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 .
Status of Claims
Claims 1-7 and 11-18 are pending. Claims 1-7 and 15-18 are presented for this examination. Claims 11-14 are withdrawn. Claim 1 is amended. Claims 15-18 are newly added.
Status of Previous Rejection
All prior art rejections are withdrawn in view of argument and amendment filed on 03/16/2026.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Allowable Subject Matter
Claims 1-7 and 15-18 are allowed in view of amendment and argument filed on 03/16/2026.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance: closest prior art is Fujikura (US20180119258)
Fujikura discloses an Inventive Example A8 having elemental composition except Si and Cr, ferrite as microstructure, average grain size of ferrite as claimed as illustrated in Table 1 of Page 3 of previous office action dated 12/23/2025.
Since Si and Cr are absent, it is not reasonable to arrive at claimed percentage of eddy current losses and magnetic polarization as required by instant claim 1. In addition, applicant submitted evidence of record demonstrating Steels having compositions encompassed by the claimed compositional ranges does not have % of eddy current loss as presented in Page 6 last paragraph of remarks.
No prior can be found to disclose instant claim 1 non oriental electrical steel sheet with elemental compositions, microstructure, average grain size of ferrite, percentage of eddy current losses and magnetic polarization, YS, TS and elongation as required by instant claim 1.
Hence, instant claims 1-7 and 15-18 are allowed.
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 1-7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US 12,516,396 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent teaches a non-oriented steel sheet with substantially identical composition, microstructure and properties.
Claims 1-7 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 19/266,226 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teaches a non-oriented steel sheet with substantially identical composition, microstructure and properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-14 of copending Application No. 19/265,120
claims 1-14 of copending Application No. 19/273485
claims 1-14 of copending Application No. 19/283298
claims 1-13 of copending Application No. 19/283315
claims 1-14 of copending Application No. 19/284953
claims 1-13 of copending Application No. 19/287874
claims 1-14 of copending Application No. 19/289140
claims 1-14 of copending Application No. 19/289141
claims 1-14 of copending Application No. 19/289149
claims 1-19 of copending Application No. 19/266237
(reference applications).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference applications teaches a non-oriented steel sheet with substantially identical composition, microstructure and properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Argument
In response to argument filed on 03/16/2026 that Fujikura and Zaizen are not combinable, argument is moot since all prior art rejections are withdrawn.
In response to argument that Steel I1, I2 and I3 of US’396 evidence that even a steel sheet having a composition encompassed by the compositional ranges does not necessarily have a percent of eddy current losses as recited in claim 1, argument is moot since all prior art rejections are withdrawn in view of submitted evidence reference.
Applicant is required to file TDs of all co-pending applications in light of 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 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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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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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/JENNY R WU/Primary Examiner, Art Unit 1733
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