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 .
Status of Claims
Claim 1 is amended. Claims 9-14 are withdrawn. Claims 17-12 are new. Claims 1-8 and 15-23 are examined herein.
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.
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.
Claims 1-8 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hong (US 2023/0036214), and further in view of EP’606 (EP 4603606A1).
Regarding claims 1-7 and 18-19, Hong discloses (Abstract; [0017] to [0050]) a non-oriented electrical steel sheet with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in Hong to produce a steel composition that meets the recited composition in claims 1-7. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
Hong
(mass %)
Overlap
(mass %)
C
0.0001-0.007
≤0.01
0.0001-0.007
Mn
0.05-0.15
0.001-0.6
0.05-0.15
Si
2.5-3.1
2.1-3.8
2.5-3.1
Al
0.26-0.7
0.001-0.6
0.26-0.6
P
≤0.15
≤0.08
≤0.08
S
≤0.006
≤0.01
≤0.006
N
≤0.09
≤0.01
≤0.01
Sn
0-0.2
0-0.08
0-0.08
Ti
0-0.1
0-0.005
0 – 0.005
Fe + Impurities
Balance
Balance
Balance
Hong discloses that after annealing, 99% or more of the structure is recrystallized with a grain size of 70-150 µm ([0072] to [0074]), which overlap the recited grain size in claim 1. 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). Thus, the recited grain size is a prima facie case of obviousness over Hong. See MPEP 2144.05 I.
Hong discloses that the recrystallized structure is 99% or more ([0074]), which meets the area fraction of recrystallized and non-recrystallized microstructure recited in claims 1 and 6-7.
Hong does not explicitly disclose that the structure is made of ferrite grains as recited in claims 1 and 18-19 and that the percentage of eddy current loss in iron loss is 35-45%. However, these structure and property limitations are determined by the steel composition and a method of making the steel sheet.
Hong discloses a method of making the steel sheet, comprising: heating the slab to 1150 to 1250° C for 0.1 to 1 hour, hot-rolling to manufacture the hot-rolled sheet with a finish rolling temperature of 800 to 1000° C, coiling the hot rolled steel sheet at temperatures of 700° C or less, annealing the hot-rolled-sheet at 900 to 1195° C for 30 to 95 seconds, subjecting the annealed hot-rolled sheet to pickling, then cold rolling with a rolling reduction of 50 to 95%, finally annealing the cold-rolled steel sheet at
850 to 1080° C for 60 to 150 seconds ([0069] to [0073]), which overlap the process temperature and time in claim 11. Hong is silent on the cooling rate from hot rolling finish temperature to coiling temperature, and the heating rate and cooling rate during the process of annealing the cold rolled steel sheet.
EP’606 teaches a method of making a non-oriented electrical steel sheet comprising heating the slab to 1000 to 1200° C, hot-rolling to manufacture the hot-rolled sheet with a finish rolling temperature of 800 to 950° C, cooling the hot rolled steel sheet to a coiling temperature of 400-700° C at a cooling rate of 20-100 ºC/s, annealing the hot-rolled-sheet, subjecting the annealed hot-rolled sheet to pickling, then cold rolling followed by annealing the cold-rolled steel sheet at 875 to 1050° C with heating rate of 10 ºC/s or more and a cooling rate of 50 ºC/s or less ([0060] to [0085]), which is analogous to the method of Hong. EP’606 discloses that the cooling rate and the heating rate are selected to make a steel having uniform grain size and to prevent uneven cooling ([0077] to [0085]). Thus, it would be obvious to one of ordinary skill in the art to cool the hot rolled steel sheet to a coiling temperature at a cooling rate of 20-100 ºC/s, and in the process of annealing the cold-rolled steel sheet, to heat the cold-rolled steel sheet to an annealing temperature at a heating rate of 10 ºC/s or more and to cooled the annealed cold-rolled steel sheet at a cooling rate of 50 ºC/s or less as taught by EP’606 in the process of Hong in order to make a steel having uniform grain size and prevent uneven cooling as disclosed by EP’606. The heating rate and cooling rate disclosed by EP’606 overlap the recited heating rate and cooling rate in claim 11. See MPEP 2144.05 I.
In view of the fact that Hong in view of EP’606 teaches a steel composition that meets the recited composition in claim 1 and a method of making the steel sheet with processing parameters overlapping the recited processing conditions in claim 11, one of ordinary skill in the art would expect that the steel sheet disclosed by Hong in view of EP’606 to meet the limitation that the steel consists of ferrite structure as recited in claims 1 and 18-19 and the recited percentage of eddy current loss in iron loss is 35-45% as recited in claim 1. “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.
Regarding claims 8 and 15-17, Hong does not explicitly disclose the recited mechanical properties in claims 8 and 15-17. However, in view of the fact that Hong in view of EP’606 teaches a steel composition that meets the recited composition in claim 1 and a method of making the steel sheet with processing parameters overlapping the recited processing conditions in claim 11, one of ordinary skill in the art would expect that the steel sheet disclosed by Hong in view of EP’606 to meet the recited mechanical properties in claims 8 and 15-17. “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.
Claims 1-7 and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over JP’653 (JPH 11-222653 A), and further in view of Okubo (US 2024/0271255).
Regarding claims 1-7 and 18-23, JP’653 discloses (Abstract; [0007] to [0012]) a non-oriented electrical steel sheet with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in JP’653 to produce a steel sheet that meets the recited composition in claims 1-7 and 20-23. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
JP’653
(mass %)
Overlap
(mass %)
C
0.0001-0.007
≤0.005
0.0001-0.005
Mn
0.05-0.15
0.07-1.5
0.07-0.15
Si
2.5-3.1
2.2-4.0
2.5-3.1
Al
0.1-0.5
0.26-0.7
0.26-0.5
P
≤0.15
---
---
S
≤0.006
0.0007-0.0008
0.0007-0.0008
N
≤0.09
0.0008-0.0009
0.0008-0.0009
Sn
0-0.04
0
0
Fe + Impurities
Balance
Balance
Balance
JP’653 is silent on the P amount. Okubo teaches a non-oriented electrical steel having major composition overlapping the composition disclosed by JP’653 (see Abstract; [0043] to [0081]). Okubo discloses that when the amount of P is 0.02-0.1 wt%, the steel has good strength and easy to roll ([0050]). Thus, it would be obvious to one of ordinary skill in the art to control the amount of P in the range of 0.02-0.1 wt% as taught by Okubo in the steel of JP’653 in order to make a steel having good strength as disclosed by Okubo.
JP’653 discloses that the essential elements are C, Si, Al, Mn and P, S and N are impurities (Abstract; [0011]), which meet the transitional phrase “consists of” as recited in claims 20-23.
JP’653 discloses that the steel sheet has a thickness of 0.25 mm to 0.4 mm (Abstract), which overlap the recited thickness in claim 1. JP’653 discloses that the steel has a grain size of 70-125 µm ([0017]), which overlaps the recited grain size in claim 1. 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). Thus, the recited steel thickness and grain size is a prima facie case of obviousness over JP’653. See MPEP 2144.05 I.
JP’653 discloses that the recrystallization annealing is performed on cold-rolled sheet at 900-1000 ºC for 30 second ([0020]), which meet the recited recrystallization annealing temperature and time in claim 11, and one of ordinary skill in the art would expect that the steel sheet disclosed by JP’653 to meet the recited area ratio of the recrystallized microstructure in claims 1 and 6-7.
JP’653 does not explicitly disclose that the structure is made of ferrite grains. However, non-oriented steel containing ultra-low carbon content, high silicon content and high aluminum content is made of ferrite grains is well-known to one of ordinary skill in the art. Since the steel disclosed by JP’653 contains ultra-low amount of carbon and high amount of silicon and aluminum, and silicon and aluminum are ferrite forming elements, it would be obvious to one of ordinary skill in the art that the steel disclosed by JP’653 consists of a ferrite microstructure as recited in claims 1, 18 and 19. Further, Okubo teaches a non-oriented electrical steel having major composition overlapping the composition disclosed by JP’653 and produced under conditions that is analogous to the production conditions of JP’653 (see Abstract; [0043] to [0081]). Okubo discloses that the steel is composed of ferrite grains ([0083] to [0084]). Thus, the steel disclosed by JP’653 is composed of ferrite as recited in claims 1, 18 and 19.
JP’653 in view of Okubo does not explicitly disclose that the percentage of eddy current loss in iron loss is 35-45%. However, this property limitation is determined by the steel composition and the structure of the steel. In view of the fact that JP’653 in view of Okubo teaches a steel composition that meets the recited steel composition in claim 1 and a structure that meets the structure limitation recited in claim 1, one of ordinary skill in the art would expect that the steel sheet disclosed by JP’653 in view of Okubo to meet the recited percentage of eddy current loss in iron loss in claim 1.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 and 15-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/283,315. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-15 of copending Application No. 19/283,315 teach a non-oriented electrical steel sheet having composition overlapping the recited composition in the instant claims, thus it would be obvious to one of ordinary skill in the art to select the amount of each element based on the ranges disclosed by claims 1-15 of copending Application No. 19/283,315 to make a steel sheet that meets the recited composition in instant claims. See MPEP 2144.05 I. Claims 1-15 of copending Application No. 19/283,315 also teach the structure and property limitations recited in claims 1-10 and 15-19. See MPEP 2144.05 I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered but they are not persuasive.
First, the applicants argued that EP'606 thus does not teach cooling "to a temperature T1 from 300°C to 20°C" and "then cooling to room temperature to obtain a non-oriented electrical steel sheet.
In response, EP’606 discloses that the cold rolled sheet is annealed at a temperature 875-1050 ºC and cooled at a cooling rate of 50 ºC/s or less ([0081] to [0085]). Since the annealing in EP’606 is the final step of the processing, it would be obvious to one of ordinary skill in the art that the cooling rate of 50 ºC/s or less disclosed in EP’606 is from the annealing temperature of 875-1050 ºC to room temperature and the cooling rate from the annealing temperature to (20 ºC - 300 ºC) in EP’606 is 50 ºC/s or less. Thus, EP’606 teaches the recited cooling rate in claim 11.
Second, the applicants argued that the only reason to have used the steps of EP'606 in Hong would be to use the present application as a template for selectively picking and choosing steps of EP'606 to modify Hong.
In response, any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). EP’606 and Hong are analogous arts. EP’606 discloses that the cooling rate after the annealing is 50 ºC/s or less to prevent uneven cooling ([0082] to [0085]). It would be obvious to one of ordinary skill in the art to cool the annealed steel sheet at a cooling rate of 50 ºC/s or less in order to prevent uneven cooling as disclosed by EP’606.
Third, the applicants argued that EP'606 is a distinct composition from Hong, and thus there would be no apparent reason to selectively incorporate pieces of its process into Hong. In particular, Hong requires Bi ([0032], all claims and all inventive examples) and Ge ([0034], all claims and all inventive examples) and further teaches that failure to include Bi and Ge in the required amounts is unacceptable [0085] and [0086]. Hong teaches at paragraphs [0031] to [0034] that Bi and Ge impact grain boundary formation and there is no indication in either of the references that the process steps of EP'606 would have created desirable grains in combination with the Bi and Ge amounts in Hong.
In response, Both Hong and EP’606 aim to produce a non-oriented electrical steel having excellent magnetic properties. EP’606 discloses a steel composition that overlaps the major composition of Hong. EP’606 discloses that the steel contains 0-0.05 wt.% Ge ([0045]). Thus, it would be obvious to one of ordinary skill in the art that the combination of Hong with EP’606 would be able to make a steel sheet having excellent magnetic properties.
Fourth, the applicants argued that the reasoning that it would have been obvious to have modified Hong to selectively incorporate pieces of the process of EP'606 "in order to make a steel having uniform grain size and prevent uneven cooling as disclosed by EP'606" lacks a factual basis. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.). The only process steps that EP'606 suggest provide uniform grain size are the cold rolling steps, and the "uneven cooling" mentioned at paragraph [0085] of EP'606 only relates to the rate and does not correlate to all of claimed steps (1) to (4) mentioned above.
In response, Hong discloses a method of making the steel sheet, comprising: heating the slab to 1150 to 1250° C for 0.1 to 1 hour, hot-rolling to manufacture the hot-rolled sheet with a finish rolling temperature of 800 to 1000° C, coiling the hot rolled steel sheet at temperatures of 700° C or less, annealing the hot-rolled-sheet at 900 to 1195° C for 30 to 95 seconds, subjecting the annealed hot-rolled sheet to pickling, then cold rolling with a rolling reduction of 50 to 95%, finally annealing the cold-rolled steel sheet at 850 to 1080° C for 60 to 150 seconds ([0069] to [0073]), which overlap the process temperature and time in claim 11.
EP’606 discloses that the cooling rate from 950 ºC to 450 ºC is 20 ºC/s to 100 ºC/s ([0061]), which meet which meets the cooling rate recited in step (1).
EP’606 discloses that the heating rate for the final annealing is 10 C/s or more ([0078]), which meet the heating rate recited in step (2).
EP’606 discloses that the cold rolled sheet is annealed at a temperature 875-1050 ºC and cooled at a cooling rate of 50 ºC/s or less ([0081] to [0085]). Since the annealing in EP’606 is the final step of the processing, it would be obvious to one of ordinary skill in the art that the cooling rate of 50 ºC/s or less disclosed in EP’606 is from the annealing temperature of 875-1050 ºC to room temperature and the cooling rate from the annealing temperature to (20 ºC - 300 ºC) in EP’606 is 50 ºC/s or less. Thus, EP’606 teaches the recited cooling rate in step (3).
Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). EP’606 and Hong are analogous arts and it would be obvious to one of ordinary skill in the art to combine the art in order to make a steel having excellent magnetic properties.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733