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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04 June 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to claim 5, the claim recites “the polyurethane is formed by reacting an isocyanate monomer and a polyol, and the isocyanate monomer is at least one selected from the group consisting of an aromatic isocyanate monomer and an aliphatic isocyanate monomer” in lines 3-5. However, claim 1, which claim 5 depends from, already recites “the polyurethane is formed by reacting an isocyanate monomer and a polyol, and the isocyanate monomer is at least one selected from the group consisting of an aromatic isocyanate monomer and an aliphatic isocyanate monomer” in lines 7-9. Therefore, claim 5 fails to further limit claim 1 and instead repeats a limitation already present in claim 1. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claims 6-7 are rejected under 35 U.S.C. 112(d) due to their dependency on claim 5.
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 Shibao et al. (US 2014/0023879 A1, “Shibao”).
With respect to claims 1 and 5-7, 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 2,2’-methylene-diphenyl diisocyanate, corresponding to the monomer represented by Chemical Formula 3 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), cyclohexane diisocyanate, and isophorone diisocyanate (IPDI) ([0018], [0033]), 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). 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]).
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 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 and 5-9, 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, wherein the aromatic isocyanate monomer is represented by Chemical Formula 3, wherein the aliphatic isocyanate monomer is represented by Chemical Formula 5, 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 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 3 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), cyclohexane diisocyanate, and isophorone diisocyanate (IPDI) ([0018], [0033]), 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). 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 having the structure represented by Chemical Formula 3 and a second polyisocyanate compound that is an aliphatic diisocyanate represented by Chemical Formula 5 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]).
Response to Arguments
Due to the amendment to claim 9, the objection to claim 9 is withdrawn.
Due to the amendment to claim 6, the 35 U.S.C. 112(b) rejection of claim 6 is withdrawn. However, claims 5-7 are now rejected under 35 U.S.C. 112(d) for the reasons set forth above.
Due to the amendment to claim 1, the 35 U.S.C. 103 rejection of claim 6 over Wu in view of Shibao and Kydonieus et al. (US 5,591,820, “Kydonieus”), and the 35 U.S.C. 103 rejection of claim 6 over Kim in view of Wu, Shibao, and Kydonieus are withdrawn. This is because Kydonieus is no longer needed to meet claim 6. Claim 6 is now rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Shibao and Kim in view of Wu and Shibao for the reasons set forth above.
Applicant’s arguments filed 04 June 2026 and supported by a declaration filed 17 June 2026 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the claims are non-obvious because the data in the specification as originally filed and the additional data provided in the declaration filed 17 June 2026 demonstrates unexpectedly superior results. Specifically, Applicant argues the data establishes that the simultaneous use of an aromatic isocyanate monomer and an aliphatic isocyanate monomer produces results that are not suggested nor expected from the cited references. The examiner respectfully disagrees.
In response to Applicant’s argument that they have discovered 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 at least one aromatic or aliphatic 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 aromatic or aliphatic 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.
Further, it is unclear if Applicant has discovered unexpectedly superior results given that the prior art already contemplates the simultaneous use of an aromatic isocyanate monomer and an aliphatic isocyanate monomer (Wu,
Lastly, the present claims do not require the simultaneous use of an aliphatic isocyanate monomer and an aromatic isocyanate monomer. Instead, the claims require that the isocyanate monomer is “at least one selected from the group consisting of an aromatic isocyanate monomer and an aliphatic isocyanate monomer”; that is, the isocyanate monomer may be an aromatic isocyanate monomer alone, an aliphatic isocyanate monomer alone, at least two aromatic isocyanate monomers, at least two aliphatic isocyanate monomers, or a combination of an aromatic isocyanate monomer and an aliphatic isocyanate monomer.
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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