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 .
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.
Claims 1, 3-9, and 12-14 are rejected under 35 U.S.C. 103 as being obvious over Yashiki et al. (US 2019/0316239, hereafter Yashiki ‘239).
Regarding claim 1, Yashiki ‘239 teaches a non-oriented electrical steel sheet (Yashiki ‘239 para 22) comprising a base metal sheet (Yashiki ‘239 para 22) and an insulating coating on a surface of the metal sheet (Yashiki ‘239 para 91) where the base metal sheet comprises, in mass%, 0-0.0050 C (Yashiki ‘239 para 33),
Component
Claim 1 (mass%)
Yashiki ‘239 (mass%)
Yashiki ‘239 para
Carbon
0.0030 or less
0-0.0050
33
Silicon
3.2-6.5
3.0-4.0
36
Manganese
0.05-3.5
1.2-3.3
39
Phosphorous
0.005-0.10
>0-0.030
42
Sulphur
0-0.0030
>0-0.0050
45
Aluminum
0-1.0
>0-0.0040
48
Titanium
0-0.0030
0.005-0.01
54
Boron
0-0.0010
0-0.005
73
Molybdenum
0-0.030
0-0.5
72
Vanadium
0-0.0010
0-0.005
73
Calcium
0-0.0050
0.0005-0.01
61
Magnesium
0-0.0050
0-0.01
69
REM(Rare Earth Metals)
0-0.0050
0.0005-0.02
59
Tin
0-0.10
0-0.10
64
Antimony
0-0.10
0-0.10
65
Nickel
0-0.10
0-0.50
72
Chromium
0-0.10
0-0.50
72
Copper
0-0.10
0-0.50
72
With the balance being iron and impurities (Yashiki ‘239 para 14, 29).
One of ordinary skill in the art would have considered the invention to have been obvious because the compositional proportions taught by Yashiki ‘239 overlaps with the instantly claimed compositional proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Because Yashiki ‘239 teaches a composition which substantially overlaps the claimed composition, there would necessarily exist embodiments capable of meeting Formula (i).
Further, Yashiki ‘239 teaches that the coating composition may be the same as taught in Applicant’s specification, e.g. at paragraph 40, that the coating may be silica (Yashiki ‘239 para 93) and there would therefore necessarily exist embodiments capable of meeting Formula (ii).
Regarding claim 3, Yashiki ‘239 teaches a non-oriented electrical steel sheet as above for claim 1. Yashiki ‘239 further teaches that the steel sheet thickness should be from about 0.10-0.40 mm (Yashiki ‘239 para 88). While Yashiki ‘239 does not provide a coating thickness, it does provide a coating weight of 0.1-2.0 g/m2, where the coating may be colloidal silica (Yashiki ‘239 para 93). Converting coating weight to coating thickness would provide a coating within the claimed thickness of less than 1 µm, for example, a thickness of about 0.047-0.95 µm.
One of ordinary skill in the art would have considered the invention to have been obvious because the thicknesses taught by Yashiki ‘239 overlaps with the instantly claimed thicknesses and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Regarding claims 4, 8, and 9, Yashiki ‘239 teaches a non-oriented electrical steel sheet as above for claim 1. Yashiki ‘239 further teaches that the non-oriented electrical sheet may be made into an iron core by lamination (Yashiki ‘239 para 3, 92), and may thus be considered to be formed into a predetermined shape. It is respectfully noted that the ‘punching’ and annealing steps in claim 4 are product-by-process limitations as they are present in a product claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claims 5-7 and 12-14, Yashiki ‘239 teaches a non-oriented electrical steel sheet as above for claims 1 and 3. Yashiki ‘239 teaches laminating the non-oriented steel sheet. It is noted that the five sheets is not positively recited, rather it is framed as a testing set up, with further testing parameters like atmosphere, temperature, and dew point. As the material of the non-oriented electrical sheet with an insulating coating is the same, it would be expected to possess the same properties, such as increment of C concentration, iron loss, and amount of carbides would be expected to be the same if measured under the same conditions. 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.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being obvious over Yashiki et al. (US 2019/0316239, hereafter Yashiki ‘239) in view of Yashiki et al. (WO 2021/210672, with US2023/0137498 as the English equivalent, hereafter Yashiki ‘498).
Regarding claims 10 and 11, Yashiki ‘239 teaches a non-oriented electrical steel sheet (Yashiki ‘239 para 22) comprising a base metal sheet (Yashiki ‘239 para 22) and an insulating coating on a surface of the metal sheet (Yashiki ‘239 para 91) where the base metal sheet comprises, in mass%, 0-0.0050 C (Yashiki ‘239 para 33),
Component
Claim 10 (mass%)
Yashiki ‘239 (mass%)
Yashiki ‘239 para
Carbon
0.0030 or less
0-0.0050
33
Silicon
3.2-6.5
3.0-4.0
36
Manganese
0.05-3.5
1.2-3.3
39
Phosphorous
0.005-0.10
>0-0.030
42
Sulphur
0-0.0030
>0-0.0050
45
Aluminum
0-1.0
>0-0.0040
48
Titanium
0-0.0030
0.005-0.01
54
Boron
0-0.0010
0-0.005
73
Molybdenum
0-0.030
0-0.5
72
Vanadium
0-0.0010
0-0.005
73
Calcium
0-0.0050
0.0005-0.01
61
Magnesium
0-0.0050
0-0.01
69
REM(Rare Earth Metals)
0-0.0050
0.0005-0.02
59
Tin
0-0.10
0-0.10
64
Antimony
0-0.10
0-0.10
65
Nickel
0-0.10
0-0.50
72
Chromium
0-0.10
0-0.50
72
Copper
0-0.10
0-0.50
72
With the balance being iron and impurities (Yashiki ‘239 para 14, 29).
One of ordinary skill in the art would have considered the invention to have been obvious because the compositional proportions taught by Yashiki ‘239 overlaps with the instantly claimed compositional proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Because Yashiki ‘239 teaches a composition which substantially overlaps the claimed composition, there would necessarily exist embodiments capable of meeting Formula (i).
Further, Yashiki ‘239 teaches that the coating composition may be the same as taught in Applicant’s specification, e.g. at paragraph 40, that the coating may be silica (Yashiki ‘239 para 93) and there would therefore necessarily exist embodiments capable of meeting Formula (ii).
Yashiki ‘239 is silent with respect to the laminated non-oriented electrical sheet being formed via punching into a motor core comprising a rotator core and a stator core, both comprising the non-oriented electrical steel sheets that have been stress relief annealed at a temperature of 750-900 °C after the punching and lamination steps.
Yashiki ‘239 and Yashiki ‘498 are related in the field of non-oriented electrical sheets that are iron cores. Yashiki ‘498 teaches taking the non-oriented electrical sheet, that has been layered (laminated) then punching it out (Yashiki ‘498 para 122) followed by a step of annealing at a temperature of 750-1050 °C (Yashiki ‘498 para 40) to form a stator and/or rotor core (Yashiki para 2). It would be obvious to one of ordinary skill in the art to modify the laminated non-oriented electrical iron core of Yaskiki ‘239 to be punched into shape and then annealed at an overlapping temperature as taught by Yashiki ‘498 because this would form a motor and/or stator core. Further, one of ordinary skill in the art would have considered the invention to have been obvious because the annealing temperature taught by Yashiki ‘239 in view of Yashiki ‘498 overlaps with the instantly claimed annealing temperature and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA B FIGG whose telephone number is (571)272-9882. The examiner can normally be reached M-Th 9a-6p Mountain.
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, Frank Vineis can be reached at (571) 270-1547. 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.
/LAURA B FIGG/Examiner, Art Unit 1781 4/1/26