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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/28/2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities:
In reference to claim 1, in line 17, after “Cr,” and before “Al,”, delete “15”. Appropriate correction is required.
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.
Claims 1-7 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.
In reference to claim 1, the limitation “wt%” is recited in lines 1, 17 and 19. It is unclear what the wt% is based on, e.g., a total weight of the non-oriented electrical steel sheet, a total weight of the substrate, a total weight of the Cr-rich layer or a total weight of the base and the Cr-rich layer. For the purpose of compact prosecution, the wt% recited in lines 1 and 17 will be interpreted as based on a total weight of the substrate and the wt% recited in line 19 will be interpreted as based on a total weight of the Cr-rich layer. However, clarification is requested.
Regarding dependent claims 2-7, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (US 2012/0305140) (Yamazaki) in view of Kawamata et al. (JP 2019-199643) (Kawamata).
The examiner has provided a machine translation of JP 2019-199643 with the Office Action mailed 06/18/2025. The citation of prior art in the rejection refer to the provided machine translation.
In reference to claim 1, Yamazaki teaches a non-oriented electrical steel sheet ([0001]) (corresponding to a non-oriented electrical steel sheet). The steel sheet including: a base iron, an oxide layer containing an oxide of Cr having a thickness of not less than 0.01 µm nor more than 0.5 µm being formed on a surface of the base iron ([0014]-[0015]).
The base iron includes Si, Al, and Cr: not less than 2 mass% nor more than 6 mass% in total content; and Mn: not less than 0.1 mass% nor more than 1.5 mass%, and a balance of the base iron is composed of Fe and inevitable impurities ([0017]-[0021]). The non-oriented electrical steel sheet contains Si: 3 mass%, Mn: 0.15 mass% and Al: 1.2 mass% ([0051]) (corresponding to comprising, by wt%: 2.5 to 3.8% of Si, 0.1 to 1.5% of Al, 0.1 to 2.0% of Mn, 0.01 to 0.15% of Cr, and a balance of Fe and inevitable impurities). Given that the base iron includes 3 mass% Si, 1.2 mass% Al and Si, Al and Cr not less than 2 mass% nor more than 6 mass% in total, it is clear the amount of Cr is between 0 mass% and 1.8 mass% (i.e., 6-4.2 = 1.8).
Yamazaki teaches the base iron comprises each of Si, Al, Mn and Cr in overlapping ranges with the presently claimed amounts of Si, Al, Mn and Cr. Therefore, within the overlapping portions of Si, Al, Mn and Cr the base iron of Yamazaki will satisfy the presently claimed expression 1 (i.e., 3 mass% Si, 1.2 mass% Si, 0.15 mass% Mn and 0.15 Cr) (corresponding to the non-oriented electrical steel sheet satisfies the following Expression 1; [Expression 1] [Cr] > ([Al]+[Mn])/[Si]/10 (in Expression 1, [Cr], [Al], [Mn], and [Si] represent contents (wt%) of Cr, Al, Mn, and Si, respectively).
Yamazaki further teaches the main component of the external oxide film is Cr2O3 ([0073]) (corresponding to the non-oriented electrical steel sheet includes a Cr-rich layer). The thickness of the external oxide film is 0.01 µm to 0.5 µm ([0072]). The final thickness of the non-oriented electrical steel sheet is 0.35 mm (i.e., 350 µm) ([0081]; [0087]). Thus, it is clear the thickness of the external oxide film is less than 1/50 the total thickness of the non-oriented electrical steel sheet (corresponding to a thickness of 1/50 or less of a total thickness of the non-oriented electrical steel sheet in an inner direction of the non-oriented electrical steel sheet from a surface of the non-oriented electrical steel sheet, and a substrate).
Given that the oxide film has a main component of Cr2O3, it is clear the composition of the oxide film is 50-100 mass% Cr2O3. Thus, it is clear the oxide film includes Cr in an amount of 34.21% to 68.42% by mass based on the total weight of the oxide film (corresponding to Cr is included in an amount of more than 0.15 wt% in the Cr-rich layer).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Yamazaki does not explicitly teach an average grain diameter of the external oxide film (i.e., Cr-rich layer) is 50 to 95% of an average grain diameter in the base iron, as presently claimed.
Kawamata teaches a non-oriented electrical steel sheet ([0001]). An average circle equivalent diameter of crystal grains in a surface layer within a range of 100 µm from each of both sides of the steel sheet in a direction perpendicular to the sheet surface is 10 µm to 80 µm, and the average circle equivalent diameter of crystal grains in a central layer within a range of 100 μm in total, 50 μm each from the center to each of both sides of the steel sheet in the direction perpendicular to the sheet surface, is 50 μm to 150 μm, the difference between the average value of the equivalent circle diameters of the crystal grains in the central layer and the average value of the equivalent circle diameters of the crystal grains in the surface layer, (central layer equivalent circle diameter) - (surface layer equivalent circle diameter), is 20 μm or more and 100 μm or less ([0016]; [0025]) (corresponding to an average grain diameter of the Cr-rich layer is 50 to 95% of an average grain diameter in the substrate).
The average value of the equivalent circle diameter of the crystal grains in the surface layer is determined in order to reduce iron loss, improve magnetic properties and improve punchability ([0026]). The average value of the equivalent circle diameter of the crystal grains in the core layer is determined to reduce iron loss and ensure punching stability ([0027]). The difference between the average value of the equivalent circle diameters of the crystal grains in the central layer and the average value of the equivalent circle diameters of the crystal grains in the surface layer is set to 20 µm or more in order to improve rolling stability ([0028]).
In light of the motivation of Kawamata, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the external oxide film of Yamazaki include an average circle equivalent diameter of crystal grains of 10 µm to 80 µm, the base iron of Yamazaki have an average circle equivalent diameter of crystal grains of 50 μm to 150 μm and the difference between the average value of the equivalent circle diameters of the crystal grains in the base iron and the average value of the equivalent circle diameters of the crystal grains in the external oxide film be 20 µm, in order to reduce iron loss, improve magnetic properties, ensure punching stability and improve rolling stability of the non-oriented electrical steel sheet.
Given that Yamazaki in view of Kawamata teaches the average circle equivalent diameter of the crystal grains of the external oxide film is 10 µm to 80 µm, the average circle equivalent diameter of the crystal grains of the base iron is 50 µm to 150 µm and the difference between the crystal grains is 20 µm or more, it is clear the average grain diameter in the external oxide film is 6.67 to 60% of the average grain diameter of the iron base (i.e., (10/150)*100 = 6.67%; (30/50)*100 = 60%) (corresponding to an average grain diameter in the Cr-rich layer is 50 to 95% of an average grain diameter in the substate).
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claims 2-4, Yamazaki in view of Kawamata teaches the limitations of claim 1, as discussed above. Kawamata further teaches from the viewpoint of improving magnetic properties, the N content is 0% or more and 0.003% or less, the S content is 0% or more and 0.003% or less, the Ti content is 0% or more and 0.004% or less, the Nb content is 0% or more and 0.003% or less, the P content is 0% or more and 0.05% or less ([0072]-[0075]; [0078]).
In light of the motivation of Kawamata, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include each of N, S, Ti, Nb and P in the base iron in the amounts above, in order to improve the magnetic properties of the non-oriented electrical steel sheet.
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claims 3 and 4, Yamazaki in view of Kawamata teaches the limitations of claim 1, as discussed above. Yamazaki further teaches the base iron includes 0.005 mass% or less C and Ca not less than 0.002 mass% nor more than 0.01 mass% ([0066]; [0069]) (corresponding to further comprising one or more of 0.0040 wt% or less of C; further comprising one or more of 0.0050 wt% or less of Ca).
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claim 5, Yamazaki in view of Kawamata teaches the limitations of claim 1, as discussed above. Yamazaki further teaches an insulating film on the surface of the base iron ([0016]) (corresponding to further comprising an insulating layer positioned on the surface of the non-oriented electrical steel sheet).
In reference to claim 6, Yamazaki in view of Kawamata teaches the limitations of claim 1, as discussed above. Given that the non-oriented electrical steel sheet of Yamazaki in view of Kawamata is substantially identical to the present claimed non-oriented electrical steel sheet in composition and structure, it is clear that the non-oriented electrical steel sheet of Yamazaki in view of Kawamata would intrinsically have a frequency dependence (α) of a magnetic permeability of -5 or more when measured in a range of 200 Hz to 800 Hz.
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).
In reference to claim 7, Yamazaki in view of Kawamata teaches the limitations of claim 1, as discussed above. The instant application’s Specification discloses the resistivity is a value calculated from 13.25+11.3*([Si]+[Al]+[Mn]/2) at page 9, line 24. Yamazaki in view of Kawamata teaches the non-oriented electrical steel sheet includes 3 mass% Si, 0.15 mass% Mn and 1.2 mass% Al (Yamazaki, [0051]). Thus, it is clear the steel sheet has a resistivity of 62 µΩ·cm (corresponding to a resistivity of the non-oriented electrical steel sheet is 45 µΩ·cm or more).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claims 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Oda et al. (JP 2020-090720) (Oda) in view of Kawamata.
The examiner has provided a machine translation of JP 2020-090720. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claims 1-3, Oda teaches a non-oriented electrical steel sheet ([0001]) (corresponding to a non-oriented electrical steel sheet). The non-oriented electrical steel sheet comprises an inner layer having a chemical composition containing, by mass%, C: 0.010% or less, Si: 3.0 to 7.0%, Al: 3.0% or less, Mn: 5.0% or less, P: 0.10% or less, and S: 0.010% or less, with the balance being Fe and unavoidable impurities; and a surface layer portion covering at least one of the front and rear surfaces of the steel sheet and made of a highly ductile metal having a total elongation of 30% or more, wherein the ratio of the thickness of the surface layer portion to the total thickness of the inner layer portion and the surface layer portion is 0.02 to 0.20 portion made of a steel sheet ([0008]) (corresponding to comprising, by wt%: 2.5 to 3.8% of Si, 0.1 to 1.5% of Al, 0.1 to 2.0 of Mn, and a balance of Fe and inevitable impurities; the non-oriented electrical steel sheet includes: a Cr-rich layer formed to have a thickness of 1/50 or less of a total thickness of the non-oriented electrical steel sheet in an inner direction of the non-oriented electrical steel sheet from a surface of the non-oriented electrical steel sheet, and a substrate; further comprising one or more of 0.005 to 0.08 wt% of P; further comprising one or more of 0.0040 wt% or less of C, 0.0040 wt% or less of S).
Oda further teaches the inner layer portion further contains, by mass% 0.10 to 5.0% Cr ([0011]) (corresponding to 0.01 to 0.15% Cr). The surface layer portion contains, by mass%, 0.10 to 5.0% Cr ([0014]) (corresponding to wherein Cr is included in an amount of more than 0.15 wt% in the Cr-rich layer).
Oda teaches the inner layer comprises Cr, Al, Mn and Si in overlapping ranges with the presently claimed ranges. Within the overlapping portion of each of the alloying elements, the inner layer of Oda will satisfy presently claimed Expression 1 (i.e., Si = 3.0%, Al = 0.3%, Mn = 0.1%, Cr = 0.1 > (0.3+0.1)/3/10 = 0.0133 ).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Oda does not explicitly teach an average grain diameter in the surface layer (i.e., Cr-rich layer) is 50 to 95% of an average grain diameter in the inner layer (i.e., substrate), as presently claimed. However, Oda teaches the surface layer is a highly ductile metal.
Kawamata teaches a non-oriented electrical steel sheet ([0001]). An average circle equivalent diameter of crystal grains in a surface layer within a range of 100 µm from each of both sides of the steel sheet in a direction perpendicular to the sheet surface is 10 µm to 80 µm, and the average circle equivalent diameter of crystal grains in a central layer within a range of 100 μm in total, 50 μm each from the center to each of both sides of the steel sheet in the direction perpendicular to the sheet surface, is 50 μm to 150 μm, the difference between the average value of the equivalent circle diameters of the crystal grains in the central layer and the average value of the equivalent circle diameters of the crystal grains in the surface layer, (central layer equivalent circle diameter) - (surface layer equivalent circle diameter), is 20 μm or more and 100 μm or less ([0016]; [0025]) (corresponding to an average grain diameter of the Cr-rich layer is 50 to 95% of an average grain diameter in the substrate).
The average value of the equivalent circle diameter of the crystal grains in the surface layer is determined in order to reduce iron loss, improve magnetic properties and improve punchability ([0026]). The average value of the equivalent circle diameter of the crystal grains in the core layer is determined to reduce iron loss and ensure punching stability ([0027]). The difference between the average value of the equivalent circle diameters of the crystal grains in the central layer and the average value of the equivalent circle diameters of the crystal grains in the surface layer is set to 20 µm or more in order to improve rolling stability ([0028]).
In light of the motivation of Kawamata, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the surface layer of Oda include an average circle equivalent diameter of crystal grains of 10 µm to 80 µm, the inner layer of Oda have an average circle equivalent diameter of crystal grains of 50 μm to 150 μm and the difference between the average value of the equivalent circle diameters of the crystal grains in the inner layer and the average value of the equivalent circle diameters of the crystal grains in the surface layer be 20 µm, in order to reduce iron loss, improve magnetic properties, ensure punching stability and improve rolling stability of the non-oriented electrical steel sheet.
Given that Oda in view of Kawamata teaches the average circle equivalent diameter of the crystal grains of the surface layer is 10 µm to 80 µm, the average circle equivalent diameter of the crystal grains of the inner layer is 50 µm to 150 µm and the difference between the crystal grains is 20 µm or more, it is clear the average grain diameter in the surface layer is 6.67 to 60% of the average grain diameter of the inner layer (i.e., (10/150)*100 = 6.67%; (30/50)*100 = 60%) (corresponding to an average grain diameter in the Cr-rich layer is 50 to 95% of an average grain diameter in the substate).
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claim 4, Oda in view of Kawamata teaches the limitations of claim 1, as discussed above.
Kawamata further teaches from the viewpoint of improving magnetic properties, the Nb content is 0% or more and 0.003% or less ([0075]).
In light of the motivation of Kawamata, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include Nb in the steel sheet in the amount above, in order to improve the magnetic properties of the non-oriented electrical steel sheet.
As set forth in MPEP 2144.05, in the case where the claimed range “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 reference to claim 6, Oda in view of Kawamata teaches the limitations of claim 1, as discussed above. Given that the non-oriented electrical steel sheet of Oda in view of Kawamata is substantially identical to the present claimed non-oriented electrical steel sheet in composition and structure, it is clear that the non-oriented electrical steel sheet of Oda in view of Kawamata would intrinsically have a frequency dependence (α) of a magnetic permeability of -5 or more when measured in a range of 200 Hz to 800 Hz.
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).
In reference to claim 7, Oda in view of Kawamata teaches the limitations of claim 1, as discussed above. The instant application’s Specification discloses the resistivity is a value calculated from 13.25+11.3*([Si]+[Al]+[Mn]/2) at page 9, line 24. Oda teaches the inner layer contains 3.0-7.0% Si, 0.3 to 3.0% Al and 0.05 to 5.0% Mn ([0043]-[0045]).
Oda in view of Kawamata teaches each of Si, Al and Mn in overlapping ranges with the presently claimed amounts of Si, Al and Mn. Therefore, within the overlapping portions of Si, Al and Mn the steel sheet of Oda in view of Kawamata will have a resistivity of more than 45 µΩ·cm (i.e., 13.25+11.3*(3+0.3+0.1/2) = 51.105) (corresponding to a resistivity of the non-oriented electrical steel sheet is 45 µΩ·cm or more).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Oda in view of Kawamata as applied to claim 1 above, and further in view of Yamazaki.
In reference to claim 5, Oda in view of Kawamata teaches the limitations of claim 1, as discussed above.
Oda in view of Kawamata does not explicitly teach an insulating layer positioned on the surface of the non-oriented electrical steel sheet, as presently claimed.
Yamazaki teaches a non-oriented electrical steel sheet ([0014]). A tension applying type insulating film is formed on the surfaces of the base iron ([0074]). The insulating film improves the magnetic property in the rolling direction ([0075]).
In light of the motivation of Yamazaki, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include an insulating film on the surfaces of the non-oriented electrical steel sheet of Oda in view of Kawamata, in order to improve the magnetic property in the rolling direction, and thereby arriving at the presently claimed invention.
Response to Arguments
Applicant primarily argues:
“In contrast, Yamazaki does not disclose the content of Cr alone at all. Moreover, when considering the examples of Yamazaki, the Cr content is entirely different from the range of the present application.
In addition, Kawamata does not disclose any steel grade containing Cr and therefore, does not disclose any configuration relating to a Cr-rich layer.”
Remarks, p. 5
The examiner respectfully traverse as follows:
Yamazaki discloses a non-oriented electrical stee sheet including a base iron, wherein the base iron contains: Si, Al and Cr: not less than 2 mass% nor more than 6 mass% (i.e., 2 mass% < Si+Al+Cr < 6 mass%) ([0014]-[0018]; claim 1). In an experiment the non-oriented electrical steel sheet contains Si: 3 mass%, Mn: 0.15 mass% and Al: 1.2 mass%. Therefore, it is clear that the base iron can include anywhere from 0 mass% to 1.8 mass% of Cr (i.e., 2 < 3+1.2+Cr < 6; solving for Cr, Cr = 0, Cr = 6-4.2 = 1.8), which overlaps the presently claimed range. Alternatively, the working examples show using less than 0.1 to 2 mass% of Cr, therefore one of ordinary skill in the art would select an amount of Cr for the iron base within the range of less than 0.1 to 2 mass%.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Therefore, Yamazaki discloses an amount of Cr in the base iron overlapping the presently claimed. Further, Yamazaki teaches an oxide film having the main component of the oxide film being Cr2O3 (i.e., a Cr-rich layer). Kawamata is not relied on to teach the Cr content in the base iron or a Cr-rich layer. Rather, these limitations are taught by Yamazaki, as discussed above. Kawamata is only used as teaching reference in order to teach differing average crystal grain sizes between the base iron and the surface layer of the steel sheet.
Applicant further argues:
“However, in the field of steel sheets, even slight differences in steel compositions result in significant differences in effects, and the predictability thereof is extremely low. Accordingly, it is difficult to consider that merely disclosing Cr as an additive element constitutes a disclosure of all steel grades within the claimed range and their corresponding effects.
Furthermore, neither Yamazaki nor Kawamata describes or suggest the Cr content within a Cr-rich layer at all. They also fail to disclose any data demonstrating simultaneous satisfaction of the claimed Cr content and Equation 1.”
Remarks, p. 6
The examiner respectfully traverses as follows:
As discussed above, Yamazaki discloses a non-oriented electrical stee sheet including a base iron, wherein the base iron contains: Si, Al and Cr: not less than 2 mass% nor more than 6 mass% (i.e., 2 mass% < Si+Al+Cr < 6 mass%) ([0014]-[0018]; claim 1). In an experiment the non-oriented electrical steel sheet contains Si: 3 mass%, Mn: 0.15 mass% and Al: 1.2 mass%. Therefore, it is clear that the base iron can include anywhere from 0 mass% to 1.8 mass% of Cr (i.e., 2 < 3+1.2+Cr < 6; solving for Cr, Cr = 0, Cr = 6-4.2 = 1.8), which overlaps the presently claimed range. Alternatively, the working examples show using less than 0.1 to 2 mass% of Cr, therefore one of ordinary skill in the art would select an amount of Cr for the iron base within the range of less than 0.1 to 2 mass%.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Even if the working examples show a base iron composition including less than 0.1, 1 and 2 mass% Cr, it is noted applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others. In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
The fact remains, Yamazaki teaches a broader range of Cr that would overlap the presently claimed. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, absent evidence to the contrary, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Further, even if the working examples do not show using the claimed range of Cr as a preferred embodiment, it is noted that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.975 (1989). MPEP 2123 I.
Therefore, Applicant's arguments filed 01/28/2025 have been fully considered but they are not persuasive.
Conclusion
The prior art made of record and not relied upon, namely Joo et al. (WO 2021/125855 (English equivalent US 2023/0025678)), is considered pertinent to Applicant's disclosure. However, the rejection using this reference would be cumulative to the rejection of record set forth above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784