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
Claims 1-7, 9, and 11 have been amended; Claims 11-14 have been withdrawn as non-elected claims; claims 15-20 are added as new claims; Claims 1-10 and 15-20 remain for Examination, wherein claim 1 is an independent claim.
Previous Claim Objections/Rejections
Previous objection of claims 1-5 because of the informalities has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/16/2026.
Previous objection of claims 2-5 because of the informalities has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/16/2026.
Previous objection of claims 6-7 because of the informalities has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/16/2026.
Previous objection of claim 9 because of the informalities has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/16/2026.
Previous rejection of claims 1-10 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joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/16/2026.
Previous rejection of claims 1-10 on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-14 of co-pending application No. 19/289,141 (US-PG-pub 2025/0361576 A1) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/16/2026.
Previous rejection of claims 1-10 on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-13 of co-pending application No. 19/287,874 (US-PG-pub 2025/0354238 A1) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/16/2026.
Previous rejection of claims 1-10 on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-14 of co-pending application No. 19/266237 (US-PG-pub 2025/0340963 A1) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/16/2026.
Previous rejection of claims 1-10 on the ground of non-statutory obviousness type double patenting as being unpatentable over Claims 1-13 of co-pending application No. 19/246103 (US-PG-pub 2025/0320575 A1) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 3/16/2026.
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).
PG’744 is applied to the instant claims 1-8 for the same reason as stated in the previous office action dated 1/2/2026.
Regarding the amended feature in the claim 1, 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. the other amendment features in the instant claims 1-6 does not change the scope of the instant claims.
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.
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).
PG’744 in view of PG’609 is applied to the instant claims 9-10 for the same reason as stated in the previous office action dated 1/2/2026.
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 ranges 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.
PG’744 does not specify recrystallized microstructure grain size from 20-110 mm as claimed in the instant claims.
PG’744 does not specify the claimed magnetic properties as claimed in the instant claims.
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), 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 argument 2), 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), as pointed out in the rejection for the instant claims above and in the previous office action dated 1/2/2026, 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.
Regarding the argument 4), proper TDs can overcome the provisional ODP rejections.
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 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 date of this final action.
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/JIE YANG/Primary Examiner, Art Unit 1734