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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/1/2026 has been entered.
Status of the Claims
Claims 11 and 19 have been amended; Claims 11-14 have been withdrawn as non-elected claims; Claims 1-10 and 15-20 remain for Examination, wherein claim 1 is an independent claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-8 and 17-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Murakami et al (US-PG-pub 2010/0158744 A1, thereafter PG’744).
Regarding claims 1-7, PG’744 teaches a high strength non-oriented electrical steel sheet and relates to a magnetic material for a high-speed rotary machine with a low iron loss, a high magnetic flux density, and a high strength, a magnetic material for an electromagnetic switch superior in wear resistance (Abstract, examples, claims, and par.[0001] of PG’744). The comparison between alloy composition (cl.1-5), the microstructures (cl.1, 6-7), properties (cl.1, 8) and those disclosed by the steel #11 in table 1 of PG’744 is listed in following table. All of the alloy composition ranges disclosed by the steel #11 in table 1 of PG’744 and it’s recrystallized fraction (#11 in table 2 of PG’744) are within the claimed alloy composition ranges of the instant claims. PG’744 provides the example #11 in table 1 of PG’744 having Si + Al + Mn = 4.3 (wt%), which is within the claimed range of 3.85-5.1 as recited in the instant claim. PG’744 teaches controlling the annealing temperature to obtain controllable re-crystallized grain size from 10-200 mm (par.[0125] of PG’744), which overlaps the claimed grain size range as recited in the instant claim 1. Overlapping grain size creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the recrystallized grain size from the disclosure of PG’744 since PG’744 teaches the same non-oriented electrical steel sheet as claimed throughout whole disclosing range. The claimed eddy current losses and magnetic polarization in the instant claim 1 are recognized as material properties fully depended on the alloy composition and microstructure. Since PG’744 teaches the same alloy composition with the same recrystallization structure with the similar grain size as disclosed in the instant claims, the claimed properties, eddy current losses and magnetic polarization, would be highly expected in the steel sheet of PG’744. MPEP 2112 01 and 2145 II. Actually, PG’744 provides examples having iron loss in Fig.1 and magnetic properties (table 2 of PG’744), which overlap the claimed properties as claimed in the instant claim. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the properties from the disclosure of PG’744 since PG’744 teaches the same non-oriented electrical steel sheet as claimed throughout whole disclosing range.
Element
From instant Claims 1-7 (in wt%)
#11 in table 1 of PG’744 (in wt%),
Within range
(in wt%)
C
0.0001-0.007 (cl.1)
0.002-0.007(cl.3)
0.0038
0.0038
Mn
0.15-0.2 (cl.1)
0.16-0.2 (cl.5)
0.2
0.2
Si
3-3.6 (cl.1)
3.1-3.55 (cl.2)
3.1
3.1
Al
0.7-1.3 (cl.1)
0.8-1.1 (cl.4)
1.0
1.0
P
0.15 or less
0.044
0.044
S
0.006 or less
0.0018
0.0018
N
0.09 or less
0.0020
0.0020
Si +Al +Mn
3.85-5.5
4.3
4.3
Optional includes one or more:
Nb: 0-0.1;
Ti: 0-0.1;
V: 0-0.1;
Cr: 0-1;
Mo: 0-0.5;
W: 0-0.1;
Co: 0-1;
As: 0-0.05;
Ca: 0.001-0.01;
Cu: 0-1;
Ni: 0-1;
B: 0-0.05;
Pb: 0-0.2;
Sn: 0-0.2;
Sb: 0-0.2
Trace elements:
Each 0.005 or less including:
Mo, W, Sn, Sb. Ca, and Co (par.[0055] of PG’744)
Reads on
Fe
Balance + impurities
Balance + impurities
Balance + impurities
Recrystallized ferrite microstructures
Re: 80-100% (cl.1)
Non-Re: 0-20% (cl.1)
Non-Re: 0-10% (cl.6)
Re: 90-100% (cl.7)
Ferrite single phase (par.[0019] of PG’744)
100% recrystallization (table 2 of PG’744)
100% recrystallization
Grain size after recrystallization
20-110 mm
Adjusting: 10-200 mm (par.[0125] of PG’744)
Overlapping range:
20-110 mm
From claim 8
TS (MPa)
At least 530
530 or more (table 2 of PG’744)
Reads on
Regarding claim 8, PG’744 provides TS over 530 MPa in table 2 of PG’744 and PG’744 specify that apply suitably adjusting the extents of the recrystallization and restoration and controlling the structure to the intermediate recrystallization stage to obtain steel sheet with almost no in-plane anisotropy. (par.[0123] of PG’744).
Regarding claim 17, PG’744 specify making a final heat treatment after cold rolling a heat treatment holding the sheet in a temperature region of 800oC or more for 5 sec or more (par.[0021] of PG’744), which reads on the claimed limitation as recited in the instant claim.
Regarding claim 18, PG’744 indicates 100% recrystallization for the example #11 in table 2 of PG’744, which reads on the claimed recrystallized microstructure as claimed in the instant claim.
Regarding claim 19, the example #11 in table 1 of PG’744 does not specify adding amount of Cu and Ni as claimed in the alloy. However, PG’744 specify adding 0.002-5.5 mass% Cu (par.[0038] of Pg’744) and 0.05-3.0 mass% Ni (par.[0049] of PG’744) in order to improve the properties of the alloy, which overlapping the claimed Cu and Ni ranges in the instant claim. Overlapping in Cu and Ni ranges creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Cu and Ni as claimed from the disclosure of PG’744 since PG’744 teaches a same non-oriented electrical steel sheet as claimed throughout whole disclosing range. The amendment in the instant claim does not change the scope of the instant claim.
Regarding claim 20, PG’744 teaches adjusting the grain size in range 20 or more mm by heat treatment (claim 1 and par.[0062] of PG’744), which overlaps the claimed grain size range. Overlapping in grainsize range creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the grain size as claimed from the disclosure of PG’744 since PG’744 teaches a same non-oriented electrical steel sheet as claimed throughout whole disclosing range.
Claims 9-10 and 15-16 are rejected under 35 U.S.C. 103(a) as being unpatentable over PG’744 in view of Arita et al (US-PG-pub 2009/0301609 A1, with on-line translation, thereafter PG’609).
Regarding claims 9-10, PG’744 specify that apply suitably adjusting the extents of the recrystallization and restoration and controlling the structure to the intermediate recrystallization stage to obtain steel sheet with almost no in-plane anisotropy. (par.[0123] of PG’744). PG’744 does not specify the claimed YS (cl.9), and total elongation (cl.10). PG’609 teaches a non-oriented electrical steel sheet excellent in yield strength for use as an iron core material for high rpm motors that does not sacrifice yield or productivity in motor core punching or steel sheet production (Abstract, examples, and claims of PG’609). All of the alloy composition range and 50% or more recrystallization rate disclosed by PG’609 (claims 1-2, par.[0021]-[0026], [0035], and examples of PG’609) overlap the claimed alloy composition ranges. MPEP 2144 05 I. PG’609 indicates YS 650 MPa and 10% or greater elongation (par.[0034]-[0035] of PG’609), which reads on the properties as claimed in the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the properties, for example YS (cl.9) and elongation (cl.10), as demonstrated by the PG’609 for the steel sheet of PG’744 since both PG’744 and PG’609 teach the same non-oriented electrical steel sheet as claimed throughout whole disclosing range.
The amendment in claim 9 does not change the scope of the claimed limitations.
Regarding claims 15-16, PG’744 specify making a final heat treatment after cold rolling a heat treatment holding the sheet in a temperature region of 800oC or more for 5 sec or more (par.[0021] of PG’744), which reads on the cold rolling and annealing as recited in the instant claim 16. PG’744 provides example #11 in table 1-2 with 100% recrystallization, 700 MPa TS, and 0.3 mm sheet thickness, which reads on the claimed recrystallization rate, TS, and sheet thickness as claimed in the instant claim. the example #11 in table 1 of PG’744 does not specify adding amount of Cu and Ni as claimed in the alloy. However, PG’744 specify adding 0.002-5.5 mass% Cu (par.[0038] of Pg’744) and 0.05-3.0 mass% Ni (par.[0049] of PG’744) in order to improve the properties of the alloy, which overlapping the claimed Cu and Ni ranges in the instant claim. Overlapping in Cu and Ni ranges creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Cu and Ni as claimed from the disclosure of PG’744 since PG’744 teaches a same non-oriented electrical steel sheet as claimed throughout whole disclosing range. PG’744 does not specify the claimed YS and total elongation. PG’609 teaches a non-oriented electrical steel sheet excellent in yield strength for use as an iron core material for high rpm motors that does not sacrifice yield or productivity in motor core punching or steel sheet production (Abstract, examples, and claims of PG’609). All of the alloy composition range and 50% or more recrystallization rate disclosed by PG’609 (claims 1-2, par.[0021]-[0026], [0035], and examples of PG’609) overlap the claimed alloy composition ranges. MPEP 2144 05 I. PG’609 indicates YS 650 MPa and 10% or greater elongation (par.[0034]-[0035] of PG’609), which reads on the properties as claimed in the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the properties, for example YS and elongation as demonstrated by the PG’609 for the steel sheet of PG’744 since both PG’744 and PG’609 teach the same non-oriented electrical steel sheet as claimed throughout whole disclosing range.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-10 and 15-20 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-14 of co-pending application No. 19/284,953 (US-PG-pub 2025/0354231 A1).
Regarding claims 1-10 and 15-20, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-14 of co-pending application No. 19/284,953 (US-PG-pub 2025/0354231 A1) teaches all of the essential alloy composition ranges, microstructure, and properties as recited in the instant claims. Overlapping and being close to the claimed composition and properties range between claimed claims and those disclosed by Claims 1-14 of co-pending application No. 19/284,953 (US-PG-pub 2025/0354231 A1) creates a prima facie case of obviousness. MPEP 2144 05 I. Thus, no patentable distinction was found in the instant claims compared with Claims 1-14 of co-pending application No. 19/284,953 (US-PG-pub 2025/0354231 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Claims 1-10 and 15-20 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-14 of co-pending application No. 19/289,149 (US-PG-pub 2025/0354243 A1).
Regarding claims 1-10 and 15-20, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-14 of co-pending application No. 19/289,149 (US-PG-pub 2025/0354243 A1) teaches all of the essential alloy composition ranges, microstructure, and properties as recited in the instant claims. Overlapping and being close to the claimed composition and properties range between claimed claims and those disclosed by Claims 1-14 of co-pending application No. 19/289,149 (US-PG-pub 2025/0354243 A1) creates a prima facie case of obviousness. MPEP 2144 05 I. Thus, no patentable distinction was found in the instant claims compared with Claims 1-14 of co-pending application No. 19/289,149 (US-PG-pub 2025/0354243 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Claims 1-10 and 15-20 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-14 of co-pending application No. 19/289,140 (US-PG-pub 2025/0354233 A1).
Regarding claims 1-10 and 15-20, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-14 of co-pending application No. 19/289,140 (US-PG-pub 2025/0354233 A1) teaches all of the essential alloy composition ranges, microstructure, and properties as recited in the instant claims. Overlapping and being close to the claimed composition and properties range between claimed claims and those disclosed by Claims 1-14 of co-pending application No. 19/289,140 (US-PG-pub 2025/0354233 A1) creates a prima facie case of obviousness. MPEP 2144 05 I. Thus, no patentable distinction was found in the instant claims compared with Claims 1-14 of co-pending application No. 19/289,140 (US-PG-pub 2025/0354233 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Claims 1-10 and 15-20 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-14 of co-pending application No. 19/273485 (US-PG-pub 2025/0346977 A1).
Regarding claims 1-10 and 15-20, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-14 of co-pending application No. 19/273485 (US-PG-pub 2025/0346977 A1) teaches all of the essential alloy composition ranges, microstructure, and properties as recited in the instant claims. Overlapping and being close to the claimed composition and properties range between claimed claims and those disclosed by Claims 1-14 of co-pending application No. 19/273485 (US-PG-pub 2025/0346977 A1) creates a prima facie case of obviousness. MPEP 2144 05 I. Thus, no patentable distinction was found in the instant claims compared with Claims 1-14 of co-pending application No. 19/273485 (US-PG-pub 2025/0346977 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Claims 1-10 and 15-20 are rejected on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-14 of co-pending application No. 19/266226 (US-PG-pub 2025/0340962 A1).
Regarding claims 1-10 and 15-20, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-14 of co-pending application No. 19/266226 (US-PG-pub 2025/0340962 A1) teaches all of the essential alloy composition ranges, microstructure, and properties as recited in the instant claims. Overlapping and being close to the claimed composition and properties range between claimed claims and those disclosed by Claims 1-14 of co-pending application No. 19/266226 (US-PG-pub 2025/0340962 A1) creates a prima facie case of obviousness. MPEP 2144 05 I. Thus, no patentable distinction was found in the instant claims compared with Claims 1-14 of co-pending application No. 19/266226 (US-PG-pub 2025/0340962 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-10 and 15-20 have been considered but they moot in view of the new ground rejection as stated above. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has been stated as above.
The Applicant’s arguments are summarized as following:
PG’744 does not specify 80-100% recrystallized microstructures as claimed in the instant claims since example #11 in table 2 of PG’744 including 60% worked structure. (Same argument as “the Applicant’s Arguments/Remarks” dated 3/16/2026).
PG’744 does not specify recrystallized microstructure grain size from 20-110 mm as claimed in the instant claims. (Same argument as “the Applicant’s Arguments/Remarks” dated 3/16/2026).
The Applicant has provided the comparison examples from US patent 12,571,066 and examples from US-PG-pub 20250354238 A1 to show the claimed magnetic properties as claimed in the instant claims would not naturally flow from the from the compositions.
Regarding the rejections on the ground of non-statutory obviousness type double patenting, which are provisional rejections and TDs may be filled when conflict claims are allowable.
In response,
Regarding the Applicant argument 1), refer to the previous Office Action dated 4/3/2026, Firstly, there is no limitation in the instant claims to limit further working after recrystallization; Secondly, example #11 in table 2 of PG’744 specify 100% recrystallization rate before working but after cold rolling (table 2 of PG’744); Thirdly, PG’744 specify making a final heat treatment after cold rolling a heat treatment holding the sheet in a temperature region of 800oC or more for 5 sec or more (par.[0021] of PG’744), which overlaps the recrystallization conditions as disclosed in the instant invention (Refer to withdrawn claim 11 in the instant application).
Regarding the Applicant’s argument 2), refer to the previous Office Action dated 4/3/2026, PG’744 teaches adjusting the grain size in range 20 or more m by heat treatment (claim 1 and par.[0062] of PG’744), which overlaps the claimed grain size range. Overlapping in grainsize range creates a prima facie case of obviousness. MPEP 2144 05 I.
Regarding the argument 3), Firstly, as pointed out in the rejection for the instant claims above, PG’744 teaches the same alloy composition with the same recrystallization structure with the similar grain size as disclosed in the instant claims, the claimed properties, Eddy current losses and magnetic polarization, would be highly expected in the steel sheet of PG’744. MPEP 2112 01 and 2145 II. Actually, PG’744 provides examples having iron loss in Fig.1 and magnetic properties (table 2 of PG’744), which overlap the claimed properties as claimed in the instant claim. MPEP 2144 05 I. Secondly, refer to the disclosure of US-PG-pub 2025/0389002 A1—corresponding to the instant specification, Eddy current losses clearly related to the alloy composition and recrystallization features (par.[0016] and [0037] of US-PG-pub 2025/0389002 A1). Thirdly, It is noted that the Applicant does not provide evidence (132 declaration) to show the closest example (#11 in table 1 of PG’744 (in wt%) can not obtain the claimed magnet properties. Finally, lower eddy current loss is better magnetic property for the magnetic alloy. It is noted that the Eddy current loss disclosed in examples of US patent 12,571,066 and examples from US-PG-pub 20250354238 A1 are better than the claimed Eddy current loss in the instant claims.
Regarding the argument 4), proper TDs can overcome the provisional ODP rejections.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIE YANG/Primary Examiner, Art Unit 1734
Prosecution Insights