DETAILED ACTION
Claim 1 is pending and currently under review.
Claim 2 is cancelled.
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
The amendment filed 5/14/2026 has been entered. Claim 1 remain(s) pending in the application.
Claim Interpretation
The recitation of “without any further cold rolling” is interpreted to refer to the entire claimed method (ie. no further cold rolling besides the recited “cold rolling one, or twice or more…” between hot rolling and pickling), rather than merely instances of cold rolling after decarburization annealing.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (JPH08143971, machine translation referred to herein) in view of Colgan et al. (US 6,210,491).
Regarding claim 1, Suzuki et al. discloses a method of manufacturing a grain-oriented steel sheet for machinery, which one of ordinary skill would understand to be used in electrical applications [0001-0002]. Said method includes steps of hot rolling, cold rolling once or twice or more with intermediate annealing therein, subjecting the cold rolled steel to cleaning, followed by decarburization annealing with a controlled CO concentration of 0 to 10 percent or up to 6 percent in more specific embodiments, and then final coating with an MgO annealing separator and final annealing [0018-0022, 0027]. The examiner notes that the overlap between the parameters of Suzuki et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Suzuki et al. is further silent regarding any further cold rolling steps besides those as already mentioned above, which is considered to meet the claim scope as interpreted above.
Suzuki et al. does not expressly teach that the cleaning after cold rolling is performed by pickling using a solution as claimed. Colgan et al. discloses that it is known to perform pickling to clean steel of detrimental oxide layers during processing [col.1 ln.10-17]; wherein said pickling can be performed with a pickling composition including up to 120 g/L of a ferric species (ie. Fe ion) and up to 300 g/L sulfuric acid [col.4 ln.25-33, col.5 ln.10-25]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Suzuki et al. by performing pickling to clean the steel surface of detrimental oxides as taught by Colgan et al. The examiner notes that the overlap between the ratios of Colgan et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Response to Arguments
Applicant’s arguments regarding the previous 103 rejections have been considered but are moot in view of the new grounds of rejection above.
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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