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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/18/2026 has been entered.
The amendment filed 6/18/2026 has been entered. Claims 4-5 and 9 have been canceled. Claims 1-3, 6-8, and 10-12 are pending in the application. 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
Claims 1-3, 6-8, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa (JP2017-186542A, 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 respect to the amended claims wherein the Examiner again takes the position that given that the electrical steel sheet (s), coating layer(s), and laminate formed therefrom as taught and/or suggested by Nakagawa comprise(s) the same components as instantly claimed, wherein the coating layer is formed on one or both surfaces of the electrical steel sheet in the same manner as in the instant invention, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the resulting coated electrical steel sheet taught by Nakagawa to exhibit the same two-layer interface structure as in the instantly claimed invention, including mol% contents of total Si content and total content of Si-N bonds as instantly claimed, particularly when no optional additional silicon-containing components are incorporated into the coating as in working example 1, such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-3, 6-8, and 10-12 would have been obvious over the teachings of Nakagawa given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
As discussed in the prior office action, Nakagawa teaches an electromagnetic/electrical steel sheet with a heat-resistant adhesive insulation coating (“bonding coating layer”) formed on one or both sides of the electrical steel sheet, and a laminated steel sheet obtained by laminating a plurality of the coated electrical steel sheets such that the adhesive insulation coatings positioned between the steel sheets are bonded to each other as in the examples (Entire document, particularly Paragraphs 0001, 0010-0014, 0053, Examples). Nakagawa teaches that the type of electrical steel is not particularly limited, with suitable steels including so-called soft iron plate with high magnetic flux density, general cold-rolled steel plate such as SPCC specified in JIS G 3141 (2009), and non-oriented electrical steel plate containing Si or Al to improve resistivity; and wherein the steel plate is optionally pretreated, such as by carrying out an alkaline degreasing treatment or an acid pickling treatment (Paragraphs 0046-0047). Nakagawa teaches that the heat-resistant adhesive insulation coating is formed from a composition containing a polyether urethane resin (“adhesive resin” as in amended claims 1 and 12) in an amount of 70 mass% or more based on the total solid content, and a silane compound (“bonding additive” as in amended claims 1 and 12, particularly “a coupling agent” as in instant claim 6) in an amount of 30 mass% or less based on 100 mass parts of the polyether urethane resin (solid content); and similarly, the resulting heat-resistant insulating coating on one or both sides of the steel sheet contains 70% by mass or more of a polyether urethane resin, and 30 parts by mass or less of a silane compound per 100 parts by mass of the polyether urethane resin, given that an excessive amount of more than 30 parts by mass may result in a decrease in the adhesion and strength of the coating; wherein preferably the silane content is 20 parts by mass or less per 100 parts by mass of the polyether urethane resin (solid content) from the viewpoint of improving high-temperature adhesiveness, with no lower limit of the silane content, although preferably 2 parts by mass or more, and more preferably 5 parts by mass or more, per 100 parts by mass of the polyether urethane resin (solid content) from the viewpoint of further improving the insulating properties of the coating (Paragraphs 0012-0014 and 0036- 0037). Nakagawa teaches that the silane compound is represented by the general formula Xa-Si(OR1)4-a, as shown in Paragraph 0027; wherein a is an integer of 1 or 2; X is an organic group having 1 to 10 carbon atoms which may contain a nitrogen atom, an oxygen atom or a sulfur atom; and each R1 represents an alkoxy group having 1 to 10 carbon atoms, with preferred silane compounds include aminosilanes such as N-2-(aminoethyl)-3-aminopropyl methyldimethoxysilane, N-2-(aminoethyl)-3-aminopropyl trimethoxysilane, N-2-(aminoethyl)-3-aminopropyltriethoxysilane, 3-aminopropyl trimethoxysilane, 3-aminopropyltriethoxysilane, and the like; with working examples specifically utilizing aminosilanes (i.e. KBM-602, KBM-603, KBM-903, KBE-903) having a structure reading upon the claimed Chemical Formula 1 as recited in instant claim 8 in a content as recited in instant claim 7 (Paragraphs 0027-0028, Examples, Tables 1-4). Nakagawa teaches that the polyether urethane resin is a resin obtained by reacting an isocyanate compound (polyisocyanate) having two or more isocyanate groups in the molecule with a polyol compound (polyether polyol) having two or more hydroxyl groups in the molecule and a polyether skeleton (as in amended claim 1); wherein the polyisocyanate may be any one of aliphatic polyisocyanates, alicyclic polyisocyanates, aromatic polyisocyanates, and araliphatic polyisocyanates, particularly aromatic or aliphatic diisocyanates as recited in Paragraphs 0018-0021 and utilized in the working examples; wherein Nakagawa also specifically teaches that “[t]hese polyisocyanates may be used alone or in combination of two or more” (Paragraph 0022), thereby clearly teaches and/or suggesting a mixture of any of the above aromatic diisocyanate monomers with any of the above aliphatic diisocyanate monomers as in instant claims 1 and12, and particularly the diisocyanate monomers of instant claims 10-11 (Paragraphs 0016-0023, Examples). Nakagawa teaches that the coating composition can contain other components such as surfactants, coloring pigments, etc., in a total amount of preferably less than 10 mass% based on the total solid content of the coating composition, and more preferably less than 5.0 mass% based on the total solid content of the coating composition from the viewpoint of maintaining sufficient coating performance (Paragraph 0039), with most examples utilizing 0.5 parts of BYK-348 (a known commercially-available polyether-modified silicone surfactant) and 0.5 parts of BYK-028 (a known commercially-available defoamer comprising a mixture of hydrophobic solids and polysiloxanes in polyglycol and having a solids content of about 19%; Examples).
Nakagawa also teaches that the silane compound is present in the composition without being bonded to the polyether urethane resin (Paragraph 0038), and that when forming the heat-resistant adhesive insulating coating, the alkoxy groups of the silane compound are hydrolyzed to generate silanol groups that migrate to the surface of the electrical steel sheet via hydrogen bonding with hydroxyl groups on the surface of the electrical steel sheet, and then form strong covalent bonds with the surface of the electrical steel sheet through a dehydration condensation reaction, while in parallel, silanol groups of the silane compound condense with each other to form a siloxane bond, thereby improving the adhesive strength of the insulating coating (Paragraph 0051). Hence, the silane compounds that migrate to the surface of the electrical steel sheet and are covalently bonded thereon would constitute the claimed “second interface layer” of instant claims 1 and 12, with the surface of the electrical steel sheet containing hydroxyl groups, i.e. oxidized surface, reading upon the claimed “first interface layer positioned in the electrical steel sheet and brought into contact with the bonding [coating] layer” as in instant claims 1 and 12; and given that the instant claims and the specification fail to clearly recite and/or define how the claimed “70 mol% or more of the total Si content in the bonding coating layer comprising the second interface layer is present in the second interface layer” as recited in instant claims 1 and 12 is determined, and similarly how the claimed “70 mol% or more of the total content of Si-N bonds in the bonding coating layer comprising the second interface layer is present in the second interface layer” of amended claims 1 and 12 is determined, the Examiner maintains her position that the resulting “silane layer” or portion of the adhesive insulating coating taught by Nakagawa on the surface of the electrical steel sheet and containing the migrated silane compounds and/or all of the silane compounds, particularly as in the working examples, even when taking into consideration the optional silicone-based additives utilized in the examples, would read upon and/or suggest the claimed “70 mol% or more of total Si content in the bonding coating layer comprising the second interface layer is present in the second interface layer” and the claimed “70 mol% or more of the total content of Si-N bonds in the bonding coating layer comprising the second interface layer is present in the second interface layer” given that Nakagawa clearly teaches that the silane compounds migrate to the surface of the electrical steel sheet and react with the surface of the electrical steel sheet and themselves, and not the polyether urethane resin. Further, given that Nakagawa clearly teaches an electrical steel sheet coated with an adhesive insulation coating that is formed from the same coating components as instantly claimed and by essentially the same method as utilized in the instant invention as shown in the examples, with working examples of Nakagawa specifically utilizing polyurethane resins and aminosilanes as in instant claims 1, 6, and 10-12, including in a silane content as in instant claim 7, the Examiner maintains her position that the claimed invention as recited in instant claims 1, 6-8, and 10-12 would have been obvious over the teachings of Nakagawa, particularly in light of the examples.
With respect to instant claims 2-3, the Examiner again notes that given that by definition electrical steel is an iron-silicon alloy such that the oxidized surface of the electrical steel taught by Nakagawa, particularly as in the examples, would comprise Fe oxides and Si oxides as instantly claimed, and given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize any known electrical steel sheet in the art in the invention taught by Nakagawa given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results, wherein typical compositions thereof include iron in a content of greater than 90wt% and silicon in a content encompassing the claimed 2-6wt% such that an oxidized surface thereof would have a composition as recited in instant claim 2, the Examiner again takes the position that the claimed invention as recited in instant claims 2-3 would have been obvious over the teachings of Nakagawa for essentially the same reasons as discussed above with respect to instant claim 1.
Double Patenting
Claims 1-3, 6-8, and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-9 of copending Application No. 18/268838 (as amended) in view of Nakagawa for generally the same reasons as recited in the prior office action and incorporated herein by reference, wherein it is further noted that copending independent claims 1, 8, and 9 have each been amended to recite that the “polyurethane is formed by reacting an isocyanate monomer and a polyol, and the isocyanate monomer is at least one selected from the group consisting of an aromatic isocyanate monomer and an aliphatic isocyanate monomer” (emphasis added), thereby providing a clear teaching and/or suggestion of utilizing a mixture of an aromatic isocyanate monomer and an aliphatic isocyanate monomer as recited in amended claims 1 and 12 of the present application.
Response to Arguments
Applicant's arguments filed 6/18/2026 have been fully considered but they are not persuasive with respect to the obviousness rejection over Nakagawa as restated above with respect to the amended claims. The Applicant argues that, “Claims 1 and 12, as presented herein, each recites, in part, ‘the bonding coating layer comprises an adhesive resin and a bonding additive, and the adhesive resin is a polyurethane formed by reacting a diisocyanate monomer and a polyol, and wherein diisocyanate monomer is a mixture of an aromatic diisocyanate monomer and an aliphatic diisocyanate monomer,’” arguing that “[t]hese features in combination with other features in claims 1 and 12 [allegedly] are not disclosed or rendered obvious by Nakagawa” (see page 7, penultimate paragraph). The Applicant argues that “[a]ccording to example embodiments of the present application, the polyurethane resin may be prepared by reacting two types of diisocyanate monomers: one aliphatic diisocyanate monomer and one aromatic diisocyanate monomer” and that “[i]n contrast, Nakagawa [allegedly] does not disclose, suggest, or recognize the necessity of including both aromatic and aliphatic diisocyanates in forming the adhesive resin” (see page 7, last paragraph). However, the Examiner respectfully disagrees and notes that Nakagawa clearly teaches that the polyisocyanate may be any one of aliphatic polyisocyanates, alicyclic polyisocyanates, aromatic polyisocyanates, and araliphatic polyisocyanates, particularly aromatic or aliphatic diisocyanates, and specifically teaches that “[t]hese polyisocyanates may be used alone or in combination of two or more” (Paragraph 0022), such that contrary to Applicant’s arguments, Nakagawa does disclose and/or suggest utilizing both aromatic and aliphatic diisocyanates in combination.
The Applicant also provides additional experimental data to support the alleged allowability of the pending claims, wherein Additional Comparative Examples 1 and 2 utilized either methylene diphenyl diisocyanate (MDI) alone as the aromatic monomer, or isophorone diisocyanate (IPDI) alone as the aliphatic monomer, with all other conditions being identical to Example 3 (an exemplary embodiment) of the specification, noting that “[i]n Additional Comparative Examples 1 and 2, the total Si content in the bonding coating layer including the second interface layer was 50 mol%, which fails to satisfy the requirements of the claims” while “the T-peel adhesion for Example 3 (specification at Table 1) was [allegedly] surprisingly substantially superior to those for Additional Comparative Examples 1 and 2” (see page 8 of the response). The Applicant then concludes that “[t]herefore, both aliphatic and aromatic diisocyanate monomers [allegedly] must be included to achieve superior effects” and that “[s]ince Nakagawa [allegedly] lacks any recognition of this specific combination, Nakagawa [allegedly] would not have sufficiently guided one of ordinary skill in the art to the claimed steel sheet” and thus allegedly “does not render obvious claims 1 and 12” (see paragraph bridging pages 8-9 through the first full paragraph of page 9). However, the Examiner respectfully disagrees and first notes that although the specification as filed recites that the polyurethane utilized in the examples was “obtained by including total two types of diisocyanate monomers of one aliphatic diisocyanate monomer and one aromatic diisocyanate monomer and reacting the diisocyanate monomers with a polyol,” specifically “a poly(propylene glycol) (PPG) having a number molecular weight of 425 g/mol,” the specification does not recite which two diisocyanates were utilized for the examples (and in what amounts), and thus it is unclear whether the examples in the specification actually utilize MDI and IPDI as in the comparative examples in order to analyze the data and come to any conclusions based upon said analysis. Hence, the data relied upon by the Applicant is inconclusive given that results may differ solely based upon the type of aromatic diisocyanate selected or the type of aliphatic diisocyanate utilized.
The Examiner also notes that the original disclosure at the time of filing specifically recites that the “diisocyanate monomer may include an aromatic diisocyanate monomer, an aliphatic diisocyanate monomer, or a mixture thereof” wherein “the polyurethane resin included in the bonding coating layer 200 of an exemplary embodiment of the present invention may include an adhesive resin obtained by polymerizing an aromatic diisocyanate monomer, an aliphatic diisocyanate monomer, or a mixed monomer thereof” (see paragraph bridging pages 8-9 of the specification as filed), and hence, the original disclosure at the time of filing, including with respect to the examples, did not recognize any surprising or unexpected results when utilizing a combination or mixture of an aromatic diisocyanate and an aliphatic diisocyanate as now argued by the Applicant (specifically with respect to the teachings of Nakagawa). Lastly, the Examiner notes that even if the specification at the time of filing clearly showed that the examples utilized MDI and IPDI, and clearly showed the amounts for each, the data would be insufficient to overcome the obviousness rejection based upon the teachings of Nakagawa given that the data relied upon by the Applicant is not commensurate in scope with the instant claims, e.g., one having ordinary skill in the art could not reasonably extend the probative value thereof to any mixture of any aromatic diisocyanate monomer with any aliphatic diisocyanate monomer as recited in the independent claims, nor any aromatic diisocyanate monomer of the claimed Chemical Formula 2 or 3 in combination with any aliphatic diisocyanate monomer as more specifically recited in instant claim 10, nor similarly any aliphatic diisocyanate monomer of Chemical Formula 4 in combination with any aromatic diisocyanate monomer as recited in instant claim 11, nor hypothetically any aromatic diisocyanate monomer of Chemical Formula 2 or 3 in combination with any aliphatic diisocyanate monomer of Chemical Formula 4 (which is not recited in the claims). Hence, Applicant’s arguments over Nakagawa are not persuasive and the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Nakagawa for the reasons discussed in detail above.
As requested by the Applicant, the obviousness-type double patenting rejection over copending Application No. 18/268,838 is being held in abeyance (see page 9 of the response).
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 6/18/2026.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wu (US2020/0407611A1, cited in copending Appl. No. 18/268838) teaches a two-component polyurethane adhesive comprising an isocyanate component comprising a mixture of a first polyisocyanate compound and a second polyisocyanate compound having a functionality of greater than or equal to about 2.3, wherein the isocyanate component may include an aromatic diisocyanate in combination with an aliphatic diisocyanate.
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
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