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 .
Response to Amendment
Applicant’s amendment has been entered. Claims 1-6 are pending. Changes to the specification have overcome the objections for minor informalities. Amendment has overcome the rejection of claim 6 under 35 USC 112(b).
Claim Interpretation
Claim 1 recites “the iron steel sheet is composed of (001) grains”. “The transitional phrase "composed of" has been interpreted in the same manner as either "consisting of" or "consisting essentially of," depending on the facts of the particular case” (MPEP 2111.03(IV)). Present claim 4 claims an area fraction of the (001) grains is 80% or more. As claim 4 explicitly recites a range of area fraction of (001) grain which encompasses values less than 100%, the “iron steel sheet is composed of (001) grains” must necessarily be open to grain orientations other than (001) grains; therefore, “the iron steel sheet is composed of (001) grains” will be interpreted as the iron steel sheet consists essentially of (001) grains, which limits the claimed steel sheet to a sheet of (001) grains and other inclusions that do not materially affect the basic and novel characteristic(s) of the claimed invention steel sheet. As the specification does not identify which textures to entirely exclude, or whose inclusion would materially change the basic and novel characteristics of the claimed steel, the steel sheet will be interpreted as open to other textures.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Postech (KR101842417B1). Postech is cited in the IDS filed October 27, 2023. References to Postech are directed to the examiner-supplied English language translation, and to Tables and Figures in Korean language original.
Regarding claim 1, Postech discloses an electrical steel sheet (abstract, claim 1, [0001], [0014]). The steel sheet disclosed by Postech comprises based on weight, alloying amounts shown in the table below:
Alloying Element
Postech
Present Claim 1
Si
2.0 to 3.5% [0014], [0036-37]
2.0% to 4.0%
Mn
0.02 to 0.50% [0014], [0038-39]
more than 0.5% and 2.0% or less
S
0.001% or less (excluding 0%) [0014], [0042-43]
0.01% or less (excluding 0%)
C
0.004% or less (excluding 0%) [0014], [0040-41]
0.01% or less (excluding 0%)
N
0.004% or less (excluding 0%) [0014], [0044-45]
0.01% or less (excluding 0%)
Fe and impurities
Remainder [0014], [0046]
Balance
Ranges for Si, S, C, N, and Fe disclosed by Postech [0014], [0036-37], [0040-46] directly meet values recited in claim 1. The amount of Mn disclosed by Postech [0014], [0038-39] so closely approaches the range for Mn recited in claim 1, that an electric steel having a Mn concentration of 0.500% (within the range disclosed by Postech [0014], [0037-38]) would be expected to have the same properties as a steel with a concentration of Mn infinitesimally greater than 0.500 (such as 0.5001%, which is within the claimed Mn range). When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists, and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I). Inventive examples of Postech further provide support for the expectation that the properties would be the same. Note particularly the thickness (두께), grain size (결정립 크기), magnetic flux density B50 (자속 밀도 B50), and iron loss W15/50 (철손 W15/50), of inventive example 3 (발명 예 3) in Table 3 or inventive example 15 (발명 예15) in Table 8 of Postech.
Postech discloses that the iron steel sheet is composed of {100} grains [0014]. For a cubic lattice structure, such as the BCC structure of Fe-Si alloys, the {100} surface direction family ((100), (010), (001)) all refer to the same grains due to 90
°
rotational symmetry of a cubic lattice. Further support for the (001) grain as the {100} grain family disclosed by Postech is seen in Figs. 2 and 6 of Postech for which intensities are reported as (001) directions and compared with (101) and (111) directions. Paragraph [14] of the present disclosure further admits that Postech is “composed of the (001) texture”. Postech discloses an angle formed by the <001> crystal direction in the {100} texture showing the maximum surface strength with respect to the rolling direction is any one angle in the range of 0 degrees to 30 degrees [0014]. As <001> is a [100] direction, and the {100} grain orient member shown in figures of Postech is a (001) grain, the angle formed by the <001> crystal direction in the {100} texture showing the maximum surface strength with respect to the rolling direction of 0 degrees to 30 degrees disclosed by Postech [0014] encompasses the claimed range for an angle (θ) satisfying 0°≤θ≤8°, the angle (θ) being formed between a rolling direction and a [100] crystal orientation exhibiting a maximum surface intensity in a (001) texture. See also Postech’s description of example 15 in paragraph [0124]. Postech discloses that the thickness of the steel sheet is 0.05 to 0.3 mm [0015], which encompasses 0.05 to 0.25 mm, and Postech discloses producing the steel sheet by two-stage cold rolling (“single-stage cold rolling without intermediate annealing or two-stage cold rolling including intermediate annealing” [0017]).
Paragraph [14] of the present specification sets suggests Mn concentration as the claimed limitation which defines over Postech. Present claim 1 claims Mn in “more than 0.5% and 2.0% or less”, and Postech discloses an amount of Mn of “0.02 to 0.50%” [0014], [0038-39]. The composition range of Mn disclosed by Postech is as close to the presently claimed Mn composition range as mathematically possible without intersecting. Postech further discloses example steel sheets in Tables 2-10 with physical properties (magnetic flux density, core loss, grain size, thickness) that are closer to the properties of the inventive steel sheets of the present disclosure than the comparative example 1. As a comparison of the results disclosed by Postech (Tables 2-10) with the results of the inventive steel sheet of the present disclosure do not appear to differ to a statistical and practical significance, and the Mn concentration disclosed by Postech [0014], [0038-39] infinitesimally approaches the concentration recited in claim 1, absent a showing that the presently claimed amount of Mn yield nonobvious results commensurate in scope with the claimed range, the presently claimed amount of Mn would have been obvious over the approaching range disclosed by Postech [0014], [0038-39]. See MPEP 2144.05(I) second paragraph for further discussion on situations wherein a prior art range which is close but does not overlap may render a claim obvious.
Regarding claim 2, Postech discloses that the average grain diameter is 9 to 50 times larger than the thickness of the electrical steel sheet [0016], which lies entirely within a range of 1 to 50 times. Though Postech is silent as to the degree of penetration of the grains, as a diameter 9 to 50 times larger than the thickness is an order of magnitude larger than the thickness, it would have been obvious to one of ordinary skill in the art, at the time of filing, that the grains disclosed by Postech [0016] would to some extent penetrate through a thickness of the relatively thin (with respect to the grains) sheet thickness comprising those grains.
Regarding claim 3, Postech discloses that the thickness of the steel sheet is 0.05 to 0.3 mm [0015] and that the average grain diameter is 9 to 50 times the thickness of the steel sheet [0016]. Postech therefore discloses a range of grain diameters from 0.45 to 15 mm (0.05*9=0.45; 0.3*50=15) which overlaps the claimed range of 0.3 to 5 mm. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 4, Postech is silent on the area fraction of (001) grain. Figs. 2 and 6 do not show textures which are not (001) grains. Postech discloses that it is desirable that {111} plane or {211} be low [0010], and several examples in Tables 2-10 of Postech have 0 intensity for {110} planes. Considering the intensity of (001) planes disclosed by Postech (Figs. 2, 6, as {100} intensities in Figs. 2-10), the examples with a zero intensity for {110} planes (Tables 2-10), and Postech’s desire to keep {111} and {211} planes low [0010], it would have been obvious to one of ordinary skill in the art at the time of filing that the majority of the steel sheet disclosed by Postech comprise a (001) structure. As Figs. 2 and 6 do not appear to disclose a grain structure which is not a (001) structure, one of ordinary skill in the art would expect the steel sheet disclosed by Postech to have an area fraction of the (001) grains which lies in a range of 80% or more.
Regarding claim 5, Postech discloses several inventive examples (발명 예) wherein the electrical steel sheet has a magnetic flux density B50 (자속 밀도 B50) of 1.70 Tesla or more (Each of examples 1-8, 12-16, 17-20, 22-28, 31, Tables 1-4, 7-10 example numbers are in right-most columns of tables). As Postech considers these examples inventive, the ranges disclosed by Postech, applied above, encompass/overlap values wherein the electrical steel sheet has a magnetic flux density (B50) of 1.70 Tesla or more.
Regarding claim 6, Postech discloses steel sheet thickness (두께) and iron loss W15/50 (철손 W15/50) for inventive examples (Tables 2-10), thereby indirectly disclosing ratio of steel sheet iron loss W15/50 to thickness for inventive examples (Tables 2-10). Postech discloses several inventive examples (발명 예) wherein a ratio of iron loss (W15/50) to steel sheet thickness is in a range of 4 to 20 Watts/kg/mm, in addition to the magnetic flux density limitation of present claim 5, on which claim 6 depends (Each of examples 1-8, 12-16, 17-20, 22-28, 31, Tables 1-4, 7-10). As Postech considers these examples inventive, the ranges disclosed by Postech, applied above, encompass/overlap values wherein a ratio of iron loss (W15/50) to steel sheet thickness thereof is in a range of 4 to 20 Watts/kg/mm.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Regarding rejections under 35 USC 103 over Postech (KR101842417B1), applicant argues that Postech teaches away from adding Mn exceeding 0.5%. This argument is not persuasive because Postech teaches a Mn amount of 0.02-0.50% [0014], [0038-39], which so infinitesimally approaches the claimed range of “Mn in a content of more than 0.5% and 2.0% or less” that if a single Mn atom were added to a steel disclosed by Postech having 0.50% Mn, as disclosed by Postech [0014], [0038-39], that steel with the additional 1 atom of Mn would meet the claimed range for Mn. Applicant argues that Postech teaches that an amount of Mn greater than 0.5% results in the magnetic flux density decreasing when a constant current is applied because the saturation magnetic flux density decreases; however, Postech discloses several inventive examples (발명 예) wherein the electrical steel sheet has a magnetic flux density B50 (자속 밀도 B50) of 1.70 Tesla or more (Each of examples 1-8, 12-16, 17-20, 22-28, 31, Tables 1-4, 7-10 example numbers are in right-most columns of tables), and Postech does not disclose or suggest the that the flux density at 0.50% Mn is in unfavorable over the flux density at other points in the disclosed range of 0.02-0.50% Mn [0014], [0038-39]. Considering present claim 5 claims “a magnetic flux density (B50) of 1.70 Tesla or more”, Postech discloses magnetic flux density as the property on which the amount of Mn depends [0039], and considering the examples of Postech meet the magnetic flux density of the claimed steel sheet (Tables 1-4, 7-10), not only does the Mn range disclosed by Postech of 0.02-0.50% Mn [0019], [0038-39] establish a prima facie case of obviousness by infinitesimally approaching the claimed range of Mn in a content of more than 0.5% and 2.0% or less, but the evidence of record shows that the properties of the steel disclosed by Postech comprising the microstructure texture disclosed by Postech ([0014-15], [0017], [0124], Figs. 2, 6) are those of the properties of the steel sheet of the present invention. This is the scenario described in MPEP 2144.05(I) second paragraph for which closely approaching prior art ranges render claimed ranges obvious, and a range of 0. 02 to 0.50% Mn disclosed by Postech [0014], [0038-39] is as close to a range of “Mn in a content of more than 0.5% and 2.0% or less” as mathematically possible. The Postech disclosure further does not sufficiently teach away from the claimed range because Postech does not teach away from a content of 0.50% Mn [0019], [0038-39], and a content of 0.50% Mn infinitesimally approaches the presently claimed Mn amount. Note that the rebuttals by teaching away described in MPEP 2144.05(III)(B) are situations where prior art discouraged experimentation within the full range disclosed, which significantly differs from Postech in that Postech discloses values including 0.50% Mn [0039] and does not discourage from the value of 0.5% Mn. Postech does not teach away from 0.50% Mn, and 0.5% approaches a range of “Mn in a content of more than 0.5% and 2.0% or less”
The argument that the present disclosure and Postech address different mechanisms for MnS precipitates is not persuasive because the argument is not commensurate in scope with the claimed steel sheet. Claim 1 claims “S in a content of 0.01% or less (excluding 0%)”, which approaches an amount of 0% S. Amounts approaching 0% S will minimize the effects of S on the surface of the steel sheet whether or not any S that is present is sequestered in precipitate phases. Postech actually decreases the S content of the finished electrical steel sheet to 0.001% or less to mitigate the detrimental effects of S [0043]. Arguments that rely on the presence of MnS precipitates in the steel sheet are not commensurate in scope with the claimed range of S which encompasses values for which such precipitates do not form or negligibly form.
Arguments that the claimed amount of Mn yield unexpected results over Postech are not persuasive because the arguments compare iron loss W15/50 of inventive steel sheets against comparative example 1, not against the steel sheet disclosed by Postech, which is significantly closer to the steel sheet of claim 1 than the steel sheet of comparative example 1. As shown in Table 3, comparative example 1 has a (001) gain area fraction of 5%. The present disclosure states “Korean Patent Application Publication No. 10- 1842417 [Postech (KR101842417B1)] discloses a method of manufacturing an electrical steel sheet composed of (001) texture”; therefore, even the present disclosure admits that Postech has a closer texture to the presently claimed steel sheet than the basis of comparison for which applicant is arguing unexpected results. Regarding the argued of iron loss W15/50, Postech discloses examples (발명 예) wherein W15/50 (철손 W15/50) is in a range of 0.76 to 1.13 W/kg (each of examples 12, 13, 14, 15, 16, 23, 25, 26 Tables 7, 8, 10), and all inventive examples of Postech have iron loss W15/50 significantly lower than the comparative 3.27 W/kg (Tables 2-10). As the iron loss of examples disclosed by Postech (Tables 2-10) is within or closer to the range of 0.76 to 1.13 W/kg than a value of 3.27, an iron loss W15/50 at or near a range of 0.76 to 1.13 W/kg would be expected in view of Postech. As Postech meets the claimed texture, whereas applicant’s procured basis of comparison does not meet the claimed texture, and Postech discloses iron loss values which meet or approach the inventive and not the comparative iron loss values, the evidence of record is not sufficient to show that claimed features (including Mn content) yield unexpected results over those of Postech. See MPEP 716.02 and subsections for further guidance on how the office evaluates evidence of unexpected results. Note particularly that expected beneficial results [such as an iron loss comparable to that disclosed by the prior art] are evidence of obviousness of a claimed invention (MPEP 716.02(c)(II)).
Applicant acknowledges rejection of dependent claims, but only argues limitations presented in independent claim 1 over the prior art.
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 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 SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
Prosecution Insights