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 .
Status of Claims
Claims 1-2 and 8-11 are pending and are presented for this examination.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 06/24/2024, 08/26/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being 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.
Claim(s) 1-2 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Oda (WO2019117095A1 using US20210134500 as equivalent English translation) in view of Zaizen (WO2020262063 using US20220278566 as equivalent English translation).
As for claims 1, 9 and 11, Oda discloses a multilayer electrical steel sheet which is non-oriented ([0002]) having a stacked structure of an inner layer (10) and a surface layer (20) located on each of both sides of the inner layer (10) as illustrated in Figure 1.
Each of the surface layer has Si 2.5-6%, C 0.001-0.02% and at least one of Sn 0.001-0.1 or Sb 0.001-0.1%. (Claims 1 and 3)
the inner layer has Si 1.5-5%, C 0.001-0.01% and at least one of Sn 0.001-0.1 or Sb 0.001-0.1%. (Claims 1 and 3)
ΔSi is preferably 1-2.9% [0103], ΔSi being defined as a difference between a Si content in the surface layer [Si]1 and a Si content in the inner layer [Si]0 represented by [Si]1 − [Si]0
a sheet thickness t of 0.03 mm to 0.3 mm which overlaps instant claims 9 and 11 thickness range, hence creating a prima facie case of obviousness due to overlapping. See MPEP 2144.05 I.
A ratio of a total thickness of the surface layers t1 to t is from 0.10 to 0.70. (Abstract), which overlaps claimed 0.08-0.73.
Oda does not expressly teach the inner or outer layers of the electrical steel sheet contain 0.001%-0.005% Co.
Zaizen discloses a non-oriented electrical steel sheet (¶ 2) and teaches adding Co, in addition to Ni, Cu, and Cr, in a total amount of 0.01%-1.0% mass in order to reduce iron loss and increase steel strength (¶¶104-105). This imputes a Co content of up to 1.0% mass.
Hence, it would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include Co as taught by Zaizen, in the electrical steel sheet of Oda in order to reduce iron loss and increase strength.
The ranges of the prior art combination overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Oda also does not expressly disclose a ratio B50/Bs and an iron loss W10/10k for satisfying claimed formula (1).
However, the present invention states that meeting the claimed B50/Bs and iron loss W10/10k for satisfying claimed formula (1) are dependent upon the claimed ΔSi being within the claimed range of 0.5%-3.3% and the thickness ratio being between the claimed range of 0.08-0.73 (see instant application Figs. 1- 3).
The electrical steel sheet of Oda falls within these parameters. Additionally, the thickness of the steel sheet of Oda is 0.03-0.3 mm, which is substantially similar to the thickness of 0.03-0.20 mm used for the present invention. Accordingly, one of ordinary skill in the art would expect the electrical steel sheet of the prior art combination to meet the claimed B50/Bs ratio and iron loss W10/10k for satisfying claimed formula (1), absent objective evidence to the contrary. See MPEP 2112.
As for claim 2, Zaizen teaches including 0.01%-5% Ni (¶¶ 52-53), 0.0001%-0.03% Ca, Mg, and REM (¶¶ 50-51), and 0.20% or less P (¶¶ 40-41) in the electrical steel sheet. The prior art ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
As for claims 8 and 10, Oda in view of Zaizen does not expressly teach the maximum intensity value of {100} plane integration degree is 6.0 or more in a Φ2 = 45° section. However, the present specification states this is achieved by having the claimed amounts of Co, Sn, Sb, and P (see Spec., ¶ 42). The composition of the prior art combination meets the claimed Co, Sn, Sb, and P amounts. Accordingly, one of ordinary skill in the art would expect the electrical steel sheet of the prior art combination to exhibit the claimed maximum intensity value of {100} plane integration degree is 6.0 or more in a Φ2 = 45° section, absent objective evidence to the contrary. See MPEP 2112.
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 1-2 and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 18/724,296.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed invention claim a non-oriented electrical steel sheet that is a multilayer electrical steel sheet having a stacked structure of an inner layer and a surface layer located on each of both sides of the inner layer, wherein the surface layer has a chemical composition containing similar elemental ranges, the inner layer has a chemical composition containing similar elemental ranges, ΔSi, ratio of t1/t, B50/Bs and an iron loss W10/10k for satisfying formula (1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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