DETAILED ACTION
Status of Claims
Claims 1-15 are pending. Of the pending claims, claims 1-9 are presented for examination on the merits, and claims 10-15 are withdrawn from examination.
Claim 7 is currently amended.
Status of Claim Rejections Under 35 USC § 112
The previous rejection of claim 7 under 35 U.S.C. § 112(b) is withdrawn in view of the amendment to the claim.
The previous rejection of claim 8 under 35 U.S.C. § 112(b) is maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0343458 (A1) (also WO 2020/091039 (A1)) to Yashiki et al. (“Yashiki”).
US 2021/0343458 (A1) is a pre-grant publication of U.S. appl. ser. no. 17/259,837, which is a 371 national stage application of PCT/JP2019/0430241, published by WIPO as WO 2020/091039 (A1). The pre-grant publication will serve as the translation for the WIPO publication.
Regarding claims 1-9, the claims are rejected for the same reasons presented in the Office action dated 11/18/2025.
Regarding the amendments to claim 7, the claim is rejected for the same reasons presented in the Office action dated 11/18/2025. In addition, an oxide layer comprising Al and Si is expected in Yashiki because the steps and parameters (e.g., heating temperatures, times, dew point, and soaking atmosphere) of Yashiki match the corresponding steps and parameters in the instant specification (instant spec at pp. 17-20, e.g., heating the slab, hot rolling, winding, annealing, cold rolling, final annealing, and forming an insulating film). Therefore, any claimed characteristics, such Al and Si being present in the oxide composition, would also be expected in the prior art steels given the alignment between composition and method of fabrication between prior art and instant specification.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yashiki, as applied to claim 1 above, and further in view of JP 2006-241563 (A) to Takeda et al. (“Takeda”) (abstract and computer-generated translation are attached).
Regarding claim 5, the claim is rejected for the same reasons presented in the Office action dated 11/18/2025.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yashiki, as applied to claim 1 above, and further in view of US 2023/0021153 (A1) (also WO 2021/125683 (A2)) to Lee et al. (“Lee”).
US 2023/0021153 (A1) is a pre-grant publication of U.S. appl. ser. no. 17/787,023, which is a 371 national stage application of PCT/KR2020/017976, published by WIPO as WO 2021/125683 (A2). The pre-grant publication will serve as the translation for the WIPO publication.
Regarding claim 5, the claim is rejected for the same reasons presented in the Office action dated 11/18/2025.
Response to Arguments
Applicant's arguments filed 02/13/2026 have been fully considered, but they are not persuasive.
Applicant traverses the 112(b) rejection of claim 8 for the reason that N is a well-known impurity element in steel compositions and that AlN may be formed in a steel sheet containing Al and N, even if these elements are not explicitly recited in the steel composition.
In response, although nitrogen (N) is an element that is unavoidable in steel and is capable of forming nitrides (see, for example, Yashiki at para. [0067]), there is no universal requirement that the nitrides formed are always aluminum nitrides (AlN) and that AlN precipitates, if produced, are retained in the steel at the completion of the fabrication process. Thus, the AlN precipitate limitation lacks proper antecedent basis because AlN formation/existence is not formally introduced in claim 8, which as currently drafted assumes the AlN precipitates already exist in the steel sheet. Therefore, the rejection is maintained.
Applicant argues that Yashiki does not meet the claimed invention because it discloses broad compositional ranges that do not enable a person of ordinary skill in the art to reasonably predict properties (e.g., iron loss or magnetic flux density) within the claimed range. Applicant argues that Yashiki, Takeda, or Lee does not disclose any specific example that satisfies the claimed steel composition.
In response, this is not persuasive because the teachings of a patent document are relevant for all the information contained therein. MPEP § 2123(I). This includes the existence of a prima facie case of obviousness where there are overlapping ranges. See MPEP § 2144.05(I). A prima facie case of obviousness of overlapping ranges can be rebutted by showing criticality of range(s) (MPEP § 2144.05(III); however, no such showing has been provided.
With respect to predicting properties, Yashiki is concerned with controlling iron loss through the control of alloying elements C, Si, Mn, Al, S, N, Sn, and Sb (para. [0045], [0053]-[0061], [0064]-[0067], [0082], [0093]). Yashiki is also concerned with magnetic flux density (para. [0057], [0059], [0082], [0093]). Results of properties of the various test steels are documented in Table 2 of Yashiki. These concerns are consistent with the concerns in the field of Applicant’s invention. Therefore, based on the teachings of at least Yashiki, a person of ordinary skill in the art would be enabled to reasonably predict magnetic properties based on specific steel compositions.
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 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 April 13, 2026
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