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, claims 1-3 and 6, drawn to a powder for an annealing separator.
Group II, claims 4-5 and 7-12, drawn to a production method for 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 powder, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of WO 2017/169853 A1 via its US English equivalent US 2020/0115250 A1 of Kitagaki (US’250). US’250 teaches “magnesium oxide for an annealing separator which is useful for obtaining grain-oriented electromagnetic steel sheets with excellent magnetic properties and insulating properties” “magnesium oxide powder” wherein “When the magnesium oxide of the present invention contains phosphorus (P), the content of phosphorus is preferably 0.03 to 0.15 mass % in terms of P2O3. When the magnesium oxide of the present invention contains boron (B), the content of boron is preferably 0.04 to 0.15 mass %. When the magnesium oxide of the present invention contains sulfur (S), the content of sulfur is preferably 0.01 to 1.5 mass % in terms of SO3” (emphasis added) {abstract, [0001]-[0057] thereby reading on the instant technical feature thereby making the instant technical feature not a special technical feature.
During a telephone conversation with JIAMENG KATHY LIU on 10/29/2025 a provisional election was made WITHOUT traverse to prosecute the invention of Group I, claims 1-3 and 6, drawn to a powder for an annealing separator. Affirmation of this election must be made by applicant in replying to this Office action. Claims 4 and 7-12 are 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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-3 and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a, does not reasonably provide enablement for a powder for an annealing separator, the powder comprising: a chemical composition containing magnesium oxide as recited in the instant claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
MPEP § 2164.01(a) indicates that there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
While the analysis and conclusion of a lack of enablement are based on the factors discussed in MPEP § 2164.01(a) and the evidence as a whole, it is not necessary to discuss each factor in the enablement rejection. Instead, the explanation of the rejection should focus on those factors, reasons, and evidence that lead the examiner to conclude e.g., that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims. This can be done by making specific findings of fact, supported by the evidence, and then drawing conclusions based on these findings of fact. For example, doubt may arise about enablement because information is missing about one or more essential parts or relationships between parts which one skilled in the art could not develop without undue experimentation. In such a case, the examiner should specifically identify what information is missing and why one skilled in the art could not supply the information without undue experimentation. See MPEP § 2164.06(a). References should be supplied if possible to support a prima facie case of lack of enablement, but are not always required. In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). However, specific technical reasons are always required. See also MPEP § 2164.04.
In the instant case, the instant specification dated 08/18/2023 sets forth as follows.
[0019] The experiment results that led to the presently disclosed techniques will be described below.
First, samples were produced in the following manner:
As a starting material, High Purity & Ultrafine Single Crystal Magnesia Powder 2000A produced by Ube Material Industries, Ltd. was used. The purity of the magnesia was extremely high with 99.98 mass % MgO.
[0020] The starting material was hydrated in pure water to obtain a magnesium hydroxide slurry.
The magnesium hydroxide slurry was then compressed using a filter press to obtain a magnesium hydroxide cake. In the magnesium hydroxide slurry, boric acid slurry, boric acid (H3BO3), magnesium sulfate (MgSO4), diammonium phosphate ((NH4)2HPO4), etc. were added to adjust the trace component amounts in the magnesium oxide after baking.
The trace component amounts can be adjusted as appropriate not only by adjusting the addition amount to the slurry but also by adjusting the degree of water washing of the magnesium hydroxide cake, the baking temperature, and the like.
[0021] 400 g of the obtained magnesium hydroxide cake was put in an alumina crucible, and baked in air in an electric furnace (SPX1518T-17 produced by Marusho Denki Co., Ltd.) at a temperature of 700° C. for 60 minutes after the electric furnace recuperated. The resultant baked product was cooled in the furnace, and then ground. After the grinding, the particle size of the obtained powder was adjusted using a sieve to obtain magnesium oxide used in this experiment.
The properties of the obtained magnesium oxide are shown in Table 1. In the table, “particle size (mass %)” represents what mass % of the sieved powder passed through a sieve of the indicated mesh size. 100.0 mass % means that the whole powder passed through the sieve. The same applies to Tables 2, 4, and 5.
[0037] <Production Method for Powder for Annealing Separator>
The production method for the powder for an annealing separator according to the present disclosure is not limited, but magnesium oxide obtained by sintering raw material is typically used as a main component. Examples of the raw material include magnesium hydroxide, magnesium carbonate, and magnesium chloride.
[0038] The amount of each of the foregoing components B, SO3, and P2O3 can be adjusted by adding borate, sulfate, and phosphate to the raw material before baking such as magnesium oxide. Here, in the case where Na salt is used, sodium remains in magnesium oxide. Since sodium may promote self-sintering of particles during annealing as with B, SO3, and P2O3, the sodium (Na) content in the particles of more than 45 μm and 75 μm or less is preferably less than 0.010 mass %. The sodium (Na) content may be 0 mass %. The Na content can be measured by dissolving the particles to be measured in acid and performing ICP optical emission spectrometry.
[0039] The magnesium oxide used in the present disclosure may contain B, SO3, P2O3, and Na besides MgO, and may contain Cl, CaO, SiO2, Fe2O3, Al2O3, and inevitable impurities in addition to these components.
The purity of magnesium oxide (MgO content in magnesium oxide) is preferably 95 mass % or more, and more preferably 98 mass % or more.
Therefore, the content of the components other than MgO in the magnesium oxide is preferably 5 mass % or less, and more preferably 2 mass % or less.
The contents of boron (B), sulfur, and phosphorus contained in the particles of more than 45 μm and 75 μm or less also include B, SO3, and P2O3 in the magnesium oxide.
[0040] The powder for an annealing separator may contain, in addition to magnesium oxide, reaction aids such as titanium oxide and strontium hydroxide. Moreover, the powder for an annealing separator may be mixed with another powder for an annealing separator and applied to the coil as an annealing separator.
Therefore, the instant disclosure provides a magnesium oxide powder and how to manufacture it with the MgO powder having B: 0.020 mass % or more and 0.200 mass % or less, SO3: 0.030 mass % or more and 1.000 mass % or less, and P2O3: 0.050 mass % or more and 1.000 mass % or less, and does not provide any guidance for an powder for annealing separator having 50 mass% or more (main component) of MgO with the amount of unrecited constituents to be as high as 47.8 mass% (50-2.2: sum of the maximums of B, SO3 and P2O3) as is allowed/claimed by the instant claims.
Claims 1-3 and 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.
Regarding claims 1-3 and 6, instant claim 1 recites as follows.
“A powder for an annealing separator, the powder comprising:
a chemical composition containing magnesium oxide as a main component and containing B: 0.020 mass % or more and 0.200 mass % or less, SO3: 0.030 mass % or more and 1.000 mass % or less, and P2O3: 0.050 mass % or more and 1.000 mass % or less; and
0.2 mass % or more and 5.0 mass % or less of particles having a particle size of more than 45 μm and 75 μm or less”
It is unclear whether the limitation of “B: 0.020 mass % or more and 0.200 mass % or less, SO3: 0.030 mass % or more and 1.000 mass % or less, and P2O3: 0.050 mass % or more and 1.000 mass % or less” to be what is part of the MgO or whether it is directed to the amount of each of these compounds that is outside MgO.
Regarding the recitation of “0.2 mass % or more and 5.0 mass % or less of particles having a particle size of more than 45 μm and 75 μm or less”, it is unclear whether it is directed to the particle size of the powder with the composition recited or whether is requiring an additional amount of particles other that is recited prior.
Claims 2-3 and 6 are dependents of claim 1, do not resolve the aforementioned issues and thereby also indefinite.
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.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/169853 A1 via its US English equivalent US 2020/0115250 A1 of Kitagaki (US’250).
Regarding claims 1-3 and 6, WO 2017/169853 A1 via its US English equivalent US 2020/0115250 A1 of Kitagaki (US’250) teaches “magnesium oxide for an annealing separator which is useful for obtaining grain-oriented electromagnetic steel sheets with excellent magnetic properties and insulating properties” “magnesium oxide powder” wherein “Preferably, the magnesium oxide for an annealing separator of the present invention contains 0.04 to 0.15 mass % boron and has a chlorine content of not more than 0.05 mass %.” “The magnesium oxide of the present invention may contain trace components such as calcium (Ca), phosphorus (P), boron (B), sulfur (S), fluorine (F) and chlorine (Cl). When the magnesium oxide of the present invention contains calcium (Ca), the content of calcium is preferably 0.2 to 2.0 mass % in terms of CaO. When the magnesium oxide of the present invention contains phosphorus (P), the content of phosphorus is preferably 0.03 to 0.15 mass % in terms of P2O3. When the magnesium oxide of the present invention contains boron (B), the content of boron is preferably 0.04 to 0.15 mass %. When the magnesium oxide of the present invention contains sulfur (S), the content of sulfur is preferably 0.01 to 1.5 mass % in terms of SO3. When the magnesium oxide of the present invention contains fluorine (F), the content of fluorine is preferably not more than 0.05 mass %. When the magnesium oxide of the present invention contains chlorine (Cl), the content of chlorine is preferably not more than 0.05 mass %. When the magnesium oxide of the present invention contains silicon (Si), the content of silicon is preferably 0.05 to 0.5 mass %. Here, “mass %” in the present specification means the same as “wt %”.” (emphasis added) {abstract, [0001]-[0057]. Therefore, the prior art reads on the powder for annealing separator as well as the composition as recited in claim 1. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited limitation of the particle size, its range and its composition of instant claim 1, it is noted that the prior art does not teach of these limitations. However, making various powder sizes of MgO is routine and well known in the art. Therefore, it 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 to take the MgO of the prior art and make powders with various particle sizes as making powders and various particle sizes of MgO is routine to one skilled in the art. In addition, the composition of the powder with the various particle sizes would be consistent the particle size or structure as the structure of the powder (the powder size) would have the composition. 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.
Regarding the recited limitation of Na and its range of instant claim 2, the prior art does not require the presence of Na in its MgO and therefore would read on the instant recited limitations as no Na means that there is no Na in any particle of the MgO.
Regarding the recited limitation of the purity of MgO of instant claims 3 and 6, the composition of the MgO as recited above reads on the recited purity of as the prior art does not require the impurities to be higher than 5%.
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