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 .
Status of Claims
Claims 1-2 are amended. Claims 5 and 7-9 are withdrawn. Claims 1-4 and 6 are examined herein.
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 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US’744 (US 2010/0158744) in view of WO’126 (WO2018/221126, US 11,404,189 is used as translation), and further in view of KR’897 (KR101661897).
Regarding claims 1-2, US’744 discloses (Abstract; [0025] to [0056]) a non-oriented electrical steel sheet with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in US’744 to produce a steel composition that meets the recited composition in claim 2. See MPEP 2144.05 I.
US’744 is silent on the amount of O. WO’126 teaches a non-oriented electrical steel that is analogous to the steel of US’744 (See Abstract). WO’126 discloses that O is a harmful element which increases iron loss and should be kept at 0.005 wt.% or less (Col 6, Ln 40-50). Thus, it would be obvious to one of ordinary skill in the art to keep O content to 0.005 wt.% or less as taught by WO’126 in the steel of US’744 in order to make a steel having low iron loss as disclosed by WO’126.
Element
Claims 1 and 2
(mass %)
US’744
(mass %)
Overlap
(mass %)
C
0.0-0.005 (cl. 2)
0-0.06
0-0.005
Si
2-5 (cl. 2)
0.2-6.5
2-5
Mn
0-3 (cl. 2)
0.05-3
0.05-3
P
0.01-0.2 (cl. 1)
0-0.3
0.01-0.2
S
0-0.005 (cl. 2)
0-0.04
0-0.005
Al
0-3 (cl. 2)
0-2.5
0-2.5
N
0-0.005 (cl. 2)
0-0.02
0-0.005
Cr
0-3 (cl. 2)
0-2.9
0-2.9
O
0-0.005 (cl. 2)
---
---
Fe + Impurities
Balance
Balance
Balance
US’744 in view of WO’126 does not explicitly disclose the ferrite grain size limitation and the residual stress limitation as recited in claim 1. However, these structure and property limitations depend on the steel composition and a method of making the non-oriented electrical steel.
US’744 discloses a method for preparing non-oriented electrical steel (abstract, tables 3-4, [0056] to [0068]), comprising: casting molten steel to obtain a slab; sequentially heating, hot rolling and coiling to obtain a hot-rolled coil; sequentially performing annealing treatment, cold rolling on the hot-rolled sheet; continuously annealing the cold-rolled steel, and in the continuously annealing, an annealing temperature is 800°C or more, a soaking time is 5 second or more, a cooling rate from the annealing temperature to 300 ºC or less is 40°C/s or more with examples annealed at 950-1100 ºC for 30 second followed by cooling to 300 ºC at a cooling rate of 40-240 ºC/s (Table 4). The annealing temperature, time and cooling rate disclosed in the examples meet the processing parameters disclosed in instant Specification (see Paragraphs [0014] to [0018] of instant Specification). The difference between the process of US’744 and instant Specification is that US’744 does not disclose that the annealing is performed under a tension of 1-10 MPa.
KR’897 teaches a method of making non-oriented electrical steel that is analogous to the method of US’744 (Page 4). KR’897 discloses that applying a tension of 0.2-0.6 kgf/mm2 (i.e. 1.96-5.88 MPa) during annealing the cold rolled steel sheet improves it’s magnetic properties (Page 4). Thus, it would be obvious to one of ordinary skill in the art to apply a tension of 1.96-5.88 MPa as taught by KR’897 in the annealing process of US’744 in order to improve the magnetic properties of the non-oriented electrical steel as disclosed by KR’897.
In view of the fact that US’744 in view of WO’126 and KR’897 teaches a steel composition that overlaps the recited composition in claims 1 and 2 and a method of making the steel that meet the recited processing parameters disclosed in instant Specification, one of ordinary skill in the art would expect that the steel disclosed US’744 in view of WO’126 and KR’897 meets the ferrite grain size limitation and the residual stress limitation as recited in 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.
Regarding claims 3-4 and 6, US’744 discloses that the steel contains 0.001-30 wt. % Cu, 0-1 wt. % Ti, 0-1 wt. % V ([0038] to [0045]), which overlaps the recited composition in claims 3-4 and 6. 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 3-4 and 6 are obvious over US’744 in view of WO’126 and KR’897.
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 1-4 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/571824 (US 20240295015 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3 of copending Application No. 18/571824 teach every limitation recited in instant claims 1-4 and 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 08/06/2026 have been fully considered but they are not persuasive.
The applicants argued that the double patenting rejection should be withdraw.
In response, claims 1-3 of copending Application No. 18/571824 teach the composition limitation, the grain size limitation and the compressive residual stress limitations recited in the instant Claims. Thus, the double patenting rejection is maintained.
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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 5712721401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/XIAOWEI SU/ Primary Examiner, Art Unit 1733
Prosecution Insights