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 .
DETAILED ACTION
Claim 5 is added as a new claim, Claims 1-5 remain in examination, wherein claim 1 is an independent claim..
Information Disclosure Statement
IDS filed on 5/28/2026 has been recorded.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirashima et al ( US-PG-pub 2020/0224294 A1, listed in IDS filed on 9/20/2023, updated as US 11,326,235 B2, thereafter PG’294).
PG’294 is applied to the instant claim 1-4 for the same reason as stated in the previous office action dated 3/13/2026.
Regarding newly added claim 5, the claimed “R/t being 3.0 or less” is recognized as a steel alloy property fully depended on alloy composition, microstructure, and manufacturing process. As discussed in the previous office action dated 3/13/2026, the example #A in table 1 of PG’294 teaches the same alloy composition and microstructure manufactured by the manufacturing process with same process parameters, the claimed property of R/t would inherently existed in the hot rolled steel sheet of PG’249. MPEP 2112 III&IV.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-5 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2).
Claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2) is applied to the instant claims 1-4 for the same reason as stated in the previous office action dated 3/13/2026.
Regarding the newly added claim 5, the claimed “R/t being 3.0 or less” is recognized as a steel alloy property fully depended on alloy composition, microstructure, and manufacturing process. Since claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2) teaches the similar alloy, microstructure, and manufacturing steps as claimed in the instant claims (Refer to the previous office action dated 3/13/2026), the claimed “R/t” would be highly expected for the hot rolled steel sheet of claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2). MPEP 2112 01 & 2145 II.
Thus, no patentable distinction was found in the instant claims compared with the manufacturing process a grain-oriented electrical steel sheet as disclosed by claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2).
Claims 1-5 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1).
claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1)) is applied to the instant claims 1-4 for the same reason as stated in the previous office action dated 3/13/2026.
Regarding the newly added claim 5, the claimed “R/t being 3.0 or less” is recognized as a steel alloy property fully depended on alloy composition, microstructure, and manufacturing process. Since claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1) teaches the similar alloy, microstructure, and manufacturing steps as claimed in the instant claims (Refer to the previous office action dated 3/13/2026), the claimed “R/t” would be highly expected for the hot rolled steel sheet of claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1). MPEP 2112 01 & 2145 II. Thus, no patentable distinction was found in the instant claims compared with the manufacturing process a grain-oriented electrical steel sheet as disclosed by claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1).
This a provisional ODP rejection since the conflict claims in the co-pending application have not in fact been patented.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-5 have been considered but they are not persuasive in view of the new ground rejection above. Regarding the arguments related to the newly added claim, the Examiner’s position has been stated as above.
The Applicant’s arguments are summarized as following:
1, PG’294 does not specify the orientation density of grains as claimed in the instant claims.
2, PG’294 does not specify the “a total rolling reduction in the temperature range of from the final pass rolling temperature to the final pass rolling temperature + 50°C to 35% or less in order to obtain the maximum orientation density of the grains in the 50- to 100-µm surface layer region (i.e., in order to obtain Feature 1)”.
3, Regrading the ODP rejections, the cited reference(s) do not specify “a total rolling reduction in the temperature range of from the final pass rolling temperature to the final pass rolling temperature + 50°C to 35% or less in order to obtain the maximum orientation density of the grains in the 50- to 100-µm surface layer region” which related to the orientation density of grains as claimed in the instant claims.
In response,
Regarding the arguments 1-2, as pointed in the previous office action dated 3/13/2026, PG’294 provides rolling conditions in table 2A including Final rolling at temperature 898oC; 87% total cumulative rolling reduction; with 6 pass and final reduction 12.1% out of 34.06% total reduction in finish rolling, which reads on the all of the claimed rolling conditions. Therefore, the claimed orientation density of grains in the instant claims would be inherently exist in the alloy of PG’294.
Regarding the argument 3, Claims 5-8 of US 12,392,006 B2 and claims 6-12 of US-PG-pub 2024/0158881 A1 indicate that “a finishing temperature: (RC2−50° C.) or more and (RC2+120° C.) or less and a total rolling reduction of 25% or more and 80% or less at a temperature of RC1 or less”, which overlaps the claimed finish rolling conditions. MPEP 2144 05 I. Therefore, the claimed “orientation density of grains” would be highly expected for the hot rolled steel sheet of claims 1-8 of co-pending application No. 18/282299 (US 12,392,006 B2) and/or claims 1-13 of co-pending application No. 18/282,304 (US-PG-pub 2024/0158881 A1). MPEP 2112 01 & 2145 II.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIE YANG/Primary Examiner, Art Unit 1734
Prosecution Insights