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 II, claims 5-11 and 13-19 in the reply filed on 09/14/2026 is acknowledged.
Claims 12 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Status of Claims
Claims 1-20 are pending. Claims 1-11 and 13-19 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 06/27/2026, 1002/2026 and 10/02/2026 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
Instant claims 1-2, 3, 8, 10, 16, 18 recited “preferably” is considered optional limitation. Hence, all limitations immediately after optional term “preferably” is not (emphasis added) patentable distinction over prior art.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3-5 and 7-11 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Han (US20160322138).
As for claims 1, 3-5 and 7-11, Han discloses a coating agent for grain oriented electrical steel sheet [0002], wherein the steel sheet itself reads on instant claim 5 required substrate containing Si at 3.1% [0097]. Hence, the substrate is expected to be a ferro-silicon alloy having a Goss texture as required by instant claim 10. The substrate is expected to be a forsterite-free ceramic film as required by instant claim 11.
The substrate has a thickness of 0.24 mm ([0097] line 4), which reads on instant claim 9 required 0.15-0.50 mm.
A coating layer formed on the surface of the substrate, with a coating weight of 4 g/m2 ([0100]), which reads on instant claim 8 required coating amount.
Table 2 discloses coating Specimen 6 having Mg phosphate salt derivate 90 g, Al phosphate salt derivate 10 g, colloidal silica 100g and chromium oxide 10 g. Hence, coating Specimen 6 suggests a coating comprises a phosphate salt, a colloidal silica and a chromic acid compound as required by instant claim 1. The Mg phosphate salt derivate reads on claimed magnesium dihydrogen phosphate([0072]). The Al phosphate salt derivate reads on claimed aluminum dihydrogen phosphate ([0073]). Hence, instant claim 1 wherein the phosphate salt comprises magnesium dihydrogen phosphate and aluminum dihydrogen phosphate is met.
Using MW of Al and Mg, molar ratio of elemental Al to element Mg in the phosphate salt is expected to be between 0.02-0.15 as required by instant claim 1.
A mass ratio of the colloidal silica to the phosphate salt is expected to be 100g/100g=1, which is within 0.8-1.2 as required by instant claim 3.
A mass ratio of the chromic acid compound to the phosphate salt is expected to be 10/100=0.1, which is within 0.1-0.5 as required by instant claim 4.
Table 3 illustrates same Specimen 6 has iron loss 0.82 after stress annealing, which is within 0.6-1.37 as required by instant claim 7.
Claim(s) 6 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Han.
As for claim 6, instant claimed surface tension and degree of tension deterioration are resulting characteristics of same coating composition as required by instant claim 1 and method of manufacturing including sintering temperature at 850 degree C according to MPEP 2112.01.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See 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). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
In the instant case, Han disclose exactly same coating composition including molar ratio of Al to Mg as required by instant claim 1 and same sintering temperature of 850 degree C ([0097]) as required by instant application 800-880 degree C. Hence, Han’s grain-oriented silicon steel sheet is expected to have same surface tension and degree of tension deterioration as required by instant claim absent clear and convincing evidence of the contrary.
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) 2 and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Han (US20160322138).
As for claims 2, It is noted Han’s specimen 6 has colloid silica and solid silica. However, Han explicitly discloses the silica may be colloid silica, solid silica or a mixture ([0055]). That is, Han suggests the silica may be colloid silica only.
Hence, it would have been obvious to one skill in the art, at the time of the invention is made to substitute solid silica with colloid silica as Han explicitly discloses the silica may be colloid silica only with expected success.
As a result, instant claim 2 “wherein the coating consisting of phosphate salt, the colloidal silica and the chromic acid compound” is met.
As for claim 13, it is rejected for the same reason set forth in rejection of claim 5 above.
As for claim 14, it is rejected for the same reason set forth in rejection of claim 6 above.
As for claim 15, it is rejected for the same reason set forth in rejection of claim 7 above.
As for claim 16, it is rejected for the same reason set forth in rejection of claim 8 above.
As for claim 17, it is rejected for the same reason set forth in rejection of claim 9 above.
As for claim 18, it is rejected for the same reason set forth in rejection of claim 10 above.
As for claim 19, it is rejected for the same reason set forth in rejection of claim 11 above.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNY R WU/Primary Examiner, Art Unit 1733
