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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/5/2026 has been entered.
The amendment filed 1/5/2026 has been entered. Claim 7 has been canceled. Claims 1-6 and 8-9 are pending in the application. Claims 1-5 and 8-9 have been withdrawn from consideration The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hosokawa (JP2002235061A, please refer to the attached machine translation for the below cited sections).
Hosokawa teaches a thermally reactive adhesive for bonding various substrates, such as metal film substrates including a steel substrate as in the examples (Paragraphs 0027, 0029, and examples), for use in various applications including in electrical/electronic applications (Paragraphs 0001-0002 and 0031), wherein the adhesive composition comprises (a) 40-80 parts by weight of a polyolefin copolymer containing carboxy groups such as an ethylene (meth)acrylic acid copolymer, with a carboxyl group-containing monomer unit content of 4 to 30% by weight (Paragraphs 0008-0012 and 0018; reading upon the claimed polyethylene acrylate of repeating units represented by Chemical Formula 1 and Chemical Formula 2 and in contents as recited in instant claim 6); (b) 60-20 parts by weight of a block copolymer having an aromatic vinyl compound polymer block and a conjugated diene compound polymer block (an additional component not excluded by the claimed invention); (c) an epoxy resin that may function as a crosslinking/curing agent in an amount of 1-50 parts by weight based on 100 parts by weight of the sum total of the polyolefin copolymer (a) and the block copolymer (b) (Paragraphs 0008-0009, reading upon the broadly claimed curing agent in a content overlapping and hence rendering obvious the claimed 0.5 to 2.5 parts by weight with respect to 100 parts by weight of the polyethylene acrylate given the ratio of (a) to (b) above); and a curing accelerator for component (c) such as dicyandiamide in a content of 5 parts by weight or less, preferably about 0.01 to 5 parts by weight (Paragraph 0024) based on 100 parts by weight of the total of the polyolefin copolymer (a) and the block copolymer (b) (alternatively reading upon the claimed curing agent and content thereof as recited in instant claim 6; Entire document, particularly as noted above). Hosokawa teaches that the adhesive composition may further contain inorganic filler such as silica (SiO2) and alumina (Al2O3), in a content of 30 parts by weight or less based on 100 parts by weight of the polyolefin-based copolymer (a) (reading upon the claimed inorganic filler and fully encompassing the claimed content thereof as recited in instant claim 6; Paragraph 0025). Hence, Hosokawa clearly teaches and/or suggests a laminate comprising a plurality of steel sheets and an adhesive layer placed between the plurality of steel sheets wherein the adhesive layer is formed from an adhesive composition comprising components reading upon the instantly claimed polyethylene acrylate including the repeating units and contents thereof, the instantly claimed inorganic particles and contents thereof, and the instantly claimed curing agent and content thereof, particularly given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, such that the only differences between the teachings of Hosokawa and the claimed invention is that Hosokawa does not specifically teach that the steel substrates or steel sheets are “electrical” steel sheets as instantly claimed and that the thickness of the adhesive layer as the claimed “fusion layer” is 2 to 3 µm as instantly claimed. However, with respect to the claimed “electrical” steel sheets, given that Hosokawa does not specifically limit the metal or steel substrate(s) to any particular metal or steel material, and clearly teaches the use of the adhesive for electrical/electronic applications, it would have been obvious to one having ordinary skill in the art to utilize “electrical” steel sheets as the substrates to be bonded by the adhesive in the invention taught by Hosokawa given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results. With respect to the claimed thickness, although Hosokawa teaches that the thickness of the adhesive layer is preferably about 10 to 200 µm (Paragraph 0030), Hosokawa does not limit the thickness of the adhesive to this preferred range and given that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a thickness on the same order of magnitude as the “about 10” µm as taught by Hosokawa, such as the claimed 2 to 3 µm, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results with respect to the claimed invention over the teachings of Hosokawa, the claimed invention as recited in instant claim 6 would have been obvious over Hosokawa.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Parkinson (USPN 3,843,576), taken alone or in view of Evans (USPN 3,940,291). As discussed in the prior office action, Parkinson teaches an aqueous coating composition in which ethylene-carboxylic acid copolymer, particularly ethylene-acrylic acid copolymer, and a low molecular weight phenolic resin are combined to produce a material useful as an adhesive, insulator, primer, or coating, particularly for electromagnetic steels, wherein additives including pigments or fillers such as inert oxides can be added to enhance properties of the composition (Title, Abstract, Col. 2, line 63-Col. 4, line 29; Col. 7, lines 19-39). Parkinson teaches that a specialized use of the composition is as a coating or “core plate” for use on steel sheets for electromagnetic cores such as those in transformers, generators, or motors as described in Col. 3, line 39-Col. 4, line 24; wherein the “core plate” coating composition may also be used as an adhesive for bonding the sheets or lamellae of the electromagnetic cores by applying the coating to form a dry, uncured coating on the steel sheets and then the sheets are stacked and baked to activate and cure the coating, thus causing the sheets to adhere to one another, thereby reading upon the claimed electrical steel sheet laminate comprising a plurality of electrical steel sheets and a “fusion layer” placed between the plurality of electrical steel sheets as in instant claim 6 (Col. 3, line 39-Col. 4, line 46). Parkinson teaches that copolymers of ethylene and ethylenically-unsaturated carboxylic acid, particularly ethylene-acrylic acid copolymers as in the claimed invention, suitable for the composition are those with preferably about 18 to about 24 percent of acid by weight (falling within the claimed range of 5 to 25wt% as recited in instant claim 6 ) since these are more readily soluble or dispersible in alkali and have better adhesion properties than those with lower acid content (Col. 5, lines 23-33), with examples thereof including ethylene-acrylic acid copolymers sold by Union Carbide Corporation under the trade-names EAA-9300 (i.e. copolymer of 80wt% ethylene and 20wt% acrylic acid as evidenced by Anderson, USPN 3,984,514, Examples 9-10) and EAA-9500 (i.e. copolymer of 18-20wt% acrylic acid/80-82wt% ethylene as evidenced by Poppe, USPN 4,055,530, Example VII), with working examples specifically utilizing EAA-9300 or EAA-9500 ethylene-acrylic acid copolymer (Examples) reading upon the claimed polyethylene acrylate as recited in instant claim 6 including the claimed repeating units and claimed weight percentages thereof. Parkinson teaches that the composition may further comprise various optional constituents to improve such properties as stability, with suitable addition components including fillers and crosslinking agents (Col. 7, lines 19-26), with working examples utilizing “minor” additions of diacetone acrylamide crosslinking agent to assist in curing the composition (thus functioning as a “curing agent”), with Example 13 including 12 parts diacetone acrylamide per about 117.4 parts of ethylene acrylic copolymer and ethylene methacrylic ionomer.
Parkinson also teaches that “[p]igments or fillers, including inert oxides such as iron oxide or titania or silicates such as clays or calcium silicate (i.e. a mixed inorganic oxide comprising CaO and SiO2, thus broadly “inorganic particles include one or more selected from the group consisting of SiO2”) may be added to [the] composition in finely divided form in amounts up to about 50 percent and preferably from about 5 to about 10 percent of the total solids depend[ing] on the final use of the composition” (Col. 7, lines 34-43), wherein Parkinson teaches that certain fillers such as calcium silicate may assist in catalyzing the cure of the composition (thus also functioning as a “curing agent”) with 30 mg of calcium silicate utilized in Example 9; and given that Parkinson teaches that the composition comprises about 25 to about 95 weight percent of resin solids of the ethylene acrylic acid copolymer, with at least one working example for the core-plate formula for the electromagnetic steel sheets comprising inorganic clay particles in a content falling within the claimed range of 5 to 10 parts with respect to 100 parts of the ethylene-acrylic acid copolymer as recited in instant claim 6, thereby teaching and/or suggesting an inorganic filler content as instantly claimed, and that the coating has a dry coating thickness of about 1 to 3 microns reading upon the claimed thickness as recited in amended claim 6 (Examples, particularly Examples 12-13, Table IV), the only differences between the teachings of Parkinson and the claimed invention as recited in amended claim 1 is that Parkinson does not specifically teach that the “inert oxides” as the pigments or fillers, reading upon the instantly claimed “inorganic particles”, include one or more selected from the group consisting of SiO2, Al2O3, MgO, ZnO, and ZrO2 as recited in amended claim 6, and that the crosslinking agent as the claimed “curing agent” is present in a content of 0.5 to 2.5 parts by weight with respect to 100 parts by weight of the polyethylene acrylate. However, with respect to the claimed inorganic fillers, given that the above inorganic oxides as instantly claimed are known “inert oxides” in the art that are functionally equivalent to the inert oxides taught by Parkinson, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed inorganic particles that “include one or more selected from the group consisting of SiO2, Al2O3, MgO, ZnO, and ZrO2” as recited in amended claim 6 would have been obvious given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results, particularly given that Parkinson teaches silicates which technically “include” SiO2. Further, it is noted that Evans teaches insulative coatings for electrical steels, similar to the teachings of Parkinson, wherein the insulative coating may include inert fillers, as in Parkinson, to achieve thicker films and better resistivity, wherein exemplary inert fillers include colloidal SiO2, mica, Cr2O3, TiO2, ZrO2, and the like (Entire document, particularly Abstract and Col. 8, lines 6-11), reading upon the claimed inorganic oxide particles as recited in instant claim 6 and further supporting the Examiner’s position that the claimed inorganic particles are obvious inert oxides in the art and functionally equivalent to those taught by Parkinson. In terms of the claimed content of curing agent, given that Parkinson does not specifically limit the content of the crosslinking agent to any particular range and clearly teaches that such ingredient is optional and may be provided in “minor” amounts as in the example, and that said optional constituents can be added to improve properties such as stability of the resin, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any content of the crosslinking agent from 0 up to about the content as utilized in the working example thereby rendering the claimed 0.5 to 2.5 parts by weight of curing agent with respect to 100 parts by weight of the polyethylene acrylate obvious to one having ordinary skill in the art, particularly given that one skilled in the art before the effective filing date would have been motivated to determine the optimum content for a given crosslinking agent to provide the desired properties such as stability for the invention as taught by Parkinson. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 6 would have been obvious over the teachings of Parkinson, taken alone or as evidenced by Evans given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Terminal Disclaimer
The terminal disclaimer filed on 1/5/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 17/785502 has been received and is pending review. Hence, the obviousness-type double patenting rejection as recited in the prior office action is being held in abeyance by the Examiner.
Response to Arguments
Applicant's arguments filed 1/5/2026 have been fully considered but are moot in view of the new grounds of rejection presented above over Hosokawa and the additional remarks with respect to the teachings of Parkinson, taken alone or as evidenced by Evans, as applied above to amended claim 6.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787