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
Applicant’s election without traverse of Group I (Group III) in the reply filed on 03/02/2026 is acknowledged. Claims 1-10 and 13-18 are withdrawn. Claims 11-12 are examined herein.
Claim Rejections - 35 USC § 112
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 11-12 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.
Claim 11 recites “EBSD observation” in line 22. Please spell out the full term of EBSD to improve claim clarity. Appropriate correction is required.
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.
Claims 11-12 are rejected 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).
Regarding claims 11 and 12, Lee discloses (Abstract; [0030] to [0060]) 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 Lee to produce a steel composition that meets the recited composition in claim 11. The recited amount of O in claim 11 is a well-known impurity level oxygen in non-oriented electrical steel. It would be obvious to one of ordinary skill in the art to control the O level as low as possible in order to make a non-oriented electrical steel having good magnetic properties.
The left side of formula (1) calculated based on the composition of Specimen A1 to A4 in Lee is in the range of -4 to -3, which meets the recited formula (1).
Element
Claim 1
(mass %)
Lee
(mass %)
Overlap
(mass %)
C
≤0.01
≤0.005
≤0.005
Mn+Ni+Co+Pt+Pb+Cu+Au
<2.5
0.05-0.55 Mn
0-0.05 Ni
0-0.01 Cu
0.05-0.61
Si
1.5-4.0
1.5-4.0
1.5-4.0
Al
0-4.0
0.5-1.5
0.5-1.5
P
≤0.4
≤0.02
≤0.02
S
≤0.04
≤0.005
≤0.005
N
≤0.01
≤0.005
≤0.005
Sn
0-0.4
0-0.1
0-0.1
Sb
0-0.4
0-0.1
0-0.1
Cr
0.001-0.1
0-0.05
0.001-0.05
B
0-0.005
0-0.002
0-0.002
O
0-0.02
impurity
impurity
Mg+Ca+Sr+Ba+Ce+La+Nd+Pr+Zn+Ca
0.00-0.01
0-0.005 Mg
0-0.005
Fe + Impurities
Balance
Balance
Balance
Lee is silent on Styl/Stot, S100/Stot, S100/Stra, d100/dave, d100/dtyl and d100/dtra as recited in claims 11 and 12. However, Styl/Stot, S100/Stot, S100/Stra, d100/dave, d100/dtyl and d100/dtra depend on the steel composition and the method of making the steel. Lee discloses a method of making the steel sheet, comprising: heating the slab to 1200° C or less, hot-rolling to manufacture a hot-rolled sheet with a finish rolling temperature of 800 to 1000° C, coiling the hot rolled steel sheet at temperatures of 700° C or less, annealing the hot-rolled-sheet at 850 to 1150° C for 100 seconds, subjecting the annealed hot-rolled sheet to cold rolling at reduction ratio of 85-95% (calculated based on the thickness before cold rolling is 2 mm and the thickness after cold rolling is 0.1-0.3 mm), final annealing is performed on the cold rolled steel sheet at 700-1050 ºC for 50-90 seconds followed by cooling to 100 ºC or less ([0082] to [0093]), which overlap the processing temperature and time disclosed in instant Specification (see [0091] to [0095] of instant Specification).
The difference between the method of Lee and the method of instant Specification is that Lee does not disclose a skin pass step and a heat treatment step after the skin pass step. Natori teaches a method of making a non-oriented electrical steel that is analogous to the method of Lee and discloses that performing skin pass at 1-10% on the cold-rolled steel sheet is beneficial for stain induced grain growth (Col 10, Ln 1 to Col 12, Ln 55). Thus, it would be obvious to one of ordinary skill in the art to perform skin pass to the cold-rolled steel sheet as taught by Natori in the process of Lee in order to promote stain induced grain growth as disclosed by Natori. The reduction ratio of skin pass disclosed by Natori overlaps the reduction ratio of skin pass. Natori discloses after the skin pass step, the steel is annealed at 750-900 ºC for 0.5-5 hours (Col 12, Ln 15-25), which meets the annealing conditions disclosed in instant Specification (see [0099] of instant Specification).
In view of the fact that Lee in view of Natori teaches a steel composition that meets the recited composition in claim 11 and a method of making the steel sheet with processing parameters overlapping the processing conditions disclosed in instant Specification, one of ordinary skill in the art would expect that the steel sheet disclosed by Lee in view of Natori to meet the recited Styl/Stot, S100/Stot, S100/Stra, d100/dave, d100/dtyl and d100/dtra in claims 11 and 12. “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.
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 5-6 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 5-6 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 5-6 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 5-6 of copending Application No. 18/279342 disclose a composition that meets the recited formula (1). Claims 5-6 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. 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 5-6 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.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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