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 .
Priority
Receipt is acknowledged of a certified copy of JP 2021-068106 filed April 14, 2021 as required by 37 CFR 1.55. Receipt is also acknowledged of a copy of WO 2022/220262, the WIPO publication of PCT/JP 2022/017693 filed April 13, 2022.
Claim Status
This Office Action is in response to Applicant’s Claim Amendments and Remarks filed July 23, 2026.
Claims Filing Date
July 23, 2026
Amended
7
Cancelled
1-6
Pending
7-20
Withdrawn
9-20
Under Examination
7, 8
Applicant’s specification in [0031] states that preferred examples of the active component that accelerates anaerobic curing include one or a combination of two or more selected from vanadium acetylacetonate, vanadyl acetylacetonate, vanadyl stearate, vanadium propoxide, vanadium butoxide, vanadium pentoxide, cobalt naphthenate, manganese naphthenate, copper hexanoate, and copper (II) bis(2-ethylhexanoate).
The applicant argues support for the claim 7 amendment in [0038] (p. 8 paras. 2-3).
Withdrawn Drawings Objections
The following objection is withdrawn due to drawing amendment:
Fig. 1 including reference numeral 42 not mentioned in the specification.
The following objection is withdrawn due to specification amendment:
Fig. 2 including reference numeral 41 not mentioned in the specification.
Amended [0028] recites “a phosphate-based insulating coating 41”.
Response to Remarks filed July 23, 2026
Haselkorn
Applicant's arguments filed July 23, 2026 have been fully considered but they are not persuasive.
The applicant argues Haselkorn is silent about the curing accelerator being sealed in a dried state in the insulating coating (p. 10 para. 2).
Haselkorn discloses a premix solution of vanadium pentoxide (V2O5), H3PO4, and Mg++ to produce the insulative coating (6:9-18) in which some of the vanadium pentoxide (V2O5) is in solution of the coating solution that is applied to the samples and cured (10:66 to 11:7) to form a coating appearance that is uniform, slightly glossy, and a definite green tint with especially good adherence (11:30-37). Some of the vanadium pentoxide (V2O5) being in solution indicates that some of the vanadium pentoxide (V2O5) is not in solution.
As evidenced by Sigma-Aldrich®, vanadium pentoxide (V2O5) is a powder. Therefore, in Haselkorn vanadium pentoxide (V2O5) powder is mixed in the coating solution that forms a coating. Further some of the vanadium pentoxide (V2O5) is in solution, and some is not (Haselkorn 10:66 to 11:7). This reads on the curing accelerator (vanadium pentoxide, V2O5), being sealed in a dried state in the insulating coating.
The curing accelerator being sealed in a dried state in the insulating coating results from dried (powder) curing accelerator being added to a treatment liquid for forming an insulating coating (applicant’s specification [0029]). The premix process of Haselkorn (6:9-18, 10:66 to 11:7, 30-37) is substantially similar to that disclosed by applicant, such that the curing accelerator (vanadium pentoxide, V2O5) of the prior art being sealed in a dried state in the insulating coating naturally flows.
For the above cited reasons, the rejection over Haselkorn is maintained.
Double Patenting
The applicant traverses the double patenting rejections and requests the rejections being held in abeyance until allowable subject matter is identified (p. 10 paras. 7-9).
The double patenting rejections are maintained.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Haselkorn (US 4,347,085) as evidenced by Sigma-Aldrich®(Product Specification V2O5.).
Regarding claim 7, Haselkorn discloses an electrical steel sheet (1:6-35, 10:32-39) comprising: as a chemical composition, in a unit of mass%,
2.5% to 3.9% of Si (4% maximum);
0.001% to 3.0% of Al (1.0% maximum); and
0.05% to 5.0% of Mn (0.02% to 0.4%),
the remainder comprising Fe and impurities (balance) (1:19-29), wherein
on one surface or both surfaces thereof, an insulating coating (2:53-59, 3:29-37, 4:46-52) containing a curing accelerator (vanadium pentoxide, V2O5) is formed (6:9-18, 10:66 to 11:37), and the curing accelerator (vanadium pentoxide, V2O5) is sealed in a dried state (powder, Sigma-Aldrich®) in the insulation coating (6:9-18, 10:66 to 11:7, 30-37).
Furthermore, the premix process of Haselkorn (6:9-18, 10:66 to 11:7, 30-37) is substantially similar to the process disclosed by applicant that results in the curing accelerator being sealed in a dried state in the insulating coating in which dried (powder) curing accelerator is added to a treatment liquid for forming an insulating coating (applicant’s specification [0029]). Therefore, the curing accelerator being sealed in a dried state in the insulating coating naturally flows from the disclosure of the prior art.
Regarding claim 8, Haselkorn discloses the curing accelerator contains an active component that accelerates anaerobic curing, selected from titanium, chromium, manganese, iron, cobalt, nickel, copper, zinc, silver, vanadium, molybdenum, ruthenium, and combinations thereof (vanadium pentoxide, V2O5) (6:9-18, 10:66 to 11:37).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,580,463 (US ’463; US App. No. 18/286,534) in view of Haselkorn (US 4,347,085).
US ‘463 recites an anaerobic curing adhesive accelerator (claims 1-4) with a substantially similar active component (claim 7) coated on a steel sheet (claims 5-6) .
US ‘463 is silent to an electric steel sheet that reads on the claimed composition.
Haselkorn discloses an electrical steel sheet (1:6-35, 10:32-39) with an overlapping composition (1:19-29) and an insulating coating (2:53-59, 3:29-37, 4:46-52, 6:9-18, 10:66 to 11:37).
It would have been obvious to one of ordinary skill in the art for the steel sheet of US ‘463 to be that disclosed by Haselkorn because an insulative coating improves magnetic characteristics (Haselkorn 1:6-17). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claims 7 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/014,352 (App ‘352) in view of Haselkorn (US 4,347,085).
App ‘532 recites an anaerobic curing adhesive accelerator (claims 1-5) with a substantially similar active component (claim 6) coated on a steel sheet (claims 1-4) .
App ‘532 is silent to an electric steel sheet that reads on the claimed composition.
Haselkorn discloses an electrical steel sheet (1:6-35, 10:32-39) with an overlapping composition (1:19-29) and an insulating coating (2:53-59, 3:29-37, 4:46-52, 6:9-18, 10:66 to 11:37).
It would have been obvious to one of ordinary skill in the art for the steel sheet of App ‘532 to be that disclosed by Haselkorn because an insulative coating improves magnetic characteristics (Haselkorn 1:6-17). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection.
Related Art
Zoch (DE 10 2008 039 326 machine translation)
Zoch discloses an electrically insulted electric sheet ([0001], [0037]) and a laminated magnetic core with the electrical steel ([0027], [0053]), where the electrically insulted electrical sheet comprises a metal sol-gel route based on at least one organosilane and optionally included at least one metal acetylacetonate ([0029], [0032]), such as zirconium tetraacetylacetonate ([0033]).
Shigekuni (JP H07-323260 machine translation)
Shigekuni discloses a pre-coated steel sheet that comes into contact with food ([0001], [0007]) with increased crosslinking density ([0008]) that includes vanadate to make the steel noble and suppress hydrogen dissolution into the steel ([0011]). In Shigekuni the vanadate ions in the coating ([0012]) are supplied by vanadium oxides, such as vanadium pentoxide ([0022]-[0023]) and improve adhesion with the paint film ([0014]).
Friese (US 6,096,842)
Friese discloses an aerobically curable adhesive including an accelerator (1:5-7) with a metal salt, such as Co2+, Fe2+, and Zr2+ ethyl hexanoate and naphthenate (5:66 to 6:16).
Somemiya (US 5,730,828)
Somemiya, cited in applicant’s 11/4/2024 IDS, discloses rapid adhesion of metallic components (1:6-8, 61-67, 3:9-11) using a coating material containing a curing accelerator for an anaerobic curing adhesive (2:47-56) including organometallic compounds such as copper naphthenate, copper octanoate, copper acetylacetonate, cobalt naphthenate, cobalt octanoate, cobalt acetylacetonate, nickel naphthenate, nickel octanoate, nickel acetylacetonate, manganese naphthenate, manganese octanoate, manganese acetylacetonate, vanadium napthenate, and vanadium acetylacetonate as a curing accelerator of an anaerobic curing adhesive (3:48 to 4:1).
Dai (CN 111064288 machine translation)
Dai discloses a low-iron-loss automotive engine stator core ([0002]) with a multi-layer structure from the inside out a silicon steel sheet body, a loss-reducing outer layer, and a protective paint layer ([0011]), where the silicon steel sheet body includes 1.8-2.2 wt% Si, 0.21-0.23 wt% Mn, and < 0.004 wt% Al ([0012]) and the protective paint layer is a compound impregnation varnish that includes curing agent ([0016]) including zinc naphthenate ([0017]).
Haraguchi (JP 4648765 machine translation)
Haraguchi, cited in applicant’s 10/12/2023 IDS, discloses manufacturing a thin metal plate laminated by applying an anaerobic adhesive to one side ([0006]-[0008]) in which the anaerobic adhesive includes a curing accelerator such as aluminum, nickel, cobalt, or the like ([0024]).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
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/STEPHANI HILL/Examiner, Art Unit 1735
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