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
Claims 1-5 and 7-19 are pending. Claims 1-5, 7-10 and 15-19 are presented for this examination. Claims 11-14 are withdrawn. Claims 15-19 are newly added. Claim 1 is amended. Claim 6 is cancelled.
Status of Previous Rejections
All prior art rejections are maintained from previous office action 03/09/2026.
New grounds of rejections are rendered in view of newly added claims 15-19.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 09/18/2025, 07/02/2025, 12/04/2024, 10/22/2024 and 06/21/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 1-5, 7-10 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2007039721A)
As for claims 1-4 and 15-19, Tanaka discloses a non-oriented electrical steel sheet for rotor. (Title) The electrical steel sheet comprises overlapping compositions of each element as illustrated in Table 1 below.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Hence, based on the teaching of Tanaka as illustrated in Table 1 below, it would have been obvious to one skill in the art, at the time the invention is made, to select the amount of each element within the ranges disclosed by Tanaka in order to arrive at steel sheet of claimed invention.
Table 1
Element
Applicant
(weight %)
Tanaka et al.
(weight %)
Overlap
(weight %)
Si
2.1-3.8
1-3.5
2.1-3.5
Mn
0.001-0.6
0.05-3
0.05-0.6
Al
0.001-0.6
0.2-2.5
0.2-0.6
Se
0.0005-0.003
0.0005-0.3
0.0005-0.003
Ge
0.0003-0.001
<=0.5
0.0003-0.001
P(Claim 2)
0.001-0.1
<=0.3
0.001-0.1
C(Claim 2)
0.0005-0.01
<=0.02
0.0005-0.01
S(Claim 2)
0.001-0.01
<=0.04
0.001-0.01
N(Claim 2)
0.0001-0.01
<=0.02
0.0001-0.01
Ti(Claim 2)
0.0005-0.005
>=0.01
0.01 is close to 0.005
Sn(Claim 2)
0.001-0.08
<=0.5
0.001-0.08
Sb(Claim 2)
0.001-0.08
<=0.5
0.001-0.08
Cu(Claim 3)
<=0.07
0.01-1
0.01-0.07
Mo (Claim 4)
<=0.01
0.005-4
0.005-0.01
Si (Claim 15)
2.5-3.2
1-3.5
2.5-3.2
Mn (Claim 16)
0.05-0.35
0.05-3
0.05-0.35
Al (Claim 17)
0.07-0.45
0.2-2.5
0.2-0.45
Se (Claim 18)
0.0005-0.002
0.0005-0.3
0.0005-0.002
P (Claim 19)
0.001-0.08
<=0.3
0.001-0.08
With respect to instant claim 1 amendment, it is an inherent structure and property limitations due to same steel sheet compositions and similar process of making according to MPEP 2112.01.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
In the instant case, since the steel sheet product of Tanaka has compositions that meet the instant application composition and is made from a similar process steps of reheating, hot rolling, hot rolled annealing, cold rolling and final annealing as required by instant application, it is therefore reasonable to believe that the claimed structure and property limitations would have naturally flowed following the suggestion of Tanaka absent clear and convincing evidence of the contrary. See MPEP 2112.01 I.
As for claims 5 and 7-10, they are all interpreted as inherent structure and property limitations due to same steel sheet compositions and similar process of making according to MPEP 2112.01. Hence, they are rejected for the same reason set forth in the rejection of claim 1 amendment above.
Claim(s) 1-5, 7-10 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Oda (US 6,139,650) in view of Tanaka (JP2007039721A).
As for claims 1-4 and 15-19, Oda discloses a non oriented electromagnetic steel sheet having broad ranges overlapping compositions as illustrated in Table 2 below. (Abstract and claims)
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Table 2
Element
Applicant
(weight %)
Oda et al.
(weight %)
Embodiment 2
Overlap
(weight %)
Si
2.1-3.8
<=4.5
2.1-3.8
Mn
0.001-0.6
0.05-1.5
0.05-0.6
Al
0.001-0.6
0.1-1
0.1-0.6
Se
0.0005-0.003
0.0005-0.002
0.0005-0.002
Ge
0.0003-0.001
P(Claim 2)
0.001-0.1
<=0.2
0.001-0.1
C(Claim 2)
0.0005-0.01
<=0.005
0.0005-0.005
S(Claim 2)
0.001-0.01
<=0.001
0.001
N(Claim 2)
0.0001-0.01
<=0.005
0.0001-0.005
Ti(Claim 2)
0.0005-0.005
<=0.005
0.0005-0.005
Sn(Claim 2)
0.001-0.08
0.002-0.1
0.001-0.08
Sb(Claim 2)
0.001-0.08
0.001-0.05
0.001-0.05
Cu(Claim 3)
<=0.07
0
0
Mo (Claim 4)
<=0.01
0
0
Si (Claim 15)
2.5-3.2
<=4.5
2.5-3.2
Mn (Claim 16)
0.05-0.35
0.05-1.5
0.05-0.35
Al (Claim 17)
0.07-0.45
0.1-1
0.1-0.45
Se (Claim 18)
0.0005-0.002
0.0005-0.002
0.0005-0.002
P (Claim 19)
0.001-0.08
<=0.2
0.001-0.08
Oda does not expressly disclose (1) presence of Ge as required by instant claim 1 and (2) wherein a ratio of {tensile strength (MPa) -yield strength (MPa)} to an average grain diameter (pm) of the non-oriented electrical steel sheet is 1.10 to 1.40 as required by the amendment of claim 1.
Regarding (1), Tanaka discloses a similar non oriented electrical steel sheet composition as Oda. Tanaka expressly discloses presence of Ge at 0.5% or less for the benefit of increasing strength through grain boundary segregation. ([0050]) Hence, Ge at 0.5% or less overlaps instant claim 1 required Ge 0.0003-0.001%.
Hence, based on the teaching of Tanaka, it would have been obvious to one skill in the art, to add Ge amount within the range as suggested by Tanaka, in the steel sheet of Oda as Tanaka discloses presence of Ge increases strength through grain boundary segregation.
Regarding (2), it is rejected for the same reason set forth in the rejection of claim 1 amendment over Tanaka above.
As for claims 5 and 8-9, they are inherent structure and property limitations of claimed steel sheet. Hence, they are rejected for the same reasons as set forth in the rejection of claims 5 and 8-9 above over Tanaka.
As for claim 7, Oda expressly discloses crystal grain size of the steel sheet is 70-200 microns which overlaps claimed 80-130 microns.
As for claim 10, Oda expressly discloses in Table 8 Inventive Steel Nos 7-13, 15-21, 24-26 all having W15/50 below 2.2 W/kg as required by instant claim.
Respond to Argument
Applicant’s argument filed on 03/09/2026 is considered but is not persuasive for the following reasons:
Applicant argues that Tanaka and Oda, either alone or in combination, fail to teach or suggest the clamed feature “a ratio of {tensile strength (MPa) - yield strength (MPa)} to an average grain diameter(pm) of the non-oriented electrical steel sheet is 1.10 to 1.40”. It should be noted claimed feature is a resulting effect due to combination of steel compositions and process of making. Examiner has presented evidence that Tanaka’s steel has similar compositions and similar process of making. Hence, claimed feature would have naturally flowed following the suggestion of Tanaka absent clear and convincing evidence of the contrary. See MPEP 2112.01 I. That is, the burden is now shifted to applicant to present evidence of the contrary. Since applicant fails to meet the burden, prima facie case of obviousness is maintained.
Applicant also argues that present embodiment distinctly defines the contents of Si, Al, Mn, and especially Se, and Ge, along with a specific ratio of {tensile strength (MPa) - yield strength (MPa)} to an average grain diameter (pm). When all the limitations of the present embodiment are met, the magnetic properties and mechanical strengths are significantly enhanced, as demonstrated in Tables 1 and 2 of the present specification. Argument is not persuasive because there is no criticality of specific ratio of {tensile strength (MPa) - yield strength (MPa)} to an average grain diameter (pm) on the magnetic properties and mechanical strengths. For example. Specimen A1 has specific ratio of 1.5, which is outside claimed range of 1.1-1.4 still has iron loss of 2.04, YS of 398 MPa and TS of 536 MPa as required by instant claim 8-10. That is, no evidence in Tables 1 and 2 of instant applicant demonstrates claimed specific ratio is critical to significantly enhance the magnetic properties and strength.
Applicant then argues that Tanaka merely mentions Se and Ge as potential elements that may be added, without providing any examples including Se and G, argument is not persuasive because according to MPEP 2123 II, mere disclosed examples do not (emphasis added) constitute a teaching away from a broader disclosure because such mere disclosure does not criticize, discredit or otherwise discourage the claimed composition range. In the instant case, nothing in Tanaka expressly criticize, discredit or discourage the overlapping range for Se and Ge. In the instant case, where is the teaching away of claimed Se and Ge amount in Tanaka? The answer is NONE. Second, Tanaka explicitly discloses Se is preferably 0.0005% or more and 0.3% or less. And Ge is 0.001 or more and 0.5% or less. ([0089] That is, Tanaka discloses Se and Ge are required element, not just potential element.
Applicant lastly argues that Oda neither describes nor suggests the inclusion of Ge. Consequently, neither Tanaka nor Oda discloses a steel alloy that satisfies all the steel grade compositions of the present embodiment. Argument is not persuasive because applicant cannot argues reference individually while rejection is based on combination of Oda and Tanaka. Second, whether Tanaka or Oda discloses a steel alloy that satisfies all the steel grade compositions of the present embodiment is incommensurate in scope of current rejection which is a 103 due to overlapping, not 102 anticipatory. Hence, absent criticality of claimed Se and Ge, prima facie case of obviousness is maintained.
Applicant is invited to submit 132 declaration demonstrating criticality of Se and Ge.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733