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 9-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Arita et al. (US 20170320994 A1).
Regarding Claims 9-10, Arita discloses an epoxy resin composition comprising epoxy resin (A) (para 0020) and a phenol resin (B) having alkylphenol units wherein the alkyl group has 1-6 carbon atoms (paras 0023, 0043-0044). Arita further discloses an additional curing agent (Z) such as phenol novolak resin (paras 0070, 0073). Arita further discloses the composition is suitable for electrical applications and may be used as coating material (para 0088).
Although there is no explicit disclosure of the amount of phenol resin (B) based on 100 parts of epoxy resin (A), Arita does disclose that the amounts of phenol resin and epoxy resin affect the curability and heat resistance of the cured product (para 0055). Therefore, it would have been obvious to one of ordinary skill in the art to use amounts of phenol resin (B) and epoxy resin (A), including those presently claimed, in order to produce a composition with desired curability and heat resistance.
While there is no disclosure that the coating composition is for an electrical steel sheet as presently claimed, applicants 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. 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 coating composition and further that the prior art structure which is a coating composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding Claim 12, Arita discloses all the limitations of the present invention according to Claim 9 above. While Arita does not disclose the curing shrinkage rate, since Arita discloses composition as claimed, including epoxy resin, alkyl phenol curing agent, and phenol novolak curing agent as claimed, the composition of Arita would necessarily have curing shrinkage rate as claimed.
Regarding Claim 13, Arita discloses all the limitations of the present invention according to Claim 9 above. Arita further discloses the additional phenol novolak curing agent (Z) can be up to 50% by mass with respect to the total of alkylphenol resin (B) and phenol novolak curing agent (Z) (para 0070), which would mean the ratio of (B)/(Z) would be 1.0 or more.
Claims 11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Arita as applied to claim 9 above, and further in view of Ota (JP 2017149801 A).
Regarding Claim 11, Arita discloses all the limitations of the present invention according to Claim 9 above. Arita does not disclose the amount of curing agent (Z) (phenol novolak curing agent) as claimed.
Ota discloses curable epoxy resin composition comprising 0.01-1000 parts by mass curing agent per 100 parts epoxy (paras 0045-0046), where the curing agent is phenol novolak resin in order to achieve good heat resistance and curability (para 0051).
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 Arita to incorporate the teachings of Ota and use 0.01-1000 parts by mass phenol novolak curing agent per 100 parts epoxy resin. Doing so would help achieve good heat resistance and curability.
Regarding Claim 14, Arita in view of Ota discloses all the limitations of the present invention according to Claim 11 above. Arita further discloses the additional phenol novolak curing agent (Z) can be up to 50% by mass with respect to the total of alkylphenol resin (B) and phenol novolak curing agent (Z) (para 0070), which would mean the ratio of (B)/(Z) would be 1.0 or more.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Arita as applied to claim 9 above, and further in view of Ushida et al. (US 2019/0097503 A1).
Regarding Claims 15-17, Arita discloses all the limitations of the present invention according to Claim 9 above. Arita further discloses the composition is suitable for electrical applications and may be used as an adhesive and as an insulating coating material (para 0088).
Arita does not disclose an electrical steel sheet, laminated core, or rotary electric machine as claimed.
Ushida discloses a rotary electric machine comprising electromagnetic steel plates fixed by an epoxy resin and/or phenol resin adhesive (paras 0023, 0027, 0030).
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 use the composition of Arita to produce the rotary machine of Ushida. Doing so would provide adhesion and insulation.
Claims 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Arita in view of Ota.
Regarding Claims 9-11 and 13-14, Arita discloses an epoxy resin composition comprising epoxy resin (A) (para 0020) and a phenol resin (B) having alkylphenol units wherein the alkyl group has 1-6 carbon atoms (paras 0023, 0043-0044). Arita further discloses an additional curing agent (Z) such as phenol novolak resin (paras 0070, 0073). Arita further discloses the composition is suitable for electrical applications and may be used as coating material (para 0088).
Arita further discloses the additional curing agent (Z) can be up to 50% by mass with respect to the total of phenol resin (B) and curing agent (Z) (para 0070), which would mean the ratio of (B)/(Z) would be 1.0 or more.
Arita does not explicitly disclose the amounts of phenol resin (B) and additional curing agent (Z) by mass relative to the epoxy resin (A).
Ota discloses curable epoxy resin composition comprising 0.01-1000 parts by mass curing agent per 100 parts epoxy (paras 0045-0046), where the curing agent is phenol novolak resin in order to achieve good heat resistance and curability (para 0051).
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 Arita to incorporate the teachings of Ota and use 0.01-1000 parts by mass phenol novolak curing agent per 100 parts epoxy resin. Doing so would help achieve good heat resistance and curability.
Since Ota teaches 0.01-1000 parts by mass phenol novolak per 100 parts epoxy, and Arita discloses ratio of alkylphenol to phenol novolak of at least 1.0, then Arita in view of Ota would have 0.01 parts by mass or more alkylphenol per 100 parts epoxy resin.
While there is no disclosure that the coating composition is for an electrical steel sheet as presently claimed, applicants 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. 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 coating composition and further that the prior art structure which is a coating composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding Claim 12, Arita in view of Ota discloses all the limitations of the present invention according to Claim 9 above. While Arita in view of Ota does not disclose the curing shrinkage rate, since Arita in view of Ota discloses composition as claimed, including epoxy resin, alkyl phenol curing agent, and phenol novolak curing agent as claimed, the composition of Arita in view of Ota would necessarily have curing shrinkage rate as claimed.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Arita in view of Ota as applied to claim 9 above, and further in view of Ushida.
Regarding Claims 15-17, Arita in view of Ota discloses all the limitations of the present invention according to Claim 9 above. Arita further discloses the composition is suitable for electrical applications and may be used as an adhesive and as an insulating coating material (para 0088).
Arita in view of Ota does not disclose an electrical steel sheet, laminated core, or rotary electric machine as claimed.
Ushida discloses a rotary electric machine comprising electromagnetic steel plates fixed by an epoxy resin and/or phenol resin adhesive (paras 0023, 0027, 0030).
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 use the composition of Arita in view of Ota to produce the rotary machine of Ushida. Doing so would provide adhesion and insulation.
Response to Arguments
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive.
Applicant argues that Arita does not address the goal of the present invention, of providing a coating for an electrical steel sheet that achieves both magnetic property and heat resistance as desired.
However, the prior art does not have to teach the same motivations as the present disclosure, it only needs to teach the product as claimed. The prior art of record discloses all the limitations of the present claims; therefore the rejection is proper.
Applicant argues that the claimed amount of curing agent (A) is critical to achieve the desired properties, pointing to Examples 1-10 and Comparative Examples 1-4
However, this is not persuasive because the scope of the data is not commensurate with the scope of the claims. The examples use specific types of epoxy resin and curing agents (A) and (B), while the claims broadly encompass any epoxy resin, any alkylphenol first curing agent (A), and any phenol resol resin and/or phenol novolac resin second curing agent (B). Further, the examples use specific amounts of the second curing agent (B), while the claims encompass any amount of second curing agent (B); and there is no data at the endpoints of the claimed range of first curing agent (A).
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 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