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 (Claim 3) in the reply filed on Dec 15, 2025 is acknowledged. Claim 4 is withdrawn. Claim 3 is examined herein.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kataoka (WO 2019/182154A1, US2021/0043345 is used as translation), and further in view of JP’529 (JP2005-336529A).
Regarding claim 3, Kataoka discloses (Abstract; [0023]; [0100]) a grain-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 Kataoka to produce a grain-oriented steel sheet that meets the recited composition in claim 3. See MPEP 2144.05 I.
Element
Claim 3
(mass %)
Kataoka
(mass %)
Overlap
(mass %)
C
≤0.01
≤0.005
≤0.005
Si
3-4
2.5-4
3-4
Mn
0.01 – 0.5
0.01-0.5
0.01-0.5
N
≤0.01
≤0.01
≤0.01
Sol. Al
≤0.02
≤0.005
≤0.005
S
≤0.01
≤0.01
≤0.01
P
≤0.03
≤0.03
≤0.03
Cr
0-0.5
0-0.5
0-0.5
Sn
0-0.5
0-0.5
0-0.5
Cu
0-0.5
0-1.0
0-0.5
Se
0–0.02
0-0.08
0-0.02
Sb
0-0.5
0-0.5
0-0.5
Mo
0-0.1
0-1
0-0.1
Fe + Impurities
Balance
Balance
Balance
Kataoka discloses that the steel sheet comprises a base steel sheet; a glass coating formed on the base steel sheet; and a tension-applied insulation coating formed on the glass coating, wherein, in the base steel sheet, a plurality of linear strains that extend in a direction intersecting with a rolling direction are present with intervals in the rolling direction being 2-10 mm ([0023] to [0025]). Kataoka does not teach the recited closure domain limitations. However, the closure domain characteristics depends on the steel composition and a method of forming the linear strains.
Kataoka discloses that laser beam is used to form a plurality of linear strains ([0187]). Kataoka does not disclose the exact parameters of laser beam for forming linear strains as disclosed in the instant Specification.
JP’529 discloses a method of making a grain-oriented steel sheet comprising a base steel sheet and an insulation coating, wherein, a plurality of linear strains that extend in a direction perpendicular to a rolling direction are present at an interval of 4 mm (Abstract; Page 3-4), which is analogous to the method of Kataoka. JP’529 discloses that in order to make a grain-oriented steel sheet having improved iron loss and low noise, the most suitable conditions for forming linear strains by laser irradiation is: dl=0.05 mm (i.e. 50 µm) wherein dl is a diameter of laser beam in a direction perpendicular to a beam scanning direction, dc=5 mm wherein dc is a diameter in the beam scanning direction of the laser, the linear strain interval is 4 mm, laser scanning velocity Vc is 26200 mm/s, power is 360 W, laser power density Ip is 1.8 kW/mm2 (i.e. 1800 W/mm2) (Page 3-4; Fig. 1; Fig. 6). Thus, it would be obvious to one of ordinary skill in the art to perform laser irradiation under the conditions of dl=0.05 mm, dc=5 mm, the linear strain interval being 4 mm, laser scanning velocity Vc being 26200 mm/s, power being 360 W, laser power density Ip being 1.8 kW/mm2 (i.e. 1800 W/mm2) as taught by JP’529 in the process of making a grain oriented electrical steel sheet of Kataoka in order to make a steel sheet having improved iron loss and low noise as disclosed by JP’529.
The laser powder density Ip of 1.8 kW/mm2 (i.e. 1800 W/mm2) disclosed by JP’529 meets the recited Formula (1) in claim 4.
The laser input energy =power/laser beam scanning velocity = 360W / (26200mm/s) = 0.014 J/mm, which meets the recited Formula (2) in claim 4.
The laser beam aspect ratio dl/dc=0.05/5=0.01, which meets the Formula (3) recited in claim 4.
dl=0.05 mm (i.e. 50 µm), which meets the Formula (4) recited in claim 4.
In view of the fact that Kataoka in view of JP’529 teaches a grain-oriented steel sheet having composition that meets the recited composition in claim 3 and a method of forming the linear strains that meets the recited processing conditions in claim 4, one of ordinary skill in the art would expect that the grain-oriented steel sheet disclosed by Kataoka in view of JP’529 to meet the recited closure domain limitation in claim 3. “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.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No.12,424,360. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 of U.S. Patent No.12,424,360 teaches a grain-oriented electrical steel sheet that meets the recited composition in claim 3. Claims 1-8 of U.S. Patent No.12,424,360 disclose that the steel sheet comprises a base steel sheet, a glass coating and a tension-applied insulating coating and on the surface of the steel sheets, a plurality of linear strains extending continuously or intermittently in a direction intersection with a rolling direction at an interval of 3-9 mm. Claims 1-8 of U.S. Patent No.12,424,360 do not explicitly disclose the closure domain limitations recited in claim 3. However, these limitations depend on the steel processing and the processing conditions of making the linear strains. Claim 5 of U.S. Patent No.12,424,360 teaches a method of making the linear strains that meet the recited processing conditions in instant claim 4. In view of the fact that claims 1-8 of U.S. Patent No.12,424,360 teach a grain-oriented steel that meets the recited composition in claim 3 and a method of making the steel sheet with processing conditions that meet the recited processing conditions in claim 4, one of ordinary skill in the art would expect that the steel sheet disclosed by claims 1-8 of U.S. Patent No.12,424,360 to meet the recited closure domain limitation in claim 3. “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.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No.12,512,240. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of U.S. Patent No. 12,512,240 teach a grain-oriented electrical steel sheet having composition that overlaps the recited composition in claim 3. 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). Thus, the recited composition in claim 3 is obvious over claims 1-18 of U.S. Patent No. 12,512,240. See MPEP 2144.05 I.
Claims 1-18 of U.S. Patent No. 12,512,240 disclose that the steel sheet comprises a base steel sheet, a glass coating and a tension-applied insulating coating and on the surface of the steel sheets, a plurality of linear strains extending continuously or intermittently in a direction intersection with a rolling direction at an interval of 10 mm or less. Claims 1-18 of U.S. Patent No. 12,512,240 do not explicitly disclose the closure domain limitations recited in claim 3. However, these limitations depend on the steel composition and the processing conditions of making the linear strains. Claims 3-18 of U.S. Patent No. 12,512,240 teach a method of making the linear strains that meet the recited limitation in instant claim 4. In view of the fact that claims 1-18 of U.S. Patent No. 12,512,240 teach a grain-oriented steel that meets the recited composition in claim 3 and a method of making the steel sheet with processing conditions that meet the recited processing conditions in claim 4, one of ordinary skill in the art would expect that the steel sheet disclosed by claims 1-18 of U.S. Patent No. 12,512,240 to meet the recited closure domain limitation in claim 3. “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.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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