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 Acknowledged
Applicant's election with traverse of Group II, corresponding to claim 12, in the reply filed on 11/03/2025 is acknowledged. The traversal is on the grounds that Yamaguchi (US 2015/0010762 (A1)) does not disclose the asymmetrical coating structure claimed.
This is not found persuasive because the concept of an asymmetrical coating is known. As described below, JP 2012-052233 (A) to Hayakawa et al. discloses the application of uneven tension and/or annealing separator coatings as a means to counteract the warpage induced by irradiation treatment (para. [0021], [0022]). Known laser-irradiated steel sheets having low noise (55 dBA or less) are disclosed in Yamaguchi and US 2021/0043345 (A1) (also WO 2019/182154 (A1)) to Kataoka et al.
With respect to the traversal that the restriction is not proper because the inventions are not independent and distinct and there is no search burden to examine all inventions, this is not found persuasive because search burden is applicable to applications filed under 35 U.S.C. § 111(a); it does not apply to applications filed under 35 U.S.C. § 371. See MPEP §§ 801, 808.02. Because the instant application is filed under the provision(s) of 35 U.S.C. § 371, the search burden requirement of applications filed under 35 U.S.C. § 111(a) would not apply.
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1-12 are pending. Of the pending claims, claim 12 is presented for examination on the merits. Claims 1-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Two (2) information disclosure statement(s) (IDS) were submitted on 06/29/2023 and 12/15/2024. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Objection to the Specification
The abstract of the disclosure is objected to because it exceeds 15 lines of text. The abstract should be in narrative form and generally limited to a single paragraph preferably within the range of 50 to 150 words in length. The abstract should not exceed 15 lines of text. Abstracts exceeding 15 lines of text or 150 words should be checked to see that they are as concise as the disclosure permits. MPEP § 608.01(b)(I)(C).
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0043345 (A1) (also WO 2019/182154 (A1)) to Kataoka et al. (“Kataoka”) in view of JP 2012-052233 (A) to Hayakawa et al. (“Hayakawa”) (abstract and computer-generated translation are attached).
US 2021/0043345 (A1) is a pre-grant publication of U.S. appl. ser. no. 16/978,155, which is a 371 national stage application of PCT/JP2019/012269, published by WIPO as WO 2019/182154 (A1). The pre-grant publication will serve as an equivalent to and the translation for the WIPO publication.
Regarding claim 12, Kataoka discloses a grain-oriented electrical steel sheet (oriented silicon steel). Title; abstract; para. [0002], [0137].
The sheet after cold rolling (silicon steel substrate) has a thickness of 0.17 mm or more to 0.22 mm or less (claim 23; para. [0197]), which encompasses the claimed range.
The steel is subjected to a magnetic domain refining step on which a laser beam is irradiated onto the steel sheet (etched by laser on first surface). FIG. 3; para. [0032], [0060], [0103]-[0111], [0116], [0135], [0186]-[0191]. This refining in combination with secondary recrystallization leads to low magnetostriction. Para. [0112].
Acceptable steel sheets have noise characteristics of EX (less than 50.0 dBA), VG (50.0 or more than less than 52.5 dBA), and G (52.5 or more to less than 55.0 dBA) (para. [0209]-[0213]; Table 2; Table 3B), which falls within the claimed range (average magnetostriction of the oriented silicon steel being smaller than or equal to 55 db(A)). A noise characteristic of F (55.0 or more and less than 60.0 dBA) is also indicated as invention examples. Table 2; Table 4.
As a sheet, the steel inherently possesses a first surface and a second surface opposite the first surface. See, for example, FIG. 2B. The steel sheet may have tension-applying insulation coating on both sides (insulating coatings on the first surface and on the second surface). FIG. 2B; para. [0054], [0058]-[0061], [0182]-[0185].
Kataoka teaches the presence of insulation coating on both surfaces of the steel sheet (para. [0054]), but does not disclose their relative amounts as claimed (i.e., the second surface insulating coating amount is greater than the first surface insulating coating amount).
Hayakawa is directed to a method of performing magnetic domain fragmentation treatment (magnetic domain refinement treatment) by irradiating a grain-oriented magnetic steel sheet with a laser or electron beam. Abstract; para. [0001]. When a steel sheet is irradiating with a laser or electron beam for magnetic domain refinement treatment, the sheet will warp; thus, in order to arrive at a straightened steel sheet, the steel is treated before the irradiation such that the irradiation ends up correcting the warpage to produce a flat sheet. Para. [0016]-[0018].
In a technique, the thickness of tension coating (insulation tension coating) is intentionally changed between the front and back surfaces of the steel sheet. Para. [0021], [0028], [0032], [0039]. The coating weight on the irradiated surface (first surface) is smaller than that of the opposite surface (second surface) (amount of insulating coating on the second surface is greater than the amount of insulating coating on the first surface). Para. [0021]. The warping by the difference in coating thickness is offset by the subsequent irradiation with the laser or electron beam, and the steel sheet is flattened. Para. [0021]. A similar technique can be applied to the amount of annealing separator coating. Para. [0022].
Iron loss is improved. Hayakawa at para. [0016]. Therefore, it would have been obvious to one of ordinary skill in the art to have applied more tension-applying insulation coating material on the non-laser-treated side of the steel sheet in Kataoka (and less tension-applying insulation coating on the laser-treated side) because the disparate coating amounts/thicknesses would counterbalance the warpage induced by the magnetic domain refining treatment, thereby resulting a flatter steel with improved iron loss properties.
Kataoka is silent regarding the magnetostrictive deviation between the first surface and the second surface. However, such a property would be the expected result of the steel sheet of Kataoka, as modified by Hayakawa, because the steel sheet has the same structure as claimed. See MPEP § 2112.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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 D. Hendricks, can be reached at 571-272-1401. 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.
/VANESSA T. LUK/Primary Examiner, Art Unit 1733
November 18, 2025