Detailed Office Action
Notice of Pre-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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Restriction/Election
Applicant's election with traverse of Group I, Claims 1, 5 and 7 in the reply filed on 05/13/26 is acknowledged. The traversal is on the ground(s) that the cited reference of Kono (JP2007/254801) requires a higher content of vanadium than the claimed range. This is found persuasive in view of the amendments. However, upon further consideration Groups I and II lack a shared special technical feature in view of Kono (JP2007/186790, using espacenet translation).
Kono teaches a composition that meets claim 1 [Table 1, Example D] with the exception of a higher content of Ti, wherein a prima facie case of obviousness exists where claimed ranges do not overlap with the prior art but are merely close (MPEP 2144.05 I). Kono teaches hot-rolling, hot-roll annealing, cold-rolling, and continuous finish annealing [0040]. Kono teaches an example in which the finish annealing is 800°C, the line tension is 20 MPa [Table 3, Example 30], and soaking is 20 seconds [0040, 0047]. The non-recrystallization ratio is 78% and tensile strength is above 500 MPa [Table 3, Ex 30]. As such, given that Kono teaches substantially identical annealing parameters to those described in Table 1 of the specification, as well as a recrystallization/non-recrystallization ratio that meets claims 5 and 7. There is a reasonable expectation that the example Kono would possess the claimed features (grain size of 50 µm or less, yield strength of 500 MPa or more, and compressive residual stresses) of claim 1 as a result of the processing steps/parameters disclosed.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, Claims 6 and 10, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/13/26.
Claim Warning
Applicant is advised that should claim 5 be found allowable, claim 7 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections – U.S.C. §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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kono (JP2007/186790, using espacenet translation)
Regarding claim 1, Kono teaches a non-oriented steel sheet [Title]. Kono teaches a composition of: [Example D, Table 1]
Element
Claimed Invention (mass%)
Kono mass%
Relation
Carbon (C)
0 – 0.005%
0.0045%
Falls within
Silicon (Si)
2.0 – 5.0%
2.9%
Falls within
Manganese (Mn)
0 – 3.0%
0.44%
Falls within
Phosphorous (P)
0 – 0.2%
0.01%
Falls within
Sulfur (S)
0 – 0.005%
0.001%
Falls within
Aluminum (Al)
0 – 3.0%
0.36%
Falls within
Nitrogen (N)
0 – 0.005%
0.0033%
Falls within
Chromium (Cr)
0 – 3.0%
Does not teach
Meets
Oxygen (O)
0 – 0.005%
Does not teach
Meets
Tin (Sn)
0 – 0.2%
Does not teach
Meets
Antimony (Sb)
0 – 0.2%
Does not teach
Meets
Calcium (Ca)
0 – 0.01%
Does not teach
Meets
Magnesium (Mg)
0 – 0.01%
Does not teach
Meets
Rare Earth Metals (REM)
0 – 0.05%
Does not teach
Meets
Copper (Cu)
0 – 0.5%
Does not teach
Meets
Nickel (Ni)
0 – 0.5%
Does not teach
Meets
Germanium (Ge)
0 – 0.05%
Does not teach
Meets
Arsenic (As)
0 – 0.05%
Does not teach
Meets
Cobalt (Co)
0 – 0.05%
Does not teach
Meets
Titanium (Ti)
0 – 0.005%
0.35%
Outside of
Niobium (Nb)
0 – 0.005%
Does not teach
Meets
Vanadium (V)
0 – 0.01%
Does not teach
Meets
Tantalum (Ta)
0 – 0.002%
Does not teach
Meets
Boron (B)
0 – 0.002%
Does not teach
Meets
Gallium (Ga)
0 – 0.005%
Does not teach
Meets
Lead (Pb)
0 – 0.002%
Does not teach
Meets
Zinc (Zn)
0 – 0.005%
Does not teach
Meets
Molybdenum (Mo)
0 – 0.05%
Does not teach
Meets
Tungsten (W)
0 – 0.05%
Does not teach
Meets
Iron (Fe)
Balance
Balance
Meets
*Shaded indicates optional
Kono does not expressly teach the average ferrite grain size, yield strength, or compressive residual stress at the surface and center, as claimed.
Kono teaches hot-rolling, hot-roll annealing, cold-rolling, and continuous finish annealing [0040]. Kono teaches an example in which the finish annealing is 800°C, the line tension is 20 MPa [Table 3, Example 30], and soaking is 20 seconds [0040, 0047]. The non-recrystallization ratio is 78% and tensile strength is above 500 MPa [Table 3, Ex 30]. As such, given that Kono teaches substantially identical annealing parameters to those described in Table 1 of the specification, as well as a recrystallization/non-recrystallization ratio that meets claims 5 and 7. There is a reasonable expectation that the example Kono would possess the claimed features (grain size of 50 µm or less, yield strength of 500 MPa or more, and compressive residual stresses) of claim 1 as a result of the processing steps/parameters disclosed.
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, in this case the annealing conditions, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)
While the content of titanium is outside the claimed range, “[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) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” (MPEP 2144.05 I).
Regarding claims 5 and 7, Kono teaches the invention as applied in claim 1. Kono teaches that the non-recrystallized structure is 78% [Example 30, Table 3], which meets the claimed range of claims 5 and 7.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Liu (EP3872195, cited in the IDS of 12/24/24)
Regarding claim 1, Liu teaches a non-oriented steel sheet [Title]. Liu teaches an example with a composition of [Table 1, No. 4].
Element
Claimed Invention (mass%)
Liu mass%
Relation
Carbon (C)
0 – 0.005%
0.0006%
Falls within
Silicon (Si)
2.0 – 5.0%
2.4%
Falls within
Manganese (Mn)
0 – 3.0%
0.69%
Falls within
Phosphorous (P)
0 – 0.2%
0.0012%
Falls within
Sulfur (S)
0 – 0.005%
0.0012%
Falls within
Aluminum (Al)
0 – 3.0%
0.7%
Falls within
Nitrogen (N)
0 – 0.005%
0.0009%
Falls within
Chromium (Cr)
0 – 3.0%
0.92%
Falls within
Oxygen (O)
0 – 0.005%
Does not teach
Meets
Tin (Sn)
0 – 0.2%
0.07%
Falls within
Antimony (Sb)
0 – 0.2%
Does not teach
Meets
Calcium (Ca)
0 – 0.01%
Does not teach
Meets
Magnesium (Mg)
0 – 0.01%
Does not teach
Meets
Rare Earth Metals (REM)
0 – 0.05%
Does not teach
Meets
Copper (Cu)
0 – 0.5%
Does not teach
Meets
Nickel (Ni)
0 – 0.5%
0.6%
Outside of
Germanium (Ge)
0 – 0.05%
Does not teach
Meets
Arsenic (As)
0 – 0.05%
Does not teach
Meets
Cobalt (Co)
0 – 0.05%
Does not teach
Meets
Titanium (Ti)
0 – 0.005%
0.0042%
Falls within
Niobium (Nb)
0 – 0.005%
Does not teach
Meets
Vanadium (V)
0 – 0.01%
0.0045%
Falls within
Tantalum (Ta)
0 – 0.002%
Does not teach
Meets
Boron (B)
0 – 0.002%
Does not teach
Meets
Gallium (Ga)
0 – 0.005%
0.2%
Outside of
Lead (Pb)
0 – 0.002%
Does not teach
Meets
Zinc (Zn)
0 – 0.005%
Does not teach
Meets
Molybdenum (Mo)
0 – 0.05%
Does not teach
Meets
Tungsten (W)
0 – 0.05%
Does not teach
Meets
Iron (Fe)
Balance
Balance
Meets
*Shaded indicates optional
The yield strength is 501 MPa, which meet the claimed range [Table 6].
Liu does not expressly teach the average ferrite grain size or compressive residual stress at the surface and center, as claimed.
Liu teaches hot-rolling, hot-roll annealing (referred to as normalizing), cold-rolling, and continuous finish annealing [0057]. Liu teaches an example [0059 notes that No 4 composition is used] in which the finish annealing is 960°C, the line tension is 15 MPa, and soaking is 1.8 seconds [Table 5, Example 12]. The yield strength is 501 MPa, which meet the claimed range [Table 6].
As such, given that Liu teaches substantially annealing parameters to those described in Table 1 of the specification, as well as the yield strength. There is a reasonable expectation that the example of Liu would possess the claimed features (grain size of 50 µm or less and compressive residual stresses) of claim 1 as a result of the processing steps/parameters disclosed.
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, in this case the annealing conditions, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)
While the contents of nickel and gallium are outside the claimed range, “[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) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” (MPEP 2144.05 I).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 4 of copending Application No. 18/570,350 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because non-oriented electrical steel with the same composition and properties as the claimed sheet.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2021/0395866 – Electrical steel strip with annealing performed at amounts of less than 10 N/mm2 (10 MPa)
JPH01234524 – Continuous annealing of electrical steel at 10 MPa or less.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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, Sally Merkling can be reached on (571) 272-6297. 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.
/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights