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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 6/20/23, 12/4/24, 8/29/25, and 2/24/26 have been considered by the examiner.
Election/Restrictions
Applicant’s election of claims 1-7 in the reply filed on 3/27/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 8-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/27/26.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 7 recites the limitation "wherein a magnetic permeability is 5,000 or more when measured at 30 A/m ". This limitation is unclear. The units of magnetic permeability are Henries per meter (H/m), newtons per ampere squared (N/A²), or Gauss centimeter per oersted (G*cm/Oe). Claim 7 does not specify which units are used, and the values are not all equal. Accordingly, the limitation cannot be evaluated. Additionally, 30 A/m is not a standard magnetic field used in determining magnetic permeability. The Examiner was unable to find a single published patent by anyone other than applicant which measures magnetic permeability at 30 A/m.
Claims 3-4 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 3-4 depend from claim 1. Claim 1 contains the limitation “and a balance of Fe and inevitable impurities”. Because the claim limits the elements allowed to those listed and inevitable impurities, only those elements may be present in the steel of claim 1. Claims 3-4 attempt to add further elements to the steel of claim 1. Thus, the steels of claims 3-4 do not have the same composition as the steel of claim 1. Claims 3-4 fail to include all the limitations of the claim upon which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parentheses. Examiner explanations are shown in italics.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 101659808 B1), as machine translated, previously cited, in view of Kim et al. (KR 20180070950 A, as translated by US 20200095659 A1, “Kim ‘659”).
Regarding claims 1 and 3-4, Kim teaches that a “Non-oriented electrical steel is an important core material required to convert electrical energy into mechanical energy in rotating machinery” (which reads on “a non-oriented electrical steel sheet”; paragraph [0002]).
Element
Instant claims (wt%)
Kim (wt%)
Si
2.0-3.8
2-3.5
Al
0.1-2.5
2% or less (excluding 0%)
Mn
0.1-2.5
1.5% or less (excluding 0%)
Mo
0.01-0.08
0.004% to 0.1%
Ti
0.0010-0.0050
Optional: 0.004% or less (excluding 0%)
Nb
0.0010-0.0050
Optional: Nb: 0.004% or less (excluding 0%)
C
0.0020-0.0060
0.01% or less (excluding 0%)
N
0.0010-0.0050
0.005% or less (excluding 0%)
P
Optional 0.005 to 0.05 (claim 3)
0.1% or less (excluding 0%)
S
Optional 0.005% or less (claim 4)
0.01% or less (excluding 0%)
Fe and inevitable impurities
Balance
Balance
Kim teaches a non-oriented electrical steel sheet with a chemical composition overlapping with the claimed non-oriented electrical steel sheet, as shown in the Table above (paragraphs [0007]-[0008]). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. Accordingly, Kim reads on the composition of claims 1 and 3-4.
Regarding Expression 1, one can perform the calculation using possible compositions of Ti, Nb, Mo, C, and N using the teachings of Kim. For example, using the midpoints of each composition, the equation in Expression 1 yields a result of 0.028, which satisfies Expression 1. ([Ti]+[Nb])x[Mo]/([C]+[N]); ((0.002+0.002)(0.052))/(0.005+0.0025) = 0.028; 0.02 ≤ 0.028 ≤ 0.05.
Kim teaches that “it is desirable to manage C at a low level because it deteriorates magnetic properties and causes aging of magnetism by forming fine precipitates such as Fe<sub>3</sub>C, NbC, TiC, and ZrC” (paragraph [0037]). Kim teaches that “N forms fine, long AlN precipitates inside the base material, inhibiting grain growth and thus reducing iron loss, so it is desirable to contain it as little as possible, and the N content is limited to 0.005 wt% or less” (paragraph [0039]). Thus Kim is concerned with controlling and minimizing formation of carbides and nitrides.
Kim is silent regarding a density of one or more of carbides, nitrides, and carbonitrides having a particle diameter of 0.1 µm or less is 100/mm2 or less.
The instant specification teaches that “formation of fine carbonitrides is suppressed by appropriate addition of Mo, Ti, and Nb and bubbling in a molten steel manufacturing process” (paragraph [0001]). The instant specification teaches that “formation of carbides is suppressed as much as possible through bubbling in a steelmaking process together with addition of Mo, and even when C is contained in an amount of 0.0020 wt % or more, the magnetism is not significantly affected” (paragraph [0034]). The instant specification teaches that “formation of carbides is suppressed as much as possible through bubbling in a steelmaking process together with addition of Mo, and even when N is contained in an amount of 0.0010 wt % or more, the magnetism is not significantly affected” (paragraph [0035]). The instant specification teaches that “a certain content of Ti, Nb, C, and N is contained, Mo is added in an appropriate amount relative to a content of Ti and Nb, and Mo is completely dissolved by a reaction with Nb and Ti through bubbling in the steelmaking process, such that a density of carbides, nitrides, or carbonitrides (hereinafter, also referred to collectively as “carbonitrides”) may be reduced as much as possible” (paragraph [0049]).
Kim ‘659 is similarly concerned with controlling and minimizing formation of carbides and nitrides (paragraphs [0055], [0057], [0061], [0063], and [0065]). Kim ‘659 teaches “a non-oriented electrical steel sheet and a manufacturing method thereof” (paragraph [0001]). Kim ‘659 teaches that “the inclusions and fine precipitates present inside the steel sheet must be actively controlled to prevent them from interfering with the domain wall movement” (paragraph [0008]). Kim ‘659 teaches that “in order to purify the impurity elements such as C, S, N, Ti, Nb, V and the like in the steel manufacturing to an extremely low level for controlling inclusions and fine precipitates, it is necessary to use high quality raw materials, and there is a problem that the productivity is dropped since the secondary refining takes a long time” (paragraph [0009]). Kim ‘659 teaches that “an embodiment of the present invention is to provide a non-oriented electrical steel sheet improved in magnetic property by minimizing fine impurities such as inclusions, precipitates and the like by facilitating the domain wall movement without strengthening secondary refining in the steel manufacturing” (paragraph [0011]). Kim ‘659 teaches “bubbling using an inert gas; and performing continuous casting to manufacture a slab before the step of heating slab” (paragraph [0027]).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the non-oriented electrical steel sheet of Kim by adding bubbling using an inert gas during the manufacturing process, as taught by Kim ‘659 to obtain improved magnetic properties by minimizing fine impurities such as inclusions, precipitates and the like by facilitating the domain wall movement without strengthening secondary refining in the steel manufacturing.
Regarding the density of one or more of carbides, nitrides, and carbonitrides of claim 1, modified Kim teaches overlapping compositions and processing steps, as described above.
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 (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure, 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 non-oriented electrical steel sheet, it is applicant’s burden to show that the reference non-oriented electrical steel sheet 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).
Since modified Kim has overlapping composition and processing with the claimed invention, one of ordinary skill in the art would reasonably expect the steel of modified Kim to have the claimed density of one or more of carbides, nitrides, and carbonitrides. Modified Kim therefore reads on the limitation a density of one or more of carbides, nitrides, and carbonitrides having a particle diameter of 0.1 µm or less is 100/mm2 or less.
Regarding claim 2, modified Kim teaches the non-oriented electrical steel sheet of claim 1 as stated above. Kim Table 2 gives values for N and C in ppm. 0.003 wt % is 30 ppm. 0.015 wt % is 150 ppm. The lowest total of N + C is Example 28, which give a total of 34 ppm. The highest total of N + C is Example 40, which give a total of 128 ppm. Table 2 does not give any values for Ti or Nb. Kim teaches that “the slab may further contain Ti of 0.004% or less (excluding 0%), 0.004% or less of Nb (excluding 0%)” (paragraph [0012]; 0.004 wt % is 40 ppm). Adding up these values we get 34 ppm (N+C) plus 1 ppm Ti plus 1 ppm Nb = 35 ppm or 0.0035 wt % as a minimum. 128 ppm (N+C) plus 40 ppm Ti plus 40 ppm Nb = 208 ppm or 0.0208 wt % as a maximum. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. Here, the claimed range of 0.003 – 0.015 wt% overlaps the range disclosed by the prior art of 0.0035 – 0.0208 wt %. Accordingly, Kim reads on the composition of claim 2.
Regarding claim 6, modified Kim teaches the non-oriented electrical steel sheet of claim 1 as stated above. Kim teaches that “the crystal grain size becomes 50 μm to 150 μm” (paragraph [0052]). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. Here, the claimed range of 50 μm to 100 μm lies inside the range disclosed by the prior art of 50 μm to 150 μm. Accordingly, Kim reads on the grain diameter of claim 6.
Regarding claim 7, modified Kim teaches the non-oriented electrical steel sheet of claim 1 as stated above. Regarding the magnetic permeability of claim 6, modified Kim teaches overlapping compositions and processing steps, as described above. 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 (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure, 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 non-oriented electrical steel sheet, it is applicant’s burden to show that the reference non-oriented electrical steel sheet 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). Since modified Kim has overlapping composition and processing with the claimed invention, one of ordinary skill in the art would reasonably expect the non-oriented electrical steel sheet of modified Kim to have the claimed magnetic permeability. Modified Kim therefore reads on the limitation a magnetic permeability is 5,000 or more when measured at 30 A/m.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 101659808 B1), as machine translated, previously cited, in view of Kim et al. (KR 20180070950 A, as translated by US 20200095659 A1, “Kim ‘659”), as applied to claim 1 above, and further in view of Kim et al. (WO 2019132132 A1, as translated by US 20200332387 A1, “Kim ‘387”).
Regarding claim 5, modified Kim teaches the non-oriented electrical steel sheet of claim 1 as stated above. Kim is silent regarding the resistivity, specifically, Kim is silent regarding the resistivity being 50 or more. Regarding the subject limitation, in order to resistivity of the non-oriented electrical steel sheet of Kim, it would have been necessary and obvious to look to the prior art for exemplary teaching regarding resistivity used in non-oriented electrical steel sheets. Kim ‘387 provides this teaching. Kim ‘387 teaches “a non-oriented electrical steel sheet and a manufacturing method thereof” ([0001]). Kim ‘387 teaches that “Silicon (Si) increases the resistivity of the material to lower the iron loss” (paragraph [0040]). Kim ‘387 teaches that “if to little Si is added, the effect of improving the high frequency iron loss may be insufficient, and that on the contrary, when too much Si is added, the hardness of the material may increase and the cold rolling property may be extremely deteriorated” (paragraph [0040]). Kim ‘387 teaches that “Aluminum (Al) plays a role of lowering the iron loss by increasing the resistivity of the material” (paragraph [0042]). Kim ‘387 teaches that “if too little Al is added, it may not be effective in the reduction of high frequency iron loss, and a nitride is formed finely, which may deteriorate the magnetism, but on the other hand, if too much Al is added, various problems may occur in all processes such as steelmaking and continuous casting, and thus the productivity may be greatly lowered” (paragraph [0042]). Kim ‘387 teaches that “Manganese (Mn) enhances the resistivity of the material to improve the iron loss and form a sulfide” (paragraph [0044]). Kim ‘387 teaches that “when too little is added, MnS may precipitate finely to deteriorate the magnetism, but if too much is added, the magnetic flux density may be reduced by promoting the formation of [111] texture, which may be disadvantageous to the magnetism” (paragraph [0044]). Kim ‘387 teaches that “the resistivity is a value calculated from 13.25 + 11.3 × ([Si]+[Al]+[Mn]/2), and that in this case, [Si], [Al], and [Mn] represent the content (by wt %) of Si, Al, and Mn” (paragraph [0046]). Kim ‘387 teaches that “more specifically, the resistivity may be 50 to 80 μΩ·cm” (paragraph [0046]). Plugging the values of the content (by wt %) of Si, Al, and Mn in Example 1 from Table 1 into the equation, we calculate the resistivity is 13.25 + 11.3 × ([Si]+[Al]+[Mn]/2) = 13.25 + 11.3 × ([3.2]+[0.7]+[0.2]/2) = 58.45 μΩ·cm. Accordingly, Kim reads on the resistivity of claim 5.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
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. The Examiner requests that interviews not be scheduled during the last week of each fiscal quarter or the last half of September, which is the end of the fiscal year. Q3: 6/22-6/26/26; Q4: 9/21-9/30/26.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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