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 & Status of Claims
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim 1, drawn to a grain-oriented electrical steel sheet.
Group II, claim 2, drawn to a method of producing a grain-oriented electrical steel sheet.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a grain-oriented electrical steel sheet, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of JP 2012-031515 A of Watanabe and its English machine translation (JP’515). JP’515 teaches “a grain-oriented electrical steel sheet in which a base film and a tension film are formed in order from the surface side, and laser irradiation is performed on one side of a steel sheet, the warpage rate is 1% or less, and the base film Young's modulus is 9.5 × 1010 N /m2 or more”. The prior art teaches a specific example, steel No. 1 in Table 1, having a Young’s modulus 10.9 × 1010 N /m2 (which converts to 109 GPa) thereby reading on the instant technical feature thereby making the instant technical feature not a special technical feature.
During a telephone conversation with ERIC MORTON on 10/28/2025 a provisional election was made WITHOUT traverse to prosecute the invention of Group I, claim 1, drawn to a grain-oriented electrical steel sheet. Affirmation of this election must be made by applicant in replying to this Office action. Claim 2 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim 1 is 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.
Regarding claim 1, instant claim recites “A grain-oriented electrical steel sheet having a ceramic film and containing Mn”. It is unclear whether the claim is requiring Mn to be contained in a) the composition of the grain oriented steel sheet, b) in the ceramic film or c) both in the composition of the sheet as well as in the ceramic film. It is noted that claim 1 also recites “the film has a Mn+Fe concentration of 0.05 mass % or more” which can be met by having 0.05 mass% or more of Fe alone.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2012-031515 A of Watanabe and its English machine translation (JP’515).
Regarding claim 1, JP 2012-031515 A of Watanabe and its English machine translation (JP’515) teaches “a grain-oriented electrical steel sheet in which a base film and a tension film are formed in order from the surface side, and laser irradiation is performed on one side of a steel sheet, the warpage rate is 1% or less, and the base film Young's modulus is 9.5 × 1010 N /m2 or more”thereby reading on the grain-oriented steel sheet having a ceramic film with a Young’s modulus of 108 to 144 GPa, as recited in the instant claim.
Although the prior art teaches a specific example, steel No. 1 in Table 1, having a Young’s modulus 10.9 × 1010 N /m2 (which converts to 109 GPa), it does not detail the complete composition of the steel. However, the prior art teaches that its steel contains Mn by pointing out “Mn: 0.005 to 1.0 mass% Mn is an element necessary for improving the hot workability. However, if the content is less than 0.005% by mass, the effect of addition is poor, whereas if it exceeds 1.0% by mass, the magnetic flux density of the product plate decreases. The amount of Mn is preferably in the range of 0.005 to 1.0 mass%.” indicating that Mn is included in all of the inventive samples.
It is noted that the prior art is silent regarding the recited limitation “the film has a Mn+Fe concentration of 0.05 mass % or more” of instant claim 1.
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. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the GOSS of the prior art possesses the properties as claimed in the instant claim since a) the claimed and prior art products are identical or substantially identical in composition {instant alloy: Specification [0040], [0042]: Instant steel sheet has Mn: 0.03 Mass % to 0.30 Mass %; “balance of the chemical composition listed below is Fe and inevitable impurities”; Prior art: [0027], [0030]:Mn: 0.005 to 1.0 mass%; “The balance other than the above components is inevitable impurities and Fe mixed in the manufacturing process. Moreover, said C, N, S, and Se are removed in the refinement | purification process of final finish annealing, and are reduced to an unavoidable impurity grade in the product of a grain-oriented electrical steel sheet.”}, b) the claimed and prior art products are identical or substantially identical in structure (see steel structure above) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: Specification [0019]: subjecting a Mn-containing steel material for grain-oriented electrical steel sheets to hot rolling to obtain a steel sheet; then subjecting the steel sheet to cold rolling once or twice or more with intermediate annealing performed therebetween to a final sheet thickness; and then subjecting the steel sheet to decarburization annealing combined with primary recrystallization; then applying an annealing separator containing 50 mass % or more of MgO to a surface of the steel sheet; then subjecting the steel sheet to final annealing; and optionally removing an unreacted separator after the final annealing and then subjecting the steel sheet to flattening annealing, wherein as conditions of the decarburization annealing, an annealing temperature is controlled within a range of 700° C. to 900° C; Prior art: [0017]-[0033], Table 1: secondary recrystallization annealing; tension insulating coating; “tension film is a general tension that is baked with a chemical solution made of colloidal silica, magnesium phosphate, and chromic acid formed on the base film (forsterite film)” “The steel slab having the component composition described above is a grain oriented electrical steel sheet in which a tensile insulating coating is formed after secondary recrystallization annealing through a process generally following that of grain oriented electrical steel sheets. That is, hot rolling is performed after slab heating, and the final sheet thickness is obtained by one or more cold rolling sandwiching intermediate annealing, followed by decarburization and primary recrystallization annealing. After applying the above-mentioned annealing separation agent, applying the final finish annealing including the secondary recrystallization process and the purification process, performing the above-described operation, for example, applying and baking an insulating coat made of colloidal silica and magnesium phosphate” “the annealing temperature is set to 810 ° C or less” “The lower limit is preferably set to about 700 ° C”}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH HENDRICKS can be reached at (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733