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 l.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and the fee set forth in 37 CFR l.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/19/2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/23/2025 is being considered by the examiner.
Response to Amendments / Status of Claims
An amendment, filed 11/17/2025 is acknowledged.
Claims 1-21 are pending.
Claims 1 has been amended, using “hot-rolled” in multiple places to replace the steel sheet, adding a new limitation of “conducting a heat treatment of the cleaned steel sheet after the cleaning step” and incorporating the limitations from claim 15 into claim 1. The amendment finds supports in the paragraph [0033] of the instant specification, therefore, no new matter is presented.
Claims 21 has been amended, using “hot-rolled” in multiple places to replace the steel sheet, adding a new limitation of “heat treating the cleaned steel sheet after the cleaning step” and incorporating the limitations from claim 15 into claim 21. The amendment finds supports in the paragraph [0033] of the instant specification, therefore, no new matter is presented.
Therefore, claims 1-21 remain for examination on the merits for this office action.
Status of Previous Rejections
The previous 35 USC § 112 (b) rejections of the claims have been withdrawn.
The previous 35 USC § 103 rejections of the claims have been maintianed.
Examiner's Note
There is a potential double patenting rejection between claims 1 and 15. Because claim depends on claim 1, therefore incorporating all the limitations of claim, and claim 15 further recites the limitation “water vapor with a proportion corresponding with a dew point of -70°C to -20° C is contained in the inert gas atmosphere” is same as the limitation of “the inert gas atmosphere contains water vapor with a proportion corresponding with a dew point of -70° C to -20° C” as recited in the claim 1, therefore, the scope of claim 15 and is exactly the same scope of claim 1.
Applicant may cancel and/or amend either of the conflicting claims. “A rejection based on the statutory type of double patenting can be avoided by amending the conflicting claims so that they are not coextensive in scope” [See MPEP 804.02.I].
Claim Rejections - 35 USC § 112 (b)
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.
Claim(s) 1-21 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 of “the hot-rolled steel sheet” in line 5 and 6, renders the claim indefinite, because, the use of “the hot-rolled steel sheet” in both the surface treatment step and the cleaning step make it unclear, if the order of the steps is necessary or not or as both steps are performed on the hot-rolled steel sheet.
Claim 1 further recites “conducting a heat treatment of the cleaned steel sheet after the cleaning step” in line 8, renders the claim indefinite, because it is unclear whether the heat treatment is performed on the cleaned steel sheet after the surface treatment step, as the cleaned steel sheet is produced in the surface treatment step as recited in the line 5 of the instant claim or the heat treatment is performed after the cleaning step. The heat treatment is done either on the after surface treatment would be interpreted as a broadest reasonable interpretation for the examination purpose.
Appropriate correction is required.
Claims 2-20 are rejected from their dependency on Claim 1.
Claim 21 recites the limitation of “the hot-rolled steel sheet” in line 4-6, renders the claim indefinite, because, the use of “the hot-rolled steel sheet” in both the surface treatment step and the removing residues step make it unclear, if the order of the steps is necessary as both steps are performed on the hot-rolled steel sheet.
Claim 21 further recites “heat treating the cleaned steel sheet after the cleaning step” in line 7, renders the claim indefinite, because, there is no cleaning step in the instant claim, therefore, it is unclear whether the surface treatment step is the cleaning step or the removal of residue is the cleaning step. The heat treatment is done either on the after surface treatment would be interpreted as a broadest reasonable interpretation for the examination purpose.
Claim 21 recites the limitation "the cleaning step” in line 7. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction is required.
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 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(s) 1-4, 6-7, 10-15, and 18-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robert H. Henke [US3021237] and further in view of Soo-Hyoun Cho et.al. [US20130084785A1] (provided in the IDS).
Regarding Claim 1, and 21, Henke discloses a method for processing a siliceous, hot-rolled steel sheet for producing an electric steel strip wherein the steel sheet contains a silicon content of from 0.25% to 3.5 wt.% [Col.1, Line 15-18, Table 1].
Henke’s disclosed Si content is overlapping as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Si selected from the range of Henke, because “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)” [See MPEP § 2144.05.I].
Henke’s method comprising the ingot having a composition within the range given is first reduced to a strip by hot rolling to an intermediate gauge of between 1.524 mm (0.06 inch) and 3.1 mm (0.125 inch) and conducting a surface treatment in a device for removing oxide layers from a surface of the steel sheet to produce a cleaned steel sheet (hot rolling, after which hot rolled strip is subjected to any suitable pickling or descaling treatment to remove the scale therefrom. The descaled strip is then is subjected to a controlled heat treatment consisting of a continuous annealing system [Col.2, Line 32-46].
Henke further teaches a heat treatment of the descaled cleaned steel sheet after the surface treatment in a hot -rolled strip annealing plant in an inert gas atmosphere; (As the strip passes through the zoned furnace it is completely enveloped by protective gas atmosphere having a controlled composition and dew point. Protective gases, such as dissociated ammonia containing 75% hydrogen and 25% nitrogen) [Col.4, Line 50-53]. According to the instant specification, page 3, line 8-9, “an inert gas atmosphere consisting of hydrogen and/or nitrogen is provided in the hot-rolled strip annealing plant”.
Henke further teaches the strip of final gauge is subjected to a controlled heat treatment consisting of a continuous normalizing to effectively and progressively reduce the carbon content of the steel, effect a recrystallization and grain growth and maintain scale-free surfaces on the strip. Such treatment is applied through the use of a temperature zoned annealing furnace, the construction of which is well known to those skilled in the art, the strip being passed continuously therethrough at a predetermined rate (speed) while being suitably supported therein and being admitted at the lower temperature zone of the furnace, the heat treatment being applied in the presence of a protective gas atmosphere having a controlled dew point [Col.2, Line 47-57, claim 1].
Henke further teaches water vapor with a proportion corresponding with a dew point contained in the inert gas atmosphere (it is seen that the process is effective for decarburizing the steel when an atmosphere of pure cracked ammonia [Cracked NH3 =(75% H,+25% N,)] having a dew point between -40°C (-40°F) and - 42°C (-45°F) is used as the furnace atmosphere [Col. 7, line 40-43, Table IV].
Henke’s water vapor with a proportion corresponding with a dew point is within the range as recited in the corresponding instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have water vapor with a proportion corresponding with a dew point selected from the range of Henke, because “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)” [See MPEP § 2144.05.I].
Henke teaches a process in which scale-free cold rolled silicon steel strip is continuously heat treated to reduce the carbon content, recrystallize the steel, enhance the grain growth and maintain scale-free surfaces whereby electrical steel strip having good magnetic characteristics is produced [Col.1, Line 62-67]. Henke teaches any suitable descaling treatment to remove the scale with a hot rolled strip [Col.2, Line 38-41].
But Henke is silent about the removing the scale is carried out mechanically but without chemical descaling, and any further cleaning step where residues are removed from the surface of the steel sheet after the descaling.
However, Cho discloses a descaling device for removing scale or other residual foreign objects formed on a surface of a hot-rolled steel strip (steel sheet), and, more particularly, to an environmentally-friendly descaling device for realizing the removal of scale or other residual foreign objects on the surface of a hot-rolled steel strip (steel sheet) through an environmentally-friendly physical (mechanical) method excluding (without) a typical chemical treatment and, in addition, for highly efficiently removing scale by the simplification of a device structure and a descaling process as well as appropriate maintenance and adjustment of average surface roughness of the steel strip after descaling [Abstract, Section 0001, 0014 and 0031], which is applicable for electrical steel sheets [Section 0002, and 0032]. (steel strip), e.g., a silicon added steel sheet for an electric motor [Section 0002].
Cho’s process descaling of a hot-rolled steel strip comprises as illustrated in FIG. 2, two step processes,
conducting a surface treatment in a device for removing oxide layers from a surface of the steel sheet to produce a cleaned steel sheet (a hot-rolled coil primarily passes through the descaling devices 1 where granular/particles are used as a slurry) and then,
providing a cleaning step where residues are removed from the surface of the steel sheet (the steel sheet passes through a washing tank 160 composed of a brushing tank 162 and a rinsing tank 164, and a drying tank (hot air tank) 170 [Section 0044-45].
After cleaning Cho’s hot-strip steel sheet can go subsequent processes, such as cold rolling and plating etc. [Section 0047].
Cho is analogous to Henke, as because Cho teaches descaling of hot-rolled strip after the hot rolling step same as Henke, and Cho’s process is applicable to silicon steel sheet.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Cho’s teaching of environmentally-friendly descaling for the removal of scale or other residual foreign objects on the surface of a hot-rolled steel strip, to modify Henke to have silicious electrical steel strip with scale free surfaces having good magnetic characteristics.
Regarding Claim 2, all the above discussions regarding claim 1 are applicable to claim 2, Henke is silent about that the mechanical surface treatment is carried out with a granular material, and particles of the granular material are accelerated and blasted at the surface of the steel sheet.
However, Cho discloses the device further include an abrasive input unit 50 able to introduce the abrasive 6 into the device housing 10 through smooth suction by the medium of injection pressure of the high-pressure water 4 without the application of external pressure and an abrasive slurry spraying unit 70 included in the device housing to spray an abrasive slurry 8 having the high-pressure [Section 0052] and Cho’s typical abrasives, such as metal shot balls, grit particles, or stainless steel beads, and glass beads of the present invention are compared and listed in the following Table 1 [Section 0060]. Cho’s high pressure meets the limitation of the granular material are accelerated and blasted at the surface of the steel sheet.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Cho’s teaching of environmentally-friendly descaling for the removal of scale or other residual foreign objects on the surface of a hot-rolled steel strip, to modify Henke to have silicious electrical steel strip with scale-free surfaces having good magnetic characteristics.
Regarding Claim 3, all the above discussions regarding claim 1 and 2 are applicable to claim 3, wherein Cho further discloses further teaches the mechanical surface treatment is performed using a suspension the granular materials are suspended in a liquid (an abrasive slurry spraying unit 70 included in the device housing to spray an abrasive slurry 8 having the high-pressure) [Section 0052].
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Cho’s teaching of environmentally-friendly descaling for the removal of scale or other residual foreign objects on the surface of a hot-rolled steel strip, to modify Henke to have silicious electrical steel strip with scale-free surfaces having good magnetic characteristics.
Regarding Claim 4, all the above discussions regarding claim 1 are applicable to claim 4, wherein Cho further discloses further teaches the mechanical surface treatment is performed using a high-pressure water jet with a water pressure controlled to be in a range of 100 bar to 500 bar [Section 00140].
Cho’s water jet pressure is within the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have jet pressure selected from the range of Cho, because “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)” [See MPEP § 2144.05.I].
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Cho’s teaching of environmentally-friendly descaling for the removal of scale or other residual foreign objects on the surface of a hot-rolled steel strip, to modify Henke to have silicious electrical steel strip with scale-free surfaces having good magnetic characteristics.
Regarding Claim 6, all the above discussions regarding claim 1 are applicable to claim 6, wherein Henke teaches the heat treatment are performed in a continuous process; and a speed of the movement of the steel sheet in the region of the heat treatment as Henke teaches a controlled heat treatment consisting of a continuous normalizing to effectively and progressively reduce the carbon content of the steel, effect a recrystallization and grain growth and maintain scale-free surfaces on the strip. Such treatment is applied through the use of a temperature zoned annealing furnace, the construction of which is well known to those skilled in the art, the strip being passed continuously therethrough at a predetermined rate (speed) while being suitably supported therein and being admitted at the lower temperature zone of the furnace, the heat treatment being applied in the presence of a protective gas atmosphere having a controlled dew point [Col.2, Line 47-57].
But Henke is silent about the mechanical surface treatment and thus a speed of the movement of the steel sheet in the region of the mechanical surface treatment.
However, Cho teaches descaling device providing a highly efficient descaling environment suitable for high-speed strip-passing as well as being more environmentally friendly by uniformizing average surface roughness of a steel strip (steel sheet) after descaling, while realizing a physical (mechanical) method of removing scale or other foreign objects without a typical chemical treatment [Section 0014]. Cho also teaches a descaling device housing disposed in a feed path of a hot-rolled steel strip [Section 0016] and scale of a hot-rolled strip ( steel sheet) may be continuously removed and, in particular, descaling efficiency may be secured even in the case that a high-speed treatment as well as the size of facility being reducible, cost reduction may be possible as well as productivity being improved [Section 0031]. As because, Cho’s disclosed device is disposed in the feed path of continuously moving hot-rolled steel strip, therefore it would have been obvious to ordinary skill in the art that Cho’s speed of the movement of the steel sheet is the same in the region of the mechanical surface treatment and in the region of the heat treatment.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Cho’s teaching of disposing descaling device into the feed path of continuously moving a hot-rolled strip ( steel sheet) for continuously removing of scales to modify Henke to have silicious electrical steel strip with scale-free surfaces having good magnetic characteristics, with an environmentally-friendly and effective as well as productive way.
Regarding Claim 7, all the above discussions regarding claim 1 are applicable to claim 7, wherein Henke’s teaches the hot-rolled strip annealing plant includes a heating region, a holding region, (the temperature zoned furnace preferably is provided with a plurality of predetermined temperature zones ranging from a temperature of not less than 1400°F, an intermediate temperature zones having a temperature preferably in the range of 1525°F to 1650°F to effectively introduce a temperature of between about 1400° F and 1600° F (760°C - 871°C) and progressively up to a high temperature zone of between 1725°F and 2150° F and preferably between 1800° F and 2150° F ( 982°C and 1176°C)) [Col. 2, Line 58-67]. It is sufficient that the steel remain in the low temperature zone of the furnace to induce a temperature in the strip within the range between 1400 and 1600°F (760°C - 871°C) for a time period between about 1.3 minutes and 3.9 minutes (78 seconds and 234 seconds) to effectively decarburize the steel, and then within the high temperature zone for a period of between 2.2 and 4.1 minutes ( 132 seconds and 246 seconds) to complete the process of recrystallization and grain growth [Col. 4, Line 25-30]. Although Henke is silent about a cooling region, it would have been further obvious to one of ordinary skill in the art that the steel strip is being cooled after the thermal treatment.
Regarding Claim 10 and 20, all the above discussions regarding claim 1 are applicable to claim 7, wherein Henke’s teaches during a holding phase, the steel sheet is held at the maximum temperature in a holding region for a duration of 78 to 234 seconds (It is sufficient that the steel remain in the low temperature zone of the furnace to induce a temperature in the strip within the range between 1400 and 1600°F (760°C - 871°C) for a time period between about 1.3 minutes and 3.9 minutes (78 seconds and 234 seconds) to effectively decarburize the steel [Col. 4, Line 25-30].
Henke’s holding duration of time is overlapping as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have holding duration of time selected from the range of Henke, because “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)” [See MPEP § 2144.05.I].
Regarding Claim 11, all the above discussions regarding claim 1 are applicable to claim 11, Henke further teaches a speed of the movement of the steel sheet is controlled dependent on a heating performance of the hot-rolled strip annealing plant (The temperature of the different zones can be readily controlled by known methods, and as will be appreciated the different zones can be of different length, depending upon the time it is desired to subject the strip to the different temperatures and treatment to be described, it being understood that the strip is advanced throughout the furnace at a uniform rate (speed)) [Col.3, Line 34-40].
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Henke’s teachings of speed of the movement of the steel sheet for producing a silicious electrical steel strip based on the desired process parameters.
Regarding Claim 12, all the above discussions regarding claim 1 are applicable to claim 12, Henke further teaches a speed of the movement of the steel sheet is calculated based on a mathematical-physical computational model of the hot-rolled strip annealing plant (in practice, the cold rolled strip is usually passed through the zoned furnace so that the strip is subjected to the various temperatures for various periods of time ranging between 3.5 and 8 minutes, depending upon the thickness. It has been found that regardless of the length of the furnace, optimum results are obtained where the strip is heat treated in the furnace for a total time of between 3.5 and 8 minutes, depending upon the thickness as the thickness. [Col.3, Line 34-40]. Henke teaches the rate at which the strip passes through the furnace, based on a mathematical-physical data (computational model) in Table II, is between about 0.5 and 2.0 feet per minute per inch of strip thickness [Col.4, Line 15-18].
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Henke’s teachings of speed of the movement of the steel sheet for producing a silicious electrical steel strip based on the desired process parameters.
Regarding Claim 13, all the above discussions regarding claim 1 are applicable to claim 13, Henke further teaches an inert gas atmosphere consisting of hydrogen and/or nitrogen is provided in the hot-rolled strip annealing plant (As the strip passes through the zoned furnace it is completely enveloped by protective gas atmosphere having a controlled composition and dew point. Protective gases, containing 75% hydrogen and 25% nitrogen [Col.4, Line 50-53].
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Henke’s teachings of protective gas atmosphere to produce a silicious electrical steel strip with a controlled composition.
Regarding Claim 14, all the above discussions regarding claim 1 are applicable to claim 14, wherein Henke further teaches hydrogen with a proportion of 75 %, is provided in the inert gas atmosphere (As the strip passes through the zoned furnace it is completely enveloped by protective gas atmosphere hav-ing a controlled composition and dew point. Protective gases, such as dissociated ammonia containing 75% hydrogen and 25% nitrogen) [Col.4, Line 50-53].
Therefore, Henke’s hydrogen proportion is within the range as recited in the corresponding instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have hydrogen proportion selected from the range of Henke, because “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)” [See MPEP § 2144.05.I].
Regarding Claim 15, all the above discussions regarding claim 1 are applicable to claim 15, wherein it is already have been shown that Henke teaches water vapor with a proportion corresponding with a dew point contained in the inert gas atmosphere (it is seen that the process of this invention is effective for decarburizing the steel when an atmosphere of pure cracked ammonia [Cracked NH3 =(75% H,+25% N,)] having a dew point between -40°C (-40°F) and - 42°C (-45°F) is used as the furnace atmosphere [Col. 7, line 40-43, Table IV].
Therefore, Henke’s water vapor with a proportion corresponding with a dew point is within the range as recited in the corresponding instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have water vapor with a proportion corresponding with a dew point selected from the range of Henke, because “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)” [See MPEP § 2144.05.I].
Regarding Claim 18, all the above discussions regarding claim 1 are applicable to claim 18, wherein Henke discloses the steel sheet has a thickness of between 1.524 mm (0.06 inch) and 3.1 mm (0.125 inch) [Col.2, Line 32-46].
Therefore, Henke’s thickness is overlapping with the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have thickness selected from the range of Henke, because “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)” [See MPEP § 2144.05.I].
Regarding Claim 19, all the above discussions regarding claim 1 are applicable to claim 19, wherein, Henke discloses a method for processing a siliceous, hot-rolled steel sheet for producing an electric steel strip wherein the steel sheet contains a silicon content of from 0.25% to 3.5 wt.% [Col.1, Line 15-18, Table 1].
Henke’s disclosed Si content is overlapping as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Si selected from the range of Henke, because “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)” [See MPEP § 2144.05.I].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Robert H. Henke [US3021237], in view of Soo-Hyoun Cho et.al. [US20130084785A1] as applied to claim 1 and further in view of Christian D. Nelson, et.al. [US6088895].
Regarding Claim 5, all the above discussions regarding claim 1 are applicable to claim 5, wherein Henke teaches any suitable descaling treatment to remove the scale with a hot rolled strip, but is silent about the removing the scale is carried out mechanically but without chemical descaling. Cho discloses a descaling device for removing scale or other residual foreign objects formed on a surface of a hot-rolled steel strip (steel sheet), and, more particularly, to an environmentally-friendly descaling device for realizing the removal of scale or other residual foreign objects on the surface of a hot-rolled steel strip (steel sheet) through an environmentally-friendly physical (mechanical) method excluding (without) a typical chemical treatment and, in addition, for highly efficiently removing scale by the simplification of a device structure and a descaling process as well as appropriate maintenance and adjustment of average surface roughness of the steel strip after descaling [Abstract, Section 0001, 0014 and 0031], which is applicable for electrical steel sheets [Section 0002, and 0032]. (steel strip), e.g., a silicon added steel sheet for an electric motor [Section 0002]. Cho’s two-step process of descaling comprises a hot-rolled coil primarily passes through the descaling devices 1 where granular/particles are used as a slurry) and then, the steel sheet passes through a washing tank 160 composed of a brushing tank 162 and a rinsing tank 164, and a drying tank (hot air tank) 170 [Section 0044-45].
But Cho is also silent about the mechanical surface treatment includes a treatment via shot blasting.
However, Nelson discloses a process of making a metal strip from a steel melt, by being continuously cast into a strip cast into an ingot. The cast metal then is hot processed into a continuous length strip. By "hot processed" will be understood the metal strip will be reheated, if necessary, and then reduced to a predetermined thickness such as by hot rolling [Col. 3, Line 34-42]. Nelson then discloses the hot processed strip by blasting with abrasive particles, i.e., grit having angular or serrated surfaces or preferably spherical shot. Particle blasting of scaled strip surfaces is used because considerable blast cleaning [Col. 4, Line 24-32]. The metal particles are transported to a steel surface using a high speed rotating wheel. The velocity of the metal particles should be at least 55 m/sec. Using a high speed wheel to fling the metal particles to the strip surface is advantageous because using a speed at least about 55 m/sec for the particle sizes described above provides ample impact energy to remove the most adherent hot mill scales [Col. 4, Line 54-65] and for further removal of any remaining residual cracked scale from the hot processed strip using at least two cleaning brushes [Col. 5, Line 1-2]. Nelson further discloses particle blasting of each surface of the elongated strip with particles to remove the scale and to provide a surface having a predetermined roughness, and the hot-rolled strip is ready further processing without any pickling [Abstract and Claim 1].
Nelson is analogous with both Henke and Cho, as Nelson’s surface treatment and mechanical descaling is performed on the hot rolled steel strip.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Nelson’s teaching of shot blasting to modify Henke in view of Cho to remove adherent mill scale and to have silicious electrical steel strip with scale free surfaces along with a predetermined surface roughness.
Claims 8 -9 10 are rejected under 35 U.S.C. 103 as being unpatentable over Robert H. Henke [US3021237], in view of Soo-Hyoun Cho et.al. [US20130084785A1] as applied to claim 1 and further in view of Shinsuke Takatani et.al. [US20220081746A1] (PCT filed Jan 16, 2020).
Claims 10 and 20 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Robert H. Henke [US3021237], in view of Soo-Hyoun Cho et.al. [US20130084785A1] as applied to claim 1 and further in view of Shinsuke Takatani et.al. [US20220081746A1] (PCT filed Jan 16, 2020).
Regarding Claim 8 and 9, all the above discussions regarding claim 1 are applicable to claim 8, wherein Henke further teaches said furnace having three zone in in which the low temperature zones in said furnace progressively increase in temperature from not less than 1400°F up to a high temperature zone of between 2150° F. But Henke is silent about the heating rate.
However, Takatani discloses a method for processing a siliceous, hot-rolled steel sheet for producing an electric steel strip wherein the steel sheet contains 0.80-7.0% parts by weight of silicon [Section 0098]. Takatani’s process comprises a decarburization annealing in an atmosphere, at a temperature of 750 to 900° C, and a holding time of 10 to 600 seconds. If the annealing temperature is less than 750°C, the decarburization speed slows down, and thereby, the productivity decreases. In addition, the decarburization does not occur properly, and thereby, the magnetic characteristics after the final annealing deteriorate [Section 0171]. Takatani then discloses depending on the oxidation degree (PH2O/PH2), a heating rate in a heating stage to the annealing temperature is also controlled. For instance, in a case where the heating including an induction heating is conducted, an average heating rate may be 5 to 1000°C/s. Moreover, in a case where the heating including an electric heating is conducted, an average heating rate may be 5 to 3000° C/s [Section 0173].
Takatani’s heat treatment temperature and the heating rate are overlapping with the range as recited in the corresponding instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have heating rate selected from the range of Takatani, because “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)” [See MPEP § 2144.05.I].
Henke and Takatani are analogous as both Henke and Takatani are related to the field of decarburizing of Si steel strip.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Takatani’s teaching of controlled heating rate during decarburization annealing, to modify Henke to have silicious electrical steel strip with scale free surfaces having better magnetic characteristics as well as better productivity.
Regarding Claim 10 and 20, all the above discussions regarding claim 1 are applicable to claim 10, wherein Henke is sufficient to meet the claim limitations, in addition, alternatively, Takatani also teaches the steel sheet is held at the maximum temperature in a holding region for a duration of a holding time of 10 to 600 seconds (When the holding time is less than 10 seconds, the decarburization does not occur sufficiently. On the other hand, when the holding time is more than 600 seconds, the productivity decreases. In addition, the grain size after the primary recrystallization exceeds favorable size, and thereby, the magnetic characteristics after the final annealing deteriorate) [Section 017].
Takatani’s duration of a holding time is overlapping with the range as recited in the corresponding instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have duration of a holding time selected from the range of Takatani, because “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)” [See MPEP § 2144.05.I].
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Takatani’s teaching of holding time during decarburization annealing, to modify Henke to have silicious electrical steel strip with scale free surfaces having better magnetic characteristics.
Claim(s) 16—17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robert H. Henke [US3021237] in view of Soo-Hyoun Cho et.al. [US20130084785A1] as applied to claim 1 and further in view of Peter Palzer [US20190203312A1, PG-pub publication of US11214846B2] is presented.
Regarding Claim 16 and 17, all the above discussions regarding claim 1 are applicable to claim 18, although Henke is silent whether the steel sheet is moved in the hot-rolled strip annealing plant in a horizontal conveying direction or in a vertical conveying direction.
However, Palzer discloses a method for processing a siliceous, hot-rolled steel sheet contains 0.0-6.0% parts by weight of silicon wherein the steel sheet contains more than 0.80-7.0% parts by weight of silicon [Col. 4, Line 45-46]. Palzer then discloses a conventional manner of the flat steel product is produced by a production route, wherein the process comprising, melting a steel melt with the above-described chemical composition in a, via the process route, blast furnace steel plant or electric arc furnace steel plant with optional vacuum treatment of the melt and then casting the steel melt to form a pre-strip by means of a horizontal or vertical strip casting process approximating the final dimensions or casting the steel melt to form a slab or thin slab by means of a horizontal or vertical slab or thin slab casting process, then hot rolling followed by continuous annealing installation and conducting other further processing as required [Section 0052-0054].
With these above teachings of Palzer, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, the steel sheet is moved in the hot-rolled strip annealing plant in either a horizontal conveying direction or in a vertical conveying direction, because, “If the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility” [See MPEP 2106.05], as in this case, claim 16 recites steel is moving in a horizontal conveying direction and claim 17 recites steel is moving in a vertical conveying direction and Palzer teaches horizontal or vertical strip casting process are the conventional process route, therefore, there is no unobvious difference between the prior art and the claimed limitation.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Palzer’s teaching to modify Henke to have a silicious steel strip in a conventional manner of casting the steel melt to form a pre-strip by means of a horizontal or vertical strip casting process approximating the final dimensions.
Response to Arguments
Applicant's arguments filed 11/17/2025 have been fully considered but they are not persuasive.
In response to Applicant's arguments regarding the common knowledge modification previously taken (Official Notice) is not persuasive, as because,
(i) there is no official notice in the Final office action dated 09/17/2025.
(ii) Applicant did not point out any claim or which part of the office action is official notice, “regarding the common knowledge modification previously taken (Official Notice), in order to adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner's action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. [See 37 CFR 1.111(b). See MPEP 2144.03(c) and also Chevenard, 139 F.2d at 713, 60 USPQ at 241].
In response to Applicant's arguments regarding the 35USC§103 rejection of claim 1, specifically to the reference of Henke that “Henke teaches “Hot rolling, Descaling, Cold rolling, Heat treatment, Thus, the heat treatment in Henke is carried-out on a cold-rolled steel sheet and not on a hot-rolled steel sheet” has considered but does not seem persuasive, because, the claim recites the transitional phrase “comprising”, which is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004), therefore claim does not exclude “cord rolling” step after hot rolling, and Henke’s cold rolling step is done after the descaling step of hot-rolled strip.
In response to Applicant's arguments regarding the 35USC§103 rejection of claim 1, specifically to the reference of Henke that “Henke discloses an inert gas atmosphere of less than+ 60° F (15.6°C) and usually of+ 40° F (4.4 °C) to+ 45° F (7.2 °C). See Henke Col. 4, L 63-66. Where it states "In admitting the gas atmosphere to the furnace the dew point of the gas is preferably maintained at less than +60 F, and usually has a dew point in the neighborhood of +40°F to +45 F." does not seem persuasive, because, Applicant refers wherein Henke teaches about the neighborhood temperature, but the instant claim recites “dew point when conducting heat treatment”, and the rejection is made based on Henke’s column 7 line 40-47, wherein Henke clearly teaches “it is seen that the process is effective for decarburizing the steel when an atmosphere of pure cracked ammonia [Cracked NH3 =(75% H,+25% N,)] having a dew point between -40°C (-40°F) and - 42°C (-45°F) is used as the furnace atmosphere [Col. 7, line 40-43, Table IV], which controlling the carbon content during decarburizing. Henke further teaches after heat treatment, it being noted that the dew point of the gas has risen from about -45°F [Col. 7, line 48] and thus Henke meets the limitations of the claim.
Therefore, the 35 USC § 103 rejections of the claims 1-21 have been maintained but re-written due to the amendments and enclosed herewith (please check the section of the 35U.S.C. 103 rejection associated with this office action for further details).
Conclusion
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738