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 II, claims 6 and 14-18 in the reply filed on 9/14/2026 is acknowledged. Additionally, the Examiner is assuming the election was made without traverse as Applicant did not present any arguments against the propriety of the restriction requirement.
Claims 1-5 and 7-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 9/14/2026.
Claim Rejections - 35 USC § 102(a)(1)
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 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.
Claims 6, 14-15, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshihiko (JP 2011-246810A, hereinafter “Yoshihiko”).
The Examiner is providing a machine translation of Yoshihiko and all citations refers to this translation, other than the data within the Tables of the foreign publication.
Regarding claims 6, 14, 15, and 17, Yoshihiko teaches a non-oriented electrical steel sheet, that is hot rolled, comprising the following composition (Yoshihiko, [0001], [0009-0011], [0054], and Table 1 of foreign document):
Element
Present Invention, mass%
Yoshihiko, mass%
Yoshihiko, Steel 4, mass%
Si
2.0-5.0
2.0-6.0
3.2
Al
0-3.0
0-3.0
1.10
C
0-0.005
0-0.005
0.0012
Mn
0-3.0
0.05-4.0
1.5
Cr
0-3.0
0.05-6.0
0.10
Ni
0-2.0
0
0
Cu
0-2.0
0
0
P
0-0.2
0-0.1
0.01
S
0-0.0050
0-0.005
0.0007
N
0-0.0050
0-0.005
0.0015
O
0-0.0050
0-0.005
0.0005
Ti
0-0.0040
0
0
Sn
0-0.20
0.002-0.10
Trace amounts
Sb
0-0.20
0.001-0.05
Trace amounts
Mo
0-0.10
0
0
Ca
0-0.01
0
0
REM
0-0.05
0
0
Mg
0-0.01
0
0
Zn
0-0.01
0
0
Balance
Fe and impurities
Fe and impurities
Fe
The composition of Steel 4 of Yoshihiko falls within the ranges of claims 6, 15, and 17 of the present invention.
Additionally, Yoshihiko teaches the total mass ratio of Si to Al in the steel sheet components is preferably 4.10% or more in order to prevent an increase in resistivity (Yoshihiko, [0035]). The calculated Si+Al amount of Steel 4 of Yoshihiko is 4.3%, i.e., 3.2+1.1, and falls within the total content of Si and Al is 3.5% or more of claim 6.
Yoshihiko further teaches a number density of inclusions with a diameter of 0.1-1.0µm in a region within 10µm from the surface of the non-oriented electrical steel sheet for Steel 4 is 49000 particles/mm2 (Yoshihiko, [0055] and Table 1), which falls within the number density of inclusions of claim 6.
Yoshihiko additionally teaches the thickness of Steel 4 plate is 0.30 mm with a broader range possible of 0.05-0.35 mm (Yoshihiko, [0052] and Table 1), which falls within the hot-rolled steel sheet has a sheet thickness of 1.5 mm or less of claim 14.
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.
Claims 16 and 18are rejected under 35 U.S.C. 103 as being unpatentable over Yoshihiko (JP 2011-246810A, hereinafter “Yoshihiko”) as applied to claims 6 and 17 above, and further as evidenced by Austrian Ironworks, “Trace Elements in Steels,” Steel Reports 1985 (hereinafter “Ironworks”).
The Examiner is providing a machine translation of Table 5.4 in the Ironworks reference.
Regarding claims 16 and 18, while Yoshihiko does not explicitly disclose the amounts of the impurities elements within the steel it is generally known in the art that the following elements are present in steel compositions as trace or impurity elements as evidenced by Ironworks (Ironworks, pg. 20, Table 5.4, see also translation):
Element
Present Invention, mass%
Ironworks, wt.%
Overlap
Nb
0-0.005
0-0.005
Same
V
0-0.02
0
0
Ta
0-0.002
0
0
B
0-0.002
0-0.0005
Within
Ga
0-0.005
0
0
Pb
0-0.002
0-0.005
Encompass
W
0-0.05
0
0
Ge
0-0.05
0
0
As
0-0.05
0-0.005
Within
Co
0-0.05
0-0.005
Within
Given that Ironworks teaches that steels generally include trace amounts of Nb, B, Pb, As, and Co as noted in the table above, it would be obvious to one of ordinary skill in that art at least one of these elements would also be included in the non-oriented electrical steel sheet of Yoshihiko, which overlaps with the requirements of claims 16 and 18.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: JP H10-8221 A teaches a non-oriented electrical steel sheet manufactured using hot-rolling in which the composition of steel 16 falls within the ranges of the present invention and also includes 3550 particles/mm2 of inclusions within the steel sheet.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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