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 .
Terminal Disclaimer
The terminal disclaimer filed on 12 November 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application No. 18/268,838 and any patent granted on Application No. 18/268,806 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claims 1 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2020/0407611 A1, “Wu”) in view of Kim et al. (KR 10-2019/0078162 A, “Kim”). It is noted that the disclosure of Kim is based off US 2021/0071047 A1, which serves as an English language equivalent.
With respect to claim 1, Wu discloses a two-component polyurethane adhesive including (a) at least one isocyanate component, wherein the isocyanate component (a) comprises (ai) at least a first polyisocyanate compound and (aii) at least a second polyisocyanate compound, and (b) at least one polyol component ([0006]). The first polyisocyanate compound (ai) is an aliphatic polyisocyanate and is added as a monomer compound ([0014]) and includes diisocyanates ([0018]). The second polyisocyanate compound (aii) includes aromatic polyisocyanates and are added as monomers and includes diisocyanates ([0033]). The adhesive is used with steel sheets ([0082]). Wu discloses the polyisocyanate component (a) contains aromatic and aliphatic isocyanates, where the aromatic isocyanates are present in an amount of 50-98% while the aliphatic isocyanates are present in an amount of 2-20% ([0029]), which overlaps the range presently claimed. 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).
While Wu discloses the use of additives ([0065]), Wu does not disclose wherein the additive is a bonding additive.
Kim teaches an electrical steel sheet laminate having an adhesive coating composition formed between electrical steel sheets ([0001]). The adhesive contains a first composition containing an organic resin ([0011]) where the organic resin is a urethane-based resin ([0017]). The adhesive further contains a coupling agent, including a silane coupling agent ([0011-0012]), corresponding to the claimed bonding additive. The coupling agent contributes to maintaining the balance of heat resistance and adhesion of the adhesive layer, and improves adherence after the stress relief annealing process ([0067]).
Wu and Kim are analogous inventions in the field of polyurethane adhesives for steel sheets that contain additives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the additive of Wu to be the coupling agent of Kim in order to provide an adhesive having balanced heat resistance and adhesion and improved adherence after stress relief annealing (Kim, [0067]).
With respect to claims 3 and 5, Wu discloses the aromatic polyisocyanate includes methylene diphenyl diisocyanate (MDI) ([0033]), which inherently has the structure represented by Chemical Formula 1, where L is an unsubstituted C1 alkylene group, R1, R2, R4, R5, R6, R7, R9, and R10 are all hydrogen, R3 and R8 are isocyanate groups, and n is 1.
With respect to claims 4 and 6, Wu discloses the aliphatic polyisocyanate includes hexamethylene diisocyanate (HDI), cyclohexane diisocyanate, and isophorone diisocyanate (IPDI) ([0018]), which inherently have the structure represented by Chemical Formula 3 (HDI has R being an unsubstituted C6 alkyl group; cyclohexane diisocyanate has R as an unsubstituted C6 cycloalkyl group; IPDI has R as a substituted C6 cycloalkyl group).
With respect to claim 7, while there may be no explicit disclosure from Wu in view of Kim regarding the glass transition temperature (Tg) of the bonding composition being greater than -70°C to less than -10°C, a tensile strength of greater than 40 MPa to less than 120 MPa, and an elongation of greater than 100% to less than 800%, given that Wu in view of Kim discloses an otherwise identical bonding composition made from identical diisocyanates in overlapping amounts and an identical polyol (Wu discloses the use of poly(propylene oxide), a synonym for polypropylene glycol, [0021], which is identical to the polyol of the present invention, see instant specification, page 14, lines 10-11) as that of the present invention, it is clear the bonding composition of Wu in view of Kim would necessarily inherently have a Tg of greater than -70°C and less than -10°C, a tensile strength of greater than 40 MPa to less than 120 MPa, and an elongation of greater than 100% to less than 800%, absent evidence to the contrary.
Claims 1 and 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 10-2019/0078162 A, “Kim”) in view of Wu et al. (US 2020/0407611 A1, “Wu”). It is noted that the disclosure of Kim is based off US 2021/0071047 A1, which serves as an English language equivalent.
With respect to claims 1 and 8-9, Kim discloses an electrical steel sheet laminate having an adhesive coating composition formed between electrical steel sheets ([0001]) (i.e., a plurality of electrical steel sheets having a fusion layer positioned between the plurality of electrical steel sheets). The adhesive contains a first composition containing an organic resin ([0011]) where the organic resin is a urethane-based resin ([0017]). The adhesive further contains a coupling agent, including a silane coupling agent ([0011-0012]), corresponding to the claimed bonding additive.
While Kim discloses the use of a urethane-based resin as an adhesive ([0011], [0017]), Kim does not disclose wherein the polyurethane is formed by reacting a diisocyanate monomer and a polyol, wherein the diisocyanate monomer includes an aromatic diisocyanate monomer and an aliphatic diisocyanate monomer.
Wu teaches a two-component polyurethane adhesive including (a) at least one isocyanate component, wherein the isocyanate component (a) comprises (ai) at least a first polyisocyanate compound and (aii) at least a second polyisocyanate compound, and (b) at least one polyol component ([0006]). The adhesive formulation has improved latency without compromising the mechanical properties of the adhesive ([0007]). The first polyisocyanate compound (ai) is an aliphatic polyisocyanate and is added as a monomer compound ([0014]) and includes diisocyanates ([0018]). The second polyisocyanate compound (aii) includes aromatic polyisocyanates and are added as monomers and includes diisocyanates ([0033]). The adhesive is used with steel sheets ([0082]). Wu further teaches the polyisocyanate component (a) contains aromatic and aliphatic isocyanates, where the aromatic isocyanates are present in an amount of 50-98% while the aliphatic isocyanates are present in an amount of 2-20% ([0029]), which overlaps the presently claimed range. 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).
Kim and Wu are analogous inventions in the field of polyurethane adhesives used with steel sheets.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the urethane-based resin of Kim to be the two-component polyurethane resin having a first polyisocyanate compound that is an aromatic diisocyanate and a second polyisocyanate compound that is an aliphatic diisocyanate, wherein the aliphatic diisocyanate is present in an amount of 2-20%, including values presently claimed, as taught by Wu in order to provide an adhesive having improved latency without compromised mechanical properties (Wu, [0007]).
With respect to claims 3 and 5, Wu teaches the aromatic polyisocyanate includes methylene diphenyl diisocyanate (MDI) ([0033]), which inherently has the structure represented by Chemical Formula 1, where L is an unsubstituted C1 alkylene group, R1, R2, R4, R5, R6, R7, R9, and R10 are all hydrogen, R3 and R8 are isocyanate groups, and n is 1.
With respect to claims 4 and 6, Wu teaches the aliphatic polyisocyanate includes hexamethylene diisocyanate (HDI), cyclohexane diisocyanate, and isophorone diisocyanate (IPDI) ([0018]), which inherently have the structure represented by Chemical Formula 3 (HDI has R being an unsubstituted C6 alkyl group; cyclohexane diisocyanate has R as an unsubstituted C6 cycloalkyl group; IPDI has R as a substituted C6 cycloalkyl group).
With respect to claim 7, while there may be no explicit disclosure from Kim in view of Wu regarding the glass transition temperature (Tg) of the bonding composition being greater than -70°C to less than -10°C, a tensile strength of greater than 40 MPa to less than 120 MPa, and an elongation of greater than 100% to less than 800%, given that Kim in view of Wu discloses an otherwise identical bonding composition made from identical diisocyanates in overlapping amounts and an identical polyol (Wu discloses the use of poly(propylene oxide), a synonym for polypropylene glycol, [0021], which is identical to the polyol of the present invention, see instant specification, page 14, lines 10-11) as that of the present invention, it is clear the bonding composition of Kim in view of Wu would necessarily inherently have a Tg of greater than -70°C and less than -10°C, a tensile strength of greater than 40 MPa to less than 120 MPa, and an elongation of greater than 100% to less than 800%, absent evidence to the contrary.
Response to Arguments
Due to the amendment to claims 3-4 and 9, the objections to claims 3-4 and 9 are withdrawn.
Due to the filing and acceptance of terminal disclaimers which disclaim the terminal portions of any patent granted on Application No. 18/268,838 and any patent granted on Application No. 18/268,806, the non-statutory double patenting rejections of claims 1, 3-4, and 8 are withdrawn.
Due to the cancellation of claim 2, the 35 U.S.C. 103 rejections of claim 2 are withdrawn.
Applicant's arguments filed 12 November 2025 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the bonding composition presently claimed demonstrates unexpectedly superior results and points to the examples in the specification as originally filed for support. Applicant further argues Wu does not provide any data for aliphatic diisocyanates in amounts less than 20%, and that Kim does not disclose the specific composition of the urethane resin as presently claimed, such that the cited references do not render the present claims obvious. The examiner disagrees for the following reasons.
In response to Applicant’s argument that the claimed invention demonstrates unexpectedly superior results, this is not found persuasive because the data is not commensurate in scope with the claims for the following reasons.
Firstly, the Examples relate to specific polyurethanes made from specific isocyanates in specific amounts, whereas the present claims broadly allow for any polyurethane made from any diisocyanate monomer including any aromatic diisocyanate monomer and any aliphatic diisocyanate monomer. Specifically, the Examples in the instant specification use 2,4-MDI and HDI in a weight ratio of 80:20 to 60:40, where the blend is present in an amount of 36 wt% or 38 wt% of the polyurethane (instant specification, Table 1, pages 22-23). However, the present claims broadly allow for any amount of any diisocyanate made from any aromatic diisocyanate monomer and any aliphatic diisocyanate monomer present in 20 to 40 parts by weight based on 100 parts by weight of the total diisocyanate monomer.
Secondly, the Examples relate to specific polyurethanes made from a specific polyol in a specific amount, whereas the present claims broadly allow for any polyol in any amount. Specifically, the Examples relate to the polyol being PPG present in an amount of 62 wt% or 64 wt%. However, the present claims broadly allow for any polyol in any amount.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
In response to Applicant’s argument that Wu does not provide any data for aliphatic diisocyanates in amounts less than 20%, this is not found persuasive. Wu discloses a two-component polyurethane adhesive including at least one isocyanate component, wherein the isocyanate component comprises a first and second polyisocyanate compound. ([0006]). The first polyisocyanate compound is an aliphatic polyisocyanate and includes diisocyanates ([0014], [0018]) and is present in an amount of 2-20% ([0029]). The second polyisocyanate compound is an aromatic polyisocyanate and includes diisocyanates ([0033]) and are present in an amount of 50-98% ([0029]). Thus, Wu discloses aliphatic diisocyanates are present in an amount of 20%, which overlaps the presently claimed range of 20-40 parts by weight. 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).
In response to Applicant’s argument that Kim does not disclose the specific composition of the urethane resin as presently claimed, this is not found persuasive. The examiner acknowledges that Kim does not disclose the specific composition of the urethane resin as presently claimed. However, Kim is not being used to meet these limitations; rather, Wu is being used for these limitations. The combination of Kim in view of Wu or Wu in view of Kim meets the presently claimed inventions as set forth above. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E 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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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787