DETAILED ACTION
Response to Amendment
The Amendment filed 2/23/2026 has been entered. Claims 1-7 and 11-14 remain pending in the application. Claim(s) 11-14 have been withdrawn. Claim(s) 8-10 have been canceled. New claim(s) 15-16 have been added. Applicant's arguments have overcome the specification objections previously set forth in the Non-Final Rejection mailed 11/26/2025. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 11/26/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/11/2025 has been considered by the examiner.
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.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parenthesis. Examiner explanations are shown in italics.
Claims 1-7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 20240038422 A1), previously cited.
Regarding claims 1-7 and 16, Lee teaches “a non-oriented electrical steel sheet” (which reads upon “a non-oriented electrical steel sheet”, as recited in the instant claim; paragraph [0001]). Lee teaches that “the cold rolling step may include one cold rolling step or two or more cold rolling steps” (which reads upon “double cold rolled”, as recited in the instant claim; paragraph [0093]; addressing the preamble). Lee teaches “a thickness of 0.10 to 0.35 mm” (which reads upon “having a thickness from 0.23 mm to 0.26 mm”, as recited in the instant claim; paragraph [0093]). Lee’s claims give the following composition:
Element
Instant Claims
APP’141
(mass%)
Lee Claim 1
(mass%)
C
0.0001 – 0.007 (0.002 – 0.007)
0.0015 to 0.0040
Mn
0.15 – 0.3 (0.18 – 0.27)
0.2 to 1.0
Si
3.2– 3.8 (3.2 – 3.7)
3.3 to 4.0
Al
0.8 – 1.1 (0.85 – 1.0)
0.4 to 1.5
P
≤ 0.15
0.005 to 0.05 (optional, claim 3)
S
≤ 0.006
0.0005 to 0.0025
N
≤ 0.09
0.0005 to 0.0020
Cu
0.01 – 1
or less (optional claim 4)
Nb
0– 0.1
0.0005 to 0.0020
V
0 – 0.1
0.0005 to 0.0020
Mo
0 – 0.5
0.005 to 0.01
Fe + impurities
Balance
Balance
Recrystallized ferrite
80-100 %
99% or more ([0097])
It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. 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). Here, the claimed ranges overlap with the ranges disclosed by the prior art.
Lee teaches that “the average grain size may be 55 to 80 μm, and all (i.e., 99% or more) of the processed structure formed in the previous cold rolling step may be recrystallized” (which reads upon “a microstructure of the steel sheet being made of ferrite and comprising in area fraction, 80% to 100% recrystallized microstructure, 0% to 20% non-recrystallized microstructure, an average grain size of the recrystallized microstructure being from 20 microns to 110 microns”, as recited in the instant claim; which reads upon claims 6-7; paragraph [0097]). Lee teaches that “the non-oriented electrical steel sheet according to an exemplary embodiment of the present invention may have a magnetic flux density (B50) of 1.66 T or more” (paragraph [0081]). Lee teaches that “the non-oriented electrical steel sheet according to an exemplary embodiment of the present invention may have a 0.2% offset yield strength (Rp0.2) of 440 MPa or more” (which reads upon “yield strength in a rolling direction from 390 MPa or more”; paragraph [0019]).
It is noted that the prior art is silent regarding the properties of a) percentage of eddy current losses, b) ultimate tensile strength in both a transverse direction as well as a rolling direction, c) yield strength in a transverse direction, and d) elongation as recited in the instant claims. 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). Here, the claimed and prior art products are identical or substantially identical in structure or composition, having overlapping compositions and microstructures, as stated above. 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 non-oriented electrical steel sheet 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 composition (see compositional analysis above) and b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above). Since the Office does not have a laboratory to test the reference non-oriented electrical steel sheet, it is applicant’s burden to show that the reference non-oriented electrical steel sheet 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).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2023/0045797 A1; “Lee ‘797”).
Regarding claim 15, Lee ‘797 teaches “a non-oriented electrical steel sheet” (which reads upon “a non-oriented electrical steel sheet”, as recited in the instant claim; paragraph [0001]). Lee ‘797 teaches that “the cold-rolling may be performed once, or two or more times with intermediate annealing therebetween” (which reads upon “double cold rolled”, as recited in the instant claim; paragraph [0085]; addressing the preamble). Lee ‘797 teaches “a thickness of 0.1 mm to 0.3 mm” (which reads upon “having a thickness from 0.23 mm to 0.26 mm”, as recited in the instant claim; paragraph [0085]). Lee ‘797 gives the following composition (abstract):
Element
Instant Claims
APP’141
(mass%)
Lee Claim 1
(wt %)
C
0.0001 – 0.007
0.005% or less
Mn
0.15 – 0.3
0.05 to 0.55
Si
3.2– 3.8
1.5 to 4.0
Al
0.8 – 1.1
0.5 to 1.5
P
≤ 0.15
S
≤ 0.006
0.005% or less (excluding 0%)
N
≤ 0.09
N: 0.005% or less (excluding 0%)
Cu
0.01 – 1
0.01% or less (excluding 0%)
Ti
--
0.004% or less (excluding 0%)
Fe + impurities
Balance
Balance
Recrystallized ferrite
80-100 %
99% or more ([0097])
Regarding Titanium, no minimum is required, other than excluding 0%. Accordingly, one of ordinary skill in the art would understand the disclosure to include very small amounts of Ti, such as 12-61 ppm (Table 1). Lee ‘797 teaches that “unless otherwise stated, % means wt %, and 1 ppm is 0.0001 wt %” (paragraph [0026]). 12 – 61 ppm is 0.00012 – 0.00061 wt %. It has been held that obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05 (I). Here, the prior art range of 0.00012 – 0.00061 wt % Ti is close enough to the claimed amount of Titanium, zero, that one skilled in the art would have expected them to have the same properties. In fact, the instant specification states that “in case the Titanium content below 0.001% does not impart any effect on the steel of the present invention” (paragraph [0026]).
It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. 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). Here, the remaining claimed ranges overlap with the ranges disclosed by the prior art.
Lee ‘797 teaches that “the average grain size may be 50 to 100 μm, and all (that is, 99% or more) of the processed structure formed in the cold rolling that is the previous step thereof may be recrystallized” (which reads upon “a microstructure of the steel sheet being made of ferrite and comprising in area fraction, 80% to 100% recrystallized microstructure, 0% to 20% non-recrystallized microstructure, an average grain size of the recrystallized microstructure being from 20 microns to 110 microns”, as recited in the instant claim; paragraph [0086]). Lee ‘797 teaches that “the magnetic flux density (B50) thereof may be 1.68 T or more” (paragraph [0075]).
It is noted that the prior art is silent regarding the properties of a) percentage of eddy current losses, b) ultimate tensile strength in both a transverse direction as well as a rolling direction, c) yield strength in both a transverse direction as well as a rolling direction, and d) elongation as recited in the instant claims. 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). Here, the claimed and prior art products are identical or substantially identical in structure or composition, having overlapping compositions and microstructures, as stated above. 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 non-oriented electrical steel sheet 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 composition (see compositional analysis above) and b) the claimed and prior art products are identical or substantially identical in structure (see microstructure analysis above). Since the Office does not have a laboratory to test the reference non-oriented electrical steel sheet, it is applicant’s burden to show that the reference non-oriented electrical steel sheet 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).
Response to Arguments
Applicant's arguments filed 2/23/26 have been fully considered but they are not persuasive. Applicant argues that Lee does not disclose and would not have led one of ordinary skill in the art to a double cold rolled non-oriented electrical steel sheet having "a percentage of eddy current losses ...less than 30% [and] ... an ultimate tensile strength of at least 500 MPa in both a transverse direction as well as a rolling direction, a yield strength from 390 MPa or more in both a transverse direction as well as a rolling direction, and a total elongation of at least 19% in both a transverse direction as well as a rolling direction" as recited in claim 1 (remarks, page 10). Applicant argues that the Examiner concedes that Lee "is silent regarding the properties of a) percentage of eddy current losses, b) ultimate tensile strength, and c) elongation as recited in the instant claims" and, to fulfil her initial burden of establishing a prima facie case of obviousness, relies on the reasoning of MPEP § 2112.01(I) and In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), (Office Action, pp. 8-10), without establishing by preponderance of the evidence that the alleged steels of Lee and the instantly claimed steels are "are produced by identical or substantially identical processes "and have "identical or substantially identical" composition (remarks, page 11). Applicant further argues that this is a legal error (remarks, page 11). Applicant argues that reasoning of MPEP § 2112.01(I) and In re Best require substantiated findings of "identical or substantially identical" compositions and "identical or substantially identical" processes (remarks, page 11; emphasis added). This is not found convincing because this is not the legal standard as set forth in the MPEP. 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 (emphasis added). Here, the claimed and prior art products are identical or substantially identical in structure or composition, having overlapping compositions and microstructures, as stated above.
Applicant argues that MPEP 2112.01 states that "(where the claimed and prior art products ...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)" (remarks, page 13). This is not found convincing because the portion of the quote replaced by the ellipses is the legal standard relied upon in the rejection. The full quote is: “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 (missing portion bolded). Here, the claimed and prior art products are identical or substantially identical in structure or composition, having overlapping compositions and microstructures, as stated above.
Applicant argues that to fulfill the Examiner's initial burden of establishing a prima facie case of obviousness based on the reasoning of MPEP 2112.01 and In re Best, the Examiner is required (i) to compare the process of Lee with the process in the specification that resulted in the claimed parameters and (ii) establish that those two processes are identical or substantially identical (In re Best, 562 F.2d at 1255) (remarks, page 13). This is not found convincing because the legal standard is that either the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes must be established. Here, the claimed and prior art products are identical or substantially identical in structure or composition, having overlapping compositions and microstructures, as stated above.
Applicant argues that to establish "identical or substantial" processes, the Examiner conclusory alleges that "the cold rolling step may include one cold rolling step or two or more cold rolling steps" (which reads upon "double cold rolled", as recited in the instant claim; paragraph [0093])" (Office Action, p. 8); which is legally insufficient to establish "identical or substantially identical" processes (remarks, page 13). This is not found convincing because the teaching of Lee was used to address the limitation of “double cold rolled” in the preamble. The Office Action did not use the teaching to establish "identical or substantial" processes, as stated by applicant.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. The Examiner requests that interviews not be scheduled during the last week of each fiscal quarter or the last half of September, which is the end of the fiscal year. Q1: 1/5-1/9/26; Q2: 3/30-4/3/26; Q3: 6/22-6/26/26; Q4: 9/21-9/30/26.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733