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 .
Election/Restrictions & Status of Claims
Claims 1-3, 5-7, and 10-20 are examined in the instant action of which 1, 6-7, 14, 16-18 and 20 were amended in Applicant's reply.
Claim 8 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/22/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-3, 5-7, and 10-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-3, 5-7, and 10-20, claim 1 was amended to recite “A method of manufacturing a non-oriented electrical steel sheet, the method comprising: reheating and hot rolling a steel slab to form the steel sheet, the steel slab including:” However, instant specification teaches that the non-oriented electrical steel sheet is attained by a series of steps that includes reheating and hot rolling amongst other steps.
[0056] According to one embodiment of the present invention, a manufacturing method including hot rolling (S110), hot rolling annealing heat-treatment (S120), cold rolling (S130), insulation coating and processing (S140), and final heat treatment (S150) is provided. Specifically, there is provided a method of a non-oriented electrical steel sheet, which includes (a) reheating a steel slab, which includes 0.05 wt % or less C, 1.0 wt % to 3.5 wt % Si, 0.2 wt % to 0.6 wt % Al, 0.02 wt % to 0.20 wt % Mn, 0.01 wt % to 0.20 wt % P, 0.01 wt % or less S, and the balance of Fe and inevitable impurities, and then performing hot rolling on the steel slab; (b) performing hot rolling annealing heat-treatment and pickling on the hot rolled steel sheet; (c) performing cold rolling on the pickled steel sheet; (d) performing insulation coating on the cold rolled steel sheet, and then processing the insulation-coated steel sheet; and (e) performing final heat treatment by heating, soaking, and cooling the processed steel sheet, wherein the soaking is maintained and performed at a temperature of 850°C or higher for 1 to 30 minutes.
See also [0057]-[0090] of the instant specification.
Therefore, the claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-3, 5-7, and 10-20, claim 1 in part was amended to recite “performing an insulation coating on the after cold rolling and processing the into a form of parts for a motor; and”. However, instant specification does not teach “processing the steel sheet into a form of parts for a motor”.
The specification teaches as follows regarding the parts for a motor.
The present invention is directed to providing a non-oriented electrical steel sheet with improved magnetic properties of an electrical steel sheet by improving a final heat treatment process after processing the electrical steel sheet into parts for a motor, and a method of manufacturing the same.
Typically, a non-oriented electrical steel sheet is processed in the order of hot rolling, hot rolling annealing heat-treatment, and cold rolling. In this way, in order to use the manufactured non-oriented electrical steel sheet as motor parts (a stator and a rotor), insulation coating and processing are performed on the manufactured non-oriented electrical steel sheet. On the other hand, the processing process increases mechanical and thermal stress on a cut cross section of a material, thereby deteriorating inherent magnetic properties of the electrical steel sheet. For example, a magnetic domain magnetization polarity direction is magnetized in one direction at the processed cut portion so that the processed cut portion has a local polarity. In order to remove the stress generated during the processing, final heat treatment is performed.
According to the non-oriented electrical steel sheet of the present invention, costs are reduced and magnetic properties are improved through constant heat treatment and process optimization so that a non-oriented electrical steel sheet that can be efficiently used as parts for a motor compared to process costs may be manufactured. Thus, it is possible to implement high efficiency of the motor.
In the present invention, it is possible to improve the magnetic properties by performing final heat treatment at a high temperature after processing the electrical steel sheet into the parts for the motor and suppress degradation of an insulation coating layer.
Therefore, the claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-3, 5-7, and 10-20 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.
Regarding claims 1-3, 5-7, and 10-20, Claim 1 was amended to recite “A method of manufacturing a non-oriented electrical steel sheet, the method comprising: reheating and hot rolling a steel slab to form the steel sheet, the steel slab including:” However, it is unclear how one can attain non-oriented electrical steel sheet which one skilled in the art recognizes has certain magnetic properties would be attained after reheating and hot rolling a steel slab with a composition. Claims 2-3, 5-7, and 10-20 depend on claim 1, do not resolve the issue and thereby are also indefinite.
Regarding claims 1-3, 5-7, and 10-20, instant claim 1recite the term “the sheet”. As there exists an instance of “a sheet” and multiple instances of “the sheet”, it is unclear what these refers to. Claims 2-3, 5-7, and 10-20 depend on claim 1, do not resolve the issue and thereby are also indefinite.
Regarding claim 6, instant claim recites “includes one or more copper (Cu), nickel (Ni) or chromium (Cr)” and followed by ranges for these elements. However, the ranges for all of these elements recite an upper limit followed by the term “or less” which means it allows for a value of zero. Therefore, it is unclear if instant claim requires the presence of these elements or whether it can be absent since the latter limitation allows a value of zero for these elements.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
0.05 or less
not more than 0.005
Si
1.0 – 3.5
2.5 – 3.2 claim 11
not more than 4
Al
0.2 – 0.6
0.3 – 0.5 claim 12
not more than 2
Mn
0.02 – 0.20
0.03 – 2
P
0.01 – 0.20
not more than 0.2
Cu, Ni, Cr
Claim 6: one or more of 0.03 or less of Cu, 0.03 or less Ni and 0.05 or less Cr
-
Fe +
impurities
Balance
Balance
Claims 1-3, 5-7, and 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0357101 A1 of Zaizen (US’101).
Regarding claims 1-2, 6 and 11-12, US 2015/0357101 A1 of Zaizen (US’101) teaches {abstract, [0001], [0008]-[0012], [0021]-[0047]} “non-oriented electrical steel sheet having excellent magnetic properties” and a method of making it having a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims 1, 6 and 11-12 overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. The limitation of claim 6 is met as it recites “or less” which includes a value of zero. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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.
Regarding method steps of claims 1 and 2, the prior art teaches that the method of manufacturing the non-oriented steel sheet is as follows. [0049] In the production method of the non-oriented electrical steel sheet according to the invention, a steel having the above chemical composition adapted to the invention is first melted by a usual refining process using a converter, am electric furnace, a vacuum degassing device or the like and shaped into a steel slab by a continuous casting method or an ingot making-blooming method. [0050] Then, the steel slab is hot rolled by a usual method to form a hot rolled sheet and subjected to a hot band annealing as required. The hot band annealing is not an essential step in the invention, but is effective for improving the magnetic properties, so that it is preferable to be adopted properly. In case of the hot band annealing, an annealing temperature is preferable to be a range of 750-1050°C When the annealing temperature is lower than 750°C, a non-recrystallized texture remains and hence there is a fear that the effect by the hot band annealing is not obtained, while when it exceeds 1050°C, a great burden is applied to the annealing equipment. It is more preferably within a range of 800-1000°C [0051] The steel sheet after the hot rolling or after the hot band annealing followed to the hot rolling is pickled and thereafter subjected to a single cold rolling or two or more cold rollings sandwiching an intermediate annealing therebetween to obtain a cold rolled sheet having a final sheet thickness. In this case, the rolling conditions such as rolling reduction and the like may be same as in the usual production conditions of the non-oriented electrical steel sheet. [0052] Then, the steel sheet after the cold rolling is subjected to a recrystallization annealing. The recrystallization annealing is a most important step in the invention. As a heating condition thereof, rapid heating is necessary to be performed up to a recrystallization temperature zone, concretely the rapid heating is necessary to be performed in a zone of room temperature to 740° C at an average heating rate of not less than 100°C/s. Moreover, an end-point temperature of the rapid heating is 740°C being a temperature of completing at least recrystallization, but may be a temperature exceeding 740°C However, as the end-point temperature becomes higher, an equipment cost or power cost required for the heating is increased, which is not favorable in the cheap production of the sheet. The method of performing the rapid heating at a rate of not less than 100°C/s is not particularly limited, but a method such as an electric heating method, an induction heating method or the like can be used preferably. [0053] Thereafter, the steel sheet recrystallized by the rapid heating is properly subjected to a soaking annealing and cooled to obtain a product sheet. Moreover, the soaking temperature, heating rate from the recrystallization temperature to the soaking temperature and soaking time are not particularly limited, but are sufficient to be same as in the conditions used in the production of the usual non-oriented electrical steel sheet. For example, it is preferable that the heating rate from 740°C to the soaking temperature is 1-50°C/s, and the soaking temperature is 740-950°C and the soaking time is 5-60 seconds. More preferably, the soaking temperature is a range of 740-900°C Also, cooling condition after the soaking annealing is not particularly limited. These teachings read on all of the recited limitations of the method steps of instant claims 1 and 2.
Regarding the amended limitation “processing the steel sheet into a form of parts for a motor” of instant claim 1, the prior art teaches “[0001] This invention relates to a method for producing a semi-processed non-oriented electrical steel sheet, and more particularly to a method for producing a semi-processed non-oriented electrical steel sheet having excellent magnetic properties.” “[0002] In the recent global trend for energy-saving, electric instruments are strongly desired to have a higher efficiency. Since the non-oriented electrical steel sheets are widely used as a core material for the electric instruments, in order to make the efficiency of the electric instrument higher, it is necessary that the non-oriented electrical sheet is high in the magnetic flux density and low in the iron loss.” Therefore, as the prior art teaches that it is a semi-processed non-oriented electrical steel sheet, it would meet the form of parts for a motor of the instant claim. In the alternative, it 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 to take the method of making the non-oriented steel sheet of the prior art and form into parts for a motor since it is known in the art to make stator and rotor cores in motors using non-oriented electrical steel. In the alternative, it 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 to take the method of making the non-oriented steel sheet of the prior art and form into parts for a motor since the non-oriented electrical steel sheets are widely used as core material as shown in the prior art “the non-oriented electrical steel sheets are widely used as a core material for the electric instruments”.
Regarding the amended limitation of “the heating during the final heat treatment is performed by heating at a rate of 300°C to 600°C per hour for 1.4 to 3.2 hours” of instant claim 1, the prior art teaches [0053] “Moreover, the soaking temperature, heating rate from the recrystallization temperature to the soaking temperature and soaking time are not particularly limited, but are sufficient to be same as in the conditions used in the production of the usual non-oriented electrical steel sheet. For example, it is preferable that the heating rate from 740°C to the soaking temperature is 1-50°C/s, and the soaking temperature is 740-950°C and the soaking time is 5-60 seconds”. The recited heating rate of instant claim of 300°C to 600°C per hour translates to 0.0833 to 0.1667 °C/s. However, the prior art teaches “[0053] “Moreover, the soaking temperature, heating rate from the recrystallization temperature to the soaking temperature and soaking time are not particularly limited, but are sufficient to be same as in the conditions used in the production of the usual non-oriented electrical steel sheet.” Therefore, it 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 to take the method of making the non-oriented steel sheet of the prior art and incorporate a slow heating rate from 740°C to the soaking temperature thereby resulting in the instant claims. Doing so would be advantageous as the slow heating rate for a period of a long time would ensure homogeneity of temperature and properties in the steel sheet and also would [0053] reduce equipment costs associated with rapid heating.
Regarding claim 3, it is noted that the prior art does not explicitly teach the Ar atmosphere. However, one skilled in the art recognizes that employing Ar atmosphere for heat treatment of non-oriented steel sheet is routine in the art and therefore the recited limitations would be obvious to one of ordinary skill in the art.
Regarding claim 5, the prior art does not teach cooling to room temperature at 100°C/hr as recited in the instant claim. It is noted that the rate recited is in line with natural cooling. Although the prior art does not teach cooling post the soaking treatment, the prior art teaches that the steel sheets are being [0002]-[0003] utilized for core materials which means that the sheet is invariably cooled after the soaking treatment to make the final product. Therefore, it 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 to take the method of making the non-oriented steel sheet of the prior art and incorporate a natural cooling to room temperature after the soaking treatment so that it is ready to be used for core products and employing a natural cooling would save costs of processing of employing quenching medium and equipment.
Regarding claim 7 and 16-17, the prior art teaches {[0018], Table 1} 0.20mm, 0.35 mm thickness [0051] “The steel sheet after the hot rolling or after the hot band annealing followed to the hot rolling is pickled and thereafter subjected to a single cold rolling or two or more cold rollings sandwiching an intermediate annealing therebetween to obtain a cold rolled sheet having a final sheet thickness. In this case, the rolling conditions such as rolling reduction and the like may be same as in the usual production conditions of the non-oriented electrical steel sheet.” thereby reading on the thickness and the cold rolling ratios as recited in the instant claims.
Regarding claim 13, the prior art teaches [0018] “reheated at 1100°C for 30 minutes” [0054] “steel slab is reheated at 1080°C for 30 minutes” which reads on the reheating temperature. It is noted that the prior art teaches 30 minutes for reheating in the two specific examples. However, one skilled in the art recognizes that the time of reheating of the slab to the temperature is dependent on the type of heating as selected by the user. Therefore, it 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 to take the method of making the non-oriented steel sheet of the prior art and integrate a slower heating for the reheating step as the slow heating rate for a period of a long time would ensure homogeneity of temperature and properties in the steel sheet and also would reduce equipment costs associated with rapid heating.
Regarding claim 14, please see the 112 rejections above. Although the prior art does not teach of winding or coiling the hot rolled steel sheet, it 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 to take the method of making the non-oriented steel sheet of the prior art and wind or coil the hot rolled steel sheet at the ordinary or customary steel coiling temperatures to create a more compact, manageable and transportable form of the steel sheet for further processing. The range of winding temperature recited in the instant claim is customary in the art.
Regarding claim 15, the prior art teaches [0050] “In case of the hot band annealing, an annealing temperature is preferable to be a range of 750-1050° C” thereby meeting the instant recited limitations.
Regarding claims 18-19, the prior art teaches “[0052] Then, the steel sheet after the cold rolling is subjected to a recrystallization annealing. The recrystallization annealing is a most important step in the invention. As a heating condition thereof, rapid heating is necessary to be performed up to a recrystallization temperature zone, concretely the rapid heating is necessary to be performed in a zone of room temperature to 740°C at an average heating rate of not less than 100°C/s. Moreover, an end-point temperature of the rapid heating is 740°C being a temperature of completing at least recrystallization, but may be a temperature exceeding 740°C However, as the end-point temperature becomes higher, an equipment cost or power cost required for the heating is increased, which is not favorable in the cheap production of the sheet. The method of performing the rapid heating at a rate of not less than 100°C/s is not particularly limited, but a method such as an electric heating method, an induction heating method or the like can be used preferably. [0053] Thereafter, the steel sheet recrystallized by the rapid heating is properly subjected to a soaking annealing and cooled to obtain a product sheet. Moreover, the soaking temperature, heating rate from the recrystallization temperature to the soaking temperature and soaking time are not particularly limited, but are sufficient to be same as in the conditions used in the production of the usual non-oriented electrical steel sheet. For example, it is preferable that the heating rate from 740°C to the soaking temperature is 1-50°C/s, and the soaking temperature is 740-950°C and the soaking time is 5-60 seconds. More preferably, the soaking temperature is a range of 740-900°C Also, cooling condition after the soaking annealing is not particularly limited.” thereby meeting the recited limitations of the instant claims.
Regarding claim 20, it is noted that the prior art does not explicitly teach the insulation coating as recited in the instant claim. One skilled in the art recognizes that organic and inorganic insulation coatings are applied to electrical steel to improve electrical resistance and enhance corrosion prevention properties. Therefore, it 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 to take the method of making the non-oriented steel sheet of the prior art and integrate an organic or inorganic coating to improve electrical resistance and enhance corrosion prevention properties of the steel sheet.
Regarding claim 10, although US’101 teaches that its steel sheet has magnetic flux density B50 values ranging from 1.75 to 1.78 T and iron loss W15/50 ranging from 1.82-2.55 W/kg, it is noted that the prior art US’101 is silent regarding its alloy having the properties of b) tensile strength and hardness (claim 10) recited in the instant claim 10. 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 alloy 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 structure or composition (see compositional analysis above) and b) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0056]-[0090]; Prior art: [0048]-[0053]}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy 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).
Response to Arguments
Applicant's arguments filed 16 APR 2026 have been fully considered but they are not persuasive.
Regarding the arguments directed to the form of the motor and the processing of it, as noted above, as the prior art teaches that it is a semi-processed non-oriented electrical steel sheet, it would meet the form of parts for a motor of the instant claim. In the alternative, it 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 to take the method of making the non-oriented steel sheet of the prior art and form into parts for a motor since it is known in the art to make stator and rotor cores in motors using non-oriented electrical steel. In the alternative, it 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 to take the method of making the non-oriented steel sheet of the prior art and form into parts for a motor since the non-oriented electrical steel sheets are widely used as core material as shown in the prior art “the non-oriented electrical steel sheets are widely used as a core material for the electric instruments”.
Regarding the heating rate, it 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 to take the method of making the non-oriented steel sheet of the prior art and incorporate a slow heating rate from 740°C to the soaking temperature thereby resulting in the instant claims. Doing so would be advantageous as the slow heating rate for a period of a long time would ensure homogeneity of temperature and properties in the steel sheet and also would [0053] reduce equipment costs associated with rapid heating.
As noted above, the prior art renders the instant claims obvious. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
Amendments to the instant claims along with Applicant’s arguments, see pp. 13-15, filed 16 APR 2026, with respect to “Claims 1-7 and 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. US 12,173,379 B2” have been fully considered and are persuasive. The rejection of 22 JAN 2026 has been withdrawn.
Amendments to the instant claims along with Applicant’s arguments, see pp. 13-15, filed 16 APR 2026, with respect to “Claims 1-7 and 9-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/267,689” have been fully considered and are persuasive. The rejection of 22 JAN 2026 has been withdrawn.
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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