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 without traverse of Group I, Claims 1 – 7 and 11 – 15 in the reply filed on 07/07/26 is acknowledged. Claims 8 – 10 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/07/26.
Claim Rejections – U.S.C. §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 – 7 and 11 – 15 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.
Regarding claims 1, 3, and 11, the claimed range is indefinite. The claim range is indefinite because the elements of P, As, and/or Sb are limited to a lower limit of 0.005% in claim 1, but claims 3 and 11 allows for amounts as low as 0.001%. Therefore, the metes and bounds of claims 1, 3, and 11 are indefinite. For purposes of examination, the ranges of claims 1 and 3 will be given their broadest reasonable interpretation (i.e., the broadest range of 0.001 – 0.5%).
Claims 2, 4 – 7 and 12 – 15 are rejected by virtue of dependency.
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 – 7 and 11 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Ko (US2020/0032363) in view of Shimizu (JPS62103322, using espacenet translation) and Himmelwerk (NPL, 2021)
Regarding claim 1, Ko teaches a method of producing a grain-oriented steel sheet [Title]. Ko teaches using a steel slab with a compositon of:
Element
Claimed Range (mass%)
Ko (wt%)
Relation
Reference
Carbon (C)
0.03 – 0.085%
0.03 – 0.09%
Overlaps
[0038]
Silicon (Si)
2.0 – 4.5%
3.2 – 4.0%
Falls within
[0036]
Manganese (Mn)
0.03 – 0.5%
0.04 – 0.15%
Falls within
[0042]
Sulfur (S)
0.0005 – 0.03%
0.01% or less
Overlaps
[0046]
Aluminum (Al)
0.005 – 0.025%
0.015 – 0.04%
Overlaps
[0040]
Nitrogen (N)
0.003 – 0.009%
0.001 – 0.005%
Overlaps
[0044]
At least one of P, As, and Sb
0.005 – 0.5%
0.01 – 0.05% P
0.03 – 0.15% Sb
Overlaps
[0052 – 0053]
Al/N
1.7 – 3.0
3 – 40
Overlaps
*
Iron (Fe)
Balance
Balance
Meets
[0031]
*Calculated from the disclosed ranges of Ko
The steel slab is subjected to a method of:
Heating to a range of 1050 – 1200°C [0066], including at a specific temperature for 210 min [0082], which overlaps with the claimed range of at least 5 min.
Hot-rolling with a finishing temperature of 950°C or less [0067], which falls within the claimed range.
Hot-band annealing at 900 – 980°C, which fall within the claimed range, for 30 – 300 seconds, which falls within the claimed range [0069]
Cold rolling the steel sheet for one or more times with an intermediate annealing provided between [0074].
Performing a primary recrystallization annealing [0076]
Performing a secondary recrystallization annealing [0079]
Ko does not describe the heating method (i.e., inductive heating) of the slab heating step.
Shimizu teaches a heating method for a grain-oriented silicon steel [page 2, top of translation]. Shimizu discloses that the induction heating method improves the uniformity of heating in silicon steel slabs. The induction heating comprises heating to the soaking temperature at a particular frequency and input power and then halving the input power and increasing the frequency [page 2, bottom of translation], meeting the claimed limitation. Shimizu also discloses that 50 – 200 Hz can be used as a frequency range for induction heating of silicon steel slabs [page 2 of translation], which falls within the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Ko and applied the induction heating process disclosed by Shimizu. Ko and Shimizu are directed to the same field of endeavor of grain-oriented silicon steels. Moreover, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Shimizu to Ko because both are directed to grain-oriented silicon steels and both use casting processes as the method of production. An ordinarily skilled artisan would have been motivated to apply the teaching because Shimizu teaches that the heating process improves uniformity of heating steel slabs. Additionally, an ordinarily skilled artisan would have had a reasonable expectation of success in using the frequency range disclosed by Shimizu and would have been motivated to do so because as disclosed by Himmelwerk (NPL) frequencies of 50 – 500 Hz are used for inductive heating when deep penetration is needed (i.e., thick workpieces). The reheating of Ko is performed on a steel slab [0066] which would be a thick workpiece and require deeper penetration of the magnetic field to perform heating.
With regards to the overlapping ranges taught, “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Regarding claim 2, Ko in view of Shimizu and Himmelwerk teaches the invention as applied in claim 1. Ko teaches that at least Ni, Cr, Cu, Sn, and/or Sn can be present in an overlapping compositional range(s) [0053 – 0063].
“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)”,
Regarding claims 3 and 11, Ko in view of Shimizu and Himmelwerk teaches the invention as applied in claims 1 and 2, respectively. Ko teaches that phosphorous can be present in a range of 0.01 – 0.05 wt% [0052] and antimony can be present in a range of 0.03 – 0.15 wt% [0053], which meets the claimed limitation of at least two. Moreover, the total (0.04 – 0.2 wt%) overlaps with the claimed range.
“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)”,
Regarding claims 4 and 12, Ko in view of Shimizu and Himmelwerk teaches the invention as applied in claims 1 and 2. Shimizu teaches that the induction heating parameters begin with a lower frequency and then the frequency is increased in the 2nd part of the heating [page 6, bottom of translation]. Shimizu does not disclose that the frequency is lowered, meeting the claim limitations of claim 4 and 12.
Regarding claims 5 and 13, Ko in view of Shimizu and Himmelwerk teaches the invention as applied in claims 1 and 2, respectively. Ko teaches that the hot band annealing includes an additional heating step of heating at 750 – 850°C [0070], which falls within the claimed range. Ko teaches that the hot band annealing is performed for a time of 30 – 300 seconds, which overlaps with the claimed range [0069].
Regarding claims 6 and 14, Ko in view of Shimizu and Himmelwerk teaches the invention as applied in claims 1 and 2, respectively. Ko teaches heating the steel slab to a range of 1050 – 1200°C [0066], which falls within the claimed range.
Regarding claims 7 and 15, Ko in view of Shimizu and Himmelwerk teaches the invention as applied in claims 1 and 2. Ko discloses that it is a well-known method/solution in the art to perform trimming of the rolled edges of the sheet following hot-band annealing/prior to cold rolling in order to reduce the occurrence/presence of edge cracks [0006]. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the method of Ko to include this step in order to reduce number of edge cracks. Given that this solution is disclosed by Ko and Ko discloses winding [0067], an ordinarily skilled artisan would have had a reasonable expectation of success in applying it and would have been motivated to do so in order to reduce edge cracks. Ko is explicit that reducing edge cracks is desirable [0075].
Additionally, Ko does not expressly disclose the amount/depth of edge trimming that occurs, however, this amount would depend upon the overall size of the product being produced and changes to the size and/or shape are a prima facie case of obviousness without evidence of criticality, unexpected results, other secondary considerations (MPEP 2144.04 IV A and B). In this case, applicant has not provided evidence that the size/depth is critical or provides unexpected results. As such, a prima facie case of obviousness exists. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc)(MPEP 2145).
Alternatively to this, Ko expressly describes “edge cracks” as cracks of 5 mm or more in depth [0075] and so an ordinarily skilled artisan possessing ordinary creativity would have found it obvious before the effective filing date to have removed at least 5 mm in size/depth of the sheet of Ko in order to remove “edge cracks” from the sheet.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2016/0108494 – Grain oriented steel production method with overlapping composition and production steps. Disclosure of using inductive heating for slab reheating
KR101870541 – Grain oriented steel production method with overlapping composition and production steps. Disclosure of trimming the edge to remove edge cracks
JP2006206997 – Induction heating method for grain oriented steel involving the stepwise reduction of power
CN110565022 – Producing grain oriented silicon steel with in-line edge trimming. Overlapping compositon and process parameters
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