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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election of Group A, claims 1-11 without traverse in the reply filed on 29 Jan. 2026 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 29 Jan. 2026.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-2 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hofkirchner et al. (WO 2024/052519 A1, priority 08 Sep. 2022, published 14 Mar. 2024, hereinafter Hofkirchner).
Regarding claims 1-2 and 10-11, Hofkirchner teaches multilayer forming device that joins two layers of sheet material to create a multilayer material sheet 26 (page 9, line 10 – page 10, line 2). The multilayer sheet is made from an upper electrical sheet coil material 30 and lower electrical sheet coil material 42 (page 10, lines 11-15). The electrical sheets are electrical steel (page 2, line 16). An adhesive 62A is applied to the top surface of the multilayer material sheet 26 while activator 68A is applied to the bottom surface of the multilayer material sheet 26 or the activator can be applied to the top surface and the adhesive to the bottom surface (page 13, lines 13-18 and 31-34, and page 13, line 35 to page 14, line 2). Next, a rotor lamination assembly is made of several dozen individually stamped (cut) lamination plates with adhesive located between each layer (page 13, lines 18-23). The adhesive is a urethane acrylate type of adhesive (page 2, lines 31-32); that is, the adhesive is an acrylic adhesive comprising polyurethane acrylate. Hofkirchner teaches that the adhesive can be applied in a dot-bonding approach in which adhesive is only applied to select areas (plurality of doses), and the activator is applied in a similar pattern (plurality of doses) (page 5, lines 18-37). Hofkirchner teaches his laminated metal sheets are used to a lamination stack for rotors and stator cores of an electric motor (page 1, lines 9-11 and page 2, lines 10-12).
In light of the overlap between the claimed method of manufacturing a component of an electric motor and that disclosed by Hofkirchner, it would have been obvious to one of ordinary skill in the art to use a method of manufacturing a component of an electric motor that is both disclosed by Hofkirchner and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hofkirchner et al. (WO 2024/052519 A1, priority 08 Sep. 2022, published 14 Mar. 2024, hereinafter Hofkirchner) in view of Taguchi et al. (US Patent 5,328,947, published 12 Jul. 1994, hereinafter Taguchi).
Regarding claims 7-8, Hofkirchner teaches the elements of claim 1, and Hofkirchner teaches his adhesive is a urethane acrylate type of adhesive (page 2, lines 31-32).
Hofkirchner does not disclose inclusion of a butadiene rubber toughener.
Taguchi teaches a two-part adhesive with excellent adhesion to metal comprising a urethane prepolymer having (meth)acryloyloxy groups (polyurethane methacrylate) and a nitrile-butadiene rubber (butadiene rubber toughener) (Abstract, col. 2, lines 5-8, col. 3, lines 22-23, and col. 5, lines 22-27). Taguchi teaches compositions with 16 wt.% of an acrylonitrile-butadiene rubber (Table 1, Example 1 and Table 2, Examples 2-5).
Given that Hofkirchner and Taguchi are drawn to using two-part acrylic-based adhesives to bond to metals, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the two-part acrylic-based adhesive as taught by Taguchi as the two-part adhesive in the method of producing multilayer material for forming electric motor components as taught by Hofkirchner. Since Hofkirchner and Taguchi are both drawn to using two-part acrylic-based adhesives to bond to metals, one of ordinary skill in the art would have a reasonable expectation of success in using the two-part acrylic-based adhesive as taught by Taguchi as the two-part adhesive in the method of producing multilayer material for forming electric motor components as taught by Hofkirchner. Further, Taguchi teaches that his adhesive has particularly excellent adhesion to metals (col. 2, lines 5-8).
Regarding claim 9, Hofkirchner in view of Taguchi teaches the elements of claim 8.
As presented above, Taguchi teaches adhesive compositions in which the amount of butadiene rubber is 16 wt.%, whereas claim 9 requires the amount of butadiene rubber is “about 20 percent by weight.” It is apparent, however, that the instantly claimed amount of butadiene rubber and that taught by Taguchi are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
Claims 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hofkirchner et al. (WO 2024/052519 A1, priority 08 Sep. 2022, published 14 Mar. 2024, hereinafter Hofkirchner) in view of Takeda al. (US Patent Application 2022/0052570 A1, published 17 Feb. 2022, hereinafter Takeda).
Regarding claims 3-9, Hofkirchner teaches the elements of claim 1, and Hofkirchner teaches his adhesive is a urethane acrylate type of adhesive (page 2, lines 31-32).
Hofkirchner does not disclose inclusion of a butadiene rubber toughener.
Takeda teaches an adhesively laminated core for stator, in which the adhesive is a two-agent type acrylic-based adhesive in which the oxidizer and a portion of the acrylic-base compound are assigned to the first agent and the remaining portion of the acrylic-based compound and the reducer are assigned to the second agent, and the adhesive parts are partially provided between electrical steel sheets adjacent to each other in the stacking direction (Abstract). Takeda teaches the acrylic-based compound is a urethane acrylate (paragraph 0080), the amount of this urethane acrylate (polyurethane methacrylate) in his adhesive is 20-70 mass% (paragraph 0083), and his acrylic-based adhesive further includes 1 to 20 mass% of an acrylonitrile-butadiene rubber (paragraph 0015).
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of urethane acrylate and acrylonitrile-butadiene rubber from the overlapping portions of the ranges taught by Takeda because overlapping ranges have been held to be prima facie obviousness.
Given that Hofkirchner and Takeda are drawn to two-part acrylic-based adhesives for forming adhesively-laminated cores for stators, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the two-part acrylic-based adhesive as taught by Takeda as the two-part adhesive in the method of producing multilayer material for forming electric motor components as taught by Hofkirchner. Since Hofkirchner and Takeda are both drawn to using two-part acrylic-based adhesives for forming adhesively-laminated cores for stators, one of ordinary skill in the art would have a reasonable expectation of success in using the two-part acrylic-based adhesive as taught by Takeda as the two-part adhesive in the method of producing multilayer material for forming electric motor components as taught by Hofkirchner. Further, Takeda teaches since curing of his two-part acrylic-based adhesive quickly proceeds at room temperature, when the adhesion parts are formed, there is no need to perform heating treatment in the case of a thermosetting adhesive, and curing treatment such as long-time retention at the time of natural curing, and thus the stator core can be manufactured with excellent productivity (paragraph 0058).
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hofkirchner et al. (WO 2024/052519 A1, priority 08 Sep. 2022, published 14 Mar. 2024, hereinafter Hofkirchner) in view of Bachmann et al. (US Patent 5,385,958, published 31 Jan. 1995, hereinafter Bachmann).
Regarding claims 3-9, Hofkirchner teaches the elements of claim 1, and Hofkirchner teaches his adhesive is a urethane acrylate type of adhesive (page 2, lines 31-32).
Hofkirchner does not disclose inclusion of a butadiene rubber toughener.
Bachmann teaches a two-part composition suitable for an adhesive for motor parts (Abstract, claim 2, and col. 7, lines 12-15). Bachmann teaches embodiments of his adhesive in which one part of the adhesive compositions comprise 20 parts polyurethane-acrylate oligomer (col. 3, lines 3-6), 40 parts polyurethane-acrylate oligomer (col. 4, lines 26-29), 50-55 parts polyurethane acrylate resin (col. 6, lines 27-31), 45-55 parts polyurethane methacrylate resin (col. 6, lines 40-43), 35-40 parts polyurethane methacrylate resin (col. 6, lines 51-55).
Therefore, it is the examiner’s position that one of ordinary skill in the art would formulate one part of a two-part adhesive with 20 to 55 parts of polyurethane methacrylate resin based on the examples taught by Bachmann.
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of polyurethane methacrylate from the overlapping portions of the range taught by Bachmann because overlapping ranges have been held to be prima facie obviousness.
Given that Hofkirchner and Bachmann are drawn to two-part acrylic-based adhesives for adhering motor parts, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the two-part acrylic-based adhesive as taught by Bachmann as the two-part adhesive in the method of producing multilayer material for forming electric motor components as taught by Hofkirchner. Since Hofkirchner and Bachmann are both drawn to using two-part acrylic-based adhesives for adhering motor parts, one of ordinary skill in the art would have a reasonable expectation of success in using the two-part acrylic-based adhesive as taught by Bachmann as the two-part adhesive in the method of producing multilayer material for forming electric motor components as taught by Hofkirchner. Further, Bachmann teaches his adhesive was able to withstand a shear force in excess of 1,720 kilograms before rupture of the bond occurred (col. 7, lines 20-24), and his adhesive affords improved economics over other adhesives and ameliorates the problems and disadvantages stemming from the presence of inert solvents (col. 1, lines 42-50).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bursy et al. (US Patent Application 2022/0051838 A1, published 17 Feb. 2022) teaches a sheet metal that is coated with adhesive on the top and bottom surfaces then coated with an activator on the top and bottom surfaces (Abstract), after which the strips are then cut into parts, which are stacked on each other to form a lamination stack (paragraph 0010). Premoli et al. (US Patent Application 2023/0396136 A1, published 07 Dec. 2023) teaches a method comprising feeding a continuous metal laminate through a feeding unit (Abstract and paragraph 0057), applying adhesive to one side and activator to the other side of the metal (paragraphs 0058-0059), and followed by cutting and packing the laminations (paragraphs 0034 and 0061). Doi et al. (US Patent 4,548,992, published 22 Oct. 1985) teaches a two-part adhesive comprising urethane polymethacrylate and 2-50 wt.% butadiene elastomer (Abstract, col. 3, lines 35-49, and col. 4, lines 17-25). Schuemann et al. (US Patent Application 2016/0264823 A1, published 15 Sep. 2016) teaches a reactive 2-component adhesive system comprising a polyurethane and several methacrylates (Abstract and paragraphs 0119 and 0123). Schwantes et al. (US Patent Application 2006/0240257 A1, published 26 Oct. 2006) teaches an adhesive contained in a carrier, and the adhesive comprises polyurethane poly(meth)acrylates (Abstract and paragraph 0057).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787