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 without traverse of Group I (Claims 1-9 and 14-20) in the reply filed on 12/04/2025 is acknowledged. Claims 10-13 are withdrawn. Claims 1-9 and 14-20 are pending.
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 1-9 and 14-20 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.
Claim 1 recites "a Ɣ-phase precipitation temperature” in line 11-12. According to Fe-C phase diagram, there are two Ɣ-phase precipitation temperatures for steel containing the recited amount of carbon: one is the A3 temperature that marks the transformation temperature between α-phase and Ɣ-phase; and the other one is A4 temperature that marks the transformation between Ɣ-phase and δ-phase. It’s unclear whether the recited Ɣ-phase precipitation temperature refers to the A3 temperature or the A4 temperature. Appropriate correction is required.
Claim 1 recites "at a temperature of (temperature at which Ɣ -phase fraction reaches its maximum - 20 °C) or higher” in line 14-15. A steel becomes fully austenite at a temperature range between A3 temperature and A4 temperature. Since a temperature at which Ɣ -phase fraction reaches its maximum is a range of temperature not just one temperature, the scope of “temperature at which Ɣ -phase fraction reaches its maximum - 20 °C” is not clear. Appropriate correction is required.
Claim 1 recites “true strain of 0.50 or more” in line 15. It is not clear whether the true strain of claim 1 refers to one pass or to the total of at least two passes. Therefore, claim 1 is not clear. Appropriate correction is required.
Claim 1 recites at a soaking temperature of 750 °C or higher and (1080 - 5Y) °C or lower in line 24-25. Claim 1 does not define the range of “Y”. It’s unclear whether “Y” can be zero or greater than 66%. When “Y” is greater than 66%, 1080 - 5Y is less than 750 ºC and the recited soaking temperature range of 750 °C or higher and (1080 - 5Y) °C or lower is invalid. Appropriate correction is required.
Claims 4 and 15 recite "at a temperature of (temperature at which Ɣ -phase fraction reaches its maximum - 20 °C) or higher” and “(temperature at which Ɣ -phase fraction reaches its maximum + 50 °C) or lower”. A steel becomes fully austenite at a temperature range between A3 temperature and A4 temperature. Since a temperature at which Ɣ -phase fraction reaches its maximum is a range of temperature not just one temperature, the scope of “temperature at which Ɣ -phase fraction reaches its maximum - 20 °C” and “temperature at which Ɣ -phase fraction reaches its maximum + 50 °C” is not clear. Appropriate correction is required.
Claims 6 and 17 recite “after soaking is subjected to cooling”. Since the claims do not recite “the soaking”, it’s unclear whether “soaking” recited in claims 6 and 17 is the same soaking step as recited in claim 1, line 23-24. Appropriate correction is required.
Claim Rejections - 35 USC § 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.
Claims 1-7, 9, 14-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US’371 (US 5,885,371) in view of JP’020 (JPH0310020A), and further in view of US’302 (US 11,680,302).
Regarding claim 1, US’371 teaches a method of making a grain-oriented electrical steel sheet, comprising: preparing a steel slab having a chemical composition containing C: 0.025 mass % to 0.095 mass %, Si: 1.50 mass % to 7 mass %, Mn: 0.03 mass % to 2.50 mass %, sol. Al: 0.01-0.03 mass % or more, N: 0.003 mass % to 0.01 mass % or less, and further containing S or Se in the amount 0.003 mass % to 0.04 mass %, with the balance being Fe and inevitable impurities (Col 13, Ln 40 to Col 15, Ln 20), which overlap the recited composition in claim 1 and it would be obvious to one of ordinary skill in the art to make a slab containing the amount of each element based on the composition ranges disclosed in US’371 to make a steel slab to meet the recited composition in claim 1. See MPEP 2144.05 I. US’371 disclosed heating the steel slab to a temperature of 1300° C or higher and Example 3 in US’371 has a slab heating temperature of 1380 ºC (Col 15, Ln 10-30; Col 20, Ln 35 to Col 21, Ln 33), which overlaps the recited slab heating temperature of claim 1 with an example that meets the recited slab heating temperature in claim 1. (Note the instant Specification discloses that the Ɣ-phase precipitation temperature of the recited steel composition is 1280 ºC-1350 ºC).
US’371 discloses subjecting the steel slab to rough rolling followed by finish rolling at a finish rolling temperature of 950-1150 °C, cooling the hot-rolled sheet at a cooling rate of 20 ºC/s or greater to a coiling temperature, coiling the hot-rolled sheet obtained after cooling to a coiling temperature of 670° C or lower, annealing the hot-rolled sheet after coiling at a soaking temperature of 900-1125° C for 150 seconds or shorter (Note: claim 1 encompasses a scope that the annealing temperature is 750-1080 ºC when Y=0%. Since claim 1 recites that primary recrystallization and secondary recrystallization annealing occur after cold-rolling, the recrystallization ratio before cold rolling is likely to be zero), subjecting the hot-rolled and annealed sheet to cold rolling at a rolling ratio of 80% or more and 95% or less to obtain a cold-rolled sheet with a final sheet thickness, finally subjecting the cold-rolled sheet to primary recrystallization and secondary recrystallization annealing to obtain a grain-oriented electrical steel sheet (See Claims 1, 9 and 17 of US’371), which overlaps the finish rolling temperature, coiling temperature, and annealing temperature for hot-rolled steel sheet 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). See MPEP 2144.05 I. Thus, the recited finish rolling temperature, coiling temperature, and annealing temperature for hot-rolled steel sheet in claim 1 is obvious over US’371.
US’371 does not teach that the rough rolling includes at least two passes of rolling at a temperature when γ-phase fraction reaches its maximum −20° C or higher with an introduced sheet thickness true strain εt of 0.50 or more to obtain a rough-rolled sheet. JP’020 teaches a method of making a grain-oriented steel sheet comprising slab heating, rough rolling, finish rolling, annealing, cold rolling, primary crystallization annealing and secondary crystallization annealing (Page 3 to Page 6), which is analogous to the process disclosed by US’371. JP’020 discloses that when the first rough rolling pass is conducted at a temperature of 1280 ºC or higher and at a reduction ratio ≤ 60% and the final rough rolling pass is conducted at a temperature of 1200 ºC or higher and at a reduction ratio of 70% or less (Page 3), the steel sheet produced has excellent magnetic properties (Page 3). Thus, it would be obvious to one of ordinary skill in the art to conduct first rough rolling pass at a temperature of 1280 ºC or higher and at a reduction ratio ≤ 60%, and conduct final rough rolling pass at a temperature of 1200 ºC or higher and at a reduction ratio of 70% or less as taught by JP’020 in the process of US’371 in order to make an electrical steel sheet having excellent magnetic properties as disclosed by JP’020. Based on the instant Specification, the temperature when γ-phase fraction reaches its maximum is in the range of 1130-1160 ºC for steel having the recited composition and thus the rough rolling temperature range recited in claim 1 corresponds to a temperature greater than 1110-1140 ºC. Therefore, the temperatures for the first rough rolling pass and the final rough rolling pass disclosed by JP’020 meets the limitation that at least two passes of rolling are performed at a temperature greater than the temperature when γ-phase fraction reaches its maximum −20° C recited in claim 1. JP’020 discloses an example that the first rough rolling pass is conducted at a temperature of 1281 ºC and at a reduction ratio 58% and the final rough rolling pass is conducted at a temperature of 1251 ºC and at a reduction ratio of 45% (Table 1, Example 12), which corresponds to εt of 0.87 (calculated by εt =ln (1-0.58)) for the first rough rolling and εt of 0.60 (calculated by εt =ln (1-0.45)) for the final rough rolling, respectively.
US’371 in view of JP’020 does not teach cooling the hot-rolled sheet at a cooling rate of 70 ºC/s or greater for 1 second or longer at a cooling rate of 70° C./s or higher within 2 seconds after an end of the finish rolling as recited in claim 1. US’302 teaches a method of making a grain-oriented steel sheet comprising slab heating, rough rolling, finish rolling, annealing, cold rolling, primary crystallization annealing and secondary crystallization annealing (Col 9, Ln 50 to Col 12, Ln 20), which is analogous to the process disclosed by US’371. US’302 discloses that within 0.7 seconds to 1.7 second after the finish hot rolling is completed, cooling is started to cool the hot-rolled steel sheet from 900-1060 ºC to 550 °C at a cooling rate of 70° C/s or more in order to make a steel sheet having excellent magnetic properties (Col 4, Ln 55-65; Col 20, Ln 5-40). Thus, it would be obvious to one of ordinary skill in the art to start cooling within 0.7 seconds to 1.7 second after the finish hot rolling is completed from 900-1060 ºC to a temperature of 550 ºC at a cooling rate of 70° C/s or more as taught by US’302 in the process of US’371 in view of JP’020 in order to make an electrical steel sheet having excellent magnetic properties as disclosed by US’302. Cooling from 900 ºC-1020 ºC to 550 ºC at a cooling rate of 70 ºC/s takes 5 seconds to 6.7 seconds (calculated by (900-550)/70 and (1020-550)/70), which meets the limitation cooling the hot rolled sheet for 1 second or longer as recited in claim 1.
Regarding claim 2, US’371 discloses examples containing 0.01-0.026 wt% Sb and 0.01-0.13 wt% Sn (Table 8), which meets the limitation recited in claim 2.
Regarding claims 3 and 14, US’371 discloses examples containing 0.01-0.25 wt% Cr and 0.01-0.15 wt% Cu (Table 8), which meets the limitation recited in claims 3 and 14.
Regarding claims 4 and 15, based on the instant Specification, the temperature when γ-phase fraction reaches its maximum is in the range of 1130-1160 ºC for steel having the recited composition, thus the recited temperature range in claim 4 is 1110-1210 ºC. JP’020 discloses that the final rough rolling pass is conducted at a temperature of 1200 ºC or more (Page 3), which overlaps the recited temperature range in claims 4 and 15. 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). See MPEP 2144.05 I. Thus, claims 4 and 15 are obvious over US’371 in view of JP’020 and US’302.
Regarding claims 5 and 16, JP’020 discloses that rough rolling is performed in 5-6 passes (Page 5), not four passes as recited in claims 5 and 16. However, determining the number of passes based on the steel thickness before rolling and after rolling is well-known to one of ordinary skill in the art. Thus, claims 5 and 16 are obvious over US’371 in view of JP’020 and US’302.
Regarding claim 6 and 17, US’371 discloses an example wherein the hot-rolled sheet was cooled from 1090 ºC to 350 ºC at a cooling rate of 40 ºC/s (Col 20, Ln 35-68), which is close to the first average cooling rate and meets that limitation that the second cooling rate is equal to the first cooling as recited in claims 6 and 17. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. Thus, claims 6, 13 and 19 are obvious over US’371 in view of JP’020 and US’302.
Regarding claims 7 and 18, JP’020 discloses that under the hot rolling condition, the recrystallization ratio is 95% or greater (Page 6, 1st paragraph), which meets the limitation recited in claims 7 and 18.
Regarding claims 9 and 20, US’371 discloses that many examples have a magnetic flux density B8 in a rolling direction is 1.94 T or more (Table 5, PC to PJ; Table 7, RC and RD; Table 9-15, all examples), which meets the recited property in claims 9 and 20.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/547,693 (US 20240136095 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of copending Application No. 18/547,693 teach all the composition, structure, property and processing limitations recited in the instant claims and the hot-rolled sheet annealing temperature disclosed in claim 1 of copending Application No. 18/547,693 overlaps the recited temperature range in instant claim 1 and it would be obvious to one of ordinary skill in the art to choose the hot-rolling annealing temperature based on the temperature range disclosed in claim 1 of copending Application No. 18/547,693 in order to make a steel sheet having magnetic flux density of 1.94 T or higher as disclosed in claim 16 of copending Application No. 18/547,693. See MPEP 2144.05 I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 8 and 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
US’371 in view of JP’020 and US’302 do not teach or suggest a skin pass rolling with an elongation rate of 0.1% or more is performed after the finish rolling and before the hot-rolling sheet annealing.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733