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
Claims withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 4/21/2026.
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 and 4 are rejected under 35 U.S.C. 103 unpatentable over Hayakawa (US 2019/0085423) in view of US 20110076505 A1 (Ishii et al.).
Re claims 1 and 4, Hayakawa discloses grain oriented electrical steel sheet [1] comprising forsterite film [57, 97] and [44, 60] intermediate coating. Hayakawa discloses that after the formation of the steel sheet, magnesium sulfate MgSO4 is added to an annealing separator MgO and then subjected to [103] flattening insulating coating and a secondary recrystallization at ~1200 C for 2 h [87]. Hayakawa [18] the tension coat contains metal phosphate and overlapping range of silica (50 mass%) overlapping applicant’s range of 20-60 mass%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
A phosphate insulating tension coating is on the base steel sheet [84] and Fig. 1 (3 insulating /2 forsterite tension surface /1 base) of Hayakawa but doesn’t teach amorphous iron phosphate.
Ishii teaches [0018] an iron phosphate film treatment is generally employed as a foundation layer treatment prior to coating. Because it is an amorphous material, an iron phosphate film is superior in heat resistance to a zinc phosphate film. For this reason, an iron phosphate film is widely used.
It would have been obvious to one having ordinary skill in the art to have modified at the time of the effective filing date the intermediate layer of phosphate of Hayakawa to add, use, or substitute the amorphous iron phosphate of Ishii to function with superior heat resistance.
Regarding in intermediate layer thickness ranges [23], Hayakawa teaches thickness.
Further thickness of the individual layers and overall laminate is within the skilled artisan to have modified it would have been obvious to one of ordinary skill in the art to use intermediate and phosphate layers with thickness, including that presently claimed, in order to produce aforesaid layers with effective functionality.
It is apparent, however, that the instantly claimed thickness and that taught by Uchida are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the thickness disclosed by Uchida and the thickness disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the thickness disclosed in the present claims is but an obvious variant of the thickness disclosed in Hayakawa and Ishii, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Conclusion
References of interest
Include US 20210287834 A1 (Yoshizaki et al.) teaches a grain oriented magnetic steel sheet and insulating coating as claimed but doesn’t teach amorphous iron phosphate.
Takenaka (US 2019/0112685)
Takenaka discloses grain oriented electrical steel sheet comprising Si where 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 [87] having an intermediate thickness of 2.0 mm or second cold rolling to a thickness of 0.23 mm.
Toda et al ( US 20020000265 A1) Toda discloses the claimed invention – see [7, 17, 129, 132] and Example 1. Given that Toda discloses subjecting the steel sheet to MgSO4/MgO with a secondary recrystallization at ~1150 C with amount of MgSO4
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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