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
Request to Continue Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/27/26 has been entered.
Response to Amendments
The amendment filed on 05/27/26 has been entered. Claims 1 and 3 – 6 remain pending. Claims 4 – 6 remain withdrawn. 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, 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 – 0.04%
[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
0.0033 – 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 composition 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].
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 Bae (KR101067478, using espacenet translation).
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 – 0.04%
[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
0.0033 – 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.
Bae teaches a non-oriented magnetic steel sheet that has low iron loss and magnetic flux density [Abstract, page 1]. Bae teaches that the non-oriented steel has a similar composition to Arita [Abstract, page 1]. In addition to this, Bae states that the sum of elements Ti, Nb, V, and Zr should be controlled to a range of 0.008% or less to prevent formation of fine nitrides which affect grain growth and other structures that are detrimental to magnetic properties [page 3, top], which overlaps with the claimed range.
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 0.008 wt% or less, as disclosed by Bae, 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 Bae are in the same field of endeavor of non-oriented electrical steel and as such, the teachings of Bae 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 Bae to the steel of Arita because Bae and Arita possess similar compositions and are produced in similar methods of hot-rolling, cold-rolling, and annealing. Further still, Bae provides explicit motivation that controlling the amounts of these elements to the described range is important for preventing the deterioration of magnetic properties.
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 Bae does not teach the percentage of dissolved boron or the content of nitrogen as AlN. However, Arita in view of Bae 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 Bae) 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 Bae 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 arguments filed 05/27/26 have been fully considered but they are not persuasive.
Applicant argues that it would not have been obvious to control the contents of Nb, Zr, or V in Arita ‘627 because Arita does not disclose the content of Nb, V, and Zr. Applicant argues that these would not be obvious to add and then reduce their content. This is not persuasive. Kurosawa, which is in the same field of endeavor as Arita ‘627, makes clear that these elements have a distinct and noticeable effect (carbide formation and others) on non-oriented electrical steel sheets. Kurosawa expressly recognizes that controlling the content of these elements has a benefit (preventing property deterioration) that is applicable to Arita ‘627 and would be appreciated by an ordinarily skilled artisan. As noted by Kurosawa, these are elements that often appear as impurities in non-oriented magnetic steel sheets [Col 6, line 8 – 15]. This is further mentioned by applicant’s own description [0090 – 0095] of PG-pub US2023/0392227 which describes that Nb, V, and Zr all mix into steel as impurities. Kurosawa provides explicit motivation that control of these elements is beneficial for the magnetic properties of non-oriented magnetic steel. As such, applicant’s argument that it would not be obvious to apply the teachings of Kurosawa to the Arita ‘627 because these elements are not disclosed in Arita is not persuasive because Kurosawa provides clear motivation to an ordinarily skilled artisan that control of the amount of these common impurities is beneficial for the magnetic properties of non-oriented magnetic steel.
Moreover, while applicant argues that the particular allowable amounts based on an equimolar basis is below the claimed range (page 5, top of remarks), this is unpersuasive because Kurosawa expressly teaches that the individual amount of each element (Nb, Zr, V) should be 0.006 wt% or less, which overlaps with the individual element claim ranges as well as the total range (the total amount being 0.024% or less (including Ti)) [Col 6, line 46 – 49].
Even assuming arguendo that the suggested range of the prior art was below the claimed range, it has been held that “[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.").” (MPEP 2144.05 I)
To this, applicant has not established that the claimed range has properties different from Arita ‘627. First, Arita achieves the same crystal grain size/growth as claimed in claim 3. Moreover, Arita ‘627 shows that an iron loss of 4.0 W/kg and a flux density of 1.73 T can be achieved [Table 6] whereas comparative examples in Table 3 have iron losses of 5.5 W/kg and more and flux densities as low as 1.65 T.
As such, a prima facie case of obviousness has been established. Per MPEP 2144.05 III A, "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.").
To this, applicant has not established that the claimed range(s) of Ti, Nb, V, Zr, and their sum produces results are that unexpected and/or better relative to the prior art. As previously described, Arita ‘627 shows that the iron loss is ~4.6 or lower W/kg [Table 6] whereas a comparative example in Table 1 in which the summation of Ti, Nb, V, and Zr [Table 1, a6] is below the claimed range shows an iron loss of 8.7 W/kg in Table 3. Likewise, a comparative example in Table 1 in which the summation of Ti, Nb, V, and Zr is above the claimed range [Table 1, a5] shows an iron loss of 6.7 W/kg. Therefore, the data provided in the specification does not appear to establish the claimed range is critical.
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). (MPEP 716.02) The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (MPEP 716.02(b) I). Lastly, “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP 716.02(d) II)
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP2013044009 – Non-oriented magnetic steel with control of minute quantities of elements including Nb, Ti, Zr, and V
Conclusion
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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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
7/30/2026
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