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 .
The amendment filed 12/16/2025 has been entered. Claim 4 has been canceled. Claims 1-3 and 5-12 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 and 5-12 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 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 and 5-12 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 instant claim 5) in an amount of 70 mass% or more based on the total solid content, and a silane compound (“bonding additive” as in instant claim 5, 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 instant claim 5); wherein the polyisocyanate is any one of aliphatic polyisocyanates, alicyclic polyisocyanates, aromatic polyisocyanates, and araliphatic polyisocyanates (as in instant claim 9), particularly aromatic or aliphatic diisocyanates as recited in Paragraphs 0018-0021 and utilized in the working examples, reading upon the claimed diisocyanate compounds 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 and 5-12, 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 and 5-12 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 and 5-12 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 noted that the limitations of previously copending claim 3 (now cancelled), which also read upon previously copending claim 2 (also cancelled), have been incorporated into copending claim 1.
As requested by the Applicant, this obviousness-type double patenting rejection is being held in abeyance (see page 10, last paragraph of the response filed 12/16/2025).
Response to Arguments
Applicant's arguments filed 12/16/2025 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 Nakagawa uses a silicone-based surfactant and a silicone-based defoamer in addition to a silane coupling agent as Si-based compounds in the coating layer composition, which [allegedly] differs from the coating layer composition of the present application, referring specifically to Example 4 and Tables 1-2 of Nakagawa, arguing that one “one of ordinary skill in the art would recognize that in Nakagawa the silicon-based compound migrating to the interface of the electrical steel sheet within the coating layer is limited solely to the silane coupling agent…[and that as] a result, the total Si content in the coating layer of Nakagawa would be the sum of Si derived from the silane coupling agent, Si derived from the silicone-based surfactant, and Si derived from the silicone-based defoamer…[and] because the Si contained in the second interface layer would be the Si derived solely from the silane coupling agent, one of ordinary skill would determine the Si content contained in the second interface layer of Nakagawa would be significantly lower than that recited in the claims” (see pages 9-10 of the response). However, the Examiner respectfully disagrees and first notes that the present application clearly recites that the bonding composition may also further comprise a silicone-based wetting agent which is essentially the same as the silicone-based surfactant and/or silicone-based defoamer of Nakagawa (see page 13, lines 10-15 of the specification as filed), and particularly in a content of 0.05 to 0.50 parts by weight based on 100 parts by weight of the adhesive resin, e.g., similar to the teachings and examples of Nakagawa (see page 14, lines 6-9 of the specification as filed), with all of Applicant’s working examples including a silicone wetting agent (see page 17, lines 11-12 of the specification as filed).
The Examiner also notes that Nakagawa clearly teaches that surfactants and/or defoamers in general are optional components (Paragraphs 0039 and 0043), and does not limit these optional components to silicone-based materials, and given that Nakagawa clearly teaches an inventive example that does not include the optional silicone-based surfactant and optional silicone-based defoamer as utilized in other working examples comprising an aminosilane coupling agent reading upon the claimed coupling agent, particularly represented by Chemical Formula 1, the Examiner maintains her 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 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 taught by Nakagawa, such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-3 and 5-12 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.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s response filed 12/16/2025.
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