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
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 17, 2025.
Applicant’s election of Group I in the reply filed on December 17, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-6 are pending, claim 1 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Examiner notes that throughout the claim set, “the steel sheet” definitely refers to “the non-oriented electrical steel sheet” and “containing” is an open transitional phrase (MPEP 2111.03 I).
Examiner further notes that claims 3 and 4 do further limit the independent claim by having a maximum amount of the noted elements; however, the lower limits of all listed elements are 0 and as such the elements are optionally included.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, the language “according to an embodiment of the present invention’ in lines 1-2 and 5-6 is language that can be implied. Further, the abstract is too long and should be limited to a single paragraph.
Claim Objections
Claim 1 is objected to because of the following informalities: the phrase "according to an embodiment of the present invention" is language that is subject to broad inte. Claim 1 is further objected to for a period at the end of line 13 and one in the parentheses in line 17, there should be a single period at the end of line 17. Appropriate correction is required.
Claim Rejections - 35 USC § 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.
Claim 4 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 4, claim 4 is rejected as it is indefinite if it is further containing 0.005 wt.% or less of each of the listed elements or the listed elements in total. Examiner suggests adding the word “respectively” at the end of the list to make it definite (See Pg. 12 of applicants’ specification).
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.
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 (both of record in the application).
Regarding claims 1 and 6, Kim teaches a non-oriented electrical steel sheet of a composition wt.% shown below in Table 1 ([0040]; [0061]). 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.
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
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”).
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 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 (MPEP 2112 IV).
As Kim 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 teaches each limitation of claim 1, as discussed above and 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 Park et al. (KR102176351 B1 herein referring to patent family member US 2022/0127690 A1), hereinafter Park (foreign document of record in the application).
Regarding claim 2, Kim teaches each limitation of claim 1, as discussed above, and 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.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Okubu et al. (EP 3187611 A1), hereinafter Okubu (of record in the application).
Regarding claim 5, Kim teaches each limitation of claim 1, as discussed above. Kim does not teach a surface roughness of the steel sheet is 0.15-0.35 microns. 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 exemplar 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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, Humera Sheikh can be reached at 571-272-0604. 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.
/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784