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 without traverse of Group I, claims 1, 2, and 4, in the reply filed on 10/21/2025 is acknowledged.
Claims 3, 5, and 6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.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
Four (4) information disclosure statement(s) (IDS) were submitted on 07/06/2023, 08/01/2024, 11/28/2024, and 10/23/2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
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.
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.
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, 2, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0199935 (A1) to Sakakura et al. (“Sakakura”) in view of JP 2016-156069 (A) to Takenaka et al. (“Takenaka”) (abstract and computer-generated translation are attached).
Regarding claim 1, Sakakura discloses a method of producing a grain-oriented silicon steel sheet (method of manufacturing a grain-oriented electrical steel sheet). Title; abstract; para. [0001]. The method includes the following steps:
(a) hot rolling a cast bar into a hot rolled sheet (subjecting a steel material to hot rolling to obtain a hot-rolled sheet) (para. [0028]);
(b) cold rolling (subjecting the hot-rolled sheet to cold rolling to obtain a cold-rolled sheet with a final sheet thickness) (para. [0012], [0033], [0040]);
(c) decarburizing (subjecting the cold-rolled sheet to decarburization annealing) (para. [0012], [0033], [0040]); and
(d) final annealing to form a secondary recrystallized structure (secondary recrystallization annealing) (para. [0012], [0024], [0027], [0033], [0040], [0069]).
The cold rolling step can be conducted once (e.g., Example 2 – para. [0048]; Example 5 – para. [0055]) or two or more times (e.g., Example 1 – para. [0046]; Example 4 – para. [0053]). When cold rolling is carried out multiple times, annealing occurs between rolling iterations (cold rolling once or twice or more with intermediate annealing performed therebetween) (e.g., para. [0046], [0053]).
Aging occurs between cold rolling passes prior to achieving the final thickness. Para. [0058], [0061]. An effective temperature is 200oC or so (para. [0059]; Table 2), which falls within the claimed range (in the final cold rolling the hot-rolled sheet is heated to a temperature range of 70oC or higher and 200oC or lower).
Sakakura is silent regarding the rolling device type used to carry out the cold rolling and is further silent regarding the temperature of the sheet when introduced into a first pass of the rolling device.
Takenaka is directed to a method of manufacturing a grain-oriented electrical steel sheet. Abstract; para. [0001]. The method includes controlling the final cold rolling in order to produce a steel sheet having a high magnetic flux density. Para. [0014], [0055]. The final thickness is achieved by cold rolling in a tandem rolling mill. Para. [0024], [0059]. Controlling the final cold rolling includes controlling the strain rate, which takes into account rolling stand entry temperature. Para. [0057] – formula therein. An example entry temperature for each stand is 50oC (para. [0078]), which falls within the claimed range (cooling the sheet to 60oC or lower and then introduced into the first pass of the tandem mill). Further improvements can be achieved by applying an interpass aging technique. Para. [0059], [0071].
Because Sakakura seeks to improve the flux density of the grain-oriented silicon steel sheet, it would have been obvious to one of ordinary skill in the art to have incorporated the use of a tandem mill and the entry temperature of Takenaka into Sakakura’s method of manufacture in order to further enhance the flux density of the steel sheet.
Regarding claim 2, Sakakura discloses the following elements in the steel melt:
Element
Claim 2
US 2009/0199935 A1
C
0.01 to 0.10
0.010 to 0.075
Si
2.0 to 4.5
2.95 to 4.0
Mn
0.01 to 0.5
for example, 0.075 or 0.10
Al
0.01 to 0.04
0.010 to 0.040
S
0.01 to 0.05
S and/or Se: 0.005 to 0.1
Se
0.01 to 0.05
S and/or Se: 0.005 to 0.1
N
0.0050 to 0.012
0.0010 to 0.0150
Fe & inevitable
balance
remainder
impurities
Mn is present in the steel. Para. [0027]. Examples Mn contents are given in Examples, 2, 3, 7, and 8. Para. [0048], [0049], [0060], [0063].
Example 4 shows that S and Se can both be present in the melt in amounts of 0.030% and 0.050% (para. [0052]), respectively, which fall within the claimed ranges.
Regarding claim 4, Sakakura discloses further including at least one of the following elements in the melt: Sb 0.005 to 0.2%, Nb 0.005 to 0.2%, Mo 0.003 to 0.1%, Cu 0.02 to 0.2%, and Sn 0.02 to 0.3% (para. [0013], [0027]; claim 2), each of which overlaps the range of the corresponding claimed element.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4 of copending Application No. 18/570,067 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite each limitation of the instant claims. This includes the sequence of manufacturing steps (i.e., hot rolling, cold rolling plus intermediate annealing therebetween, decarburization annealing, secondary recrystallization annealing) and the details of the cold rolling step (heating the steel sheet to between 70oC and 200oC and cooling to 60oC or lower before the first pass of the tandem mill).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 6,039,818 (A) to Toge et al. discloses a grain-oriented electromagnetic steel sheet. The steel sheet is cold rolled in a tandem mill at 120oC-180oC or 50oC-80oC. Table 13; col. 26, lines 7-18. Tandem rolling mill and dynamic aging may be applied. Col. 34, lines 49-62.
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.
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
January 09, 2026