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 .
Status of Claims
Claim 1 is amended. Claims 8-14 are withdrawn. Claims 1-7 are examined herein.
Status of Previous Rejections
The rejection of claim 2 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is maintained.
The rejections of claims 1 and 3-7 under 35 U.S.C. 103 as being unpatentable over Han (WO 2018/117643A1, US 2021/0130937 is used as translation), and further in view of Takenaka (US 2019/0112685) are maintained.
The rejection of claim 2 under 35 U.S.C. 103 as being unpatentable over Han (WO 2018/117643A1, US 2021/0130937 is used as translation) in view of Takenaka (US 2019/0112685), as applied to claim 1 above, and further in view of Joo (US 2017/0335425) is maintained.
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 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is 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 2 recites an area fraction of crystal grains with a crystal grain diameter of 1 mm or less is 10% or less. It’s unclear the recited crystal grains refer to the grains of the steel, the inclusion or both. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Han (WO 2018/117643A1, US 2021/0130937 is used as translation), and further in view of Takenaka (US 2019/0112685).
Regarding claim 1, Han discloses (Abstract; [0047] to [0073]) a grain-oriented electrical steel sheet with a composition that overlaps with the instant claimed composition of Si, Mn, N, C and Sn and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in Han to produce a grain-oriented steel sheet that meets the recited composition in claim 1. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
Han
(mass %)
Overlap
(mass %)
Si
2-4
1-7
2-4
Mn
0.04-0.2
0-0.08
0.04-0.08
N
≤0.01
≤0.005
≤0.005
C
≤0.005
≤0.005
≤0.005
Sn
0.03-0.08
0.005-0.2
0.03-0.08
Cr
0.01-0.2
---
---
Fe + Impurities
Balance
Balance
Balance
Han is silent on the amount of Cr. Takenaka teaches ([0034] to [0060]) a grain-oriented electrical steel having major composition overlapping the steel composition disclosed by Han. Takenaka discloses that 0.005-0.1 wt% Cr improves magnetic properties ([0058]). Thus, it would be obvious to one of ordinary skill in the art to add 0.005-0.1 wt% Cr as taught by Takenaka in the steel of Han in order to improve the steel magnetic properties as disclosed by Takenaka. The amount of Cr disclosed by Takenaka overlaps the recited Cr amount in claim 1. 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). Thus, the recited amount of Cr is a prima facie case of obviousness over Han in view of Takenaka. See MPEP 2144.05 I.
Han discloses that inclusions are present in the steel and the inclusions comprises oxide, nitride or sulfide of Al or Mn ([0075]; [0110]), which meets the limitation that the inclusions comprise at least one selected from the group consisting of AlN, (Al,Si)N, (Al, Si, Mn)N, MnS, CuS and Al2O3. Han further discloses that the average diameter of the inclusions 0.01-1 µm ([0076]) and the density of the inclusions is 500 pieces/mm2 or less ([0111]), which overlap the recited average diameter of the inclusions and the number density of the inclusions in claim 1.
Han further discloses a steel slab that contains 0.051 wt.% C, 3.3 wt.% Si, 0.047 wt. % Mn, 0.06 wt. % Sn and the steel slab is subjected to decarburization heat treatment to reduce the carbon content to 0.005 wt.% or less ([0051] to [0053]; [0106] to [0109]; Example 3). Han discloses that the steel contains 0.005 wt.% or less N ([0070]; [0071]). Thus, Example 3 of Han meets the recited amount of C, Si, Mn, N and Sn in claim 1. Han discloses that Example 3 contains inclusions having an average diameter of 0.58 µm and a number density of the inclusions is 132 pieces/mm2 (Table 3, Invention Material 16). Fig. 1 of Han shows that the maximum size of the inclusions in Invention Material 16 of Example 3 is 1.2 µm. Thus, it would be obvious to one of ordinary skill in the art that the inclusions in Invention Material 16 of Example 3 disclosed by Han all have a diameter of 6 µm or less and the number density of 132 pieces/mm2 is the number density of inclusions having a diameter of 6 µm or less. The number density of 132 pieces/mm2 is very close to the recited inclusion density in claim 1.
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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, the recited average diameter of the inclusions and the number density of the inclusions in claim 1 is a prima facie case of obviousness over Han. See MPEP 2144.05 I.
Regarding claim 3, Han discloses that the Al amount is 0.001-0.01 wt% ([0066]), which overlaps the recited amount of Al in claim 3. 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). Thus, the recited amount of Al is a prima facie case of obviousness over Han in view of Takenaka. See MPEP 2144.05 I.
Regarding claim 4, Han discloses that the S amount is 0.0005-0.02 wt% ([0058]), which overlaps the recited S amount in claim 4. 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). Thus, the recited amount of S is a prima facie case of obviousness over Han in view of Takenaka. See MPEP 2144.05 I.
Regarding claim 5, Han discloses that the P amount is 0.001-0.1 wt% ([0058]), which overlaps the recited P amount in claim 5. 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). Thus, the recited amount of P is a prima facie case of obviousness over Han in view of Takenaka. See MPEP 2144.05 I.
Regarding claim 6, Han is silent on the amount of Sb. Takenaka teaches ([0034] to [0060]) a grain-oriented electrical steel having major composition overlapping the steel composition disclosed by Han. Takenaka discloses that 0.005-1 wt% Sn+Sb stabilize secondary recrystallization ([0049]). Thus, it would be obvious to one of ordinary skill in the art to incorporate 0.005-1 wt% Sn+Sb as taught by Takenaka in the steel of Han in order to stabilize secondary recrystallization as disclosed by Takenaka. Takenaka discloses an example containing 0.036 wt% Sn and 0.002 wt% Sb (Table 1, Sample No. 5), which meets the recited amount of Sb in claim 6.
Regarding claim 7, Han does not teach that the steel comprises at least one of Co, Ni and Mo. Takenaka teaches ([0034] to [0060]) a grain-oriented electrical steel having major composition overlapping the steel composition disclosed by Han. Takenaka discloses that 0.005-1.5 wt% Ni improves magnetic properties ([0058]). Thus, it would be obvious to one of ordinary skill in the art to add 0.005-1.5 wt% Ni as taught by Takenaka in the steel of Han in order to improve the steel magnetic properties as disclosed by Takenaka. The amount of Ni disclosed by Takenaka overlaps the recited Ni amount in claim 7. 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). Thus, the recited amount of Ni is a prima facie case of obviousness over Han in view of Takenaka. See MPEP 2144.05 I.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Han (WO 2018/117643A1, US 2021/0130937 is used as translation) in view of Takenaka (US 2019/0112685), as applied to claim 1 above, and further in view of Joo (US 2017/0335425).
Regarding claim 2, Han in view of Takenaka does not teach that an area fraction of crystal grains with a crystal grain diameter of 1 mm or less is 10% or less. Joo teaches ([0004] to [0012]) a grain-oriented electrical steel having major composition overlapping the steel composition disclosed by Han. Joo discloses that when an area fraction of crystal grains with a crystal grain diameter of 2 mm or less is 10% or less, the steel has good magnetic properties ([0052]). Thus, it would be obvious to one of ordinary skill in the art to make a steel having an area fraction of crystal grains with a crystal grain diameter of 2 mm or less being 10% or less as taught by Joo in the process of making the steel of Han in view of Takenaka in order to make a grain-oriented steel having good magnetic properties as disclosed by Joo.
Response to Arguments
Applicant's arguments filed 04/20/2026 have been fully considered but they are not persuasive.
First, the applicants argued that in the field of electrical steel sheets, differences in effects may be achieved due to minor differences in a steel alloy and a manufacturing method condition, and thus, the predictability of such effects may be very low. Therefore, when an effect is not disclosed in a specific example, one of ordinary skill in the art would not have been sufficiently guided to the claimed composition and features from the broad teachings of the applied art.
In response, Han discloses the effect of each element on the properties of the electrical steel ([0047] to [0073]). It would be obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in Han to produce a grain-oriented steel sheet having desired properties.
Han discloses a steel slab that contains 0.051 wt.% C, 3.3 wt.% Si, 0.047 wt. % Mn, 0.06 wt. % Sn and the steel slab is subjected to decarburization heat treatment to reduce the carbon content to 0.005 wt.% or less ([0051] to [0053]; [0106] to [0109]; Example 3). Han also discloses that the steel contains 0.005 wt.% or less N ([0070]; [0071]). Thus, Example 3 of Han meets the recited amount of C, Si, Mn, N and Sn in claim 1. Takenaka discloses that 0.005-0.1 wt% Cr improves magnetic properties ([0058]). Thus, Han in view of Takenaka discloses a composition that meets the recited composition in claim 1. See MPEP 2144.05 I.
Second, the applicants argued that in Han, the number of inclusions in the examples exceeds 130/mm² (Han at Table 3), and Takenaka does not disclose any information regarding inclusions. Thus, the combined teachings of Han and Takenaka would not have rendered obvious the claimed range for the average diameter and number density of inclusions.
In response, Han discloses that Example 3 contains inclusions having an average diameter of 0.58 µm and a number density of the inclusions is 132 pieces/mm2 (Table 3, Invention Material 16). Fig. 1 of Han shows that the maximum size of the inclusions in Invention Material 16 of Example 3 is 1.2 µm. Thus, it would be obvious to one of ordinary skill in the art that the inclusions in Invention Material 16 of Example 3 disclosed by Han all have a diameter of 6 µm or less and the number density of 132 pieces/mm2 is the number density of inclusions having a diameter of 6 µm or less. The number density of 132 pieces/mm2 is very close to the recited inclusion density in claim 1. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, the recited average diameter of the inclusions and the number density of the inclusions in claim 1 is a prima facie case of obviousness over Han. See MPEP 2144.05 I.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/ Primary Examiner, Art Unit 1733
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