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 .
DETAILED ACTION
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Shimobe (WO 2020/144877 A1, published 16 Jul. 2020, hereinafter Shimobe).
Regarding claims 1-2 and 4-5, Shimobe teaches a laminated iron core formed by layering a plurality of steel sheets with an adhesive layer therebetween, where the adhesive layer is a heat-curable resin containing epoxy resin and 5-30 vol.% inorganic particles with an average diameter 10-100 nm (Abstract). Shimobe teaches his heat-curable resin is cured to 150°C (paragraph 0021). Shimobe’s teaching example 1 comprises 9.2 wt.% silica particles and tensile shear adhesive strengths at 25° of 8.1 MPa (or N/mm2) (Table 1, see original WO patent document, a portion of this table is translated and reproduced below). Thus, Shimobe teaches a ratio of curing temperature (in °C) to wt% of inorganic material of 16.3 (150/9.2).
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Shimobe does not disclose the peel strength, the resoftening temperature, nor the damping ratio of his laminated iron core.
However, given that the laminated iron core of Shimobe has the same plurality of steel sheets, same composition of interlayer adhesive with the same type of resin and type, size, and amount of inorganic nanoparticles, within the overlapping ranges, the laminated iron core of Shimobe would inherently have the same peel strength, resoftening temperature, and damping ratio as the claimed invention, and therefore, would fall within the claimed ranges for peel strength, resoftening temperature, and damping ratio.
In light of the overlap between the claimed electrical steel sheet laminate and that disclosed by Shimobe, it would have been obvious to one of ordinary skill in the art to use an electrical steel sheet laminate that is both disclosed by Shimobe and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 3, Shimobe teaches the elements of claim 1, and Shimobe’s teaching examples have tensile shear adhesive strengths at 150°C of 5.1-7.2 MPa (Table 1, reproduced above).
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a tensile shear adhesive strength at 150°C from the overlapping portion of the ranges taught by Shimobe because overlapping ranges have been held to be prima facie obviousness.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ha et al. (KR 2019/0078282 A, published 04 Jul. 2019, hereinafter Ha).
Regarding claims 1-5, Ha teaches an adhesive coating for electrical steel sheet comprising 20-40 wt.% resin and 10-35 wt.% of inorganic nanoparticles, in which the adhesive coating is positioned between a plurality of electrical steel sheets (Abstract). Ha teaches the resin is epoxy (paragraph 0038), and the inorganic nanoparticles are SiO2 or TiO2 (paragraph 0045). Ha teaches the curing temperature is 200-600°C (paragraph 0091), with exemplary examples cured at 200-250°C (paragraph 0102).
Thus, Ha teaches a ratio of curing temperature (in °C) to wt% of inorganic material of 5.7 (200/35) to 25 (250/10).
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a ratio of curing temperature to amount of inorganic material from the overlapping portion of the ranges taught by Ha because overlapping ranges have been held to be prima facie obviousness.
Ha does not disclose the tensile/shear strength of his electrical steel sheet product, its high temperature adhesive strength, its peel strength, its resoftening temperature, nor its damping ratio. However, given that the electrical steel sheet product of Ha has the same plurality of steel sheets, same composition of interlayer adhesive with the same type of resin and type, size, and amount of inorganic nanoparticles, within the overlapping ranges, the electrical steel sheet product of Ha would inherently have the same tensile/shear strength, high temperature adhesive strength, peel strength, resoftening temperature, and damping ratio as the claimed invention, and therefore, would fall within the claimed ranges for tensile/shear strength, high temperature adhesive strength, peel strength, resoftening temperature, and damping ratio.
In light of the overlap between the electrical steel sheet laminate and that disclosed by Ha, it would have been obvious to one of ordinary skill in the art to use an electrical steel sheet laminate that is both disclosed by Ha and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 31 Dec. 2025 have been fully considered. The amended claims overcame the 112a and 112b rejections presented in the Office Action mailed 01 Oct. 2025. Applicant’s arguments regarding the 102 and 103 rejections were not persuasive.
Applicant amended claims 1-5 and cancelled claim 6.
Applicant argues that the properties of the current invention are obtained by controlling the heating rate and temperature deviation, which are not disclosed by either Shimobe or Ha.
However, while the prior art may not disclose an explicit heating rate, given that the heating rate which results in the claimed damping ratio in the present invention is so broad, i.e. 3-50°C/second, and the heating rate used in the comparative example. i.e. 70°C/second, is so high, one would expect the heating rates of Shimobe and of Ha to necessarily fall within the range used to obtain the present invention. That is, one would expect Shimobe and Ha to be using conventional or typical heating rates, which would necessarily be the same as that used in the present invention; and therefore, the laminated iron core of Shimobe and electrical steel sheet product of Ha would inherently possess the same damping ratio as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Suhr et al. (“Damping properties of epoxy films with nanoscale fillers,” Vol. 17, pp. 255-260, published Mar. 2006) teaches that an epoxy with a filler of silicon nanoparticles has a damping factor of 0.03 (Abstract and Figure 6).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET. 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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/JOHN VINCENT LAWLER/
Primary Examiner, Art Unit 1787