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 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/22/2025 has been entered.
Response to Amendment
The Amendment filed 09/22/2025 has been entered. Claims JONES remain pending in the application. Claims 1-6 and 9-14 are pending. Claims 3-6 are withdrawn due to a restriction requirement. Claims 7-8 have been canceled. New claims 9-14 have been added. Applicant's amendments to the drawings have overcome the objections previously set forth in the Non-Final Rejection mailed DATE/2024. Applicant's amendments to the claims have overcome the 112(a) and 112(b) rejections previously set forth in the Final Rejection mailed DATE/2024. The 112(a), 112(b), and 112(d) rejection of claims 7-8 are rendered moot in view of the cancelled status of claims 7-8.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 10/03/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 11-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 11-14 recite the limitation “wherein the powder does not comprise 0.01-0.5 parts by weight of a low-melting-point compound having a melting point lower than 900 °C with respect to 100 parts by weight of the magnesium oxide”. The instant specification recites “adjustment of the particle size of the powder for annealing separator in the present disclosure is not limited to being made only on the magnesium oxide which is the main component, and may be made by mixing any of the foregoing powders suitable for use as the balance, for example, compounds such as calcium oxide, calcium hydroxide, silicon oxide, magnesium phosphate, and calcium phosphate whose particle sizes are controlled beforehand” ([0037]). There is no mention of the absence of a “low-melting-point compound” and the instant disclosure’s only mention of a “compound” is regarding the inclusion of said compounds to adjust the particle size of the claimed powder. Therefore, there is insufficient support in the instant disclosure for the limitation “wherein the powder does not comprise 0.01-0.5 parts by weight of a low-melting-point compound having a melting point lower than 900 °C with respect to 100 parts by weight of the magnesium oxide”.
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.
Claims 1-2 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2008/047999 A1 of Park (as cited in prior Office action).
Regarding claims 1 and 9, Park teaches an annealing separator for grain-oriented electrical steel sheets having excellent surface properties (Abstract).
Park teaches an annealing separator with magnesium oxide (MgO) as a main component and with a mixture of active MgO and inactive MgO with a range of particle sizes and degree of activity of citric acid (40% CAA value, referred to as CAA40 by the instant application) (page 21, lines 10-15; annealing separator reads on the claimed powder for annealing separator). Park teaches the annealing separator consists of a mixture of 40-95 wt% of one or more active MgO particles, having an average particle diameter of less than 5 μm and a CAA40 value of 35-80 seconds, with 5-60 wt% of one or more inactive MgO particles, having an average particle diameter of more than 10 μm and a CAA40 value of 250-1500 seconds (page 21, lines 10-15). Park teaches the annealing separator is used to produce grain-oriented electrical steel sheets (page 1, lines 8-12). Park therefore reads on the limitation a powder for annealing separator used as an annealing separator in production of a grain-oriented electrical steel sheet of claims 1 and 9, and comprising magnesium oxide in an amount of 50 mass% to 100 mass% of claim 1.
Regarding the powder composition of claim 9, Park teaches an additive for controlling an atmosphere between steel sheet surfaces, one or more selected from the group consisting of Ti, V, Nb, Cr, and Mn, is added in an amount of 0.5-10 parts by weight based on 100 parts by weight of MgO (page 11, lines 22-25). Therefore, an embodiment of Park using 10 parts of additive for controlling an atmosphere in the powder of Park results in an MgO content of 90wt% or less if applying to a mixture with 100wt% MgO, as taught by Park. 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.
Park therefore reads on the limitation comprising magnesium oxide in an amount of 50 mass% to 90 mass% of claim 9.
Regarding degree of citric acid activity of claim 1, since Park teaches 5-60 wt% of one or more inactive MgO particles, having an average particle diameter of more than 10 μm and a CAA40 value of 250-1500 seconds (page 21, lines 10-15), the amount of MgO particles and degree of activity overlap with the instant claim. 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.
Park therefore reads on the limitation wherein the magnesium oxide has a degree of activity of citric acid of 300 seconds or more and 1400 seconds or less of claim 1.
Additionally, or alternatively, while Park does not explicitly disclose CAA40 values of the mixtures of active and inactive MgO particles, one can estimate the values given the teaching of 40-95 wt% of one or more active MgO particles with a CAA40 value of 35-80 seconds and 5-60 wt% of one or more inactive MgO particles with a CAA40 value of 250-1500 seconds (page 21, lines 10-15). For example, a mixture of 40 wt% active MgO and 60 wt% inactive MgO constitutes a powder with 100 wt% MgO and results in a CAA40 value of 932 seconds (from calculating 0.4*80 s + 0.6*1500s), which is within the claimed range.
However, Park does not explicitly disclose having a nitrogen gas permeability of 0.020 cm/s or more and 0.50 cm/s or less of claims 1 and 9.
The instant specifications disclose that adjusting particle size controls the nitrogen gas permeability and that it is preferable that magnesium oxide containing a residue on 330 mesh sieve of 10 mass% or more and 90 mass% or less is contained in an amount of 5 mass% or more and 50 mass% or less with respect to the powder for annealing ([0036]-[0038]).
Regarding the particle size of the powder, Park teaches the particle diameter of MgO particles is 10-100 μm and that, preferably, the content of MgO particles having a particle diameter of more than 30 μm is more than 25 wt% based on the total weight of coarse MgO particles (page 23, lines 23-32).
While Park does not explicitly disclose a residue on 330 mesh sieve, one of ordinary skill in the art understands any particle larger than 45 μm would not pass through a 330 mesh sieve since the sieve has 45 μm openings ([0042] lists the openings for various mesh sieves based on JIS standard sieves), and would therefore remain as residue on a 330 mesh sieve. Since Park teaches the content of MgO particles having a particle diameter of more than 30 μm is more than 25 wt% based on the total weight of coarse MgO particles and the particle size distribution is from 10 to 100 μm, one of ordinary skill in the art would reasonably expect the powder of Park to contain a residue on 330 mesh sieve of at least 5 mass% or more with respect to the powder as a whole since particles over 45 μm diameter will remain in the 330 mesh sieve.
Since the powder of Park has overlapping composition and particle sizes with the instant invention, one of ordinary skill in the art would reasonably expect the powder of Park to possess the claimed nitrogen gas permeability. 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, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (both are MgO powders, as described above), and b) the claimed and prior art products are identical or substantially identical in structure (both have overlapping particle diameters and CAA40 values, as described above). 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).
Park therefore reads on the limitation having a nitrogen gas permeability of 0.020 cm/s or more and 0.50 cm/s or less of claims 1 and 9.
Park therefore reads on all the limitations of claims 1 and 9.
Regarding claims 2 and 10, the powder of Park meets the instant limitation of a residue on 166 mesh sieve since the particle diameters of the annealing separator are smaller than 90 μm (page 21, lines 10-15, active MgO particles have an average diameter of less than 5 μm and inactive MgO particles have an average diameter of more than 10 μm). One of ordinary skill in the art would reasonably expect no residue on 166 mesh sieve since the particles are smaller than 90 μm.
Park therefore reads on the limitation containing a residue on 166 mesh sieve of 0.5 mass% or less of claims 2 and 10.
Regarding claims 11-14, Park teaches the annealing separator comprises 0.01-0.5 parts by weight of a low-melting-point compound having a melting point 15 lower than 900 °C (page 7, line 31-page 8, line 18). Park teaches comparative examples where low-melting-point additives are not added (emphasis added), which result in thin glass films and reduced adhesion (page 14, lines 9-11, page 17, lines 1-3, Comparative Examples 1, 11, and 12).
Park therefore reads on the limitation “wherein the powder does not comprise 0.01-0.5 parts by weight of a low-melting-point compound having a melting point lower than 900 °C with respect to 100 parts by weight of the magnesium oxide” of claims 11-14.
Response to Arguments
Applicant's arguments filed 09/22/2025 have been fully considered but they are not persuasive.
Applicant argues that Park discloses that the MgO contained in its annealing agent has a CAA40 of 50 to 120 seconds (Park, Claim 10) (remarks, page 7). Applicant argues Park further explicitly teaches that if the CAA40 exceeds 120 seconds, the "reactivity of MgO itself will be extremely reduced, thus causing a problem in the film thickness of the coil inner winding portion" (Park, page 12, lines 17-32) (remarks, page 7). Applicant further argues that Park explicitly teaches away from the invention recited in claims 1 and 2 by warning that the very property of the claimed invention is undesirable and detrimental (remarks, page 7).
In response, Applicant is arguing an embodiment of Park that was not used in the 35 U.S.C. 103 rejection previously set forth in the Final Rejection mailed 06/23/2025. As outlined in the Final Rejection mailed 06/23/2025 and in this Office action, Park teaches an embodiment of an annealing separator which consists of a mixture of 40-95 wt% of one or more active MgO particles, having an average particle diameter of less than 5 μm and a CAA40 value of 35-80 seconds, with 5-60 wt% of one or more inactive MgO particles, having an average particle diameter of more than 10 μm and a CAA40 value of 250-1500 seconds (page 21, lines 10-15). Regarding the CAA40 value of 250-1500 seconds, Park further teaches inactive MgO having a 40% CAA value of 250-1500 seconds mainly contributes to an increase in the ventilation of the atmosphere between steel sheets and to an increase in the slippage between steel sheets (page 22, lines 11-13) and therefore Park does not teach away from a CAA40 exceeding 120 seconds, as argued by Applicant.
Applicant argues that Park's annealing agent comprises, as an essential component, 0.01 to 0.5 parts by weight of a low-melting-point compound having a melting point of less than 900°C with respect to 100 parts by weight of MgO (Park, Claim 1).
In response, Park teaches embodiments in at least Comparative Examples 1, 11, and 12 that do not include the low-melting-point compound, as outlined in the 35 U.S.C. 103 rejection in this Office action. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123(II). In this case, Park teaches embodiments that do not include the low-melting-point compound and the preferred embodiment of Park including the compound does not constitute a teaching away from the nonpreferred embodiment disclosed in Comparative Examples 1, 11, and 12.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733