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 .
This application is a 371 of PCT/JP2022/036059 09/28/2022, with FOREIGN APPLICATIONS: JAPAN 2022-007595 01/21/2022.
DETAILED ACTION
Claims 1-20 remain for examination, wherein claim 1 is an independent claim.
Claim Objections
Claim 1 is objected to because of the following informalities: the “…” in formula (1) should be deleted. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention. In the instant case, 1) “a refractive index R” related to the measure method, which should be added to the instant claim. 2) since there is no specific amount of “ A” and “R”, which does not add patentable weight for the instant claim.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-5, 7-14, and 18-20 is rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Terashima et al (US-PG-pub 2019/0333662 A1, listed in IDS filed on 7/18/2024, updated as US 11,894,167 B2, thereafter PG’662).
Regarding claims 1-3 and 8, PG’662 teaches a grain-oriented electrical steel sheet having an insulating film disposed on a surface thereon (Abstract and examples of PG’662). PG’662 provides example to apply 5 mass % phosphoric acid aqueous solution to treat the steel sheet with A forsterite film (par.[0062] of PG’662), which reads on the pre-treatment liquid (cl.1-3 and 8) and reads on the amount of phosphate concentration range of 0.2-30.0 mass% (cl.3 and 8). Since PG’662 teaches all of the limitations in the instant claims, claims 1-3 are anticipated by PG’662.
Regarding claims 4 and 9-11, PG’662 teaches method of applying baking to form an insulating coating treatment liquid containing a phosphate (par.[0062] of PG’662).
Regarding claims 5, 12-14, PG’662 provides example to apply 5 mass % phosphoric acid aqueous solution to treat the steel sheet with A forsterite film (par.[0062] of PG’662), which reads on the claimed limitation as claimed in the instant claims.
Regarding claims 7 and 18-20, PG’662 does not specify including Cr in the treatment solution (par.[0062] of PG’662), which reads on the claimed Cr content as claimed in the instant claims.
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.
Claim(s) 6 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’662 in view of Donofrio (US 4486241, listed in IDS listed in IDS filed on 3/31/2025, thereafter US’241).
Regarding claims 6 and 15-17, PG’662 does not specify pre-treatment conditions as claimed in the instant claims. US’241 teaches an aqueous compositions and low temperature processes for treating clean steel and galvanized steel to provide a coating suitable for the application of paint thereto (abstract of US’241) including H3PO4 (table 3, lns.21-40 of US’662). US’662 specify applying treatment at temperature 90-130oF (about 32-54oC—noted by the Examiner) for about 30 sec. to 2 min. (Col.3, lns.1-17 of US’241), which is within the claimed temperature and overlapped in the claimed time duration as claimed in the instant claims. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the time duration of the treatment from the disclosure of US’241 in the process of PG’662 in order to obtain desired coating on the steel sheet. (Abstract, examples, and claims of US’241).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-14 of copending application No. 18/848620 (US-PG-pub 2025/0230554 A1).
Regarding instant Claims 1-20, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-14 of copending application No. 18/848620 (US-PG-pub 2025/0230554 A1) teaches the same pre-treated liquid including phosphate on steel with forsterite film and related manufacturing process steps. The disclosure of copending application Claims 1-14 of copending application No. 18/848620 (US-PG-pub 2025/0230554 A1) indicates the similar phosphate amount, Cr content, and process conditions as claimed in the instant claims, which creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition from the disclosure of Claims 1-14 of copending application No. 18/848620 (US-PG-pub 2025/0230554 A1) since Claims 1-14 of copending application No. 18/848620 (US-PG-pub 2025/0230554 A1) teaches the same pre-treated liquid including phosphate on steel with forsterite film and related manufacturing process steps. Thus, no patentable distinction was found in the instant claims compared with Claims 1-14 of copending application No. 18/848620 (US-PG-pub 2025/0230554 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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