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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11 May 2026 has been entered.
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 and 11-13 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 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 comprises an aromatic diisocyanate monomer, an aliphatic diisocyanate monomer, or a mixture thereof, wherein the aromatic diisocyanate monomer is represented by Chemical Formula 1, Chemical Formula 2, or a combination thereof, wherein the aliphatic diisocyanate monomer is represented by Chemical Formula 3, and wherein the polyol is poly(propylene glycol).
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 2,2’-methylene-diphenyl diisocyanate, corresponding to the monomer represented by Chemical Formula 1 where: L is an unsubstituted C1 alkylene group; n is 1; R1 and R10 are isocyanate; and R2, R3, R4, R5, R6, R7, R8, and R9 are each H ([0016]). The second polyisocyanate compound (aii) includes aliphatic polyisocyanates and are added as monomers and includes hexamethylene diisocyanate (HDI) ([0018], [0033]), which inherently has the structure represented by Chemical Formula 3 where R is an unsubstituted C6 alkylene group. The polyol component includes poly(propylene oxide) (i.e., poly(propylene glycol)) ([0021], [0038]). 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 including 2,2’-methylene-diphenyl diisocyanate, a second polyisocyanate compound that is an aliphatic diisocyanate that is hexamethylene diisocyanate (HDI), and a polyol that is poly(propylene oxide) (i.e., poly(propylene glycol)) 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.
Response to Arguments
Due to the cancellation of claims 7-10, the 35 U.S.C. 103 rejections of claims 7-10 are withdrawn.
Applicant’s arguments filed 11 May 2026 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the amended claims are non-obvious in light of the unexpectedly superior results found in the examples of the specification, and that the data is commensurate in scope with the claims. Applicant further argues Kim fails to disclose an adhesive resin that is a polyurethane formed by reacting the claimed diisocyanate monomer and polyol as presently claimed. Applicant additionally argues that Wu is drawn to a different purpose than Kim and the present embodiment, and that Wu lacks data on inorganic filler particles. Applicant further argues neither Kim nor Wu disclose the Chemical Formulas 1-3 as presently claimed. Applicant lastly argues the rebound elastic modulus of Kim in view of Wu would inherently be different from the present embodiment. The examiner respectfully disagrees.
In response to Applicant’s argument that they have discovered unexpectedly superior results, and that the data is commensurate in scope with the claims, 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 aromatic diisocyanate monomer having a structure of Chemical Formula 1, Chemical Formula 2, or a combination thereof in any amount, any aliphatic diisocyanate monomer having a structure of Chemical Formula 3 in any amount, or a mixture thereof, and poly(propylene glycol) (PPG) in any amount. 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 aromatic diisocyanate monomer having a structure of Chemical Formula 1, Chemical Formula 2, or a combination thereof, in any amount, any aliphatic diisocyanate monomer having a structure of Chemical Formula 3 in any amount, or a combination thereof. Further, the data uses specific amounts of PPG (instant specification, pages 19-22), whereas the present claims are broadly drawn to any amount of poly(propylene glycol).
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 Kim fails to disclose an adhesive resin that is a polyurethane formed by reacting the claimed diisocyanate monomer and the claimed polyol, this is not found persuasive. The examiner recognizes Kim does not meet these limitations; however, Kim is not being used to meet these limitations. Rather, Wu is used, and as set forth above, 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 2,2’-methylene-diphenyl diisocyanate, corresponding to the monomer represented by Chemical Formula 1 where: L is an unsubstituted C1 alkylene group; n is 1; R1 and R10 are isocyanate; and R2, R3, R4, R5, R6, R7, R8, and R9 are each H ([0016]). The second polyisocyanate compound (aii) includes aliphatic polyisocyanates and are added as monomers and includes hexamethylene diisocyanate (HDI) ([0018], [0033]), which inherently has the structure represented by Chemical Formula 3 where R is an unsubstituted C6 alkylene group. The polyol component includes poly(propylene oxide) (i.e., poly(propylene glycol)) ([0021], [0038]). The adhesive is used with steel sheets ([0082]).
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 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 argument that neither Kim nor Wu disclose the claimed Chemical Formulas 1-3, this is not found persuasive. As set forth above, 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 2,2’-methylene-diphenyl diisocyanate, corresponding to the monomer represented by Chemical Formula 1 where: L is an unsubstituted C1 alkylene group; n is 1; R1 and R10 are isocyanate; and R2, R3, R4, R5, R6, R7, R8, and R9 are each H ([0016]). The second polyisocyanate compound (aii) includes aliphatic polyisocyanates and are added as monomers and includes hexamethylene diisocyanate (HDI) ([0018], [0033]), which inherently has the structure represented by Chemical Formula 3 where R is an unsubstituted C6 alkylene group. The polyol component includes poly(propylene oxide) (i.e., poly(propylene glycol)) ([0021], [0038]). The adhesive is used with steel sheets ([0082]). Thus, Kim in view of Wu discloses the claimed Chemical Formulas 1-3.
In response to Applicant’s argument that the rebound elastic modulus of Kim in view of Wu would inherently be different from the present embodiment, this is not found persuasive. Applicant has provided no evidence (i.e., data) demonstrating Kim in view of Wu would not have the claimed rebound elastic modulus. 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). Further, 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 property is not positively stated by the references. However, the references teach all of the claimed components. 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 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
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
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