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 .
Response to Amendment
An amendment responsive to the non-final Office Action dated September 17, 2025 was submitted on December 15, 2025. Claim 1 was amended. Claims 7-10 and 28-32 have been previously canceled. Claims 1-6, 11-27 and 33-36 are currently pending. Claims 15-27 have been withdrawn from consideration.
Applicant's arguments regarding the prior art rejections of claims 1-6, 11-14, 33 and 34 (¶¶ 9-27 of the Office Action) have been fully considered but they are not persuasive. These rejections have therefore been maintained as detailed below. The limitations added to claim 1 have also been addressed below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 11-14 and 33-36 are rejected 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.
The term “a few weeks” in claim 1 is a relative term which renders the claim indefinite. The term “a few” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Moreover, while “few” means a small number, a few weeks could be from as little as 2 weeks to 5 weeks or more. The length of time the sheet metal is stable in storage is rendered indefinite by the use of the term “a few weeks”. For purposes of examination, “a few weeks” is being construed as at least two weeks.
Claims 2-6, 11-14 and 33-36 depend either directly or indirectly from claim 1 and are therefore also indefinite for the reasons set forth above with respect to claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1-6, 12, 13, 35 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Thiede et al. (U.S. Patent Application Publication No. 2018/0265757 A1, cited in IDS submitted October 22, 2021) in view of Kretow (“The Evaluation of Various Substituted Ureas as Latent Accelerators for Dicyandiamide Cured Epoxy Resin Formulations”, CVC Specialty Chemicals Inc., revised September 6, 2006, cited in previous Office Action) and Roth et al. (U.S. Patent Application Publication No. 2010/0151253 A1, cited in previous Office Action).
Regarding claim 1, Thiede discloses a sheet metal for producing an electromagnetic component, in particular a stator core or a rotor core (Abstract of Thiede, sheet metal component for use in a stator or rotor core), wherein the sheet metal is covered with an adhesive covering of a thermally activated adhesive (Abstract of Thiede, sheet metal component coated with a thermally activatable adhesive), which must first be thermally activated for gluing during a chemical curing reaction ([0044] of Thiede, dried adhesive layer is “non-adhesive” and thermally activatable), wherein the sheet metal is stable long-term, such that storage of the sheet metal covered with the not yet activated adhesive is possible over a period of time at least up to a few weeks ([0041] of Thiede, applied adhesive is storage stable at room temperature for several months), wherein the adhesive contains: an epoxy resin in solid resin form ([0009]-[0010] of Thiede, adhesive comprises an epoxy resin; adhesive mixtures can be provided as powders), a latent curing agent ([0011] of Thiede, adhesive comprises a latent curing agent), a latent accelerator ([0012] of Thiede, adhesive comprises a latent accelerator); and wherein the sheet metal is covered with the adhesive when being an aqueous dispersion ([0044] of Thiede, aqueous dispersion is applied to the metal sheet and dried to form the thermally activatable adhesive layer).
Thiede does not specifically disclose that the adhesive contains 60 wt. parts of an epoxy resin in solid resin form, 0.5 - 15 wt. parts of a latent curing agent, 1 - 15 wt. parts of a latent accelerator. Moreover, Thiede discloses a composition containing 100 parts by weight of the epoxy, 4-8 parts by weight of the latent curing agent and 4-10 parts by weight of the latent accelerator ([0008]-[0012] of Thiede). The claimed composition, however, when determined based on 100 parts of the epoxy resin comprises 100 parts epoxy, 0.83-25 parts of latent curing agent and 1.67-15 parts of latent accelerator. Thiede therefore clearly teaches an adhesive having amounts of latent curing agent and accelerator that overlap with those recited in claim 1 which would render the claimed ranges of components obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Thiede does not specifically disclose that the latent accelerator contains a urea derivative, wherein the urea derivative is 4,4'-methylene-bis-(phenyldimethylurea). Thiede, however, discloses that the latent accelerator contains a urea derivative ([0030] of Thiede). Kretow discloses 4,4'-methylene-bis-(phenyldimethylurea) as an accelerator for epoxy resin formulations (pg. 2, Table 1 of Kretow). According to Kretow, 4,4'-methylene-bis-(phenyldimethylurea) provides a favorable balance of properties with respect to shelf life, acceleration and Tg (pg. 10 of Kretow). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use 4,4'-methylene-bis-(phenyldimethylurea) as a catalyst in the adhesive of Thiede. One of skill in the art would have been motivated to do so in order to provide the epoxy adhesive formulation with a favorable balance of properties with respect to shelf life, acceleration and Tg as taught by Kretow (pg. 10 of Kretow). While the epoxy formulations of Kretow are disclosed as liquid formulations and not aqueous dispersions of solid epoxy resin, Roth discloses thermally activatable and shelf stable aqueous epoxy compositions (([0022] of Roth) comprising 4,4'-methylene-bis-(phenyldimethylurea) as a catalyst ([0104] of Roth). One of skill in the art would therefore have had a reasonable expectation of success in combining the prior art disclosures of Thiede and Kretow to meet the limitations of the claimed invention. Moreover, as established by Roth, it was known to formulate shelf stable and thermally activatable aqueous dispersions of solid epoxy resins using 4,4'-methylene-bis-(phenyldimethylurea) as a catalyst ([0104] of Roth).
Regarding claim 2, Thiede suggests that the adhesive contains: 1 to 10 wt. parts of the latent curing agent. Moreover, Thiede discloses a composition comprising a latent curing agent in an amount of 4 to 8 parts by weight based on 100 parts of epoxy which range overlaps and therefore renders obvious the range recited in claim 2 (see analysis of claim 1 above).
Regarding claim 3, Thiede discloses that the epoxy resin is bisphenol A epoxy resin ([0023] of Thiede).
Regarding claim 4, Thiede discloses that the latent curing agent contains a dicyandiamide, an imidazole, a BF3 amine complex or a combination thereof ([0028] of Thiede).
Regarding claim 5, Thiede suggests that the adhesive contains: 1 to 10 wt. parts of the latent accelerator. Moreover, Thiede discloses a composition comprising a latent accelerator in an amount of 4 to 8 parts by weight based on 100 parts of epoxy ([0012] of Thiede) which range overlaps with that recited in claim 5 (see analysis of claim 1 above).
Regarding claim 6, Thiede suggests that the adhesive furthermore has 0.2 to 8 wt. parts of absorption additives, selected from the group of lamp blacks and/or from the group of water-soluble dyes ([0036] of Thiede, disclosed range of 0.2 to 8 parts by weight based on 100 parts of epoxy overlaps with the recited range).
Regarding claim 12, Thiede discloses that the adhesive covering is applied to one or both sides of the sheet metal and has a thickness between 1 µm and 20 µm ([0062] of Thiede, adhesive thickness of 5-6 µm; Abstract of Thiede, sheet metal component coated with adhesive used to form a stack of sheets; layers in stack would necessarily be coated on one side or both sides).
Regarding claim 13, Thiede discloses the adhesive covering consists of a first partial covering of the first sheet metal surface with a first thickness and a second partial covering of the second sheet metal surface with a second thickness (Abstract of Thiede, sheet metal component coated with adhesive used to form a stack of sheets; layers in middle of stack would necessarily be coated on both sides; each coating would necessarily have a thickness).
Regarding claim 35, Thiede discloses that the adhesive covering is tack-free and storage-stable after application and prior to activation ([0047] of Thiede, coated metal sheet is “tack-free”; [0041] of Thiede, applied adhesive is stable in storage).
Regarding claim 36, Thiede discloses that the adhesive is activatable by infrared radiation ([0053] of Thiede, thermal activation takes place by infrared radiation).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Thiede in view Kretow and Roth as applied to claim 1 above and further in view of Antelmann et al. (U.S. Patent Application Publication No. 2007/0027274 A1, cited in previous Office Action).
Regarding claim 11, neither Thiede nor Kretow specifically disclose that the particles of the urea derivative have an average particle size between 1 µm and 30 µm. Moreover, Thiede discloses that the components of the adhesive mixture can be provided as a powder (i.e., in particulate form) ([0046] of Thiede), but does not disclose the particle size of the powder. Antelmann, however, discloses particles of urea derivatives for use as accelerators for epoxy resins which have an average particle size of about 2-10 µm ([0018] of Antelmann). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use accelerator particles having an average particle size of 2-10 µm since Antelmann establishes that it was known to use urea derivative particles of that size as an accelerator for epoxy resins. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Thiede in view Kretow and Roth as applied to claim 1 above and further in view of Behringer et al. (U.S. Patent No. 4,591,529, cited in IDS submitted October 22, 2021).
Regarding claim 14, Thiede does not specifically disclose that an insulating varnish layer is arranged between the sheet metal and the adhesive layer and/or only insulating varnish is arranged on the side opposite the adhesive layer. Behringer, however, discloses a sheet for manufacturing laminated iron cores which is covered on one or both sides with an adhesive (Abstract of Behringer). Behringer discloses double coated sheets wherein the sheets are first coated with a lacquer and then coated with the adhesive (3:13-16 of Behringer). According to Behringer, double coating the sheets reduces eddy current losses in the iron cores (3:5-13 of Behringer). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to arrange an insulating lacquer layer between the adhesive and metal in order to reduce eddy current losses as taught by Behringer (3:5-13 of Behringer).
Claims 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Thiede in view Kretow and Roth as applied to claim 13 above and further in view of Bursy et al. (U.S. Patent Application Publication No. 2022/0051838 A1, cited in previous Office Action).
Regarding claims 33 and 34, Thiede does not specifically disclose that the first thickness is at least 1.5 times the second thickness as recited in claim 33 or that the first thickness is at least double the second thickness as recited in claim 34. Bursy, however, discloses lamination parts for lamination stacks comprising a sheet metal strip coated on both sides with epoxy resin ([0014]-[0015] of Bursy). According to Bursy, the top and bottom coating can have different thicknesses with the top coating being thinner and having a thickness of 1-5 µm and the bottom coating being thicker and having a thickness of 2-10 µm ([0015] of Bursy). Also according to Bursy, using a thinner coating on the top side can minimize contamination of stamping tools ([0015] of Bursy). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to provide the adhesive coated sheet metal Thiede with a coating thickness of 1-5 µm on one side (i.e., the top side) and 2-10 µm on the opposite side (i.e., the bottom side). One of skill in the art would have been motivated to do so in order to minimize contamination of stamping tools as taught by Bursy ([0015] of Bursy). Bursy clearly teaches a back thickness to front thickness ratio range (i.e., as high as 10:1) that overlaps with that recited in claims 33 and 34 (i.e., at least 1.5:1 or at least 2:1) which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Response to Arguments
Applicant's arguments have been fully considered to the extent that they apply to the new grounds of rejection but they are not persuasive.
The applicant asserts that Thiede provides no teaching regarding the long-term stability of a dried but un-activated adhesive layer lone applied to sheet metal (pg. 9, 1st full ¶ of the amendment). Thiede, however, discloses a sheet metal component coated with a thermally activatable adhesive (Abstract of Thiede) wherein the applied adhesive is storage stable at room temperature for several months ([0041] of Thiede).
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 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 CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746