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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 12, 2026 has been entered.
Claims 1-4 and 6 are pending; claim 1 is independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Examiner’s Note
Applicant states that their amendment at after final did not “introduce a combination that was absent from the prior claim set”, examiner wishes to emphasize that while claim 5 was previously considered with reliance on claim 1, the amendment to incorporate the limitation previously in claim 5 into claim 1 creates new combinations not previously considered for claims 2-4 and 6. For example, now claim 2 also requires the roughness limitation in addition to copper-this combination was never previously examined. Therefore, the amendment does indeed create “new combinations of claim limitations not previously considered in the dependent claims”. Examiner reiterates that therefore new issues were raised after Final Rejection and the Advisory Action was appropriate.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO2020017713A1 herein referring to patent family member EP3825434A1), hereinafter Kim in view of Okubu et al. (EP 3187611 A1), hereinafter Okubu (of record).
Regarding claims 1 and 6, Kim teaches a non-oriented electrical steel sheet of a composition wt.% shown below in Table 1 ([0040]; [0061]).
Table 1 (wt.%)
Instant claim 1
Instant claims 3-4
Kim [0040]; [0061]
Si
3.1-3.8
2.5-6.0
Al
0.5-1.5
0.2-3.5
Mn
0.3-1.5
0.2-4.5
Cr
0.02-0.15
0.01-0.2
Sn
0.003-0.08
0.01-0.08 (and/or Sb)
Sb
0.003-0.06
0.005-0.05 (and/or Sn)
Fe & inevitable impurities
balance
Balance
Formula 1: [Cr]+[Sn]+[Sb]
0.03-0.2
Calculates to 0.015 to 0.33
C, N, S, Ti, Nb, V
≤0.005
≤ 0.004
One or more of
P
≤ 0.08
0.005-0.08
Mo
≤0.03
B
≤ 0.0050
Ca
≤0.0050
Mg
≤0.0050
0.0005-0.05
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Kim does not specifically teach comprising a surface portion present from a surface of the steel sheet to 1/10 of a thickness of the steel sheet in a direction from the surface of the steel sheet towards an inside of the steel sheet, and a central portion, wherein when the non-oriented electrical steel sheet is punched, a length of a plastically deformed portion is ≤ 100 microns, the plastically deformed portion referring to a length of a portion from a punched end portion where hardness of the surface portion exceeds 1.10 times that of the central portion, nor the hardness of the surface portion is 1.05-1.10 times that of the central portion (hereinafter these shall be known as “the claimed properties”), nor a surface roughness of the steel sheet is 0.15-0.35 microns.
Regarding the roughness, Okubu is in the similar field of endeavor of a non-oriented electrical steel sheet (Abstract) and teaches a mean roughness Ra of the steel sheet surface of 0.2 microns or less (Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the prior art of Kim to incorporate the roughness of Okubu. The motivation for doing so would have been simple substitution of known elements for others to obtain predictable results (MPEP 2143 IB). The prior art of Kim contained a product which differed from the claimed product only by the average surface roughness (finding 1). This hardness was known in the art of non-oriented steel sheets as cited above (finding 2). One of ordinary skill in the art would have looked to related art to modify the roughness and the results of the substitution would have been predictable (finding 3).
Further, the examiner notes that even at a surface roughness of 0.2 microns, and all of other Formula 2 exemplary values above as noted in the rejection of claim 1, the left side of the equation calculates to 44.5, which is still less than a dew point of 50⁰C.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
One of ordinary skill in the art, before the effective filing date of the invention, would have expected substantially identical materials (discussed above) treated in a substantially identical manner as applicants to have substantially identical properties (including the claimed properties). Applicant teaches a method of forming the claimed non-oriented electrical steel sheet in claim 7 shown below in Table 2. Kim teaches processing ranges (Table 2 below) that overlap those taught by applicant; where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP 2144.05 I).
Table 2
Instant Claim 7
Kim ([0077]-[0085]; [0014]; [0082])
Hot-rolling
Hot rolled
Cold-rolling
Cold-rolled
Annealing
First treatment of raising from 200 to 500⁰C
Second treatment of raising to 500⁰C to a soaking temperature
Final annealing
Heated to 450-600⁰C
End temperature of 850-1050⁰C
Soaking treatment (Pg. 18 may be 800-1070⁰C for 10 seconds to 5 minutes)
Held at end temperature of 850-1050⁰C for 30 seconds to 3 minutes
Meets formula 2 of {([Cr]+[Sn]+[Sb])x(sheet thickness)}/{([Si]+[Al])x(sheet roughness)}≤[DP]
Thickness 0.2-0.65 mm (~200-650 microns); Roughness 1-5 microns; Dew Point -10 to 60⁰C
Includes values such as 0.1wt% Cr, 0.05wt% Sn, 0.05wt% Sb, 200 micron thickness, 3.5wt% Si, 1 wt.% Al and 1 micron roughness which calculates to 8.9, which is less than dew point of 50⁰C
Given substantially identical materials and processing parameters (as discussed above), one of ordinary skill in the art before the effective filing date of the invention would have expected the product of Kim in view of Okubo to have substantially identical properties to that of applicant; including the claimed properties, meeting applicant’s claimed requirements.
The examiner has provided a basis in technical reasoning that the processing and compositions are substantially identical in support of the determination that the inherent characteristic of the claimed properties necessarily flows from the teachings of Kim in view of Okubo (MPEP 2112 IV).
As Kim in view of Okubo teaches a substantially identical product, produced by a substantially identical process as that which applicant claims and discloses as producing the claimed properties, one of ordinary skill in the art, before the effective filing date of the invention, would expect the product of Kim to possess the claimed properties, absent an objective showing (MPEP 2112). The PTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of the claimed product, whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same (MPEP 2112 V).
Regarding claims 3 and 4, Kim in view of Okubo teaches each limitation of claim 1, as discussed above and Kim further teaches the composition shown above in Table 1 ([0040]; [0061]). Regarding Mo, B and Ca, Kim is silent to the presence of these elements, such that they are not considered to be present in appreciable amounts, also note examples. If these elements are not listed it is understood to one of ordinary skill in the art that it is reasonable that they are not present. Therefore, the elements are considered to be present in an amount within, or at least overlapping, applicant’s claimed proportions (which include 0%).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Okubo, further in view of Park et al. (KR102176351 B1 herein referring to patent family member US 2022/0127690 A1), hereinafter Park (of record).
Regarding claim 2, Kim in view of Okubo teaches each limitation of claim 1, as discussed above, and Kim further teaches inevitable impurities in the steel ([0040]). Kim does not specifically teach, further containing 0.01-0.2 wt.% Cu. Park is in the similar field of endeavor of non-oriented electrical steel sheets (Abstract) and teaches Cu at ≤ 0.05 wt.%. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the inventio to modify Kim to incorporate the amount of Cu of Park. The motivation for doing so would have been Kim teaches inevitable impurities in the steel ([0040]) and Park teaches that these inevitable elements include Cu at ≤0.05 wt.%. Therefore, it would have been reasonable to look to Park to detail the inevitable impurities in the steel.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Response to Arguments
Applicant's arguments filed August 12 have been fully considered but they are not persuasive regarding the obviousness rejections. Examiner first notes that applicant repeatedly refers to “Formula 2” in their arguments, but notes that “Formula 2” is not commensurate in scope with any claim limitations presently under consideration (it is in withdrawn claims). Examiner acknowledges applicants reference to specific examples; however, the data provided is insufficient to prove unexpected results (or critical significance). To establish the unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed ranges to show the criticality of the claimed range (MPEP 716.02(d),II).
Specifically, comparative example 8 shows a value for Formula 1 of 0.240, which is not outside the range as presently claimed. The present upper limit is 0.2, which 0.240 rounds to; therefore this is not considered “outside the claimed range” and also fails to show criticality. Assuming arguendo that applicant intended to claim 0.20, then 0.240 is too far beyond 0.20 to assume criticality of 0.20 (also the closest point inside the range is 0.10, which is substantially different than the claimed limit). Comparative example 2 referenced for Formula 2 (again, not claimed, but responded to here for inherency) is a single data point and again fails to “compare a sufficient number of tests both inside and outside the claimed range”, therefore, criticality is not persuasive.
Applicants’ arguments that Kim, Park and Okubu do not recognize the relationship claimed in the Formulas are not persuasive, as “[t]he reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (MPEP 2144 IV). The motivation to combine does not need to address the coordination of variables. The individual elements of the formulas are taught by the prior art of record, and there is a motivation to combine these references, again the prior art does not need to suggest the combination to the same advantage of applicant (MPEP 2144 IV). The art presently cited is well aware of the product and the process by which it is made, and therefore inherent properties as claimed by applicant. A person of ordinary skill in the art would have motivation to combine these references (whether or not for the same advantage as applicant is of no importance or relevance), as rejected above. Therefore, arguments to the contrary are not persuasive.
Conclusion
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/KATHERINE A CHRISTY/ Primary Examiner, Art Unit 1784
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