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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-2 and 5, in the reply filed on 06/30/2026 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/06/2024 and 04/03/2025 has been considered by the examiner.
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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Suehiro et al. (US 2020/0063234) in view of Perry et al. (US 6,621,040).
Regarding claim 1, Suehiro teaches grain oriented electrical steel sheets (Paragraph [0002]). The steel sheets include a forsterite coating and an insulation coating (Paragraph [0011]).
Suehiro is silent with respect to a frequency of formation of cracks propagating through the insulating coating in a region extending 100 pm toward a widthwise middle of the grain-oriented electrical steel sheet from a widthwise edge of the grain-oriented electrical steel sheet is less than or equal to 3.0 times the frequency of formation of cracks propagating through the insulating coating in a region extending toward the widthwise middle from a widthwise position more than 100 pm from the widthwise edge to a widthwise position 500 pm from the widthwise edge, where these frequencies are expressed as a number of cracks per mm of length of the grain-oriented electrical steel sheet.
However, this property appears to be dependent on the materials and methods of forming the steel sheets such that one of ordinary skill in the art would recognize that a steel sheet formed from identical materials and methods would have identical properties. MPEP 2112.01: 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the steel sheets of claim 1 are formed from the materials as described in paragraphs [0045]-[0052] (Instant Specification, PGPUB). Additionally, the forsterite coating is formed from an annealing separator containing MgO being applied to a steel sheet (Paragraph [0055]). The insulating coating is formed from silica and magnesium phosphate or aluminum phosphate (Paragraph [0055]). The methods of forming the steel sheets of claim 1 include hot band annealing, cold rolling, applying the annealing separator, decarburization and final annealing before applying the insulating coating (Paragraphs [0053]-[0055]). Most importantly, the steel sheet is then submitted to a slitting process with a pulse laser in order to inhibit strain resulting in the claimed property.
Suehiro teaches each of the materials and method steps for forming steel sheets required above in paragraphs [0056]-[0093], overlapping with the materials and methods taught by the instant specification. Furthermore, the insulation film onto the resulting steel sheet wherein the insulation film may contain a phosphate and colloidal silica (Paragraphs [0006]; [0095]).
Suehiro is silent with respect to the slitting process taught by the instant specification.
Perry teaches the use of lasers, specifically ultrashort laser pulses, for machining metals (Col. 1, Lines 18-20). The machining is done with very short laser pulses on the scale of 10 femtoseconds to 100 picoseconds allowing for high machining speed with extreme precision including cut quality, negligible heat affected zone and no modification to the material surrounding the kerf (Col. 2, Lines 39-43).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to finish the steel sheets processing by cutting with the ultrashort laser pulses of Perry which are taught to allow for high machining speed with extreme precision including cut quality, negligible heat affected zone and no modification to the material surrounding the kerf.
Furthermore, the steel sheets formed from the materials and methods taught by the combination of Suehiro and Perry are identical to those taught by applicant’s invention, which would result in identical properties. These properties include a frequency of formation of cracks propagating through the insulating coating in a region extending 100 pm toward a widthwise middle of the grain-oriented electrical steel sheet from a widthwise edge of the grain-oriented electrical steel sheet is less than or equal to 3.0 times the frequency of formation of cracks propagating through the insulating coating in a region extending toward the widthwise middle from a widthwise position more than 100 pm from the widthwise edge to a widthwise position 500 pm from the widthwise edge, where these frequencies are expressed as a number of cracks per mm of length of the grain-oriented electrical steel sheet.
Regarding claim 5, Suehiro teaches the steel sheets as discussed above with respect to claim 1. As discussed above, the steel sheets have identical properties as applicant’s claimed invention, which includes the frequency of formation of the cracks propagating through the insulating coating in the region extending 100 pm toward the widthwise middle of the grain-oriented electrical steel sheet from the widthwise edge of the grain-oriented electrical steel sheet is less than or equal to 2.0 times the frequency of formation of the cracks propagating through the insulating coating in the region extending toward the widthwise middle from the widthwise position more than 100jm from the widthwise edge to the widthwise position 500 pm from the widthwise edge.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Suehiro et al. (US 2020/0063234) in view of Perry et al. (US 6,621,040) as applied to claim 1 above, and further in view of Takebayashi et al. (US 2020/0123662).
Regarding claim 2, Suehiro teaches the steel sheets as discussed above with respect to claim 1.
Suehiro is silent with respect to the insulating coating having a roughness factor which is greater than or equal to 2.0.
However, this property of the insulating coating appears to be dependent on the materials and methods of forming the coatings such that a coating which is formed from the same materials and methods would have identical properties (See MPEP 2112.01).
In the instant case, the materials of the insulating coating are preferably formed from silica and either magnesium phosphate or aluminum phosphate, as discussed above. Furthermore, the method of forming the insulating coating includes applying the coating solution having a wet film thickness and baking at a temperature range of 850 to 950°C (Paragraph [0055]).
As discussed above, the insulation films of Suehiro are formed from a phosphate and colloidal silica.
Suehiro is silent with respect to the films being formed from applying via a wet film thickness and baking at 850 to 950°C.
Takebayashi teaches grain-oriented steel sheets which improve adhesion of insulation coatings to base steel sheets (Paragraph [0046]). The insulation coatings are formed from applying and baking a solution containing a phosphate and colloidal silica (Paragraph [0089]). The baking temperature is preferably 650 to 950°C in order to improved adhesion of the coating (Paragraph [0177]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the insulative films of Suehiro to be baked at a temperature range of 650 to 950°C in order to improve adhesion of the films to the steel sheets as taught by Takebayashi.
Furthermore, one of ordinary skill in the art would recognize that the materials and methods of forming the insulation films of Suehiro and Takebayashi are substantially identical to those of applicant’s invention, resulting in substantially identical properties. The properties include a roughness factor of greater than or equal to 2.0.
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 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/715,782 in view of Suehiro et al. (US 2020/0063234). Claim 2 is provisionally rejected further in view of Takebayashi et al. (US 2020/0123662).
Application ‘782 teaches each of the limitations of instant claim 1 with the exception of a forsterite coating being applied between the laminated core and the insulation coating.
Suehiro teaches grain oriented electrical steel sheets (Paragraph [0002]). The steel sheets include a forsterite coating and an insulation coating (Paragraph [0011]). The combination of the forsterite coating and the insulation coating improves iron loss properties (Paragraph [0054]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to provide a forsterite film between the laminated core and the insulation coating in order to improve the iron loss properties as taught by Suehiro.
Claim 2 is taught by the combination of Application ‘782, Suehiro and further in view of Takebayashi as discussed above with respect to the 35 U.S.C 103 rejections of claim 2.
Claim 5 is further taught by Application ‘782.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783
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