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 .
Status of the Claims
The amendment filed 5/11/2026 has been entered by the Examiner even although “Previously Presented” claim 6 adds back in limitations at the end of the claim (see last two lines) that were previously deleted/moved in the amendment filed 1/5/2026. Given that the “addition” appears to be an oversight and not a true amendment to the claim, a notice of non-compliant amendment is not being sent by the Examiner, however, the Applicant would need to amend the claim in the next claim listing to remove the redundant limitations as noted in the objection below.
Claim 7 has been canceled. New claims 10-15 have been added. Claims 1-6 and 8-15 are pending in the application. Claims 1-5 and 8-9 have been withdrawn from consideration as being directed to non-elected inventions; election was made without traverse in the response filed 11/27/2024. 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 Objections
Claim 6 is objected to because of the following informalities: the claim recites, “the inorganic particles include one or more selected from the group consisting of SiO2, Al2O3, MgO, ZnO, and ZrO2” on lines 8-9, and then recites, “wherein the inorganic particles include one or more selected from the group consisting of SiO2, Al2O3, MgO, ZnO, and ZrO2” in the last two lines of the claim such that the last two lines are redundant and should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claim 6 and new claims 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hosokawa (JP2002235061A, please refer to the machine translation for the below cited sections), for generally the reasons recited in the prior office action and restated below with additional discussion with respect to the new claims.
As discussed in the prior office action, 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 as recited in instant claim 6 as well as the claimed 1 to 1.5 parts by weight as recited in new claim 10 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 claims 6 and 10; Entire document, particularly as noted above). Hosokawa teaches that the adhesive composition may further contain inorganic filler such as silica (SiO2), alumina (Al2O3), aluminum hydroxide, and magnesium hydroxide (Mg(OH)2), 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 as well as instant claims 11-12; Paragraph 0025), and although Hosokawa does not specifically teach MgO, ZnO, and ZrO2 as the inorganic filler as recited in new claims 13-15, respectively, given that said metal oxides are obvious, functionally equivalent inorganic fillers in the art to the metal oxides and/or metal hydroxides taught by Hosokawa, absent any clear showing of criticality and/or unexpected results with respect to the claimed MgO, ZnO, or ZrO2 as the inorganic particles in new claims 13-15, said inorganic metal oxide particles would have been obvious over the teachings and/or suggestions of Hosokawa.
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 and/or suggestions of Hosokawa and the claimed invention as recited in instant claims 6 and 10-15 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 µm to 200 µm (Paragraph 0030, e.g., directed to an adhesive film), 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 again 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 claims 6 and 10-15 would have been obvious over Hosokawa.
Claim 6 and new claims 10-15 are 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) for generally the reasons recited in the prior office action and restated below with additional discussion with respect to the new claims.
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 instant claim 6 (Examples, particularly Examples 12-13, Table IV), the only differences between the teachings of Parkinson and the claimed invention as recited in instant claim 6 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 instant claim 6 (and particularly as individually recited in new claims 11-15, respectively), 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 again 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 instant claim 6, and more particularly as in new claims 11-15, respectively, would have been obvious given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results. 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, the Examiner again takes the position 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 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 as recited in instant claim 6, as well as the claimed 1 to 1.5 parts by weight as recited in new claim 10, of the 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 and new claims 10-15 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 Application Number 17/785502 has been reviewed and is accepted. The terminal disclaimer has been recorded and the obviousness-type double patenting rejection as recited in the office action dated 10/3/2025 has been withdrawn.
Response to Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive. With respect to the obviousness rejection over Hosokawa, the Applicant argues that “Hosokawa explicitly states that it is preferable for an adhesive layer to have a thickness of about 10 to 200 µm, with its Examples and Comparative Examples consistently forming a thermosetting adhesive layer of 50 µm,” arguing that “[t]his [allegedly] establishes a clear lower limit of 10 µm, aligning with the comparative example of the present specification” (see page 8 of the response). The Applicant refers to Comparative Example 8 in Table 2 of the present specification, and argues that Comparative Example 8 with a coating thickness of 10 µm, which is allegedly the lower limit disclosed in Hosokawa, exhibits inferior stickiness allegedly due to its relatively large coating thickness, arguing that “[t]hus, the adhesive layer thickness range of 10 µm or more proposed by Hosokawa corresponds to a region with limitations in terms of stickiness, [allegedly] offering no technical motivation to adopt a thin fusion layer of 2 to 3 µm as set forth in the claims” and “[t]herefore, it [allegedly] would not have been obvious for a person having ordinary skill in the art to simply reduce the thickness range disclosed in Hosokawa to select the 2 to 3 µm range of the present embodiment, considering the [alleged] technical problem addressed and effectively achieved by the present disclosure” (see pages 8-9). The Applicant also argues that “the electrical steel sheet laminate of the present embodiment uniquely controls the type and content of inorganic particles, the curing agent content, and the fusion layer thickness, achieving excellent adhesion without using conventional fastening methods such as welding, cramping, or interlocking,” arguing that “Hosokawa lacks any Examples involving inorganic particles” (see last paragraph on page 9 of the response). The Applicant then argues, “In light of these considerations, even when combining cited references, arriving at the configuration of the present embodiment is [allegedly] not straightforward” and “[t]he remarkable effects achieved by the limitations on inorganic particle content, curing agent content, and fusion layer thickness are [allegedly] unpredicted from the cited references” (see first paragraph on page 10 of the response).
However, the Examiner respectfully disagrees and again notes that although Hosokawa teaches in Paragraph 0030 that the thickness of the adhesive layer is preferably about 10 to 200 µm (emphasis added), Hosokawa does not limit the adhesive composition to said thickness range and actually appears to teach that the above preferred thickness range of about 10 to 200 µm is with respect to the “adhesive film” embodiment wherein the “adhesive film obtained can be used in the form of a sheet or tape” as discussed in the same paragraph and immediately preceding the preferred thickness range recited above, and not necessarily the thickness when applying the adhesive composition directly to a substrate to be adhered (Paragraphs 0029-0031). It is also noted that all of the non-limiting examples of Hosokawa that “consistently” (as argued by the Applicant) form an adhesive layer of 50 µm are formed to provide an “adhesive film” that as evident from the examples is formed on a release liner and then separated from the release liner and positioned between two adherends and cured, specifically by pressing at 200°C and 1 MPa for 10 seconds and then heat treating for 1 hour at 200°C followed by standing for 30 minutes in an atmospheric condition of 23°C and 65% RH prior to testing adhesion strength, to produce a laminate therefrom versus being applied directed to one or both adherends, such that one having ordinary skill in the art would readily understand that such as adhesive film, particularly if meant to be self-supporting, would require a greater thickness than an adhesive layer formed by application of the adhesive composition directly to an adherend. Hence, given that a reference must be considered as a whole when determining patentability, Applicant’s arguments with respect to the non-limiting preferred range of Hosokawa and the non-limiting examples of Hosokawa are not persuasive.
In terms of Applicant’s arguments with respect to the results when utilizing a thickness of 2 to 3 µm as claimed versus a thickness of 10 µm as in Comparative Example 8 of the present specification that as argued by the Applicant exhibits “inferior stickiness” due to its relatively large coating thickness, the Examiner first notes that Applicant’s “Stickiness” test is described as: “An electrical steel sheet having an adhesive coating layer coated thereon was laminated at a height of 20 mm, the laminate was pressed at a force of 1 MPa and thermally fused at 70°C for 30 minutes, and then presence or absence of stickiness was determined by the traces from adhesion when the steel sheet was released” (emphasis added, see last paragraph on page 21 of the specification as filed). However, Experimental Example 2, which includes Example 3 and Comparative Examples 4-8 recites that the “process was performed in the same manner as in Experimental Example 1…except that the component content in the adhesive coating composition and the thickness of the fusion layer were changed” (see page 24, lines 15-18); while Experimental Example 1 recites that an “adhesive coating solution was applied at a certain thickness on the upper portion and the lower portion of each of the blank specimens prepared using a bar coater and a roll coater, cured at 200 to 250°C based on a plate temperature for 20 seconds, and then slowly cooled in the air, thereby forming an adhesive coating layer” (see page 19, lines 14-18) and that an “electrical steel sheet having an adhesive coating layer coated thereon was laminated at a height of 20 mm, the laminate was pressed with a force of 0.1 MPa, and thermal fusion was performed at 120°C for 10 minutes” (emphasis added, see page 20, lines 3-5), conditions that are substantially different from those utilized in the “Stickiness” test. It is also noted that in general, the present specification recites that the “thermal fusion layer may be performed at a temperature of 150 to 250°C” (see page 18, last paragraph), quite a bit higher than the fusion temperature utilized in Experimental Example 1 and substantially higher than the fusion temperature utilized in the “Stickiness” test. Hence, given that the “Stickiness” test does not clearly recite how each of the tested adhesive coating layers coated on the electrical steel sheet is formed and that there is a clear difference between the thermal fusion conditions of Experimental Example 1 (i.e., the same conditions used for Comparative Example 8 of Experimental Example 2) and the thermal fusion conditions of the “Stickiness” test, and an even greater difference between the thermal fusion conditions of the “Stickiness” test and the general guidance provided by the present specification as well as between the present examples and the teachings of Hosokawa, the present specification does not provide sufficient information to allow for a proper analysis of the results in order to properly arrive at any conclusion of unexpected results with respect to the “Stickiness” test of the examples presented in Table 2 nor with respect to said results over the teachings of Hosokawa, especially given that the conditions for forming the adhesive coating layer would directly affect the properties thereof. If one was to assume that with respect to the “Stickiness” test, all of the adhesive coating layers were formed under the same “curing” conditions as recited with respect to Experimental Example 1, i.e., “at 200 to 250°C based on a plate temperature for 20 seconds, and then slowly cooled in the air, thereby forming an adhesive coating layer” regardless of the adhesive coating layer thickness, then the Examiner takes the position that Applicant’s results would actually be expected not unexpected with respect to the 10 micron adhesive layer of Comparative Example 8 given that the 10 micron adhesive layer has more than three times the amount of adhesive composition than the other examples and thus one skilled in the art would reasonably expect such a layer to require additional time and/or higher temperature to dry and/or cure to a non-tacky state than the much thinner layers of inventive Examples 1-3. Thus, Applicant’s arguments with respect to the “Stickiness” results are not persuasive, especially given that such results appear to be based upon an intermediate product and not the final cured/thermally fused laminate.
With respect to Applicant’s arguments that the claimed invention allegedly “uniquely controls the type and content of inorganic particles, the curing agent content, and the fusion layer thickness, achieving excellent adhesion without using conventional fastening methods such as welding, cramping, or interlocking” and that the alleged “remarkable effects achieved by the limitations on inorganic particle content, curing agent content, and fusion layer thickness are [allegedly] unpredicted from the cited references” (see last paragraph on page 9 and first paragraph of page 10), the Examiner (again) notes that the data relied upon by the Applicant is not commensurate in scope with the claimed invention (see for example paragraphs 8-10 of the Office Action dated 10/3/2025, incorporated herein by reference, the majority of the remarks of which are still applicable with respect to the currently recited claims) and does not provide any clear showing of criticality and/or unexpected results with respect to the claimed invention and claimed ranges over the teachings of the cited prior art, wherein it is further noted that one having ordinary skill in the art would readily understand that the curing agent content is also dependent upon the curing agent utilized. Hence, the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Hosokawa for the reasons discussed in detail above.
With respect to the obviousness rejection over the teachings of Parkinson, taken alone or in view of Evans, the Applicant again relies upon the Examples and Comparative Examples of the present invention to show alleged criticality and unexpected results with respect to the claimed invention, arguing that “the remarkable advantages according to the content of the curing agent and the thickness of the fusion layer are [allegedly] clearly demonstrated by the Examples and Comparative Examples” and that the submitted data allegedly shows “criticality of the claimed range of the amount of the inorganic particles” (see Section II on pages 10-11 of the response). However, the Examiner respectfully disagrees and again notes that the data relied upon by the Applicant is not commensurate in scope with the instantly claimed invention (e.g., all of the examples only utilize nanosilica SiO2 in combination with ethylene/acrylic acid copolymer with dicyandiamide as the curing agent such that one skilled in the art could not reasonably extend the probative value thereof to the more broadly claimed fusion layer of instant claim 6); does not provide any clear showing of criticality with respect to the claimed ranges (e.g., the examples do not support a showing of criticality with respect to the claimed range of 5 to 10 parts by weight for the inorganic particles as previously discussed nor the claimed curing agent content range of 0.5 to 2.5 parts by weight given that the lowest positive content is at 1.0 and the highest content within the claimed range is at 1.5 while the only data point above the claimed range is at 3.0 for Comparative Example 7 which cannot be directly compared to any of the other examples given that more than one parameter changes between the examples); and does not provide any clear showing of “unexpected” (e.g., at least with respect to the “poor” stickiness of the thicker layer, the results would not be considered “unexpected” by one having ordinary skill in the art as discussed above). Hence, Applicant’s arguments are not persuasive and the Examiner maintains her position that the claimed invention would have been obvious over the cited prior art references for the reasons discussed in detail above.
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 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