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/Restriction & Status of Claims
Applicant's election with traverse of Group II. Claims 5 and 11 drawn to a method for manufacturing a non-oriented electrical steel sheet, classified in C21D 9/46 in the reply filed on 02 JUNE 2026 is acknowledged. The traversal is on the ground(s) that "Traversal is based at least upon the fact that there is no undue administrative burden for the Examiner to Examine all claims in their entirety." (page 2). This is not found persuasive because the inventions are independent or distinct for the reasons given in the prior action (see paragraph 4). In addition, there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: a) The inventions have acquired a separate status in the art in view of their different classification; b) The inventions have acquired a separate status in the art due to their recognized divergent subject matter; and c) The inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-4 and 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02 June 2026.
Specification
The disclosure is objected to because of the following informalities: The contents of the tables (Table 1, 2-1, 2-2, 3, 4) are not legible.
Appropriate correction is required.
Claim Objections
Claims 5 and 11 are objected to because of the following informalities:
Claims 5 and 11 recite “claims 1 or 2” (claim 5) and claim 3 (claim 11) in lines 1-2. The claims under examination should recite all of the features/limitations required of the claims.
Claims 5 and 11: The unit “°C/second” should not be in parentheses as it represents required units of the heating rate.
Claim 5 and 11 recite S1 as a formulaic Equation 2 whereas it also recites other rates S2 and S3 as without any equations although all three of them recite numerical ranges. All of the rates should be recited in the same manner when using equations (as recited S1) or as ranges without equation (as recited for S2 and S3).
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.
Claims 5 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
Claims 5 and 11 recite the limitation "heating a slab having the chemical composition according to claim 1" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. The composition in claims 1 and 3 belong to a non-oriented electrical steel sheet.
Claims 5 and 11 recite a second and a third instance of “a maximum reaching temperature” in the last paragraph before Equation 2. It is unclear if some or all are the same, or whether if are all different.
Claims 5 and 11 recite as follows in the paragraph preceding equation 2: “subjecting the intermediate steel sheet to final annealing that satisfies Equation 2 below with respect to a temperature increase rate S1 (° C/second) in a temperature increase process from 500° C to 600° C with a maximum reaching temperature of 700° C to 850° C and satisfies that a temperature increase rate S2 in the temperature increase process from room temperature to 500° C is 100° C/second or more and 300° C/second or less and a temperature increase rate S3 in the temperature increase process from 600° C to a maximum reaching temperature is 20° C/second or more and 100° C/second or less”.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
The limitations as recited in the paragraph of the claims (recited in quotes above) appear to require a final annealing step being performed on the intermediate steel sheet. However, the intermediate steel sheet is manufactured using either cold or warm rolling which means that the process does not require the rolling to be at room temperature. Therefore, it is unclear how the heating associated with S2 as recited becomes a part of the into final annealing paragraph as the claim does not require cooling to room temperature or heating of the final annealing of the intermediate steel sheet to starting at room temperature.
Further, instant specification teaches in [0102] as follows: “The hot-rolled steel sheet after the hot-band annealing process is subjected to cold rolling or warm rolling. Here, warm rolling means a process of rolling a hot-rolled steel sheet heated to 150° C to 600° C.” The temperature range of 150 to 600°C is seen in the final paragraph of the claim thereby making it unclear whether all of the limitations of the final paragraph regarding the various rates need to be satisfied if the warm rolling is completed at 600°C.
The final annealing recites three rates for three ranges:
Rate (°C/s)
Temperature Range
S1: 300 – 1000
from 500° C to 600° C
S2: 100 – 300
from room temperature to 500° C
S3: 20 – 100
600° C to a maximum reaching temperature
However, as seen above, the temperatures 500°C and 600°C are seen in two of the rates thereby making it unclear what rates would satisfy both of these temperatures. In addition, it is unclear whether these rates are for the entirety of the range in other words the average heating rate across the temperature range or whether any two ends points within the various temperature ranges must also meet the rate limitation, for example 520-525°C must also have heating rate of 300-1000°C/s.
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
Claims 5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/164185 A1 via its US English equivalent US 2020/0232059 A1 of Fujimura (US’059), and as evidenced by WO 2017/111548 A1 via its US English equivalent US 2019/0017135 A1 of Lee (US’135).
List 1
Element
Instant Claims
(mass%)
Prior Art
(mass%)
C
C: 0.0100% or less
C: 0.0100% or less;
Si
Si: 2.6% to 4.1%
Si: more than 3.0% and 5.0% or less;
Mn
Mn: 0.1% to 3.0%
Mn: 0.1 to 3.0%;
P
P: 0.15% or less
P: 0.20% or less;
S
S: 0.0013% or less
S: 0.0018% or less;
N
N: 0.0050% or less
N: 0.0040% or less;
Al
Al: 0.1% to 2.0%
Al: 0 to 0.9%;
Mg
Mg: 0.0002% to 0.0100%
US’059: -; US’135: 0.005 or less
B
B: 0.0001% to 0.0010%
US’059: -; US’135: 0.001 or less
Cr
Ni
Cu
Ca
REM
one or more selected from Sn and Sb: 0% to 0.100%, Cr: 0% to 0.1%, Ni: 0% to 5.0%, Cu: 0% to 5.0%,Ca: 0% to 0.010%, and REM: 0% to 0.010%
Claim 12: one or more selected from the group of Sn and Sb: 0.005% to 0.100%, Cr: 0.01% to 0.1%, Ni: 0.05% to 5.0%, Cu: 0.05% to 5.0%, Ca: 0.0010% to 0.0100% , and REM: 0.0020% to 0.0100
one or more selected from the group consisting of Sn and Sb: 0 to 0.100%; Cr: 0 to 5.0%; Ni: 0 to 5.0%; Cu: 0 to 5.0%; Ca: 0 to 0.01%; rare earth elements (REM): 0 to 0.010%;
Fe +
impurities
Balance
Balance
Regarding claims 5 and 11, WO 2018/164185 A1 via its US English equivalent US 2020/0232059 A1 of Fujimura (US’059) teaches [0030] “a non-oriented electrical steel sheet having high strength and having excellent magnetic characteristics even after additional heat treatment” wherein the steel sheet has [0031] “a chemical composition, by mass %: C: 0.0100% or less; Si: more than 3.0% and 5.0% or less; Mn: 0.1 to 3.0%; P: 0.20% or less; S: 0.0018% or less; N: 0.0040% or less; Al: 0 to 0.9%; one or more selected from the group consisting of Sn and Sb: 0 to 0.100%; Cr: 0 to 5.0%; Ni: 0 to 5.0%; Cu: 0 to 5.0%; Ca: 0 to 0.01%; rare earth elements (REM): 0 to 0.010%; and a remainder including Fe and impurities” [0032] “the chemical composition may contain one or more selected from the group consisting of the group consisting of Al: 0.0001 to 0.9%; one or more selected from the group consisting of Sn and Sb: 0.005 to 0.100%; Cr: 0.5 to 5.0%; Ni: 0.05 to 5.0%; Cu: 0.5 to 5.0%; Ca: 0.0010 to 0.0100%; and rare earth elements (REM): 0.0020 to 0.0100% or less.” US’059 teaches a non-oriented electrical steel sheet with a composition wherein the claimed ranges of the constituent elements (except Mg and B) of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
It is noted that US’059 is silent regarding Mg, B and their ranges as recited in the claims. In the same field endeavor, WO 2017/111548 A1 via its US English equivalent US 2019/0017135 A1 of Lee (US’135) teaches [0001] “a non-directional electrical steel sheet and a method for manufacturing the same” and points out its chemical composition includes “[0050] Other Impurities [0051] In addition to the elements described above, unavoidable impurities, such as B, Mg, Zr, V, and Cu may be incorporated. Although these elements are in trace amounts, they may still cause deterioration of magnetic properties through formation of dross in the steel, and so on, and accordingly, the elements are managed to satisfy the following conditions: B: 0.001 wt % or less, Mg, Zr, V: 0.005 wt % or less, and Cu: 0.025 wt % or less.” Therefore, it 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 to expect the non-oriented electrical steel sheet of US’059 to have Mg and B in the ranges as US’135 provides evidence that Mg and B are unavoidable impurities with ranges Mg: 0.005 wt % or less and : B: 0.001 wt % or less, thereby meeting the recited limitations. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited limitation of “a tensile strength in a rolling direction of the non-oriented electrical steel sheet is 667 MPa or more”, US’059 teaches [0044] “the non-oriented electrical steel sheets had a tensile strength of 600 MPa or more, and had higher strength than non-oriented electrical steel sheets in the related art” thereby meeting the recited limitation. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited limitations of “an area fraction of a crystal structure A composed of crystal grains having a grain size of 100 µm or more is 1% to 30% in a cross section parallel to a rolled plane of the non-oriented electrical steel sheet” and “an average grain size of a crystal structure B which is a crystal structure other than the crystal structure A is 15 µm or more and 40 µm or less”, US’059 teaches (abstract, [0031], [0048]-[0053]) “an area ratio of a crystal structure A composed of crystal grains having a grain size of 100 μm or greater in a cross section parallel to a rolled surface of the non-oriented electrical steel sheet is 1 to 30%, an average grain size of a crystal structure B that is a crystal structure other than the crystal structure A is 25 μm or less” thereby meeting the recited limitations. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited limitation of “wherein a Vickers hardness HvA of the crystal structure A and a Vickers hardness HvB of the crystal structure B satisfy Equation 1 below, (HvA2+HvB2)/2−(HvA+HvB)2/4≤7.0”, US’059 teaches “a Vickers hardness HvA of the crystal structure A and a Vickers hardness HvB of the crystal structure B satisfy HvA/HvB≤1.000” thereby meeting the recited limitation. The instant claimed formulaic expression reduces to (a-b)2 which can resolve a and b and, in this case, HvA and HvB and their values. In addition, US’059 teaches values of HvA and HvB (see Table 3) and their values in the formulaic expression meets the recited range of the expression. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited method steps of instant claims 5 and 11, US’059 teaches “[0143] The method for manufacturing the non-oriented electrical steel sheet according to the present embodiment includes hot rolling a slab to manufacturing a hot-rolled steel sheet (hot rolling step); performing annealing (hot-rolled sheet annealing) on the hot-rolled steel sheet (hot-rolled sheet annealing step); performing cold rolling or warm rolling on the hot-rolled steel sheet after the hot-rolled sheet annealing (a cold-rolling step or warm-rolling step), to manufactures an intermediate steel sheet, and performing final annealing on the intermediate steel sheet (final annealing step). Hereinafter the respective steps will be described.” [0146] “The slab is cast by a continuous casting method or an ingot making method using the molten, steel. The cast slab may be bloomed.” [0147] “The hot, rolling is performed on the slab prepared by the above step. The preferable slab heating temperature in the hot rolling step is 1000 to 1200° C.” [0153] “In order to obtain the structure of the hot-rolled steel sheet after the hot-rolled sheet annealing as above, in the hot-rolled sheet annealing step, average heating speed HR750-850 between 750 to 850° C. and maximum attainment temperature Tmax, among heating conditions, are as follows.” [0154] “Average heating speed HR750-850 between 750 to 850° C.: 50° C./sec or higher In the heating of the hot-rolled steel sheets in the hot-rolled sheet annealing, the average heating speed HR750-850 in a range of 750 to 850° C. is 50° C./sec or higher.” [0158] “Maximum attainment temperature Tmax: 900 to 1150° C.” [0159] “The maximum attainment temperature Tmax in the hot-rolled sheet annealing is 900 to 1150° C.” [0162] “The cold rolling or warm rolling is performed on the hot-rolled steel sheet after the hot-rolled sheet annealing step. Here, the warm rolling means a step in which rolling is performed to the hot-rolled steel sheet heated to 150 to 600° C.” [0163] “It is preferable that the rolling reduction in the cold rolling or warm rolling is 83% or more.” thereby reading on the instant recited limitations of heating a slab, hot rolling, hot-band annealing and cold or warm rolling.
Regarding the recited limitations of the final annealing of the instant claims, US’059 teaches [0166] “The final annealing is performed on the intermediate steel sheet manufactured by the cold-rolling or warm-rolling step. The conditions of the final annealing are as” [0167] “Maximum attainment, temperature (annealing temperature): 700 to 800° C.” which reads on the final annealing and the maximum reaching temperature of the instant claims. With regard to the various “temperature increase rate” S1, S2 and S3, as noted above, it is unclear how these rates are needed to be met when the warm rolling is already completed at 600°C as taught by the prior art meaning the intermediate steel sheet is already at 600°C. As the prior art teaches [0167] “Maximum attainment, temperature (annealing temperature): 700 to 800° C.” after warm rolling, this reads on heating to the maximum reaching temperature as required by the instant claims. Please note that instant claims do not require a specific heating rate above 600°C. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. In the alternative, if the claims are requiring that the intermediate steel sheet is attained through cold rolling at room temperature and subsequently heated from room temperature to the maximum reaching temperature of 700-850°C with specific heating rates S1, S2 and S3 during specific temperature ranges, it is noted that the prior art does not teach the specific heating profile. However, the prior art teaches regarding cooling rates or in other words how long the steel sheet experiences a specific temperature “[0170] Average cooling rate CR700-500 in temperature range of 700 to 500° C.: 50° C./sec or higher [0171] It is considered that the average cooling rate CR700-500 in a temperature range of 700 to 500° C. is related to formation of the dislocation structure of the crystal structure A of the non-oriented electrical steel sheet. If the average cooling rate CR700-500 is less than 50° C./sec, dislocation dispersion in the crystal structure A becomes uneven and consequently, the hardness ratio HvA/HvB exceeds 1.000. In this case, development of the crystal orientations in the additional heat treatment is inhibited, and the magnetic characteristics after the additional heat treatment degrade. On the other hand, if the average cooling rate CR700-500 is 50° C./sec or higher, this promotes homogenization of the dispersion of the dislocations in the crystal structures A, such, as confounding of the dislocations to the peripheries of the precipitates or fixation of the final cellular structure, and preferably acts on development of crystal orientations in {100} and in the vicinity thereof that contribute to improvements in the magnetic characteristics in the additional heat treatment. The lower limit of the average cooling rate CR700-500 is preferably 100° C./sec and more preferably 200° C./sec. If the average cooling rate CR700-500 exceeds 500° C./sec, there is a concern that temperature gradient in a longitudinal direction of the steel sheet may become too large and the steel sheet will be deformed. Thus, a preferable upper limit of the average cooling rate. CR700-500 is 500° C./sec.” As the prior art teaches a cooling “50° C./sec or higher” with preferable lower and upper limits of 100 and 500 °C/s respectively, the prior teaches that the steel sheet is kept in the temperature range of 700 to 500°C that abides with the average cooling rate. Therefore, it 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 to take the method of the prior art that shows the cooling profile that essentially teaches the steel holding rates at different temperatures to convert that to a heating rate of 50°C or higher from room temperature with preferable lower and upper limits of 100 and 500 °C/s respectively to obtain a steel sheet with the same properties. In other words, the temperature profile during final annealing would be same and would result in the sheet with same properties whether done through cooling or heating. Please see above which shows the prior art and the instant product as having the same properties.
It is noted that US’059 is silent regarding the recited limitation “a sheet thickness deviation in a sheet width of 350 mm or more and 400 mm or less is 1 µm or more and 20 µm or less” (instant claim 11). 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure or composition (see compositional analysis above) and b) the claimed and prior art products are produced by identical or substantially identical processes {please see above as to how the prior art meets the various steps of the instant method claims 5 and 11]}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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