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 .
Response to Arguments
The 35 U.S.C. 112(b) rejection is withdrawn in view of Applicant’s amendments to the claims.
The Double Patenting rejections are maintained as Applicant did not substantively traverse them.
Applicant's arguments filed 3/18/2026 traversing the 35 U.S.C. 103 rejection over Okubo (US 2025/0146093) in view of Fukuchi (US 2024/0035130) have been fully considered but they are not persuasive. Citations to the instant specification are made to the corresponding US PGPub. Applicant argues the following:
A) The compositional ranges disclosed in the prior art references are “extremely broad” and present a case where the prior art encompasses a very large number of possible distinct compositions requiring a genus-species analysis. This argument is not persuasive. Applicant points to no teaching in the prior art, or a recognition in the art, that the prior art composition encompasses “a very large number of possible distinct compositions”. Furthermore, it should be noted that Okubo teaches numerous examples of steels having the claimed Si content, an example having the claimed Mn content, and numerous examples which approximate the claimed Al content or otherwise lie right outside the claimed range (see Table 2). Thus, Applicant’s argument that the prior art composition is “extremely broad” is unsupported by the evidence because Okubo teaches exemplary steels that are very similar to the claimed composition (see, e.g., Table 2, Ex. L). Thus, even applying a genus-species analysis, it is apparent that Okubo not only discloses a “genus” that encompasses the claimed “species”, but also suggests the claimed “species”.
B) Okubo does not recognize silicon, manganese, and aluminum as a result-effective variables for achieving the same purpose as the claimed invention. This argument is not persuasive. First, with respect to silicon, Okubo teaches silicon content is essential for reducing iron loss (¶ 41). Eddy current loss is a type of iron loss. Thus, Okubo recognizes Si as the same result effective variable as Applicant does. Second, with respect to Mn and Al content, the fact that the inventor has recognized other advantages which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). That Okubo has different reasons for including Al or Mn in the amounts disclosed does not constitute error in the obviousness rejection by itself.
C) The claimed silicon, manganese, and aluminum contents are critical for achieving the claimed invention. This argument is not persuasive. Applicant has presented no evidence in support of these assertions. Objective evidence of criticality or unexpected results is required to rebut a presumption of obviousness. See MPEP 716.01(a).
D) The process of the prior art combination is not substantially similar or identical to the process for making the claimed invention. Applicant’s argument first addresses the hot-band annealing step. This argument is not persuasive. To begin, both the specification (see Spec., ¶ 75) and the claim specifically state that the hot-band annealing step is optional. According to the plain meaning of “optional” it is clear that this step is not required in the process for making the claimed invention. Even assuming this optional step is actually required, both the specification and the claim put forth the following parameters for the hot-band annealing: 780°C -1000°C for 10 seconds to 96 hours (see Spec., ¶ 76). The step in the prior art combination of 700°C-950°C for 3 seconds to 100 seconds is substantially identical to the instant process step. Applicant’s reliance on the examples in the instant specification is misplaced as neither Applicant’s claimed invention, nor the process for making the claimed invention, is limited to the examples in the specification.
Applicant’s next argument addresses the final annealing temperature of Okubo, which cannot exceed 950°C. Applicant argues Okubo therefore teaches a microstructure that is not identical to the microstructure of a steel because this annealing temperature is different. However, Okubo teaches a grain size of 75 μm or less. The claim recites a grain size of 20-110 μm. Even accepting Applicant’s argument that annealing above 950°C would coarsen the crystal grain size, this has no relevance to the claimed invention. One of ordinary skill in the art would understand that annealing above 950°C increases average grain size. But the maximum average grain size of Okubo is already within the claimed range. Since the claimed invention is not restricted to a steel finally annealed at a temperature over 950°C, nor is it restricted to steels having a grain size greater than 75 μm, Applicant’s argument is not persuasive as the process of Okubo would still be expected to result in a steel whose average grain size falls within the claimed range.
E) I2 in the present specification is evidence that a steel having the claimed composition and structure does not exhibit the claimed properties. This argument is not persuasive because Applicant’s argument is not supported by the evidence. I2 in the present specification has a percentage of eddy current losses of 35.1% (see Spec., ¶ 95). This lies within the claimed range of 35%-45%. Accordingly, the rejection over Okubo in view of Fukuchi is maintained for the above reasons.
Applicant's arguments filed 3/18/2026 traversing the 35 U.S.C. 103 rejection over Natori (US 2024/0039347) have been fully considered but they are not persuasive. Applicant argues the following:
A) The compositional ranges disclosed in the prior art references are “extremely broad” and present a case where the prior art encompasses a very large number of possible distinct compositions requiring a genus-species analysis. This argument is not persuasive. Applicant points to no teaching in the prior art, or a recognition in the art, that the prior art composition encompasses “a very large number of possible distinct compositions”. Furthermore, it should be noted that Natori teaches numerous examples of steels having the claimed Si content, or the claimed Mn content, or the claimed Al content, or the claimed C content (see e.g., Table 1A, Ex. F). Thus, Applicant’s argument that the prior art composition is “extremely broad” cannot be reconciled with the fact that the exemplary steels of Natori have compositions whose Si, Mn, Al, and/or C contents lie within the claimed ranges. Thus, even applying a genus-species analysis, it is apparent that Natori not only discloses a “genus” that encompasses the claimed “species”, but also suggests the claimed “species”.
In addition, Natori teaches silicon content is essential for reducing iron loss (¶ 127). Eddy current loss is a type of iron loss. Thus, both Natori and the present invention recognize silicon as a result-effective variable for the same property. Natori teaches manganese content has an effect on magnetic flux density and improves strength (¶ 132). It is well known in the art that strength is a function of grain size. Thus, both Natori and the present invention recognize manganese as a result-effective variable for the same properties.
B) The process of Natori is not substantially identical process to the process for making the claimed invention.
Applicant’s argument first addresses the final annealing temperature of Natori, which cannot exceed 900°C. Applicant argues Natori therefore teaches a microstructure that is not identical to the microstructure of a steel annealed at a temperature over 900°C. Since the claimed invention is not restricted to a steel finally annealed at a temperature over 900°C, Applicant’s argument is not persuasive as the process of Natori would be expected to result in a steel composition whose grain size falls within the claimed range.
Applicant next addresses the hot-band annealing step. This argument is not persuasive. To begin, both the specification (see Spec., ¶ 75) and the claim specifically state that the hot-band annealing step is optional. According to the plain meaning of optional it is clear that this step is not required in the process for making the claimed invention. Even assuming this optional step is actually required, both the specification and the claim put forth the following parameters for the hot-band annealing: 780°C -1000°C for 10 seconds to 96 hours (see Spec., ¶ 76). The corresponding step in Natori hot-band anneals for 10 seconds to 3 minutes, which clearly lies within the parameters for hot-band annealing in the present invention. Applicant’s reliance on the examples in the specification is misplaced as neither Applicant’s claimed invention, nor the process for making the claimed invention, is limited to the examples in the specification.
C) The steel of Natori contains 0 to 10% Cr. This argument is not persuasive. Natori clearly teaches ≤0.10% Cr (see ¶¶ 143-144).
D) I2 in the present specification is evidence that a steel having the claimed composition and structure does not exhibit the claimed properties. This argument is not persuasive because Applicant’s argument is not supported by the evidence. I2 in the present specification has a percentage of eddy current losses of 35.1% (see Spec., ¶ 95). This lies within the claimed range of 35%-45%. Accordingly, the rejection over Natori is maintained for the above reasons.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 19/273,485 (reference application) in view of Morishige et al. (US 2023/0392225). Although the claims at issue are not identical, they are not patentably distinct from each other (with the exception of the claimed thickness) because the non-oriented electrical steel sheet of copending ‘485 has a composition and properties which overlap the claimed non-oriented electrical steel sheet, creating a prima facie case of obviousness. Although the steel sheet of copending ‘485 does not require it is double cold rolled, this is a product by process limitation. Since the steel sheet of copending ‘485 has substantially similar properties as the claimed steel sheet, the product by process limitation does not appear to impart any physical features to the claimed steel sheet which are not present in the claimed invention of copending ‘485.
As to the claimed thickness, copending ‘485 does not recite a thickness for the non-oriented electrical steel sheet. Morishige teaches the thickness of a non-oriented electrical steel sheet is preferably 0.35 mm or less to reduce iron loss (¶ 78). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to modify the steel sheet of copending ‘485 to have a thickness as taught by Morishige in order to obtain a non-oriented electrical steel sheet having reduced iron loss.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 19/273,485 (reference application) in view of Morishige et al. (US 2023/0392225), as applied to claim 1, further in view of Okubo et al. (US 2025/0146093) and Fukuchi et al. (US 2024/0035130).
Regarding claims 11-14, the limitations of claim 1 have been addressed above. Claims 11-14 of copending ‘485 recite a process which recites process step parameters which overlap the claimed range, except that copending ‘485 does not recite a double cold rolled steel sheet. Okubo teaches non-oriented electrical steel sheets can be made by a process that includes one cold rolling, or two cold rolling with an intermediate annealing step (¶ 89). The process of Okubo includes two cold rolling steps with a final reduction rate of 80%-98% (¶ 94). Thus, the reduction rate for each step individually must overlap with the claimed rates. The intermediate annealing step occurs at 800°C-1100°C for 3s-100s (¶ 96) followed by cooling to 70°C or less prior to the 2nd cold rolling (¶ 98). After the second cold rolling, finish annealing is performed at 700°C-950°C (¶ 106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to replace the single cold rolling step of copending ‘485 with the two cold rolling steps of Okubo because the prior art considers these two variations as equivalent for obtaining a non-oriented electrical steel sheet (¶ 89).
Okubo does not expressly teach heating or cooling rates for the intermediate or finish annealing. Fukuchi teaches a method of manufacturing a non-oriented electrical steel sheet including an intermediate annealing step between two cold rolling steps, and a finish annealing (¶ 116). Fukushi teaches the heating rate for the intermediate annealing is 10°C/s-20°C/s (¶ 139) with a cooling rate of 5°C/s -60°C/s (¶ 140). Fukushi also teaches the heating rate for the finish annealing is 0.1°C/s-10°C/s (¶ 153) with a cooling rate of 5°C/s -20°C/s (¶ 156). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to apply the teachings of Fukushi to the manufacturing method of copending ‘485 in view of Okubo because Fukushi teaches the heating and cooling rates for intermediate annealing are conventional in the art to help control the crystal structure of the electrical steel sheet (¶¶ 139-141), and because the heating rate for finish annealing prevents undesirable microstructural features from developing (¶ 153) and the cooling rate is conventional in the art (¶ 156).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 19/287,878 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the non-oriented electrical steel sheet of copending ‘878 has a composition, properties, and method of making which overlap the claimed non-oriented electrical steel sheet and method of making, creating a prima facie case of obviousness.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 19/311,171 (reference application) in view of Morishige et al. (US 2023/0392225). Although the claims at issue are not identical, they are not patentably distinct from each other because the non-oriented electrical steel sheet of copending ‘171 has a composition and properties which overlap the claimed non-oriented electrical steel sheet, creating a prima facie case of obviousness. Although the steel sheet of copending ‘171 does not require it is double cold rolled, this is a product by process limitation. Since the steel sheet of copending ‘171 has substantially similar properties as the claimed steel sheet, the product by process limitation does not appear to impart any physical features to the claimed steel sheet which are not present in the claimed invention of copending ‘171.
As to the claimed thickness, copending ‘171 does not recite a thickness for the non-oriented electrical steel sheet. Morishige teaches the thickness of a non-oriented electrical steel sheet is preferably 0.35 mm or less to reduce iron loss (¶ 78). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to modify the steel sheet of copending ‘171 to have a thickness as taught by Morishige in order to obtain a non-oriented electrical steel sheet having reduced iron loss.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 19/311,171 (reference application) in view of Morishige et al. (US 2023/0392225), as applied to claim 1, further in view of Okubo et al. (US 2025/0146093) and Fukuchi et al. (US 2024/0035130).
Regarding claims 11-14, the limitations of claim 1 have been addressed above. Claims 11-14 of copending ‘171 recite a process which recites process step parameters which overlap the claimed range, except that copending ‘171 does not recite a double cold rolled steel sheet. Okubo teaches non-oriented electrical steel sheets can be made by a process that includes one cold rolling, or two cold rolling with an intermediate annealing step (¶ 89). The process of Okubo includes two cold rolling steps with a final reduction rate of 80%-98% (¶ 94). Thus, the reduction rate for each step individually must overlap with the claimed rates. The intermediate annealing step occurs at 800°C-1100°C for 3s-100s (¶ 96) followed by cooling to 70°C or less prior to the 2nd cold rolling (¶ 98). After the second cold rolling, finish annealing is performed at 700°C-950°C (¶ 106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to replace the single cold rolling step of copending ‘485 with the two cold rolling steps of Okubo because the prior art considers these two variations as equivalent for obtaining a non-oriented electrical steel sheet (¶ 89).
Okubo does not expressly teach heating or cooling rates for the intermediate or finish annealing. Fukuchi teaches a method of manufacturing a non-oriented electrical steel sheet including an intermediate annealing step between two cold rolling steps, and a finish annealing (¶ 116). Fukushi teaches the heating rate for the intermediate annealing is 10°C/s-20°C/s (¶ 139) with a cooling rate of 5°C/s -60°C/s (¶ 140). Fukushi also teaches the heating rate for the finish annealing is 0.1°C/s-10°C/s (¶ 153) with a cooling rate of 5°C/s -20°C/s (¶ 156). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to apply the teachings of Fukushi to the manufacturing method of copending ‘171 in view of Okubo because Fukushi teaches the heating and cooling rates for intermediate annealing are conventional in the art to help control the crystal structure of the electrical steel sheet (¶¶ 139-141), and because the heating rate for finish annealing prevents undesirable microstructural features from developing (¶ 153) and the cooling rate is conventional in the art (¶ 156).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims 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 16 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 16 recites: “wherein the hot-rolled steel sheet is hot band annealed for 12 hours to 96 hours”. This limitation is indefinite. It is unclear whether this is further limiting the optional hot band annealing step of claim 11, whether it is requiring the optional hot band annealing step, or whether it is introducing a hot band annealing step in addition to the optional hot band annealing step of claim 11. For purposes of examination, the first interpretation will be adopted.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Okubo et al. (US 2025/0146093) in view of Fukuchi et al. (US 2024/0035130).
Regarding claims 1-14 and 17-20, Okubo teaches a non-oriented electrical steel sheet (¶ 1) having a thickness of 0.15-0.30 mm (see Table 3). The steel sheet of Okubo undergoes double cold rolling (¶ 89). The composition of the steel sheet is as follows, in weight%, compared to the claimed composition:
Claims 1-5, 19
Okubo, ¶¶ 37-67
C
0.0001%-0.007%
(claim 3: 0.002%-0.007%)
0.0005%-0.0050%
Mn
0.1%-0.2%
(claim 5: 0.12%-0.2%)
0.10%-3.0%
Si
3.1%-3.6%
(claim 2: 3.1%-3.5%)
2.5%-4.5%
Al
0.8%-1.1%
(claim 4: 0.85%-1%)
0.01%-2.0%
P
≤0.15%
≤0.1%
S
≤0.006%
≤0.005%
N
≤0.09%
≤0.01%
Cr
0.01%-1% (claim 19: 0.01%-0.034%)
0.01%-5.0%
Cu
0.01%-1%
0.01%-0.5%
Fe
Balance
Balance
Optionally containing one or more of the following:
Nb
≤0.1%
0.0010%-0.05%
Ti
≤0.1%
0.0010%-0.05%
V
≤0.1%
0.0010%-0.20%
Mo
≤0.5%
0.001%-0.05%
W
≤0.1%
0.001%-0.05%
Co
≤1%
0.001%-0.05%
As
≤0.05%
0.001%-0.05%
Ca
0.001%-0.01%
≤0.01%
Ni
0.001%-0.04%
0.01%-3.0%
B
≤0.05%
0.0001%-0.005%
Pb
≤0.2%
0.0001%-0.005%
Sn
≤0.2%
0.001%-0.2%
Sb
≤0.2%
0.001%-0.2%
Okubo also teaches exemplary steels which are very similar to the claimed composition (see Table 2). The prior art composition and thickness overlap the claimed composition and thickness, creating a prima facie case of obviousness. See MPEP 2144.05 I. Okubo does not expressly disclose the non-oriented electrical steel sheet comprises the claimed microstructure, eddy current losses, magnetic polarization, and properties such as ultimate tensile strength, yield strength, or elongation. However, the process of making the non-oriented electrical steel sheet of Okubo is substantially similar to the claimed process:
Claims 11-14
Okubo
Providing a semi-finished product having the composition [of claim 1]
Obtaining a slab containing the composition (¶ 90)
Reheating to 1050°C -1250°C
Heating the slab to 1050°C-1230°C (¶ 91)
Hot rolling at a finish temperature of 820°C-950°C
Hot rolling with a finish temperature of 800°C-950°C (¶ 91)
Cooling to 500°C-560°C at a rate of at least 10°C /s
Cooling to coiling temperature of 400°C-700°C at a rate of 20°C/s-100°C/s (¶ 91)
Coiling at 500°C-560°C
Optional scale removal
-
Optional hot band annealing at 780°C-1000°C for 10s-96h
Hot-band annealing at 800°C-1100°C for 3s-100s (¶ 92)
Optional further scale removal
Pickling to descale (¶ 93)
1st Cold rolling at 60%-96%
1st cold rolling with a final reduction rate of 80%-98% (¶ 94) (since the 1st and 2nd cold rolling must result in a reduction rate of 80%-98%, the reduction rate for each rolling step is expected to overlap with the claimed rate)
1st annealing by heating at 1°C/s to 880°C-1080°C for 10s-5000s
(Claim 12: 900°C-1050°C)
Intermediate annealing with parameters similar to hot-band annealing (¶ 96), i.e., annealing at 800°C-1100°C for 3s-100s
Cooling to 300°C-20°C at a rate of 1°C/s -150°C/s
(Claim 13: 200°C-20°C)
(Claim 14: 3°C/s-120°C/s)
Cooling to 70°C or less (101) using air, gas, or water cooling (¶ 98)
2nd cold rolling at 50%-95%
Final cold rolling (¶ 101) with a final reduction rate of 80%-98% (¶ 94) (since the 1st and 2nd cold rolling must result in a reduction rate of 80%-98%, the reduction rate for each rolling step is expected to overlap with the claimed rate)
2nd annealing by heating at 1°C/s to 880°C-1080°C for 10s-5000s
Finish annealing at 700°C-950°C (¶ 106) for 10s (¶ 110)
Cooling to 300°C-20°C at a rate of 1°C/s-150°C/s
-
Cooling to room temperature
Inherent (Room temperature is considered to be 20°C -22°C)
Okubo does not expressly teach heating or cooling rates for the intermediate or finish annealing. Fukuchi teaches a method of manufacturing a non-oriented electrical steel sheet including an intermediate annealing step between two cold rolling steps, and a finish annealing (¶ 116). Fukuchi teaches the heating rate for the intermediate annealing is 10°C/s-20°C/s (¶ 139) with a cooling rate of 5°C/s -60°C/s (¶ 140). Fukuchi also teaches the heating rate for the finish annealing is 0.1°C/s-10°C/s (¶ 153) with a cooling rate of 5°C/s -20°C/s (¶ 156). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to apply the teachings of Fukuchi to the manufacturing method of Okubo because Fukuchi teaches these heating and cooling rates for intermediate annealing are conventional in the art to help control the crystal structure of the electrical steel sheet (¶¶ 139-141), the heating rate for finish annealing prevents undesirable microstructural features from developing (¶ 153), and the cooling rate after finish annealing is conventional in the art (¶ 156). The prior art combination teaches a process for double cold-rolling an electrical steel sheet whose parameters overlap the claimed process, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Specifically with respect to claims 1-10, the non-oriented electrical steel sheet of Okubo in view of Fukuchi is made by a substantially identical process for making the claimed invention; therefore, one of ordinary skill in the art would expect a substantially identical product having substantially identical features and properties to result, absent objective evidence to the contrary. See MPEP 2112. Specifically with respect to claim 11-14, the process of the prior art combination discloses process parameters which lie within or overlap the claimed process, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 16, since it is optional to hot band anneal for 12 hours to 96 hours, this does not need to be performed and the prior art combination reads on claimed process.
Claims 1-10 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Natori et al. (US 2024/0039347).
Regarding claims 1-10 and 17-20, Natori teaches a cold-rolled non-oriented electrical steel sheet (¶ 206). The thickness of the steel sheet is 0.15-0.27 (¶ 204). The composition is as follows, compared to the claimed electrical steel sheet:
Claims 1-5
Natori, ¶¶ 123-186
C
0.0001%-0.007%
(claim 3: 0.002%-0.007%)
0.0010%-0.0040%
Mn
0.1%-0.2%
(claim 5: 0.12%-0.2%)
0.1%-3.5%
Si
3.1%-3.6%
(claim 2: 3.1%-3.5%)
3.2%-4.5%
Al
0.8%-1.1%
(claim 4: 0.85%-1%)
0.2%-2.0%
P
≤0.15%
≤0.10%
S
≤0.006%
≤0.0030%
N
≤0.09%
≤0.0030%
Cr
0.01%-1% (claim 19: 0.01%-0.034%)
≤0.01%
Cu
0.01%-1%
≤0.50%
Fe
Balance
Balance
Optionally containing one or more of the following:
Nb
≤0.1%
≤0.1000%
Ti
≤0.1%
≤0.0030%
V
≤0.1%
≤0.1000%
Mo
≤0.5%
0.001%-0.1000%
W
≤0.1%
≤0.1000%
Co
≤1%
≤0.1000%
As
≤0.05%
≤0.1000%
Ca
0.001%-0.01%
≤0.0050%
Ni
0.001%-0.04%
≤0.50%
B
≤0.05%
≤0.0010%
Pb
≤0.2%
≤0.1000%
Sn
≤0.2%
≤0.2000%
Sb
≤0.2%
≤0.2000%
Natori also teaches exemplary steels which are very similar to the claimed composition (see Table 1A). The prior art composition and thickness overlap the claimed composition and thickness, creating a prima facie case of obviousness. See MPEP 2144.05 I. Natori does not expressly disclose the non-oriented electrical steel sheet comprises the claimed microstructure, eddy current losses, magnetic polarization, and properties such as ultimate tensile strength, yield strength, or elongation. However, the process of making the non-oriented electrical steel sheet of Natori is substantially similar to the process of making a cold-rolled non-oriented electrical steel sheet disclosed by U.S. Application No. 19/311,171, which results in a non-oriented electrical steel sheet having properties substantially similar to the properties of the claimed double cold-rolled non-oriented electrical steel sheet (see above ODP over U.S. App. No. 19/311,171).
Claims 11-14 of ‘171
Natori
Providing a semi-finished product having the composition [of claim 1]
Obtaining a slab containing the composition (¶ 208)
Reheating to 1050°C -1250°C
Heating the slab to 1000°C-1300°C (¶ 208)
Hot rolling at a finish temperature of 750°C-950°C
Hot rolling with a finish temperature of 700°C-1050°C (¶ 209)
Cooling to 500°C-750°C at a rate of at least 10°C /s
Cooling at a rate of at least 20°C/s to 500°C -700°C for winding (¶ 206)
Coiling at 500°C-750°C
Optional scale removal
Pickling (¶ 213)
Optional hot band annealing at 650°C-1100°C for 10s-96h
Hot-band annealing at 950°C-1050°C for 10s-3m (¶ 211)
Optional further scale removal
-
Cold rolling at 50%-90%
Cold rolling with a reduction rate of 70%-90% (¶ 213)
Annealing by heating at 1°C/s to 800°C-1175°C for 10s-5000s
Final annealing at a temperature not exceeding about 900°C (¶ 214) at a heating rate of 20°C/s -1000°C/s (¶ 216). Exemplary final annealing step (see Table 2) show a maximum temperature of 910°C, which taken with a 20°C/s heating rate and 25°C/s cooling rate gives 10s spent within the temperature 800°C-910°C – so the annealing time is at least 10s.
Cooling to 300°C-20°C at a rate of 1°C/s-150°C/s
Cooling at a rate of at least 20°C/s (¶ 214)
Cooling to room temperature
Inherent
Because the non-oriented electrical steel sheet of Natori is made by a process which is substantially similar to a process which results in the claimed double cold-rolled electrical steel sheet, one of ordinary skill in the art would expect the non-oriented electrical steel sheet of Natori to exhibit substantially similar features and properties as those claimed, absent objective evidence to the contrary. See MPEP 2112.
Claims 11-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Natori et al. (US 2024/0039347), as applied to claim 1, further in view of Okubo et al. (US 2025/0146093) and Fukuchi et al. (US 2024/0035130).
Regarding claims 11-14, the limitations of claim 1 have been addressed above. Natori teaches a process for making the non-oriented electrical steel sheet comprising the following steps:
Claims 11-14
Natori
Providing a semi-finished product having the composition [of claim 1]
Obtaining a slab containing the composition (¶ 208)
Reheating to 1050°C -1250°C
Heating the slab to 1000°C-1300°C (¶ 208)
Hot rolling at a finish temperature of 820°C-950°C
Hot rolling with a finish temperature of 700°C-1050°C (¶ 209)
Cooling to 500°C-560°C at a rate of at least 10°C /s
Cooling at a rate of at least 20°C/s to 500°C -700°C for winding (¶ 206)
Coiling at 500°C-560°C
Optional scale removal
Pickling (¶ 213)
Optional hot band annealing at 780°C-1000°C for 10s-96h
Hot-band annealing at 950°C-1050°C for 10s-3m (¶ 211)
Optional further scale removal
-
Natori recites a single cold rolling step (¶ 213), but does not expressly recite two cold rolling steps. Okubo teaches non-oriented electrical steel sheets can be made by a process that includes one cold rolling, or two cold rolling with an intermediate annealing step (¶ 89). The process of Okubo includes two cold rolling steps with a final reduction rate of 80%-98% (¶ 94). Thus, the reduction rate for each step individually must overlap with the claimed rates. The intermediate annealing step occurs at 800°C-1100°C for 3s-100s (¶ 96) followed by cooling to 70°C or less prior to the 2nd cold rolling (¶ 98). After the second cold rolling, finish annealing is performed at 700°C-950°C (¶ 106). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to replace the single cold rolling step of Natori with the two cold rolling steps of Okubo because the prior art considers these two variations as equivalent processes for obtaining a non-oriented electrical steel sheet (¶ 89).
Okubo does not expressly teach heating or cooling rates for the intermediate or finish annealing. Fukuchi teaches a method of manufacturing a non-oriented electrical steel sheet including an intermediate annealing step between two cold rolling steps, and a finish annealing (¶ 116). Fukuchi teaches the heating rate for the intermediate annealing is 10°C/s-20°C/s (¶ 139) with a cooling rate of 5°C/s -60°C/s (¶ 140). Fukuchi also teaches the heating rate for the finish annealing is 0.1°C/s-10°C/s (¶ 153) with a cooling rate of 5°C/s -20°C/s (¶ 156). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to apply the teachings of Fukuchi to the manufacturing method of Natori in view of Okubo because Fukuchi teaches these heating and cooling rates for intermediate annealing are conventional in the art to help control the crystal structure of the electrical steel sheet (¶¶ 139-141), the heating rate for finish annealing prevents undesirable microstructural features from developing (¶ 153), and the cooling rate after finish annealing is conventional in the art (¶ 156). The prior art combination teaches a process for double cold-rolling an electrical steel sheet whose parameters overlap the claimed process, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 16, since it is optional to hot band anneal for 12 hours to 96 hours, this does not need to be performed and the prior art combination reads on claimed process.
Allowable Subject Matter
Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not teach or suggest the method of making a steel having the claimed composition, structure, and properties with the claimed annealing step.
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.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784