teaches inventive examples with a forsterite film thickness between 0.32 and 0.68 μm at the bottom portions of grooves (Table 3, samples 3, 5, 7-8,11-13, and 17 are conforming examples).
While Inoue does not explicitly disclose the forsterite film thickness as an average thickness, Inoue teaches the thickness of the forsterite film at the bottom portions of linear grooves is calculated by observing a cross-section taken along the direction in which the linear grooves extend, where the area of the forsterite film was calculated by image analysis and the calculated area was divided by a measurement distance of 100 mm to determine the thickness of the forsterite film of the steel sheet (col. 5, lines 14-24). One of ordinary skill in the art understands that determining a thickness using the cross-sectional area and dividing by the measured distance results in an average thickness value. Therefore, one of ordinary skill in the art would reasonably expect the forsterite film thickness of Inoue to meet the claimed average thickness of 0.45 μm or more given the teachings of Inoue disclosing a preferable forsterite film thickness of 0.6 μm, upper limit of 5 μm, and inventive examples with thickness ranges of 0.32 μm-0.68 μm, which overlap or meet the claimed average thickness of 0.45 μm or more.
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. Inoue therefore reads on the limitation “a grain-oriented electrical steel sheet comprising a plurality of grooves on one side of the steel sheet that extend linearly across a rolling direction and are lined up at intervals in the rolling direction, and having at least a forsterite film on a surface of the steel sheet, wherein an average thickness of the forsterite film formed on floor of the grooves is 0.45 μm or more” of claim 1.
While Inoue does not explicitly disclose a standard deviation σ of the thickness is 0.34 μm or less, Inoue teaches increasing the film thickness at the bottom portions of the linear grooves is effective to increase the magnetic charge (Col. 4, lines 60-62).
Inoue further teaches inventive examples with a forsterite film thickness between 0.32 and 0.68 μm at the bottom portions of grooves (Table 3, samples 3, 5, 7-8,11-13, and 17 are conforming examples). While Inoue does not provide a standard deviation value for these forsterite film thickness values, one can perform the calculation to obtain this value from the listed inventive examples, which results in 0.11 μm, and reads on the limitation of 0.34 μm or less.
Additionally, one of ordinary skill in the art would adjust the forsterite thickness to optimize adhesion with the steel sheet and magnetic charge increases, as taught by Inoue, and would find it beneficial to minimize thickness variation to obtain the benefits of the forsterite film throughout the steel sheet.
Inoue therefore reads on the limitation “a standard deviation σ of the thickness is 0.34 μm or less” of claim 1.
Regarding the method of measuring the average thickness and standard deviation of claim 1, Inoue teaches the thickness of the forsterite film at the bottom portions of linear grooves is calculated by observing a cross-section taken along the direction in which the linear grooves extend, where the area of the forsterite film was calculated by image analysis and the calculated area was divided by a measurement distance to determine the thickness of the forsterite film of the steel sheet (col. 5, lines 14-24).
While Inoue does not explicitly teach calculating an average thickness and standard deviation from a given number of linear grooves and locations, the method of measuring a property does not change the property. The claimed method of determining an average thickness and standard deviation is a product-by-process limitation. MPEP § 2113 states that “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 this instance, the claimed method for calculating the average thickness and standard deviation does not change the forsterite film thickness achieved by the steel of Inoue, which discloses forsterite film thicknesses at the bottom portions of grooves in a grain-oriented electrical steel sheet overlapping with those claimed in the instant invention.
Inoue therefore reads on all the limitations of claim 1.
Response to Arguments
Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive.
Regarding argument (1), Applicant argues that Inoue does not disclose the specific range of the standard deviation a, namely 0.34 μm or less (remarks, pages 7-8).
In response to argument (1), Inoue teaches a forsterite film thickness at the bottom portions of grooves in a grain-oriented electrical steel sheet, as outlined in the 103 rejection in this Office action. One of ordinary skill in the art would understand the thickness disclosed by Inoue to be an average thickness given the method of measurement used to calculate the disclosed thickness of Inoue, as outlined in the 103 rejection in this Office action. While Inoue does not explicitly disclose a standard deviation, Inoue provides inventive examples (Table 3, samples 3, 5, 7-8,11-13, and 17 are conforming examples) that one of ordinary skill in the art would reasonably use to calculate a standard deviation, average, or other statistical values regarding the forsterite film thickness at the bottom portions of the grooves.
"In considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). See MPEP § 2144.01.
Here, one of ordinary skill in the art would be able to use the broader teachings and inventive examples of Inoue to identify desired forsterite film thicknesses at bottom portions of the grooves and its implicit disclosure of a standard deviation value. Additionally, one of ordinary skill in the art would reasonably want to minimize thickness variation, which would result in minimizing a standard deviation of the thickness, for product quality purposes as is well known in the metallurgical arts.
Regarding argument (2), Applicant argues that Inoue fails to teach or suggest the claimed methodology for determining the film thickness standard deviation based on 20 localized measurements within a single sheet, much less the specific standard deviation a of 0.34 μm or less (remarks, pages 8-10).
In response to argument (2), Applicant is reminded that the patentability of a product does not depend on its method of production. See MPEP 2113.
Here, the product of Inoue is a grain-oriented electrical steel sheet with a plurality of linear grooves across a rolling direction with a forsterite film possessing the claimed average thickness and standard deviation of the thickness, as discussed in this Office action, and therefore meets the limitations of the product claim regardless of the measurement method used.
Regarding argument (3), Applicant argues that the limitations of "an average thickness of the forsterite film formed on floor of the grooves is 0.45 μm or more" and "a standard deviation a of the thickness is 0.34 μm or less" as recited in claim 1, are uniquely achieved by the process disclosed in claim 2 (remarks, page 11). Applicant further argues that the distinguishing feature as recited in claim 1 provides an advantageous effect (remarks, page 12). Applicant further argues Inoue does not disclose or suggest anything about using a laser to remove the resist (remarks, pages 11-13).
In response to argument (3) regarding unexpected results, overcoming a rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope, and the results must truly be unexpected. MPEP §716.02. The burden rests with Applicant to establish results are unexpected and significant. MPEP §716.02(b). Applicant's showing of allegedly unexpected results does not satisfy any of these requirements. In this case, Inoue teaches a grain-oriented electrical steel sheet with a plurality of linear grooves across a rolling direction with a forsterite film thickness range and inventive examples which read on the claimed average thickness and standard deviation, as outlined in this Office action.
In response to argument (3) regarding advantageous effects, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, one of ordinary skill in the art would reasonably expect the steel of Inoue to possess the same properties of the claimed steel given both steels are grain-oriented electrical steel sheets with a plurality of linear grooves across a rolling direction with overlapping forsterite film thickness and standard deviation, as outlined in this Office action.
In response to argument (3) regarding using a laser to remove the resist, it is well known in the metallurgical arts that properties of products may be achieved by different manufacturing methods. In this case, since Inoue teaches a grain-oriented electrical steel sheet with linear grooves and a forsterite film with overlapping thickness at the floor of the grooves, the product of Inoue reads on the claimed invention despite using different methods of processing and of measuring the forsterite film thickness.
Conclusion
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733