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 with traverse of claims 1-12 in the reply filed on 5/06/2026 is acknowledged. The traversal is on the ground(s) that method claims 13-20 depend on instant claim 1 and thus do not constitute a separate invention. This is not found persuasive because the inventions are independent or distinct, each from the other because inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product of group I can be made by a materially different method than the method of group II, such as by extrusion, powder metallurgy or direct casting.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/06/2025.
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 1-6 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.
The terms “high permeability, high magnetic flux, and low iron loss” in claim 1 is a relative term which renders the claim indefinite. The terms “high permeability, high magnetic flux, and low iron loss” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This renders the properties of the electrical steel sheet indefinite which renders the scope of the claim indefinite.
Instant claims 2-6 depend on instant claim 1 and are indefinite for at least the same reasons.
Claim Rejections - 35 USC § 102
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 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) 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 2006074650 A to Bae et al (an English language machine translation has been relied upon for examination purposes).
Regarding claim 7, Bae ‘650 discloses an electrical steel comprising the following composition (Bae ‘650, title, abstract, Table 1, Example A) which lies within the instantly claimed composition as follows:
Element
Claimed wt%
Bae ‘650 A wt%
Lies within?
C
0-0.005
0.0021
Yes
N
0-0.005
0.0012
Yes
S
0-0.005
0.0015
Yes
P
0-0.05
0.006
Yes
Si
1.0-2.5
1.79
Yes
Al
0.1-0.8
0.37
Yes
Mn
0.1-0.8
0.26
Yes
Sb
0.01-0.10
0.04
Yes
Fe
Balance
Balance
Yes
10Si + 11Al + 6Mn
20-30
23.53
Yes
Bae ‘650 anticipates instant claim 7 because Bae ‘650 discloses all of the limitations of instant claim 7.
Claim(s) 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 101067478 B1 to Bae et al (an English language machine translation has been relied upon for examination purposes).
Regarding claim 7, Bae ‘478 discloses an electrical steel comprising the following composition (Bae ‘478, title, abstract, Table 1, Example B) which lies within the instantly claimed composition as follows:
Element
Claimed wt%
Bae ‘478 B wt%
Lies within?
C
0-0.005
0.0026
Yes
N
0-0.005
0.0014
Yes
S
0-0.005
0.0022
Yes
P
0-0.05
0.014
Yes
Si
1.0-2.5
1.97
Yes
Al
0.1-0.8
0.33
Yes
Mn
0.1-0.8
0.20
Yes
Sb
0.01-0.10
0.03
Yes
Fe
Balance
Balance
Yes
10Si + 11Al + 6Mn
20-30
24.53
Yes
Bae ‘478 anticipates instant claim 7 because Bae ‘478 discloses all of the limitations of instant claim 7.
Claim(s) 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 2015062245 A to Bae et al (an English language machine translation has been relied upon for examination purposes).
Regarding claim 7, Bae ‘245 discloses an electrical steel comprising the following composition (Bae ‘245, title, abstract, Table 1, Example X2) which lies within the instantly claimed composition as follows:
Element
Claimed wt%
Bae ‘245 X2 wt%
Lies within?
C
0-0.005
0.0037
Yes
N
0-0.005
0.0016
Yes
S
0-0.005
0.0024
Yes
P
0-0.05
0.004
Yes
Si
1.0-2.5
1.67
Yes
Al
0.1-0.8
0.12
Yes
Mn
0.1-0.8
0.38
Yes
Sb
0.01-0.10
0.03
Yes
Fe
Balance
Balance
Yes
10Si + 11Al + 6Mn
20-30
20.3
Yes
Bae ‘245 anticipates instant claim 7 because Bae ‘245 discloses all of the limitations of instant claim 7.
Claim Rejections - 35 USC § 102/103
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.
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 and 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over KR 2006074650 A to Bae et al (an English language machine translation has been relied upon for examination purposes) as applied to claim 7 above.
Regarding claims 1-6 and 8-12 Bae ‘650 discloses a non-oriented electrical steel sheet lying wholly within the instantly claimed composition ranges as set forth above (Bae ‘650, title, abstract, Table 1, Example A). Regarding the limitations “high permeability, high magnetic flux, and low iron loss,” as well as the claimed properties of instant claims 2-6 and 8-12, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the non-oriented electrical steel of Bae ‘650 would be expected to have the same or similar properties as the instantly claimed electrical steel because the non-oriented electrical steel of Bae ‘650 has the same or substantially the same composition and structure. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Claim(s) 1-6 and 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over KR 101067478 B1 to Bae et al (an English language machine translation has been relied upon for examination purposes) as applied to claim 7 above.
Regarding claims 1-6 and 8-12 Bae ‘478 discloses a non-oriented electrical steel sheet lying wholly within the instantly claimed composition ranges as set forth above (Bae ‘478, title, abstract, Table 1, Example B). Regarding the limitations “high permeability, high magnetic flux, and low iron loss,” as well as the claimed properties of instant claims 2-6 and 8-12, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the non-oriented electrical steel of Bae ‘478 would be expected to have the same or similar properties as the instantly claimed electrical steel because the non-oriented electrical steel of Bae ‘478 has the same or substantially the same composition and structure. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Claim(s) 1-6 and 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over KR 2015062245 A to Bae et al (an English language machine translation has been relied upon for examination purposes) as applied to claim 7 above.
Regarding claims 1-6 and 8-12 Bae ‘245 discloses a non-oriented electrical steel sheet lying wholly within the instantly claimed composition ranges as set forth above (Bae ‘650, title, abstract, Table 1, Example X2). Regarding the limitations “high permeability, high magnetic flux, and low iron loss,” as well as the claimed properties of instant claims 2-6 and 8-12, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the non-oriented electrical steel of Bae ‘245 would be expected to have the same or similar properties as the instantly claimed electrical steel because the non-oriented electrical steel of Bae ‘245 has the same or substantially the same composition and structure. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20110042625 A1 to Tanaka and JP 2001158948 to Fujita disclose non-oriented electrical steels with compositions relevant to the instant claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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