Detailed Office Action
Notice of Pre-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
Response to Amendments
The amendment filed on 11/17/2025 has been entered. Claims 1 and 3 – 6 remain pending. Claim 1 has been amended and finds support in at least the original claim set. Claims 4 – 6 remain withdrawn and claims 1 and 3 are under examination.
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Arita (WO2005100627, using espacenet translation provided herewith, cited in IDS on 04/21/23) in view of Kurosawa (US 6,406,558, cited with OA on 08/15/2025).
Regarding claim 1, Arita teaches a non-oriented electrical steel sheet [0001]. Arita teaches that the electrical steel sheet has a composition of:
Element
Claimed Invention (mass%)
Arita (mass%)
Reference
Relationship
Carbon (C)
0.001 – 0.005%
~0.022 – 0.034%
[0021, 0029, 0072]
Falls within
Silicon (Si)
1.5% or less
1.5% or less
[0011]
Falls within
Manganese (Mn)
0.1 – 1.5%
0.4 – 1.5%
[0011]
Falls within
Aluminum (Al)
0.01 – 0.04%
0.01 – 0.4%
[0011]
Falls within
Titanium (Ti)
0.003% or less
0.0015% or less
[0011]
Falls within
Niobium (Nb)
0.003% or less
Does not teach
-
-
Vanadium (V)
0.0011% or less
Does not teach
-
-
Zirconium (Zr)
0.003% or less
Does not teach
-
-
Nitrogen (N)
0.003% or less
0.003% or less
[0011]
Falls within
Sulfur (S)
0.004% or less
0.001 – 0.004%
[0011]
Falls within
Boron (B)
0.0045% or less
0.0045% or less
*
Falls within
Tin (Sn)
0.5% or less
0.5% or less
[0014]
Falls within
Ti+Nb+V+Zr
0.002 – 0.012%
Does not teach
-
-
B/N
0.5 – 1.5
0.5 – 1.5
[0011]
[0011]
B (sol)
0.0005% or less
Does not teach
-
-
NAl
0.0005% or less
Does not teach
-
-
*Calculated based on range of nitrogen and B/N ratio
Arita does not teach controlling the amount of niobium, vanadium, or zirconium, or their total (with titanium). Arita does not teach the percentage of dissolved boron or the content of nitrogen as AlN.
Kurosawa teaches a non-oriented magnetic steel sheet that has superior workability as well as superior magnetic properties [Abstract]. Kurosawa teaches that the non-oriented steel has a similar composition to Arita [Col 2, line 20 – 25, 34]. In addition to this, Kurosawa states that the elements of Ti, Nb, V, and Zr should all be controlled in order to properly attain a carbon equivalent [Col 2, line 37 – 41] because these elements often appear as impurities in non-oriented magnetic steel sheets [Col 6, line 8 – 15] and form carbides which affect properties of the sheet. In order to avoid this, the dissolved carbon must be maintained via control of Ti, Nb, V, and Zr [Col 6, line 25 – 30] and in particular, the individual amounts should be 0.006 wt% or less, which overlaps with the claimed ranges as well as the total range (the total amount being 0.024% or less) [Col 6, line 46 – 49].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the contents of Ti, Nb, V, and Zr to 0.006 wt% or less, as disclosed by Kurosawa, in the non-oriented magnetic steel sheet of Arita in order to control the content of dissolved carbon and the formation of carbides. Arita and Kurosawa are in the same field of endeavor with similar compositon and as such, the teachings of Kurosawa would be relevant to the steel of Arita. Moreover, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Kurosawa to the steel of Arita because Kurosawa acknowledges that these are common impurities and must be controlled because of their effects. Further still, Kurosawa provides explicit motivation (controlling dissolved C and carbide formation using the Ceq equation to prevent property deterioration) that an ordinarily skilled artisan would appreciate in its application to Arita.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Arita in view of Kurosawa does not teach the percentage of dissolved boron or the content of nitrogen as AlN. However, Arita in view of Kurosawa teaches an overlapping composition (as shown/described above) to the claimed invention.
Additionally, as can be seen in Table 3 of the instant invention, when B (sol) is too high or nitrogen as AlN is too high, the magnetic flux density is too low and/or the iron loss is too high (respectively). Moreover, the instant invention states that when content of sol. B and N-AlN are high, the magnetic properties are deteriorated [0156 of US2023/0392227]. Lastly, the instant invention states that 5.0 or less W/kg of iron loss and 1.70 T or more of magnetic flux density (B50) are considered excellent magnetic properties and when requirements of the invention are satisfied, they are both achieved [0155]. To this, Arita shows in Table 5 that the magnetic flux density of inventive examples is 1.70 – 1.73, which is above the magnetic flux density when soluble B is too high (in Table 3 of the specification), and the iron loss (W15/50) is 3.9 – 4.12, which is below the iron loss when the nitrogen as AlN is too high (in Table 3 of the specification).
As such, based on these reasons there is a reasonable expectation to a person of ordinary skill in the art that Arita (in view of Kurosawa) would meet the claimed ranges of dissolved boron and the content of nitrogen as AlN. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case structure/properties and composition, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (SEE MPEP 2112.01))
Regarding claim 3, Arita in view of Kurosawa teaches the invention as applied in claim 1. Arita discloses that the steel sheet should have a grain size of 30 µm or less, which meets the claimed range, and achieve a grain size of 50 µm or more when subjected to a heat treatment at 750°C for 2 hours, which meets the claimed limitation [0053].
Response to Arguments
Applicant's amendments and arguments thereto have overcome the previous rejection of:
Claims 1 and 3 under 35 U.S.C. 103 as being unpatentable over Hiura (JPH11229098)
Claim 3 under 35 U.S.C. 103 as being unpatentable over Hiura (JPH11229098) as applied to claim 1 above, in further view of Arita (CN1942597).
However, upon further consideration, a new rejection is made of claims 1 and 3 under 35 U.S.C. 103 as being unpatentable over Arita (WO2005100627) in view of Kurosawa (US 6,406,558).
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738