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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02 June 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 4-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 1, the claim recites “wherein the aromatic diisocyanate monomer is a monomer represented by Chemical Formula 4… in Chemical Formula 4, L is a substituted or unsubstituted C1 to C10 alkylene group, a substituted or unsubstituted C2 to C10 alkynylene group, a substituted or unsubstituted C6 to C20 arylene group, or a substituted or unsubstituted C5 to C20 heteroarylene group” in lines 8-9 and 12-16. However, Chemical Formula 4 contains subscript n, which is not defined by the claim and therefore claim 1 is indefinite.
With respect to claim 8, the claim recites “wherein the aromatic diisocyanate monomer is a monomer represented by Chemical Formula 4… in Chemical Formula 4, L is a substituted or unsubstituted C1 to C10 alkylene group, a substituted or unsubstituted C2 to C10 alkynylene group, a substituted or unsubstituted C6 to C20 arylene group, or a substituted or unsubstituted C5 to C20 heteroarylene group” in lines 9-10 and 13-17. However, Chemical Formula 4 contains subscript n, which is not defined by the claim and therefore claim 8 is indefinite.
With respect to claim 9, the claim recites “wherein the aromatic diisocyanate monomer is a monomer represented by Chemical Formula 4… in Chemical Formula 4, L is a substituted or unsubstituted C1 to C10 alkylene group, a substituted or unsubstituted C2 to C10 alkynylene group, a substituted or unsubstituted C6 to C20 arylene group, or a substituted or unsubstituted C5 to C20 heteroarylene group” in lines 9-10 and 13-17. However, Chemical Formula 4 contains subscript n, which is not defined by the claim and therefore claim 9 is indefinite.
Claims 4-7 are rejected under 35 U.S.C. 112(b) due to their ultimate dependency on claim 1.
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 4-7 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”) and taken in view of the evidence given by BenchChem (An In-depth Technical Guide to Methylene Diphenyl Diisocyanate (MDI): Chemical Structure and Isomeric Purity Analysis). The disclosure of Kim is based off US 2021/0071047 A1, which serves as an English language equivalent.
With respect to claims 1 and 5, 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 aromatic polyisocyanate and is added as a monomer compound ([0014]) and includes aromatic diisocyanates including 2,4’-methylene-diphenyl diisocyanate ([0016]); this corresponds to the monomer represented by Chemical Formula 4 where L is an unsubstituted C1 alkylene group and n is 1. The second polyisocyanate compound (aii) includes aliphatic polyisocyanates and are added as monomers and include 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).
The examiner notes that Wu discloses the aromatic polyisocyanate compound includes “m-phenylene diisocyanate; methylene diphenyl diisocyanate (MDI); 4,4’-methylene-diphenyldiisocyanate; 2,2’-methylenediphenyl-diisocyanate; 2,4-methylene-diphenyldiisocyanate” and does not explicitly recite “2,4’-methylene-diphenyl diisocyanate”. However, given that Wu discloses the use of MDI, including two of the three most common isomers of MDI of 2,2’-MDI and 4,4’-MDI right before reciting “2,4-methylene-diphenyldiisocyanate” and proceeding to then list various other aromatic polyisocyanates such as TDI, it is the examiner’s position that Wu’s recitation of “2,4-methylene-diphenyldiisocyanate” should be “2,4’-methylene-diphenyldiisocyanate”, which completes the three most common isomers of MDI (see BenchChem, An In-depth Technical Guide to Methylene Diphenyl Diisocyanate (MDI): Chemical Structure and Isomeric Purity Analysis, page 2, “Chemical Structure and Isomers of MDI”).
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 4 and 6, Wu discloses the aliphatic polyisocyanate includes hexamethylene diisocyanate (HDI), cyclohexane diisocyanate, and isophorone diisocyanate (IPDI) ([0018], [0033]), 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 4-9 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”) and taken in view of the evidence given by BenchChem (An In-depth Technical Guide to Methylene Diphenyl Diisocyanate (MDI): Chemical Structure and Isomeric Purity Analysis). The disclosure of Kim is based off US 2021/0071047 A1, which serves as an English language equivalent.
With respect to claims 1, 5, 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, nor wherein the aromatic diisocyanate monomer is a monomer represented by the claimed Chemical Formula 4.
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 aromatic polyisocyanate and is added as a monomer compound ([0014]) and includes aromatic diisocyanates including 2,4’-methylene-diphenyl diisocyanate ([0016]); this corresponds to the monomer represented by Chemical Formula 4 where L is an unsubstituted C1 alkylene group and n is 1. The second polyisocyanate compound (aii) includes aliphatic 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).
The examiner notes that Wu discloses the aromatic polyisocyanate compound includes “m-phenylene diisocyanate; methylene diphenyl diisocyanate (MDI); 4,4’-methylene-diphenyldiisocyanate; 2,2’-methylenediphenyl-diisocyanate; 2,4-methylene-diphenyldiisocyanate” and does not explicitly recite “2,4’-methylene-diphenyl diisocyanate”. However, given that Wu discloses the use of MDI, including two of the three most common isomers of MDI of 2,2’-MDI and 4,4’-MDI right before reciting “2,4-methylene-diphenyldiisocyanate” and proceeding to then list various other aromatic polyisocyanates such as TDI, it is the examiner’s position that Wu’s recitation of “2,4-methylene-diphenyldiisocyanate” should be “2,4’-methylene-diphenyldiisocyanate”, which completes the three most common isomers of MDI (see BenchChem, An In-depth Technical Guide to Methylene Diphenyl Diisocyanate (MDI): Chemical Structure and Isomeric Purity Analysis, page 2, “Chemical Structure and Isomers of MDI”).
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 4 and 6, Wu teaches the aliphatic polyisocyanate includes hexamethylene diisocyanate (HDI), cyclohexane diisocyanate, and isophorone diisocyanate (IPDI) ([0018], [0033]), 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 cancellation of claim 3, the 35 U.S.C. 103 rejections of claim 3 are withdrawn.
Applicant’s arguments filed 02 June 2026 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the cited references do not disclose an aromatic diisocyanate monomer represented by Chemical Formula 4, namely 2,4’-methylene diphenyl diisocyanate, and an aliphatic diisocyanate monomer in the claimed ratio. Applicant further argues neither Wu nor Kim discloses an adhesive coating for an electrical steel sheet that provides excellent coating film adhesion, peeling property, and automatic transmission fluid resistance, and that the cited references fail to recognize those properties. Applicant further argues neither Wu nor Kim discloses the specific aromatic diisocyanate monomer as claimed, and that Wu’s examples disclose an aliphatic diisocyanate monomer having a structure different from that of Chemical Formula 4. Applicant additionally argues neither Kim nor Wu discloses the simultaneous use of an aromatic diisocyanate monomer of Chemical Formula 4 together with an aliphatic diisocyanate monomer in the claimed proportion. Applicant argues the claimed ratio is critical, and points to the Examples in the specification for support of unexpectedly superior results. The examiner respectfully disagrees.
In response to Applicant’s argument that neither Kim nor Wu disclose an aromatic diisocyanate monomer represented by Chemical Formula 4, nor an aliphatic diisocyanate monomer in the claimed ratio, nor the simultaneous use of an aromatic diisocyanate monomer of Chemical Formula 4 with an aliphatic diisocyanate monomer in the claimed ratio, this is not found persuasive. 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 aromatic polyisocyanate and is added as a monomer compound ([0014]) and includes aromatic diisocyanates including 2,4’-methylene-diphenyl diisocyanate ([0016]). The examiner notes that Wu discloses the aromatic polyisocyanate compound includes “m-phenylene diisocyanate; methylene diphenyl diisocyanate (MDI); 4,4’-methylene-diphenyldiisocyanate; 2,2’-methylenediphenyl-diisocyanate; 2,4-methylene-diphenyldiisocyanate” and does not explicitly recite “2,4’-methylene-diphenyl diisocyanate”. However, given that Wu discloses the use of MDI, including two of the three most common isomers of MDI of 2,2’-MDI and 4,4’-MDI right before reciting “2,4-methylene-diphenyldiisocyanate” and proceeding to then list various other aromatic polyisocyanates such as TDI, it is the examiner’s position that Wu’s recitation of “2,4-methylene-diphenyldiisocyanate” should be “2,4’-methylene-diphenyldiisocyanate”, which completes the three most common isomers of MDI (see BenchChem, An In-depth Technical Guide to Methylene Diphenyl Diisocyanate (MDI): Chemical Structure and Isomeric Purity Analysis, page 2, “Chemical Structure and Isomers of MDI”). This corresponds to the monomer represented by Chemical Formula 4 where L is an unsubstituted C1 alkylene group and n is 1. The second polyisocyanate compound (aii) includes aliphatic polyisocyanates and are added as monomers and include 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]). That is, Wu discloses the aliphatic diisocyanate monomer is present in an amount of 2-20 parts by weight based on 100 parts by weight of the total diisocyanate monomer; this 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).
In response to Applicant’s argument that neither Wu nor Kim discloses an adhesive coating for an electrical steel sheet that provides excellent coating film adhesion, peeling property, and automatic transmission fluid resistance, and that the cited references fail to recognize these properties, this is not found persuasive. It is noted that the features upon which applicant relies (i.e., coating film adhesion, peeling property, and automatic transmission fluid resistance) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regardless, even if these properties were claimed, given that Wu in view of Kim or Kim in view of Wu discloses an identical bonding composition for an electrical steel sheet made from identical components in overlapping amounts as that presently claimed, it is clear the bonding composition of Wu in view of Kim or Kim in view of Wu would necessarily inherently possess these properties, absent evidence to the contrary. Applicant has provided no evidence (i.e., data) demonstrating the bonding composition of Wu in view of Kim or Kim in view of Wu would not have these properties. It is noted that “the arguments of counsel cannot take the place of evidence in the record”. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
In response to Applicant’s argument that neither Kim nor Wu disclose the specific aromatic diisocyanate monomer as claimed, and that Wu’s examples disclose an aliphatic diisocyanate monomer have a structure different from that of Chemical Formula 4, this is not found persuasive. As set forth above, Wu does disclose the specific aromatic diisocyanate monomer as claimed having a structure identical to that of Chemical Formula 4. Further, while the examples of Wu may disclose an aliphatic diisocyanate monomer, this is not the only disclosure from Wu regarding diisocyanate monomers. It is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735, 739 (CCPA 1967). The fact remains that Wu discloses the specific aromatic diisocyanate monomer for the same reasons set forth above.
In response to Applicant’s argument that the claimed ratio is critical and that they have discovered unexpectedly superior results, this is not persuasive because the data is not commensurate in scope with the claims.
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 having the structure of Chemical Formula 4 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 having the structure of Chemical Formula 4 (which encompasses compounds that are not 2,4’-MDI) 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.
Conclusion
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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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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