DETAILED ACTION
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of co-pending Application No. 19/131,777 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 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.
Claim 1 includes a clause “in which grain-oriented electrical steel sheet;” however the purpose or intent of this phrase with respect to the scope of the claimed steel sheet is unclear. It appears applicants intend to further limit the grooves be establishing a clause defining the grooves, however the phrase is awkward. Correction is required to clarify what is intended by “in which grain-oriented electrical steel sheet;”.
Allowable Subject Matter
Claim 1 is rejected under double patenting above as well as under 35 U.S.C. 112(b) but is otherwise found to distinguish over the prior art. Mogi et al. (PGPub US 10,385,418) disclose a grain oriented electrical steel sheet but do not appear to disclose an Sabottom or Saside. While the materials and processes disclosed by Mori et al. are similar to that disclosed by applicants, there is insufficient evidence such that one of ordinary skill in the art would have expected the steel sheets to inherently possess an Sabottom or Saside within applicants’ claimed range. Mogi et al. for example do not disclose a pickling treatment consistent with that disclosed by applicants (applicants’ present specification 0054-0060). Claim 1 is found to distinguish over Mogi et al. and would be in condition for allowance upon resolution of the double patenting rejection and rejection under 35 U.S.C. 112(b) as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Adam Krupicka/Primary Examiner, Art Unit 1784
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