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 .
Terminal Disclaimer
The terminal disclaimer filed on 06/26/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of copending Application No. 19/289,140 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Status of Claims
Claims 1 and 22 are amended. Claims 11-14 are withdrawn. Claim 18 is cancelled. Claims 1-10, 15-17 and 19-22 are examined herein.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites Cu amount is 0.02-1 wt.%. Claim 17 depends from claim 1 and recites the Cu amount is 0.0102-1 wt.%, which does not further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 15-17, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Lee’422 (US 2024/0038422), and further in view of EP’606 (EP 4603606A1) and JP’837 (JP 2013-091837).
Regarding claims 1-7 and 17, Lee’422 discloses (Abstract; [0037] to [0070]) 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’422 to produce a steel composition that meets the recited composition in claims 1-5. Lee’422 also discloses that the steel may contain 0.0005-0.002 wt% Nb, 0.0005-0.002 wt% V, 0.0005-0.002 wt% Ti, 0.002 wt% or less B, 0.015-0.1 wt% Sn, and 0.015-0.1 wt% Sb ([0052] to [0068]), 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’422. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
Lee’422
(mass %)
Overlap
(mass %)
C
0.0001-0.007
0.0015-0.004
0.0015-0.004
Mn
0.1-0.3
0.2-1
0.2-0.3
Si
3.1-3.8
3.3-4.0
3.3-3.8
Al
0.6-0.8
0.4-1.5
0.6-0.8
P
≤0.15
0.005-0.05
0.005-0.05
S
≤0.006
0.0005-0.0025
0.0005-0.0025
N
≤0.09
0.0005-0.002
0.0005-0.002
Cr
0.01-1.0
---
---
Cu
0.01-1.0
0.001-0.05
0.01-0.05
Fe + Impurities
Balance
Balance
Balance
Lee’422 discloses that after annealing, the structure is recrystallized with a grain size of 55-80 µm ([0097]), which meets the recited grain size of recrystallized structure in claim 1.
Lee’422 discloses that a ratio of the recrystallized structure is 99% or more ([0097]), which meets the area fraction of recrystallized and non-recrystallized microstructure recited in claims 1 and 6-7. Lee’422 discloses that the magnetic induction at 5000A/m is 1.67-1.70 T ([0081]), indicating that J50 is about 1.67-1.70 T.
Lee’422 discloses that the steel has a thickness of 0.1-0.35 mm ([0093]), which overlaps the recited thickness 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 thickness in claim 1 is a prima facie case of obviousness over Lee’422. See MPEP 2144.05 I.
Lee’422 does not teach the recited amount of Cr in claim 1. EP’606 teaches (Abstract; [0011]) a non-oriented electrical steel sheet having major composition overlapping the composition disclosed by Lee’422. EP’606 discloses that 0.05-5 wt.% Cr reduces iron loss ([0025]). Thus, it would be obvious to one of ordinary skill in the art to add 0.05-5 wt.% Cr as taught by EP’606 in the steel of Lee’422 in order to reduce iron loss as disclosed by EP’606. The amount of Cr disclosed by EP’606 overlaps the recited amount of Cr 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). See MPEP 2144.05 I. Thus, the recited amount of Cr in claim 1 is obvious over Lee’422 in view of EP’606.
Lee’422 does not explicitly disclose that the structure is made of ferrite grains and the percentage of eddy current loss in iron loss is 40-50%. Since the steel disclosed by Lee’422 contains ultra-low amount of carbon and high amount of silicon and aluminum and silicon and aluminum are ferrite forming elements, one of ordinary skill in the art would expect that the steel disclosed by Lee’422 is composed of ferrite grain as recited in claim 1.
Further, these structure and property limitations are determined by the steel composition and a method of making the steel sheet.
Lee’422 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 one or two cold rolling with an intermediate annealing at 850 to 1150° C between cold rolling passes, final annealing is performed on the cold rolled steel sheet at 910-1100 ºC for 100 seconds ([0089] to [0101]), 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). Thus, the recited processing temperature and time during slab heating, hot rolling and annealing is a prima facie case of obviousness over Lee’422. 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’422 in order to prevent abnormal grain growth.
Lee’422 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 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 Lee’422. 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 at a cooling rate of 50 ºC/s or less as taught by EP’606 in the process of Lee’422 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 are prima facie case of obviousness over Lee’422 in view of EP’606. See MPEP 2144.05 I.
Lee’422 discloses that cold rolling can be performed twice with an intermediate annealing at 850 to 1150° C ([0093]). Lee’422 in view of EP’606 does not teach the recited cold rolling reduction ratio of each cold rolling pass when two cold rolling is performed.
JP’837 teaches a method of making a non-oriented electrical steel sheet comprising slab heating, hot-rolling, cooling the hot rolled steel sheet to a coiling temperature, annealing the hot-rolled-sheet, subjecting the annealed hot-rolled sheet to cold rolling followed by annealing the cold-rolled steel sheet (Page 4-6), which is analogous to the method of Lee’422. JP’837 discloses that the cold rolling comprises primary cold rolling at a reduction ratio of 60-70 %, an intermediate annealing at 950-1050 ºC for 30-90 second, secondary cold rolling at a reduction ratio of 55-70%, and followed by final annealing at 950-1075 ºC for 20-90 seconds (Page 5-6). JP’837 further discloses that such cold rolling process is beneficial in making a non-oriented electrical steel having good magnetic properties along the rolling direction. Thus, it would be obvious to one of ordinary skill in the art to perform primary cold rolling at a reduction ratio of 60-70 %, an intermediate annealing at 950-1050 ºC for 30-90 second, secondary cold rolling at a reduction ratio of 55-70%, and followed by final annealing at 950-1075 ºC for 20-90 seconds as taught by JP’837 in the process of Lee’422 in view of EP’606 in order to make a steel having good magnetic properties along the rolling direction as disclosed by JP’837. The reduction ratio of the primary and secondary cold rolling disclosed by JP’837 meets the recited reduction ratio in claim 11.
In view of the fact that Lee’422 in view of EP’606 and JP’837 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’422 in view of EP’606 and JP’837 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’422 in view of EP’606 and JP’837 does not explicitly disclose the recited mechanical properties in claims 8-10 and 15-16. However, in view of the fact that Lee’422 in view of EP’606 and JP’837 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’422 in view of EP’606 and JP’837 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.
Regarding claim 19, Lee’422 discloses that the Ti content is 0.0005-0.002 wt% Ti ([0042]), which is close to the Ti amount recited in claim 19. 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). See MPEP 2144.05 I. Thus, claim 19 is obvious over Lee’422 in view of EP’606 and JP’837.
Regarding claims 20 and 21, Lee’422 discloses that the N content is 0.0005-0.002 wt% or less ([0047]), which is close to the N amount recited in claims 20 and 21. 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). See MPEP 2144.05 I. Thus, claims 20 and 21 are obvious over Lee’422 in view of EP’606 and JP’837.
Claims 1-10, 15-17, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Lee’422 (US 2024/0038422), and further in view of Okubo (US 2024/0271255).
Regarding claims 1-7 and 17, Lee’422 discloses (Abstract; [0037] to [0070]) 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’422 to produce a steel composition that meets the recited composition in claims 1-5. Lee’422 also discloses that the steel may contain 0.0005-0.002 wt% Nb, 0.0005-0.002 wt% V, 0.0005-0.002 wt% Ti, 0.002 wt% or less B, 0.015-0.1 wt% Sn, and 0.015-0.1 wt% Sb ([0052] to [0068]), 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’422. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
Lee’422
(mass %)
Overlap
(mass %)
C
0.0001-0.007
0.0015-0.004
0.0015-0.004
Mn
0.1-0.3
0.2-1
0.2-0.3
Si
3.1-3.8
3.3-4.0
3.3-3.8
Al
0.6-0.8
0.4-1.5
0.6-0.8
P
≤0.15
0.005-0.05
0.005-0.05
S
≤0.006
0.0005-0.0025
0.0005-0.0025
N
≤0.09
0.0005-0.002
0.0005-0.002
Cr
0.01-1.0
---
---
Cu
0.01-1.0
0.001-0.05
0.01-0.05
Fe + Impurities
Balance
Balance
Balance
Lee’422 discloses that after annealing, the structure is recrystallized with a grain size of 55-80 µm ([0097]), which meets the recited grain size of recrystallized structure in claim 1. Lee’422 discloses that a ratio of the recrystallized structure is 99% or more ([0097]), which meets the area fraction of recrystallized and non-recrystallized microstructure recited in claims 1 and 6-7. Lee’422 discloses that the magnetic induction at 5000A/m is 1.67-1.70 T ([0081]), indicating that J50 is about 1.67-1.70 T.
Lee’422 discloses that the steel has a thickness of 0.1-0.35 mm ([0093]), which overlaps the recited thickness 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 thickness in claim 1 is a prima facie case of obviousness over Lee’422. See MPEP 2144.05 I.
Lee’422 does not teach the recited amount of Cr in claim 1. Okubo teaches (Abstract; [0013]) a non-oriented electrical steel sheet having major composition overlapping the composition disclosed by Lee’422. Okubo discloses that 0.0-3 wt.% Cr reduces iron loss ([0058]). Thus, it would be obvious to one of ordinary skill in the art to add 0.0-3 wt.% Cr as taught by Okubo in the steel of Lee’422 in order to reduce iron loss as disclosed by Okubo. The amount of Cr disclosed by Okubo overlaps the recited amount of Cr 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). See MPEP 2144.05 I. Thus, the recited amount of Cr in claim 1 is obvious over Lee’422 in view of Okubo.
Lee’422 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 Lee’422 contains ultra-low amount of carbon and high amount of silicon and aluminum and silicon and aluminum are ferrite forming elements, one of ordinary skill in the art would expect that the steel disclosed by Lee’422 is composed of ferrite grain as recited in claim 1. To further support this Official Notice, Okubo is used as an evidence reference. Okubo teaches a non- oriented electrical steel having major composition overlapping the composition disclosed by Lee’422 (see Abstract; [0043] to [0081]). Okubo discloses that the steel is composed of ferrite grains ([0083] to [0084]). Thus, the steel disclosed by Lee’422 is composed of ferrite as recited in claims 1 as evidenced by Okubo.
Lee’422 in view of Okubo does not explicitly disclose that the percentage of eddy current loss in iron loss is 40-50%. However, this property limitation is determined by the steel composition and the structure of the steel. In view of the fact that Lee’422 in view of Okubo teaches a steel composition that meets the recited steel composition in claim 1 and a structure that meets the recited grain size and recrystallized structure in claim 1, one of ordinary skill in the art would expect that the steel sheet disclosed by Lee’422 in view of Okubo to meet 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.
Lee’422 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 one or two cold rolling with an intermediate annealing at 850 to 1150° C between cold rolling passes, final annealing is performed on the cold rolled steel sheet at 910-1100 ºC for 100 seconds ([0089] to [0101]), which meets the limitation that the steel sheet is double rolled.
Regarding claims 8-10 and 15-16, Lee’422 in view of Okubo does not explicitly disclose the recited mechanical properties in claims 8-10 and 15-16. However, in view of the fact that Lee’422 in view of Okubo teaches a steel composition that meets the recited composition in claim 1 and a method of making the steel sheet with processing temperatures and time overlapping the recited processing conditions in claim 11, one of ordinary skill in the art would expect that the steel sheet disclosed by Lee’422 in view of Okubo 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.
Regarding claim 19, Lee’422 discloses that the Ti content is 0.0005-0.002 wt% Ti ([0042]), which is close to the Ti amount recited in claim 19. 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). See MPEP 2144.05 I. Thus, claim 19 is obvious over Lee’422 in view of Okubo.
Regarding claims 20 and 21, Lee’422 discloses that the N content is 0.0005-0.002 wt% or less ([0047]), which is close to the N amount recited in claims 20 and 21. 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). See MPEP 2144.05 I. Thus, claims 20 and 21 are obvious over Lee’422 in view of Okubo.
Allowable Subject Matter
Claim 22 is allowed. The cited arts do not meet the transitional phrase “consisting of” as recited in claim 22.
Response to Arguments
Applicant's arguments filed 06/26/2026 have been fully considered but they are moot in view of the new rejection ground.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 5712721401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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