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 Objections
Claim 9 is objected to because of the following informality:
Claim 9, line 4: “the fusion layer includes” should read “the fusion layers include” to match the earlier recitation of “fusion layers” in line 3.
Appropriate correction is required.
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.
Claim 6 is 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 6, the claim recites the limitation “except for a case where R3 and R8 are both isocyanates” in line 14. It is unclear what is meant by this limitation in the claim. Does it intend to exclude an instance where both R3 and R8 are isocyanate groups? Clarification is respectfully requested. For the purposes of examination, the claim has been interpreted as if it means to exclude R3 and R8 both being isocyanates at the same time.
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, 4-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2020/0407611 A1, “Wu”) in view of Shibao et al. (US 2014/0023879 A1, “Shibao”).
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 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]).
However, while Wu discloses the use of additives ([0065]), Wu does not disclose the additive is an amino silane represented by the claimed formula, nor wherein the amino silane is present in an amount of 0.05-3.0 wt%.
Shibao teaches a resin film that contains a crosslinking agent that is a silane coupling agent ([0162]). The silane coupling agent includes γ-aminopropyltrimethoxy silane (i.e., the silane coupling agent is an amino silane) ([0164]). The γ-aminopropyltrimethoxy silane inherently has the structure represented by Chemical Formula 2, where: L4 is an unsubstituted C3 alkyl group; n is 1; and R1, R2, and R3 are unsubstituted C1 alkyl groups. The silane coupling agent is present in an amount of 0.1-50 mass% with respect to 100 mass% of the solid content of the resin ([0167]), 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 resin includes polyurethane resin ([0144]). The resin coating is applied to steel sheets ([0034], [0047], [0050-0051]). The silane coupling agent enhances adhesion between other layers and the resin ([0163]).
Wu and Shibao are analogous inventions in the field of polyurethane coatings applied to 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 polyurethane resin of Wu to contain the γ-aminopropyltrimethoxy silane coupling agent in an amount, including values presently claimed, as taught by Shibao in order to provide a polyurethane adhesive having enhanced adhesion (Shibao, [0163]).
With respect to claim 4, Wu discloses the use of a catalyst to accelerate the reaction of the polyol and isocyanate components (i.e., discloses a curing catalyst) ([0046]).
With respect to claim 7, 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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2020/0407611 A1, “Wu”) in view of Shibao et al. (US 2014/0023879 A1, “Shibao”) as applied to claims 1 and 5 above, and further in view of Kydonieus et al. (US 5,591,820, “Kydonieus”).
With respect to claim 6, while Wu in view of Shibao discloses the use of aromatic diisocyanate monomers having a functionality greater than or equal to 2.3 including MDI (Wu, [0033]), Wu in view of Shibao 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).
Wu in view of Shibao 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 in Wu in view of Shibao in order to provide a polyurethane having desired crosslinking (Kydonieus, Col. 3, lines 44-50) and thereby arrive at the claimed invention.
Claims 1, 4-5, and 7-9 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 Shibao et al. (US 2014/0023879 A1, “Shibao”). 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]).
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, nor wherein the silane coupling agent contains less than 0.05-3.0 wt% of an amino silane having the structure presently claimed.
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]).
However, while Kim in view of Wu discloses the use of a silane coupling agent, Kim in view of Wu does not disclose wherein the silane coupling agent contains 0.05-3.0 wt% of an amino silane having the structure presently claimed.
Shibao teaches a resin film that contains a crosslinking agent that is a silane coupling agent ([0162]). The silane coupling agent includes γ-aminopropyltrimethoxy silane (i.e., the silane coupling agent is an amino silane) ([0164]). The γ-aminopropyltrimethoxy silane inherently has the structure represented by Chemical Formula 2, where: L4 is an unsubstituted C3 alkyl group; n is 1; and R1, R2, and R3 are unsubstituted C1 alkyl groups. The silane coupling agent is present in an amount of 0.1-50 mass% with respect to 100 mass% of the solid content of the resin ([0167]), 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 resin includes polyurethane resin ([0144]). The resin coating is applied to steel sheets ([0034], [0047], [0050-0051]). The silane coupling agent enhances adhesion between other layers and the resin ([0163]).
Kim in view of Wu and Shibao are analogous inventions in the field of polyurethane coatings applied to 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 polyurethane resin of Kim in view of Wu to contain the γ-aminopropyltrimethoxy silane coupling agent in an amount, including values presently claimed, as taught by Shibao in order to provide a polyurethane adhesive having enhanced adhesion (Shibao, [0163]).
With respect to claim 4, Wu teaches the use of a catalyst to accelerate the reaction of the polyol and isocyanate components (i.e., discloses a curing catalyst) ([0046]).
With respect to claim 7, 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 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 6 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”) and Shibao et al. (US 2014/0023879 A1, “Shibao”) as applied to claims 1 and 5 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 6, while Kim in view of Wu and Shibao 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 and Shibao 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 Shibao 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 in Kim in view of Wu and Shibao 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 cancellation of claims 2-3, the objections to claims 2-3, the double patenting rejections of claims 2-3, and the 35 U.S.C. 103 rejections of claims 2-3 are withdrawn.
Due to the amendments to claims 1 and 8-9, the double patenting rejections of claims 1 and 5-9 are withdrawn.
Due to the amendments to claims 6-7, the objections to claims 6-7 are withdrawn. However, claim 9 remains objected to since Applicant did not amend claim 9 to remedy the informality noted in paragraph 3, note 5, of the action mailed 12 August 2025.
Due to the amendments to claims 6-7, the 35 U.S.C. 112(b) rejection of claim 6 set forth in paragraph 40 of the action mailed 12 August 2025 and the 35 U.S.C. 112(b) rejection of claim 7 is withdrawn. However, Applicant failed to remedy the 35 U.S.C. 112(b) rejection of claim 6 set forth in paragraph 41 of the action mailed 12 August 2025, and thus claim 6 remains rejected under 35 U.S.C. 112(b) for the reasons set forth above.
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 data in the specification as originally filed demonstrates unexpectedly superior results. Applicant further argues the cited references do not disclose nor suggest the use of an amino silane in an amount of 0.05-3.0 wt%, and that the examples of Shibao include 5-50 parts by weight of metal oxide and a broad range of the content of the coupling agent. The examiner respectfully disagrees for the following reasons.
In response to Applicant’s argument that the data in the specification as originally filed 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 data in the specification relates to a specific polyurethane adhesive made from specific components in specific amounts, whereas the present claims broadly allow for any polyurethane made from any polyisocyanate and any polyol in any amount. Specifically, the data relates to a polyurethane made by mixing 2,4’-MDI and HDI in a weight ratio of 6:4, using PPG with a number average molecular weight of 425 g/mol as the polyol, and using 40 wt% of the diisocyanate monomer blend with 60 wt% of the polyol (instant specification, page 20, lines 14-19), whereas the present claims are broadly drawn to any polyurethane made from any polyisocyanate in any amount and any polyol in any amount.
Secondly, the data in the specification relates to specific additives in specific amounts, whereas the present claims are broadly drawn to any bonding additive including any coupling agent including 0.05-3.0 wt% of an amino silane having the claimed structure. Specifically, the data relates to a polyurethane containing 0.1 part 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 20, line 20-page 21, line 1), whereas the present claims are silent with respect to these materials.
Thirdly, the data in the specification relates to one specific amino silane coupling agent being 3-aminopropyltrimethoxysilane (instant specification, pages 23-25, Table 1). However, the present claims are broadly drawn to any amino silane having the structure presently claimed, which encompasses numerous amino silane coupling agents for which Applicant does not have any data for.
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 Shibao’s examples use a metal oxide, this is not found persuasive. The examiner acknowledges that the examples of Shibao use a metal oxide. However, nothing in the claims precludes the presence of metal oxides. Further, Shibao is not being used to teach the use of metal oxides. Instead, Shibao is being used to teach the use of a silane coupling agent ([0162]) including γ-aminopropyltrimethoxy silane (i.e., the silane coupling agent is an amino silane) ([0164]). The γ-aminopropyltrimethoxy silane inherently has the structure represented by Chemical Formula 2, where: L4 is an unsubstituted C3 alkyl group; n is 1; and R1, R2, and R3 are unsubstituted C1 alkyl groups. The silane coupling agent is present in an amount of 0.1-50 mass% with respect to 100 mass% of the solid content of the resin ([0167]), 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 resin includes polyurethane resin ([0144]). The resin coating is applied to steel sheets ([0034], [0047], [0050-0051]). The silane coupling agent enhances adhesion between other layers and the resin ([0163]). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Further, “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).
In response to Applicant’s argument that Shibao discloses a broad range of the content of the coupling agent, this is not found persuasive. The examiner acknowledges Shibao discloses the silane coupling agent is present in an amount of 0.1-50 mass% with respect to 100 mass% of the solid content of the resin ([0167]); however, this still overlaps with the presently claimed range of 0.05-3.0 wt%. 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). Applicant has not provided data establishing evidence of unexpectedly superior results for the reasons set forth above, and therefore the rejections are maintained.
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