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
Applicant's election with traverse of Group II, claim 1-7 and 9-20, drawn to a method of manufacturing a non-oriented electrical steel sheet in the reply filed on 12/22/2025 is acknowledged. The traversal is on the ground(s) that "it is respectfully submitted that the search and examination of the entire application could be made without serious burden". This is not found persuasive because independent and distinct analysis and its associated requirement concerning search burden is not a feature of the unity of invention analysis for restrictions under 35 USC 371, see MPEP § 1893(d).
The requirement is still deemed proper and is therefore made FINAL.
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1-7 and 9-20 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 1-7 and 9-20, instant claim 1 was amended to “performing a final heat treatment [[by]] that includes heating, soaking, and cooling the processed steel sheet”. The term “includes” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP § 2111.03. However, instant specification teaches “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” and does not teach that any other steps could be part of the final heat treatment as recited in the instant claim.
Newly added claim 14 recites “The method of claim 1, wherein the hot rolling of steel slab includes winding the heated steel slab at a temperature ranging from 650° C. to 800° C. and then cooling the wound steel slab”. However, the instant specification teaches “Here, in order to prevent the oxide layer from being excessively generated and from hindering the grain growth, the hot-rolled steel sheet may be wound at a temperature ranging from 650° C. to 800° C. and then may be cooled in a coil state in the air.” Therefore, the specification teaches explicit steps of the hot-rolled steel sheet being wound and does not teach that any other steps could be part of it as recited in the instant claim.
Newly added claim 20 recites “The method of claim 1, wherein performing the insulation coating on the cold rolled steel sheet includes applying at least one of an organic film, an inorganic film, or an organic-inorganic composite film onto the cold rolled steel sheet.” However, the instant specification teaches “Insulation Coating and Processing In the insulation coating and processing (S140), the steel sheet undergoing the cold rolling or the recrystallization heat treatment is insulation-coated and then processed. In this regard, the insulation coating is a treatment with organic, inorganic and organic-inorganic composite films or coating of other insulating films.” Therefore, the specification teaches explicit steps and does not teach that any other steps could be part of it as recited in the instant claim.
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 1-7 and 9-20 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 1-7 and 9-20, Claim 1 recites the limitations "the hot-rolled steel sheet", "the pickled steel sheet", "the cold rolled steel sheet", "the insulation-coated steel sheet", "the processed steel sheet" in lines 12-20. There is insufficient antecedent basis for these limitations in the claims.
Claim 1 recites “performing an insulation coating on the cold rolled steel sheet and processing the insulation-coated steel sheet”. However, it is unclear what is meant by “processing” the sheet as it does not include any process steps to indicate what action is being performed or what “process” is being undertaken. Claims 2-7 and 9-20 are dependents of claim 1, do not resolve the issue and thereby also indefinite.
Claim 9 recites “The method of claim 1, wherein after the final heat-treatment, the electrical steel sheet has an iron loss value ranging from 2 to 5% in both W10/400 and W15/50 measurement conditions”. It is unclear what is being required by the claim as the iron loss typically has the units of W/kg and not percentage.
Claim 14 recites “The method of claim 1, wherein the hot rolling of steel slab includes winding the heated steel slab at a temperature ranging from 650° C. to 800° C. and then cooling the wound steel slab”. It is unclear how a slab can be wound as coiling is usually associated with sheet in the art.
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 1-7 and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0357101 A1 of Zaizen (US’101).
Regarding claims 1, 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 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 4, 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”. 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 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 claims 9 and 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 a) iron loss percentage (claim 9), b) tensile strength and hardness (claim 10) recited in the instant claims 9 and 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).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
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. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent teach a method of making a non-oriented electrical steel sheet with substantially identical composition, properties and method steps.
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 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teach a method of making a non-oriented electrical steel sheet with substantially identical composition, properties and method steps.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733