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 .
Election/Restrictions
Newly submitted claim 7 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1 and 5-6, drawn to a soft magnetic iron.
Group II, claim 7, drawn to a soft magnetic iron having a shape of a bar, a rod or a wire.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group I and Group II lack unity of invention because even though the inventions of these groups require the technical feature of the composition limitation recited in claims 1 and 5, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of WO 2015/113937A1. WO 2015/113937A1 teaches a composition that overlaps the recited composition in claims 1 and 5 and it would be obvious to one of ordinary skill in the art to have select the amount of each element based on the ranges disclosed in WO 2015/113937A1 to make an alloy that meets the recited composition in claims 1 and 5. See MPEP 2144.05 I.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 7 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 11/14/2025 has been entered.
Status of Claims
Claim 1 is amended. Claims 2-4 are cancelled. Claims 5-7 are new. Claim 7 is withdrawn. Claims 1 and 5-6 are pending.
Status of Previous Rejections
The rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over JP’254 (JPS63-210254A) has been withdrawn in view of the amendment.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over WO’937 (WO2015/113937A1).
Regarding claim 1, WO’937 discloses (Abstract; Claim 1) a soft magnetic steel with a composition that overlaps with the instant claimed composition of C, SI, Mn, P, S, Al, N, and Se and therefore it would have been obvious to one of ordinary skill in the art to have selected the amount of each element from the ranges disclosed in WO’937 to produce a soft magnetic steel composition that meets the recited composition in claim 1. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
WO’937
(mass %)
Overlap
(mass %)
C
≤0.02
≤0.01
≤0.01
Si
≤0.15
≤0.03
≤0.03
Mn
0.201 – 0.5
0.05-1.2
0.201 – 0.5
P
0.002-0.02
≤0.2
0.002 – 0.02
S
0.001-0.05
≤0.3
0.001-0.05
Al
≤0.05
≤0.002
≤0.002
N
≤0.01
≤0.015
≤0.01
Se
0.001-0.015
0.0-0.05
0.001-0.015
Fe + Impurities
Balance
Balance
Balance
WO’937 discloses that the amount of additional elements other than the elements recited in claim 1 can be zero (claim 1), which meets the transitional phrase “consisting of” as recited in claim 1.
Regarding claims 5-6, WO’937 discloses (Abstract; Claim 1) a soft magnetic steel with a composition that overlaps with the instant claimed composition of C, SI, Mn, P, S, Al, N, and Se and therefore it would have been obvious to one of ordinary skill in the art to have selected the amount of each element from the ranges disclosed in WO’937 to produce a soft magnetic steel composition that meets the recited composition in claim 1. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
WO’937
(mass %)
Overlap
(mass %)
C
≤0.02
≤0.01
≤0.01
Si
≤0.15
≤0.03
≤0.03
Mn
0.01 – 0.5
0.05-1.2
0.05 – 0.5
P
0.002-0.02
≤0.2
0.002 – 0.02
S
0.018-0.05
≤0.3
0.018-0.05
Al
≤0.05
≤0.002
≤0.002
N
≤0.01
≤0.015
≤0.01
Se
0.001-0.015
0.0-0.05
0.001-0.015
Fe + Impurities
Balance
Balance
Balance
WO’937 discloses that the amount of additional elements other than the elements recited in claim 5 can be zero (claim 1), which meets the transitional phrase “consisting of” as recited in claim 5.
Response to Arguments
Applicant’s arguments dated 09/04/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 5712721401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/XIAOWEI SU/Primary Examiner, Art Unit 1733