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 .
Claim Rejections - 35 USC § 103
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.
Claims 8-9, 12-13, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Furue et al. (US 2018/0253003 A1).
Regarding Claims 8-9 and 18, Furue discloses a resin composition comprising a binder resin (A) that forms insulating films with high adhesiveness (Abstract). The binder resin (A) comprises compounds (a), (b), and (c) (para 0053). Compound (a) may be a substituted phenol novolac, which corresponds to the claimed second curing agent (paras 0054-0059). Compound (b) may have a phenol skeleton having an alkoxy group such as ethoxy or propoxy, corresponding to the claimed first curing agent (paras 0073-0075). Compound (c) is an epoxy resin (para 0081).
The binder resin comprises 5-60% first curing agent compound (a), 5-30% second curing agent compound (b), and 35-90% epoxy compound (c) by weight (para 0106). Therefore, there may be 6-86 parts first curing agent compound (b) and 6-171 parts second curing agent compound (a), relative to 100 parts epoxy compound (c).
In light of the overlap between the claimed composition and that disclosed by Furue, it would have been obvious to one of ordinary skill in the art to produce a resin composition that is both disclosed by Furue and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
While there is no disclosure that the resin composition is a coating composition for an electrical steel sheet as presently claimed, applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. coating composition for an electrical steel sheet, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art resin composition and further that the prior art structure which is a resin composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding Claims 12-13, Furue discloses all the limitations of the present invention according to Claims 8-9 above. While Furue does not disclose the cure shrinkage of the resin composition, given that Furue discloses resin composition comprising compounds of the same types and amounts as presently claimed, the resin composition would necessarily have cure shrinkage as claimed.
Regarding Claim 17, Furue discloses all the limitations of the present invention according to Claim 8 above. Furue further discloses the resin composition may comprise compound (d) which is an acrylic resin (paras 0053, 0098, 0100).
Claims 8, 12, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kitada (JP 2016/197995) in view of Kage (US 2017/0029550).
Regarding Claims 8 and 14-16, Kitada discloses a motor comprising a rotor and stator (para 0016) (i.e. rotary electric machine), where the rotor comprises electromagnetic or electrical steel sheets (para 0017). Kitada further discloses the use of a thermosetting resin composition used to form a fixing member on the electrical steel sheets (paras 0009, 0018; 0031). The thermosetting resin composition comprises epoxy resin and curing agent (para 0009). The curing agent includes phenol novolac resin (para 0040). The composition comprises 0.8-12 wt.% phenol novolac resin (para 0049) and 5-40% epoxy resin (paras 0038-0039) or 16-30 parts phenol novolac resin per 100 parts epoxy resin ((0.8*100)/5 – (12*100)/40)).
Kitada does not disclose the curing agent comprising phenolic resin including a phenol skeleton and alkoxy group.
Kage discloses alkoxylated resole-type phenolic resin curing agent that provides a coating film having high hot-water resistance, high workability, and high adhesion to metals (Abstract). The metal includes a steel sheet (para 0109). The coating includes resins such as epoxy resin and acrylic resin as well as polyester resin (paras 0093-0094). When the coating includes polyester resin, the ratio of alkoxylated resole-type phenolic resin curing agent to polyester resin is 1/19 to 1/1 (para 0101) or 5.3 to 100 parts alkoxylated resole-type phenolic resin curing agent per 100 parts polyester resin. Given the disclosure of the equivalence and interchangeability of polyester resin with epoxy resin as resins in the coating (paras 0093-0094), it would have been obvious to one of ordinary skill in the art to use 5.3 to 100 parts alkoxylated resole-type phenolic resin curing agent per 100 parts epoxy resin.
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kitada to incorporate the teachings of Kage to use a resin composition of Kitada further comprising 5.3 to 100 parts alkoxylated resole-type phenolic resin curing agent per 100 parts epoxy resin. Doing so would provide a coating film having high hot-water resistance, high workability, and high adhesion to metals.
Regarding Claim 12, Kitada in view of Kage discloses all the limitations of the present invention according to Claim 8 above. While Kitada in view of Kage does not disclose the cure shrinkage of the resin composition, given that Kitada in view of Kage discloses resin composition comprising compounds of the same types and amounts as presently claimed, the resin composition would necessarily have cure shrinkage as claimed.
Regarding Claim 17, Kitada in view of Kage discloses all the limitations of the present invention according to Claim 8 above. Kitada further discloses the resin composition may comprise acrylate resin (para 0032).
Response to Arguments
In light of Applicant’s amendments filed 04/03/2026, the 35 USC 103 rejections of record are withdrawn.
New grounds of rejection are set forth above.
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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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