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 .
DETAILED ACTION
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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 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) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1)/(a)/(2) or alternatively under 35 U.S.C. 103 as being anticipated or unpatentable over Hayakawa (US 2019/0085423).
Re claims 1-8, Hayakawa discloses grain oriented steel sheet [1] comprising forsterite film [57, 97]. Hayakawa discloses that after the formation of the steel sheet, magnesium sulfate MgSO4 is added to an annealing separator MgO and then subjected to a secondary recrystallization at ~1200 C for 2 h [87]. Given that Hayakawa discloses subjecting the steel sheet to MgSO4/MgO with a secondary recrystallization at ~1200 C with amount of MgSO4 used in the present invention and temperature substantially the same as used in the present invention, it is clear that such process would inherently result in the formation of forsterite (MgSiO4) particles as well as grain boundaries with thickness as claimed comprising S in amount as claimed.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant argues that inherency cannot be established by possibilities or probabilities.
However, the basis for inherency is not based on mere possibility or probability but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the reference. However, the reference teaches all of the claimed components as well as a substantially similar process for making the steel sheet. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. If it is applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e. naturally flow from the prior art), and thus, the burden is properly shifted back to applicant to show that they are not.
Applicant argues that the prior art references do not meet the claimed concentration of S and/or Se at the grain boundary given that the prior art does not introduce an argon (Ar) atmosphere during the temperature rising step.
However, Hayakawa does in fact use argon atmosphere during one of the heating steps (0089).
Applicant argues that the rejection is based on impermissible hindsight and that the absence of any teaching or suggestion regarding the critical range further underscores the non-obviousness of the claimed invention. Applicant also argues that without hindsight, there is no motivation to modify the reference to arrive at the claimed invention.
However, as set forth above, Hayakawa does disclose using argon. Therefore, the examiner is not modifying the reference but rejecting the claims based on the teachings of Hayakawa itself. Although there is no explicit disclosure regarding the amount of S and/or Se at the grain boundaries, given that Hayakawa discloses subjecting the steel sheet to MgSO4/MgO with a secondary recrystallization at ~1200 C with amount of MgSO4 used in the present invention and temperature substantially the same as used in the present invention as well as providing a heating step in an argon atmosphere, it is clear that such process would inherently result in the formation of forsterite (MgSiO4) particles as well as grain boundaries with thickness as claimed comprising S in amount as claimed. The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that Tables 1 and 2 of the present specification establish unexpected or surprising results and establish that controlling the annealing atmosphere to include argon during at least a portion of the temperature rising step results in an improvement in base film adhesion.
However, as set forth above, Hayakawa does in fact use argon atmosphere during one of the heating steps (0089) and therefore would necessarily have the same base adhesion as the present invention. It is further noted that the present claims are rejected under 35 USC 102/103 and that as cited in MPEP 2120.01 and 2152.06, a rejection based on 35 USC 102(a)(1) or 102(a)(2) can only be overcome by (a) persuasively arguing that the claims are patentably distinguishable from the prior art, (b) amending the claims to patentably distinguish over the prior art, (c) submitting a benefit claim under 35 USC 119(e) or 120, (d) submitting and perfecting a claim to priority under 35 USC 119(a)-(d), (e) filing an affidavit or declaration under 37 CFR 1.130, or (f) establishing common ownership or establishing evidence of a Joint Research Agreement to overcome a 35 U.S.C. 102(a)(2) rejection. That is, comparative data is not sufficient to overcome an anticipatory rejection under 35 USC 102(a)(1) or 102(a)(2). Further, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims. The examples use specific electrical steel sheets with specific ceramic particles while the present claims encompass any steel sheets with any ceramic particles.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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