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 Rejection
101 rejection is withdrawn.
112 2nd paragraph rejection of claims 1-2 and 4-6 are withdrawn.
102 art rejection is withdrawn.
However, 112 1st paragraph rejection and 103 rejections are rendered in view of amendment.
Status of Claims
Claims 1-6 are pending and are presented for this examination. Claim 1-3 are amended.
Claim interpretation
Instant claim 1 is directed to an aging treatment, not a process of producing a grain-oriented electrical steel sheet. Hence, since first wherein clause with respect to hot rolling a steel slab, which is not part of aging treatment, it is not given patentable distinction over prior art in view of instant PGPUB paragraph [0044] which clearly discloses the instant claimed invention is applicable to both (emphasis added) in the case where the steel slab does not contain inhibitor-forming element (inhibitorless) and in the case where the steel slab contains inhibitor-forming element. Hence, if prior art disclose instant claim 1 required second wherein clause, in the case where the steel slab does not contain inhibitor-forming element (inhibitorless), it still reads on claim 1.
Second, instant claim 1 required optional one or more element is not given patentable distinction over prior art due to term “optionally”.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 01/22/2026, 05/16/2025, 07/12/2024, 03/07/2024 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant claim 1 is amended to recite complete of cooling is defined as the point at which water cooling is stopped. Applicant alleged that the support of such amendment is found in paragraph [0006] of instant application specification. A screenshot of [0006] is provided below, which does not disclose or anywhere suggest “completion of cooling is defined as the point at which water cooling is stopped”. That is, mist cooled at 30 C/s from 900-100 C does not suggest completion of cooling is defined as the point which water cooling is stopped as required by amended claim 1. A skill artisan would consider cooling stop temperature at 100 C as a precise based for calculating the start of the total carbon aging period.
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As a result of rejected claim 1, all dependent claims are also rejected under the same statue.
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.
Claim 3 is 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 pre-AIA the applicant regards as the invention.
It is unclear whether sum of “an aging amount A and an aging amount B” is equivalent to the aging amount in terms of carbon diffusion distance defined in claim 1 or an aging amount A and an aging amount B are independent from the aging amount recited in claim 1.
Clarification 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.
Claim(s) 1-6 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP’156 (JP4258156B2).
As for claims 1-6, JP’156 discloses a method for producing a grain oriented electrical steel sheet by heating a steel slab, hot rolling the slab, subjecting the hot rolled steel sheet to hot rolled sheet annealing; and after cooling (i.e. at a point in which water cooling is stopped), the hot rolled annealed sheet was wound into a hot rolled annealed sheet coil, followed by heating and keeping the hot rolled annealed sheet coil between 15-200 degree C and final cold rolling is followed immediately after. Hence, heating and keeping the hot rolled annealed sheet coil between 15-200 degree C reads on claimed aging treatment. The time of the aging treatment reads on claimed period.
Table 1 Inventive Example 4 discloses carbon diffusion distance (last column of Table 1) from the coil winding (i.e. claimed completion of cooling in annealing before the final cold rolling) to the start of cold rolling (i.e. claimed biting in the final cold rolling) is 2.0x10-5 cm which is equivalent to 0.2 microns. Since the carbon diffusion distance reads on claimed total aging amount of carbon in terms of diffusion distance of carbon, 2.0x10-5 cm is within instant claim 1 required 0.02 to 0.5 microns.
The same Inventive Example 4 discloses the hot rolled annealed sheet coil is kept at 30 degree C (Col 2 of Table 1), which reads on claimed steel sheet held temperature represented by T(t) below.
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30 degree C reads on instant claim 2 required 60 degree or below and is expected to be held at least 95% of the period as claimed. Since the left side above Formula represents the carbon diffusion distance (L) and is controlled to be <=2.0x10-5 as illustrated in Formula above. Instant claim 2 wherein clause is met.
since T represent steel sheet temperature and t represent time from coil winding as indicated in Formula above ([0037]), it reads on instant claim 3 wherein clause.
With respect to amended steel slab composition, it is not given patentable distinction according to claim interpretation above.
It should further be noted JP’156 also discloses a similar steel slab broad range compositions as illustrated in Table 1 below.
Table 1
Element
Applicant
(weight %)
JP’156 et al.
(weight %)
[0031][0032]
Overlap
(weight %)
C
0.01-0.1
0.01-0.08
0.01-0.08
Si
2-4.5
2-8
2-4.5
Mn
0.02-1
0.005-3
0.02-1
Al
0.01-0.08
<0.01
<0.01 is close to 0.01
N
0.006-0.015
0.0055
0.0055 is close to 0.006
S
0.005-0.05
<=0.005
0.005
Se
0.005-0.05
<=0.005
0.005
O
<=0.005
0
0
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
It is well established that a prior art reference that discloses a range that overlaps a claimed range, or encompasses a somewhat narrower claimed range, is sufficient to establish a prima facie case of obviousness. See /n re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Indeed, when the claimed ranges are completely encompassed by the prior art, the obviousness conclusion is even more compelling than in cases of mere overlap. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. A prima facie case of obviousness also exists in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same or similar properties. Id.; see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); and In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018) (In response to an argument by an Appellant that there must be an overlap between the claimed range and prior art range to find obviousness, the Court stated “[t]he nonbinding holding in [a previous case], however, does not stand for the proposition advanced by Appellants that a claimed range and prior art range must overlap for an examiner to find a prima facie case.”).
In the instant case, absent criticality of Al and N, prima facie case of obviousness is maintained in view of Table 1 above.
Response to Argument
Applicant’s argument filed on 07/14/2026 is considered.
Applicant first requests withdrawn of 101 rejection of claim 3, argument is moot since 101 is withdrawn.
Applicant then argues newly amended claims 1-3 overcome 112 2nd paragraph rejection, argument is moot since 112 2nd for claims 1 and 2 are withdrawn.
Applicant then argues amendment of N range in claim 1 is not disclosed in JP’156 as highest N in JP’156 is 55 ppm, argument is not persuasive because 55 ppm is considered close to amended N 0.006% (i.e. 60 ppm) absent criticality of N range.
Lastly, applicant argues amended claim 1 specifies an inhibitor-utilizing composition profiles while JP’156 discloses an inhibitor-less production process, argument is incommensurate in scope of claimed 1 which is directed to an aging treatment, not a production process of inhibitor-utilizing steel sheet. Applicant admitted on the record, that the instant claimed aging treatment is applicable to both (emphasis added) an inhibitor-utilizing and inhibitor-less composition profiles. That is, absent criticality of an inhibitor-utilizing composition profile on magnetic properties, prima facie case of obviousness is maintained.
Applicant is invited to submit 132 Dec demonstrating criticality of Al or N on magnetic properties.
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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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