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/Restrictions
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/01/2025.
Applicant's election with traverse of Species 1 (claim 8) in the reply filed on 12/01/2025 is acknowledged. The traversal is on the ground(s) that claims 9 and 10 are not exclusive to claim 8. This argument is persuasive and the restriction requirement among the species has been withdrawn. Claims 11-14 are withdrawn. Claims 1-10 and 15-16 are examined herein.
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 1-10 and 15-16 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.
Claim 1 recites “a composition comprising” in line 1. Claim 1 also recites “a reminder of the composition being composed of” in line 27. “comprising” is an open-ended transitional phrase that does not exclude additional elements. “composed of” is interpreted as “consisting of” that excludes additional elements. Using both “comprising” and “composed of” in reciting the steel composition causes confusion as whether additional elements are excluded. Appropriate correction is required.
Claim 1 recites “a microstructure of the steel being made of ferrite” in line 29, indicating the steel consists of 100% ferrite. Claim 1 also recites the microstructure comprising recrystallized microstructure and non-recrystallized microstructure in line 29-31. “comprises” is an open-ended transitional phrase that does not exclude additional microstructure. Using both “being made of” and “comprising” in reciting the steel microstructure causes confusion as whether additional microstructure is excluded. Appropriate correction is required.
Claim 1 recites that that a percentage of eddy current losses in total iron losses is “measured at 1 T and 400 Hz according to IEC 60404-2 standards” in line 32-34, while also being "calculated in accordance with Bertotti method” in line 34-35. It’s unclear what parameters are measured according to IEC 60404-2 standards and what calculation is performed in accordance with Bertotti method in order to obtain a percentage of eddy current losses in total iron losses. Appropriate correction is required.
Claim 1 recites "Bertotti method" in line 35. Without providing any supporting parameters for carrying out the stated method, the recited percentage of eddy current losses in total iron losses is indefinite. Although specification par. [0070] does provide a citation for the 1988 publication of an article disclosing the "Bertotti method", the specific parameters are not set forth within the specification with respect to how they are carried out for the claimed steel sheet. As the claim recites this specific method as being used to characterize the claimed invention, it should be clearly set forth which parameters and method steps were relied upon, in order to understand the metes and bounds of the claimed invention. Appropriate correction is required.
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 1-10 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2023/0045797, IDS dated 12/01/2025), and further in view of EP’606 (EP 4603606A1).
Regarding claims 1-7, Lee 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 Lee to produce a steel composition that meets the recited composition in claims 1-5. Lee also discloses that the steel may contain 0.004 wt% or less Nb, 0.004 wt% or less V, 0.004 wt% or less Ti, 0.05 wt% or less Ni, 0.002 wt% or less B, 0.1 wt% or less Sn, and 0.1 wt% or less Sb ([0041] to [0060]), which meets the amount of optional elements recited 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 composition is a prima facie case of obviousness over Lee. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
Lee
(mass %)
Overlap
(mass %)
C
0.0001-0.007
≤0.005
0.0001-0.005
Mn
0.21-0.7
0.05-0.55
0.21-0.55
Si
3.0-3.6
1.5-4.0
3.0-3.6
Al
0.7-1.3
0.5-1.5
0.7-1.3
P
≤0.15
≤0.02
≤0.02
S
≤0.006
≤0.005
≤0.005
N
≤0.09
≤0.005
≤0.005
Si+Al+Mn
3.85-5.5
2.05-6.05
3.85-5.5
Fe + Impurities
Balance
Balance
Balance
Lee discloses that after annealing, the structure is recrystallized with a grain size of 50-100 µm ([0086]), which meets the recited grain size of recrystallized structure in claim 1.
Lee also discloses that a ratio of the recrystallized structure is 99% or more ([0086]), which meets the area fraction of recrystallized and non-recrystallized microstructure recited in claims 1 and 6-7.
Lee discloses examples ([0060]; Table 1, Specimen No. A3, A4) containing the amount of C, Si, Mn, P, S, Al, N, Ti, V, Nb, Cr, Ni, Sn, Sb, Cu and Si+Al+Mn within the recited composition range in claim 1. Lee also discloses that these examples have grain size of 73-75 µm and magnetic polarization at 5000 A/m of 1.65 T ([0075]; Table 3, Specimen A3 and A4), which meets the recited grain size and magnetic polarization recited in claim 1.
Lee does not explicitly disclose that the structure is made of ferrite grains and 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.
Lee discloses a method of making the steel sheet, comprising: heating the slab to 1200° C or less, hot-rolling to manufacture a 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 850 to 1150° C for 100 seconds, subjecting the annealed hot-rolled sheet to cold rolling, performing final annealing on the cold rolled steel sheet at 700-1050 ºC for 50-90 seconds followed by cooling to 100 ºC or less ([0082] to [0093]), which overlap the processing temperature and time recited in claim 11. 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). See MPEP 2144.05 I. Cooling the hot-rolled sheet immediately after finish hot rolling is well-known to one of ordinary skill in the art in order to avoid abnormal grain growth caused by high temperature and it would be obvious to one of ordinary skill in the art to cool the hot-rolled steel sheet immediately after hot rolling to a coiling temperature in the process of Lee in order to prevent abnormal grain growth.
Lee discloses that the hot rolled steel sheet has a thickness of 2 mm and after cold rolling, the steel sheet has a thickness of 0.15 mm ([0083] to [0085]). Thus, the cold rolling reduction rate in Lee is calculated to be 92.5%, which meets the recited cold rolling reduction rate in claim 11.
Lee is silent on the cooling rate from hot rolling finish temperature to coiling temperature, and the heating rate and cooling rate during 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 a 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 cool the steel sheet from the annealing temperature to room temperature at a cooling rate of 50 ºC/s or less ([0060] to [0085]), which is analogous to the method of Lee. 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 heating and 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 to room temperature at a cooling rate of 50 ºC/s or less as taught by EP’606 in the process of Lee in order to make a steel having uniform grain size and prevent uneven heating and 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. 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 heating rate and cooling rate in claim 11 are prima facie case of obviousness over Lee in view of EP’606. See MPEP 2144.05 I.
In view of the fact that Lee 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 Lee in view of EP’606 to meet the limitation that the steel has the recited ferrite structure and the recited percentage of eddy current loss in iron loss 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 8-10 and 15-16, Lee in view of EP’606 does not explicitly disclose the recited mechanical properties in claims 8-10 and 15-16. However, in view of the fact that Lee 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 Lee in view of EP’606 to meet the recited mechanical properties in claims 8-10 and 15-16. “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.
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 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 19/289,149 (US2025/0354243). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of copending Application No. 19/289,149 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 1-16 of copending Application No. 19/289,149 to make a steel sheet that meets the recited composition in instant claims. See MPEP 2144.05 I. Claims 1-16 of copending Application No. 19/289,149 teach the structure limitations recited in instant claims. Claims 1-16 of copending Application No. 19/289,149 also teach mechanical property limitations recited in claims 8-10 and 15-16. See MPEP 2144.05 I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 19/289,140 (US2025/0354233). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of copending Application No. 19/289,140 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 1-16 of copending Application No. 19/289,140 to make a steel sheet that meets the recited composition in instant claims. See MPEP 2144.05 I. The amount of Mn disclosed by Claims 1-16 of copending Application No. 19/289,140 is close to the recited amount of Mn in claim 1. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, the recited composition is obvious over Claims 1-16 of copending Application No. 19/289,140. See MPEP 2144.05 I.
Claims 1-16 of copending Application No. 19/289,140 teach the structure limitations recited in instant claims. Claims 1-16 of copending Application No. 19/289,140 also teach mechanical property limitations recited in claims 8-10 and 15-16. See MPEP 2144.05 I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 19/273,485 (US2025/0346977). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of copending Application No. 19/273,485 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 1-16 of copending Application No. 19/273,485 to make a steel sheet that meets the recited composition in instant claims. See MPEP 2144.05 I. The amount of Mn disclosed by Claims 1-16 of copending Application No. 19/273,485 is close to the recited amount of Mn in claim 1. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, the recited composition is obvious over Claims 1-16 of copending Application No. 19/273,485. See MPEP 2144.05 I.
Claims 1-16 of copending Application No. 19/273,485 teach the structure limitations recited in instant claims. Claims 1-16 of copending Application No. 19/273,485 also teach the mechanical property limitations recited in claims 8-10 and 15-16. See MPEP 2144.05 I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733