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 .
Status of Claims
Claim 11 is amended. Claims 1-10 and 13-18 are withdrawn. Claims 11-12 are examined herein.
Status of Previous Rejections
The rejections of claims 11-12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been withdrawn in view of the amendment.
The rejections of claims 11-12 under 35 U.S.C. 103 as being unpatentable over Lee (US 2023/0045797), and further in view of Natori (WO 2020/149405A1, US 12,283,845 is used as translation) have been withdrawn in view of the applicant’s argument.
The rejections of claims 11-12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-6 of copending Application No. 18/279342 (US 2024/0141463) are maintained.
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 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-7 of copending Application No. 18/279342 (US 2024/0141463). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5-7 of copending Application No. 18/279342 teaches a non-oriented electrical steel sheet with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in claims 5-7 of copending Application No. 18/279342 to produce a steel composition that meets the recited composition in claim 11. See MPEP 2144.05 I.
Claims 5-7 of copending Application No. 18/279342 disclose a composition that meets the recited formula (1).
Claims 5-7 of copending Application No. 18/279342 further disclose the ranges of Styl/Stot, S100/Stot, S100/Stra, d100/dave, d100/dtyl. and d100/dtra overlapping the recited ranges of Styl/Stot, S100/Stot, S100/Stra, d100/dave, d100/dtyl. and d100/dtra.
Element
Claim 1
(mass %)
US’342
(mass %)
Overlap
(mass %)
C
≤0.01
≤0.01
≤0.01
Mn+Ni+Co+Pt+Pb+Cu+Au
<2.5
<2.5
<2.5
Si
1.5-4.0
1.5-4.0
1.5-4.0
Al
0-4.0
0.0001-3
0.0001-3
P
≤0.4
≤0.4
≤0.4
S
≤0.04
≤0.04
≤0.04
N
≤0.01
≤0.01
≤0.01
Sn
0-0.4
0-0.4
0-0.4
Sb
0-0.4
0-0.4
0-0.4
Cr
0.001-0.1
0.001-0.1
0.001-0.1
B
0-0.005
0-0.005
0-0.005
O
0-0.02
0-0.02
0-0.02
Mg+Ca+Sr+Ba+Ce+La+Nd+Pr+Zn+Ca
0.00-0.01
0-0.01
0-0.01
Fe + Impurities
Balance
Balance
Balance
Formula
Claim 1+2
(mass %)
US’342
(mass %)
Overlap
(mass %)
Styl/Stot
<0.55
≤0.7
<0.55
S100/Stot
>0.3
≥0.2
>0.3
S100/Stra
≥0.6
≥0.55
≥0.6
d100/dave
≥0.95
>1
>1
d100/dtyl
≥0.95
>1
>1
d100/dtra
≥0.95
>1
>1
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). See MPEP 2144.05 I. Thus, claims 11-12 are obvious over claims 5-7 of copending Application No. 18/279342.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 07/07/2026 have been fully considered but they are not persuasive.
The applicants argued that Claims 11 and 12 are provisionally rejected on the ground of nonstatutory double patenting as allegedly being unpatentable over claims 5-6 of copending Application No. 18/279,342 (hereinafter "App. '342"). The Examiner has not shown that the presently claimed features, including formulas (22)-(24), would be necessarily satisfied by the prior art.
In response, as set forth above, claims 5-7 of copending Application No. 18/279342 teach composition and formula overlapping the recited composition and formula in claims 11-12. 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). See MPEP 2144.05 I. Thus, claims 11-12 are obvious over claims 5-7 of copending Application No. 18/279342.
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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 5712721401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOWEI SU/ Primary Examiner, Art Unit 1733
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