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 .
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 1-3, 7-8, and 10-13 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”). The disclosure of Kim is based off US 2021/0071047 A1, which serves as an English language equivalent.
With respect to claims 1, 7-8, and 11, 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 containing inorganic nanoparticles ([0011]), where the organic resin is a urethane-based resin ([0017]). The adhesive further contains a coupling agent ([0011-0012]), corresponding to the claimed bonding additive. The inorganic nanoparticles are present in an amount of 5-60 wt% of the organic resin/inorganic nanoparticles ([0053]) (i.e., are present in an amount of 5-60 wt% based on 100 wt% of the coating being polyurethane and nanoparticles), 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).
However, 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]).
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 as taught by Wu in order to provide an adhesive having improved latency without compromised mechanical properties (Wu, [0007]).
Regarding the polyurethane coating layer having a rebound elastic modulus of 5-30%, while there may be no explicit disclosure from Kim in view of Wu regarding the polyurethane coating layer having a rebound elastic modulus of 5-30%, given that Kim in view of Wu discloses an otherwise identical electrical steel sheet comprising an identical polyurethane coating layer made from identical components as that presently claimed, it is clear the polyurethane coating layer of Kim in view of Wu would necessarily inherently have a rebound elastic modulus of 5-30%, absent evidence to the contrary.
With respect to claims 2 and 12, while there may be no explicit disclosure from Kim in view of Wu regarding the polyurethane coating layer having a tensile strength of 50-70 MPa, given that Kim in view of Wu discloses an otherwise identical electrical steel sheet comprising an identical polyurethane coating layer made from identical components as that presently claimed, it is clear the polyurethane coating layer of Kim in view of Wu would necessarily inherently have a tensile strength of 50-70 MPa, absent evidence to the contrary.
With respect to claims 3 and 13, while there may be no explicit disclosure from Kim in view of Wu regarding the polyurethane coating layer having an elongation of 150-250%, given that Kim in view of Wu discloses an otherwise identical electrical steel sheet comprising an identical polyurethane coating layer made from identical components as that presently claimed, it is clear the polyurethane coating layer of Kim in view of Wu would necessarily inherently have an elongation of 150-250%, absent evidence to the contrary.
With respect to claim 10, 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 5 (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).
Claim 9 is 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”) as applied to claims 1 and 8 above, and further in view of Kydonieus et al. (US 5,591,820, “Kydonieus”). The disclosure of Kim is based off US 2021/0071047 A1, which serves as an English language equivalent.
With respect to claim 9, while Kim in view of Wu discloses the use of aromatic diisocyanate monomers having a functionality greater than or equal to 2.3 including MDI (Wu, [0033]), Kim in view of Wu does not disclose wherein the aromatic diisocyanate is a monomer represented by the claimed Chemical Formulas 3 or 4.
Kydonieus teaches a polyurethane adhesive (Col. 1, lines 10-11) where the polyurethane is made by reacting a polyol component with an isocyanate component (Col. 3, lines 10-12). The isocyanate component includes aromatic diisocyanates and has a functionality greater than or equal to 2 in order to obtain the desired crosslinking of the polymer (Col. 3, lines 44-50). The aromatic diisocyanate includes 2,4- and 2,6-tolylene diisocyanate, 4,4, diphenylmethane diisocyanate (MDI), and m-xylylene diisocyanate (Col. 7, lines 4-7). The structures of 2,4- and 2,6-tolylene diisocyanate and m-xylylene diisocyanate meet the structure of Chemical Formula 4 (2,4-tolylene diisocyanate has R11 as an unsubstituted C1 alkyl group, R16/R12, R13, and R15 as hydrogen, and R12/R16 and R14 as isocyanate; 2,6-tolylene diisocyanate has R11 as an unsubstituted C1 alkyl group, R13, R14, and R15 as hydrogen, and R12 and R16 as isocyanate; m-xylylene diisocyanate has R11, R13, R14, and R15 as hydrogen and R12 and R16 as unsubstituted C1 alkyl isocyanate).
Kim in view of Wu and Kydonieus are analogous inventions in the field of polyurethane adhesives made from aromatic diisocyanates having a functionality greater than or equal to 2, including MDI.
In light of the disclosure of the equivalence and interchangeability of MDI and 2,4- and 2,6-tolylene diisocyanate and m-xylylene diisocyanate as disclosed by Kydonieus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use 2,4-, 2,6-tolylene diisocyanate, or m-xylylene diisocyanate as the aromatic diisocyanate in Kim in view of Wu in order to provide a polyurethane having desired crosslinking (Kydonieus, Col. 3, lines 44-50) and thereby arrive at the claimed invention.
Response to Arguments
Due to the amendments to claims 1 and 8, the double patenting rejection of claim 8 is withdrawn.
Due to the cancellation of claims 4-6 and 14-15, the 35 U.S.C. 103 rejections of claims 4-6 and 14-15 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 Kim discloses inorganic nanoparticles in the form of an organic/inorganic composite in which they are substituted into an organic resin, which Applicant contends is different from the form of inorganic particles as presently claimed. Applicant further argues Kim does not disclose the polyurethane is formed by the reaction of a diisocyanate monomer and a polyol. Applicant additionally argues Wu discloses a polyurethane adhesive composition for automotive applications, whereas the present application is drawn to electrical steel sheets, such that Wu is in a different field of endeavor. Applicant further argues Wu merely lists inorganic filler particles as one of many in a list without providing specific data regarding inorganic filler particles. Applicant further argues that the Examples of the instant specification demonstrate unexpectedly superior results, and that the rebound elastic modulus of Kim in view of Wu is different from that of the presently claimed invention. Applicant lastly argues Kydonieus fails to remedy the alleged deficiencies of Kim in view of Wu. The examiner respectfully disagrees for the following reasons.
In response to Applicant’s argument that Kim discloses inorganic nanoparticles that are different from the form of the inorganic particles presently claimed, this is not found persuasive. Nothing in the claims prohibits the use of organic/inorganic composites, and thus the organic/inorganic composites used by Kim are not prohibited by the claims. The organic/inorganic nanoparticle composites correspond to the claimed inorganic nanoparticles as claimed.
In response to Applicant’s argument that Kim does not disclose wherein the polyurethane is formed by the reaction of a diisocyanate monomer and a polyol as presently claimed, this is not found persuasive. The examiner acknowledges that Kim is silent with respect to this limitation; however, Kim is not being used to meet this limitation. Rather, as set forth above, Wu is being used. Wu teaches a two-component polyurethane adhesive including at least one isocyanate component, wherein the isocyanate component comprises at least a first polyisocyanate compound and at least a second polyisocyanate compound, and at least one polyol component ([0006]). The first polyisocyanate compound is an aliphatic polyisocyanate and is added as a monomer compound ([0014]) and includes diisocyanates ([0018]). The second polyisocyanate compound includes aromatic polyisocyanates and are added as monomers and includes diisocyanates ([0033]). Thus, Kim in view of Wu meets this claimed limitation.
In response to Applicant’s argument that Wu is in a different field of endeavor, this is not persuasive. Relative to the present application, Wu is in the same field of endeavor as the present application, although Wu addresses a different problem. Both the present application and Wu are in the field of endeavor related to steel sheets utilizing polyurethane adhesives made from polyols and a polyisocyanate component, where the polyisocyanate component includes aliphatic diisocyanate monomers and aromatic diisocyanate monomers. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1366 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
In response to Applicant’s argument that Wu merely discloses the use of inorganic particles in a list and provides no data regarding inorganic fillers, this is not found persuasive. Wu is not used to meet this limitation. Rather, Kim is used as set forth above. Wu is being used as a secondary teaching reference. However, note that while Wu may not disclose all the features of the presently claimed invention, Wu is used as a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention. In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973); In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather, this reference teaches a certain concept, namely the specifically claimed polyurethane composition as set forth above, and in combination with the primary reference Kim, discloses the presently claimed invention.
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).
In response to Applicant’s argument that the Examples demonstrate 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 data relates to specific urethane resins made from specific diisocyanates and specific polyols, whereas the present claims are broadly drawn to any polyurethane coating layer comprising any polyurethane formed by reacting any diisocyanate monomer and any polyol. Specifically, the data uses 2,4’-MDI, 2,2’-MDI, 4,4’-MDI, and HDI present in specific amounts (instant specification, pages 19-22), whereas the present claims are broadly drawn to any diisocyanate in any amount. Further, the data uses a specific polyol being PPG present in specific amounts (instant specification, pages 19-22), whereas the present claims are broadly drawn to any polyol in any amount.
Secondly, the data relates to specific inorganic particles being silica or carbon black in specific amounts being 0.1 wt%, 5 wt%, 10 wt%, and 17 wt% (instant specification, pages 20-22), whereas the present claims are broadly drawn to any inorganic particles present in an amount of greater than 0 wt% (e.g., 0.001 wt%) to 20 wt%. There is no data provided at the lower or upper ends of the claimed range.
Thirdly, the data relates to specific additives present in specific amounts, whereas the present claims broadly allow for any bonding additive in any amount. Specifically, the data uses 0.5 parts by weight of a silane coupling agent, 0.1 parts by weight of a silicone-based wetting agent, 1 part by weight of a dicyandiamide-based curing agent, and 0.5 parts by weight of an imidazole-based curing catalyst (instant specification, page 19), whereas the present claims are broadly drawn to any bonding additive 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 the rebound elastic modulus of Kim in view of Wu is different from that of the presently claimed invention, this is not found persuasive. The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed rebound elastic modulus is not positively stated by the Kim in view of Wu. However, Kim in view of Wu teach an otherwise identical electrical steel sheet comprising an identical polyurethane coating layer made from identical components as that presently claimed. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not.
In response to Applicant’s argument that Kydonieus fails to remedy the alleged deficiencies of Kim in view of Wu, this is not found persuasive because Kim in view of Wu does not contain the alleged deficiencies for the reasons set forth above.
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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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787