DETAILED ACTION
Response to Amendment
The Amendment filed 04/22/2026 has been entered. Claims 1-2 remain pending in the application. Claims 3-4 have been canceled. No new claims have been added. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 02/23/2026. The 112(a) rejections previously set forth in the Non-Final Rejection mailed 02/23/2026 are maintained in this Office action.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 04/22/2026. 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 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 enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claims 1-2 covers a grain-oriented electrical steel sheet with linear grooves having a specific proportion and number of flat portions meeting specific criteria and a specific range of a ratio of roughness to average depth of the linear groove. The specification does not provide direction on how to obtain the claimed: (a) proportion of flat portions, (b) number of flat portions, (c) ratio of ten-point average roughness to the average depth of claim 1 nor (d) Pa and Va values of claim 2.
Regarding property (a), the instant specification recites the proportion of the flat portions to the entire length of the linear groove was changed by adjusting the laser power and the time exposed to air from the laser irradiation to the electrolytic etching ([0036]). However, no ranges or examples are provided to suggest laser powers or times exposed to air which are appropriate to obtain the claimed proportion of flat portions. The instant specification recites an electrolytic etching method for groove formation which includes applying an insulating masking agent to the steel sheet surface, linearly removing the masking agent in the direction orthogonal to the rolling direction by laser irradiation in an inert atmosphere, and then forming grooves by electrolytic etching ([0036]). Table 2 of the instant specification recites both inventive and comparative examples produced by using the same (I) electrolytic etching method. However, it is unclear what parameters, such as the aforementioned laser power and time exposed to air, were changed, and to what values, to obtain the different claimed proportion of flat portions. Additionally, the instant specification, as shown in Table 2, only discloses average depth D and does not disclose the claimed “depth” used to define the claimed flat portions, as currently claimed in the limitation “the flat portions each being defined as a portion in which an absolute value of a difference in depth from an average depth D of the linear groove” (emphasis added) of claim 1.
Regarding property (b), the instant specification recites the achieved number of flat portions for inventive and comparative examples (Table 2) and how to measure the number of flat portions ([0038]). However, no processing step is recited in the instant specification for how to obtain the claimed number of flat portions in the claimed grain-oriented electrical steel sheet.
Regarding properties (c) and (d), the instant specification recites the Rzjis, Pa, and Va of the linear grooves were adjusted by adjusting the electrolytic current and the electrolytic time ([0036]). However, the instant disclosure does not disclose appropriate electrolytic currents nor electrolytic times anywhere in the instant specification, drawings, or inventive examples of Table 2 which would be required to obtain the claimed Rzjis, Pa, Va, and consequently ratio of Rzjis to average depth values.
At the time of filing, the state of the art was such that it is understood that uniform linear grooves are necessary to minimize variation in magnetic properties and that uniform linear grooves can be obtained using a method comprising cold rolling, secondary recrystallization annealing, applying a resist coating, laser irradiation to remove portions of the resist coating, and performing electrolytic etching steps to form linear grooves on a grain-oriented electrical steel sheet, as taught by US 2018/0119242 A1 of Kobayashi ([0013]-[0030], [0051], [0053], [0058], claim 1; Kobayashi is cited in a prior Office action and used in the 35 U.S.C. 103 rejection in this Office action). The state of the art is such that it is further understood that processing parameters used in manufacturing grain-oriented electrical steel sheet, such as laser irradiation ([0055]) and electrolytic times and currents ([0058]) as disclosed in Kobayashi, are crucial to arrive at the desired magnetic properties of the final grain-oriented electrical steel sheet.
The instant specification does not provide sufficient guidance for one of ordinary skill in the art to arrive at the claimed steel sheet with claimed properties (a)-(d) since one of ordinary skill in the art would need to test a large variety of processing parameters including, but not limited to, laser powers, inert gas conditions, electrolytic times, and electrolytic currents before arriving at the claimed steel sheet. Thus, the disclosed guidance in the specification does not bear a reasonable correlation to the full scope of the claims. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the invention recited in claims 1-2.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0119242 A1 of Kobayashi (as cited in prior Office action and as cited in IDS mailed 08/09/2024) in view of US 2016/0177413 A1 of Kwon (as cited in prior Office action and as cited in IDS mailed 06/19/2023).
Regarding claims 1-2, in view of the 35 U.S.C. 112 rejections in this Office action (see 112(a) rejection in this Office action), comparison to the prior art, in general, is rendered difficult since it is unclear how the claimed flat portions and ratio of roughness to average depth are obtained. Furthermore, the instant specification recites the magnetic domain refining effect by groove formation can be stabilized and the iron loss can be further improved by appropriately controlling the proportion of flat portions to the entire length of the linear groove, the roughness Rzjis, etc. ([0039]). However, the instant specification only recites an iron loss improvement ΔW17/50 as opposed to the actual iron loss W17/50 value of the claimed steel sheet. The incomplete information regarding the magnetic properties of the claimed steel sheet further complicates comparing the claimed steel sheet with those of the prior art.
Notwithstanding the 35 U.S.C. 112 rejections above, Kobayashi in view of Kwon reads on a grain-oriented electrical steel sheet comprising linear grooves.
Regarding claims 1-2, as best as can be determined, Kobayashi teaches methods for forming linear grooves on steel strips for grain-oriented electrical steel sheets used for iron cores of electrical equipment ([0001], reads on claimed a grain-oriented electrical steel sheet comprising linear grooves). Kobayashi teaches the plurality of linear grooves are formed at an angle of 30° or less with respect to the width direction of the cold rolled steel strip ([0025], reads on claimed linear grooves extending in a direction intersecting a rolling direction). Kobayashi further teaches linear grooves are formed in a surface of the steel ([0029], [0042], reads on claimed on one side thereof).
Kobayashi therefore reads on the limitation a grain-oriented electrical steel sheet comprising linear grooves extending in a direction intersecting a rolling direction, on one side thereof of claim 1.
However, Kobayashi does not explicitly disclose wherein, in each linear groove, a proportion of flat portions to an entire length of the linear groove is 30 % or more and 90 % or less, the flat portions each being defined as a portion in which an absolute value of a difference in depth from an average depth D of the linear groove is less than or equal to 1/10 of the average depth D, the number of flat portions each of which is continuous for a length that is at least 1.3 times an average width W of the linear groove is 10 or more per 100 cm2 surface area, and a ratio of ten-point average roughness Rzjis on a roughness curve at a width center position of the linear groove to the average depth D, expressed as Rzjis/D, is 0.1 or more and 1 or less of claim 1 and wherein the following formula (4): Va ≤ Pa ≤ 15 μm ... (4) is satisfied, where Pa is an average of absolute values of elevations of five peaks from a highest peak to a fifth highest peak on the roughness curve at the width center position of the linear groove with respect to the average depth D, and Va is an average of absolute values of elevations of five valleys from a lowest valley to a fifth lowest valley on the roughness curve with respect to the average depth D of claim 2.
Regarding the groove formation method used to make the claimed steel sheet of claims 1-2, the instant specification recites an electrolytic etching method for groove formation which includes applying an insulating masking agent to the steel sheet surface, linearly removing the masking agent in the direction orthogonal to the rolling direction by laser irradiation in an inert atmosphere, and then forming grooves by electrolytic etching ([0036]).
Regarding the linear grooves of the claimed steel sheet of claims 1-2, the instant specification recites the intersecting direction is a direction at an angle within the range of ±30 degrees with respect to the direction perpendicular to the rolling direction ([0031]). The instant specification further recites the target width of the linear grooves was 40 μm to 80 μm, the linear grooves were formed in the direction orthogonal to the width direction of the steel sheet at intervals of 2.0 mm to 5.0 mm in the rolling direction, and the target groove depth was adjusted in the range of 20 μm to 28 μm ([0036]). The instant specification further recites inventive examples using method (I) with an interval of 3 mm, an average groove depth of 20 μm, a groove width of 80 μm, and a cold-rolled steel sheet thickness of 0.23 mm (Table 2, [0034]).
Kobayashi teaches using a method comprising cold rolling, secondary recrystallization annealing, applying a resist coating, laser irradiation to remove portions of the resist coating, and performing electrolytic etching steps to form linear grooves on a grain-oriented electrical steel sheet ([0013]-[0030], [0051], [0053], [0058], claim 1, resist coating corresponds to masking agent of instant invention). Kobayashi teaches an inventive example with a sheet thickness of 0.23 mm of the cold-rolled steel ([0053]), a 3 mm interval, a groove width of 50 μm, and a groove depth of 30 μm ([0054]). Kobayashi teaches inventive examples with W17/50 values of 0.79-0.81 W/kg (Table 1). Kobayashi teaches the present disclosure is not limited and may be equally applied to steel strips of other thicknesses ([0064]). As best as can be determined, the methods of groove formation, steel thickness, groove interval, groove width, and groove depth of Kobayashi overlap with the method and dimensions disclosed in the instant specification, with the exception of a laser irradiation in an inert atmosphere.
While Kobayashi does not explicitly disclose laser irradiation in an inert atmosphere, Kwon teaches a grain-oriented electrical steel sheet and a method of manufacturing the same (Abstract). Kwon and Kobayashi are considered analogous art since they are similarly concerned with grain-oriented electrical steel sheets with linear grooves formed by laser irradiation and electrolytic etching.
Kwon teaches adding forming a groove in a surface of the electrical steel sheet by radiating laser and simultaneously spraying an inert gas onto the electrical steel sheet ([0053], [0056]-[0058], using inert gas results in an inert atmosphere). Kwon further teaches the pressure and angle of the inert gas is controlled to improve core loss of the steel sheet ([0056]-[0057], core loss is a magnetic property of the steel sheet). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the inert gas of Kwon into the method of Kobayashi to improve the magnetic properties of the grain-oriented steel sheet of Kobayashi, as taught by Kwon.
As best as can be determined, the methods of groove formation, steel thickness, groove interval, groove width, and groove depth of Kobayashi, as modified by Kwon, overlap with the method and dimensions disclosed in the instant specification and the resulting steel sheet of modified Kobayashi is considered to read on claims 1-2 as presently understood in view of the 35 U.S.C. 112(a) rejections described in this Office action.
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 steel 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 grain-oriented electrical steel sheets), b) the claimed and prior art products are identical or substantially identical in structure (both steels have linear grooves intersecting a rolling direction and the steel sheets and grooves have overlapping dimensions as described above), and c) the claimed and prior art products are produced by identical or substantially identical processes (see processing analysis 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).
In this case, the steel of modified Kobayashi is considered to read on claims 1-2 as presently understood in view of the 35 U.S.C. 112(a) rejections described in this Office action given the methods of groove formation, steel thickness, groove interval, groove width, and groove depth of Kobayashi, as modified by Kwon, overlap with the method and dimensions disclosed in the instant specification.
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive.
Applicant argues that the specification explicitly provides the means to satisfy these characteristics through the control of four primary process parameters: (A) Laser output; (B) Air exposure time between laser irradiation/mask removal and electrolytic etching; (C) Electrolytic current; and (D) Electrolytic etching time (remarks, page 5). Applicant further argues that to satisfy characteristics (a) and (c): Set Parameter (B) (exposure time) to 10 seconds or less as taught in [0033], set Parameter (A) (laser output) to 5-250 W/cm2, set Parameter (C) (electrolytic current) to 50-300 Amperes, and set Parameter (D) (etching time) to 1.0-40.0 seconds; to satisfy characteristic (b) (continuous flat portions): Control Parameter (A) (laser output) to stay within a level that does not excessively affect the base iron or masking agent. If the laser output is too high, the base iron melts, making it difficult to obtain flat portions, and the masking agent is removed beyond the laser width, widening the groove and a laser output of 150 W/cm2 or less is highly suitable; and to satisfy characteristic (d) (claim 2): Set Parameter (C) (electrolytic current) to 50-300 Amperes and Parameter (D) (etching time) to 1.0-40.0 seconds (remarks, page 6).
In response, the instant specification recites “it is also desirable to put the steel sheet into the electrolytic bath within 10 seconds after the steel sheet is irradiated with laser” ([0033]) and therefore provides guidance regarding parameter (B) of exposure time. However, the instant specification does not recite nor suggest any of the parameter ranges (A) of laser output, (C) of electrolytic current, nor (D) of etching time provided by Applicant in the remarks. Specification must be enabling as of the filing date. The state of the art existing at the filing date of the application is used to determine whether a particular disclosure is enabling as of the filing date. Chiron Corp. v. Genentech Inc. See MPEP 2164.05(a). In this case, the instant specification does not provide sufficient guidance for one of ordinary skill in the art to arrive at the claimed steel sheet with claimed properties: (a) proportion of flat portions, (b) number of flat portions, (c) ratio of ten-point average roughness to the average depth of claim 1 nor (d) Pa and Va values of claim 2 since one of ordinary skill in the art would need to test a large variety of processing parameters including, but not limited to, laser powers, inert gas conditions, electrolytic times, and electrolytic currents before arriving at the claimed steel sheet. Thus, the disclosed guidance in the specification does not bear a reasonable correlation to the full scope of the claims. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the invention recited in claims 1-2. See 112(a) rejection in this Office action.
Applicant argues that Kobayashi completely fails to teach or suggest exposing the sheet to air for 10 seconds or less before electrolytic etching (remarks, page 8). Applicant further argues that Kobayashi lacks any teaching or suggestion of utilizing the high laser outputs required by the present invention (remarks, page 8).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “exposing the sheet to air for 10 seconds or less before electrolytic etching” and “utilizing high laser outputs required by the present invention”) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, the instant claims are drawn to a product and do not require the argued steps of exposing the sheet to air and utilizing high laser outputs. Furthermore, the required laser output argued by Applicant is not present in the instant claims, specification, nor drawings and therefore, the instant specification is not enabling as of the filing date.
Furthermore, attorney statements regarding unexpected results, commercial success, long-felt need, inoperability of the prior art, skepticism of experts, and copying are not evidence without the support of objective evidence or a supporting declaration. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 716.01(c). In this case, Applicant does not provide objective evidence as to why Kobayashi in view of Kwon does not meet the claimed properties of the claimed steel sheet despite the methods of groove formation, steel thickness, groove interval, groove width, and groove depth of Kobayashi overlapping with the method and dimensions disclosed in the instant specification, as described in the 35 U.S.C. 103 rejections in this Office action.
As best understood in light of the 112(a) rejections, the prior art of Kobayashi in view of Kwon reads on the instant claims, as currently amended, as described in the 35 U.S.C. 103 rejections in this Office action. Examiner suggests considering filing a continuation-in-part application to amend the specification in a manner that enables the claimed invention. See MPEP 201.08.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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