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
Applicant’s election without traverse of Group I, claims 1-2 in the reply filed on 12/11/2025 is acknowledged.
Claims 3-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/11/2025.
Priority
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau.
Information Disclosure Statement
Three (3) information disclosure statements (IDS) were submitted on 06/19/2023, 08/09/2024, and 11/18/2024. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Claim Interpretation
Regarding the “roughness curve” of claims 1-2, the term “roughness curve” is interpreted as a 2D line graph representing surface texture, which is synonymous with an “R-profile” in the metallurgical arts.
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.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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, electrolytic currents, and times exposed to air 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.
Claims 1-2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “an absolute value of a difference in depth from an average depth D of the linear groove”. This limitation renders the claim indefinite since it is unclear what depth is referred to and what the difference is between the claimed depth and the claimed average depth D. Figures 1-3 of the instant specification show a groove depth d that changes along the position in linear groove direction, which suggest the claimed depth is a depth of the linear groove at various positions along the linear groove.
Claim 2 depends on claim 1, does not resolve the aforementioned issues, and is thereby also indefinite.
Claim 1 recites the limitation “a roughness curve at a width center position of the linear groove”. This limitation renders the claim indefinite since the position at which the roughness curve is obtained is unclear. It is unclear whether the roughness curve is measured only at a center position of the linear groove, whether the roughness curve is measured from the center of the width of the linear groove along, or across the linear groove, or a different interpretation. Figures 1-3 of the instant specification show a roughness curve with a groove depth d changing along the position in the linear groove direction, which suggests the roughness curve is measured along the linear groove.
Claim 2 depends on claim 1, does not resolve the aforementioned issues, and is thereby also indefinite.
Claim 1 recites the limitation "the number of flat portions" in line 9. There is insufficient antecedent basis for this limitation in the claim.
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 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 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.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733