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 .
Specification
The disclosure is objected to because of the following informalities: Tables 1 and 2 contain text that is not legible.
Appropriate correction is required.
Claim Objections
Claim 29 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claim has not been further treated on the merits.
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.
Claims 1-28 are 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. Claim 1 recites, “An insulating coating, comprising the following components: a water-soluble metal inorganic salt A comprising a water-soluble phosphate A1, wherein the water-soluble phosphate A1 includes a water-soluble phosphate of at least one of aluminum, zinc, magnesium and manganese; a water dispersible organic emulsion B comprising at least one of an epoxy emulsion and a curing agent thereof…and an ethylene-vinyl acetate copolymer; an additive C comprising at least one of a structure reinforcing additive C1 and a heat-resistance reinforcing additive C2, wherein the structure reinforcing additive C1 comprises inorganic nanoparticles, and wherein the heat-resistance reinforcing additive C2 is selected from at least one of boric acid and water-soluble salts of molybdenum, tungsten, vanadium or titanium; an auxiliary agent D1; and a solvent D2; wherein the solid content ratio of the water-soluble metal inorganic salt A to the water dispersible organic emulsion B is (35-85) : (15-65) in part by mass” (emphasis added), however, given that the water-soluble metal inorganic salt A is not limited to the recited water-soluble metal phosphates nor defined to clearly differentiate the “water-soluble metal inorganic salt A” from the “water-soluble salts of molybdenum, tungsten, vanadium or titanium”, i.e., water-soluble metal salts, as additive C2, or from the more generic “auxiliary agent D1” which as broadly claimed may be any material including a water-soluble metal inorganic salt as in A or C2, or inorganic nanoparticles similar to additive C1 or other type of “additive C” such that several of the claimed components are so broadly defined that they may read upon one another thereby rendering the claim(s) indefinite, particularly with respect to the content ratios/ranges given that a single material may be attributed to more than one of the claimed components resulting in ambiguity with respect to the claimed content ratios and/or ranges. For example, if a composition contains only 34 parts by mass of water-soluble aluminum phosphate as a water-soluble metal inorganic salt A to 66 parts by mass of a water dispersible organic emulsion, e.g., lower than the solid content ratio of 35:65, but further comprises 5 parts by mass of sodium tungstate which is a water-soluble metal inorganic salt of tungsten and thus both a “water-soluble metal inorganic salt A” and a water-soluble salt of tungsten as in the “heat-resistance reinforcing additive C2”, the composition would satisfy the claimed solid content ratio of (35-85) : (15-65) if some or all of the 5 parts by mass of sodium tungstate was attributed to the water-soluble metal inorganic salt A which is not limited to just water-soluble phosphate A1. Similarly, if a composition contained more than 10% by mass of water-soluble metal inorganic salts based on molybdenum, tungsten, vanadium and/or titanium as component C2, relative to a total mass of water-dispersible organic emulsion B and water-soluble phosphate A1 as a water-soluble metal inorganic salt A, could the excess salt be attributed to component A, or if a total mass of A1 is already at an upper limit of the ratio of A:B of 85:15, could the excess salt then be attributed to the broadly recited “auxiliary agent D1” such that the composition would meet the content ratio of A:B as in claim 1 as well as 0.1% to 10% range for “additive C” as recited in claim 18? Further, given that component A is not limited to just A1 or the recited water-soluble phosphates and that component B is not limited to the recited emulsion resins, it is unclear whether “the solid content ratio” of A to B as recited in claims 1 and 2 is meant to refer to the total mass of all water-soluble metal inorganic salts and all water dispersible organic emulsion present in the coating or to a total mass of only those as recited or to any one or more thereof. The same would be the case for any of the content ranges recited in the claims for a particular component, e.g., “additive C”, wherein there is a lack of clarity as to what is meant to be fully encompassed by said component. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 2-28 do not remedy the above and hence are indefinite for the same reasons.
Claim 4 is (further) 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. Claim 4 recites, “wherein the water-soluble silicate A2 has a modulus of less than 4” on lines 1-2, and although the specification as filed recites, “Herein, ‘modulus’ refers to a ratio of moles” (see page 13, line 3), it is unclear as to what “ratio of moles” of the water-soluble silicate A1 is required to be “less than 4” in instant claim 4. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claims 13, 14, 16, 18, 19, and 28 are (further) 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. Regarding claims 13, 14, 16, 18, 19, and 28, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase and/or the narrower range(s) following the broader range(s) are part of the claimed invention, or merely exemplary and therefore not required. See MPEP § 2173.05(d). Further, with respect to claim 19, it is noted that the claim recites, “The insulating coating of claim 1,wherein aggregates of the inorganic nanoparticles have an average particle diameter in the range of 50 nm to 800 nm, preferably 80 nm to 500 nm,” however, given that claim 19, nor claim 1 from which claim 19 depends, recites that the insulating coating comprises aggregates of the inorganic nanoparticles, it is unclear whether the “aggregates” are meant to be part of the claimed insulating coating or whether the limitation is merely directed to the ability of the nanoparticles to form aggregates having an average diameter in said range or directed to a precursor material prior to breaking up and blending the aggregated nanoparticles into the coating composition, etc. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 17 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. The term “high molecular weight” in claim 17 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Hence, it is unclear as to how high the molecular weight needs to be or how low the molecular weight could be in order to meet the claimed “high molecular weight” limitation. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.)
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 6-12, 14-15, 17, 19, 22-25, and 27-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Loudermilk (USPN 5,955,201). Loudermilk discloses an inorganic/organic insulating coating for nonoriented electrical (silicon) steel (Abstract) having a coating thickness of at least 0.5 µm (as in instant claims 27-28), preferably at least 2 µm and not more than 8 µm (Col. 8, lines 55-64; Claim 3) comprising, based upon 100 parts by dry weight, 20-60 parts of aluminum phosphate, 20-70 parts of at least one inorganic particulate silicate, and 10-25 parts of an acrylic resin; wherein the coating is formed from an acid aqueous suspension that may include up to 1 part by weight of a water-soluble organic solvent per each part of the resin (Abstract). Loudermilk discloses that the ratio of mono aluminum phosphate to the acrylic resin, on a dry basis, preferably is at least 1.5:1 and more preferably 2.0:1 (Col. 6, lines 26-28), with working examples utilizing a content ratio of aluminum phosphate (as the claimed water-soluble metal inorganic salt A, particularly water-soluble phosphate A1 of aluminum as in instant claims 1 and 7, and only A1, 100%, as in instant claims 6 and 8) to the acidic acrylic resin latex as the claimed water dispersible organic emulsion B comprising polyacrylate, particularly anionic as in instant claim 17, falling within the claimed (35-85) : (15-65) ratio of instant claim 1 as well as the claimed (40-75) : (25-60) ratio of instant claim 2. Loudermilk discloses that it is desirable to include the water-soluble organic solvent in the aqueous suspension to prevent formation of coating streaks, wherein suitable solvents include glycol ethers or various alcohols (Col. 7, line 57-Col. 8, line 3) with a working example (Example 5) specifically utilizing a combination of ethylene glycol monobutyl ether (e.g., a solvent that also functions as a surfactant/wetting agent) with isopropyl alcohol and water, reading upon the claimed auxiliary agent D1 and/or solvent D2 of instant claim 1, particularly as in instant claims 24 and 25. Loudermilk discloses that the inorganic particulate silicate has an average particle size or equivalent spherical diameter of 0.3-60 µm (Col. 6, lines 28-30), with working examples (Examples 1-5) utilizing hydrous aluminum silicate having an average particle size of 0.4 µm, i.e., 400 nm (reading upon the instantly claimed structure reinforcing additive C1 comprising inorganic nanoparticles as in instant claim 1) in combination with the aluminum phosphate and acrylic resin in a content ratio as instantly claimed, with larger inorganic particulate of aluminum potassium silicate (also reading upon the broadly claimed auxiliary agent D1) as well as ethylene glycol monobutyl ether, isopropyl alcohol, and water (Example 5) in contents as in instant claim 23, to provide a coating on an electrical steel substrate having a coating thickness from 1.8 to 2.9 µm per side (as in instant claims 27-28; Examples). Hence, Loudermilk clearly discloses an insulating coating and coated electrical/silicon steel plate comprising aluminum phosphate as the only claimed component A1 and only claimed component A, a water dispersible acrylic resin as the claimed water dispersible organic emulsion B comprising a polyacrylate, aluminum silicate inorganic particulate as the claimed additive C1 comprising inorganic nanoparticles, aluminum potassium silicate as the broadly claimed auxiliary agent D1, ethylene glycol monobutyl ether and isopropyl alcohol also as the claimed auxiliary agent D1 and/or as the claimed solvent D2, and water that may or may not read upon the broadly claimed solvent D2, in contents as instantly claimed such that Loudermilk anticipates instant claims 1-2, 6-8, 17, 23-25 and 27-28.
With respect to instant claims 9-10, Loudermilk discloses that the acrylic resin has a particle size of less than 1 µm (Abstract), preferably less than 0.5 µm (Col. 7, lines 15-33), wherein Loudermilk discusses that a disadvantage of a coating having a resin with a particle size greater than 2 µm is that the resin particles may detach from the steel surface during processing resulting in excessive powdering and powdered coating build-up (Column 2, lines 56-60); and given that Loudermilk specifically discloses examples wherein the acrylic resin particles have an average particle diameter of 0.15 µm, the Examiner takes the position that Loudermilk discloses the clamed particle size ranges as instantly claimed with sufficient specificity to anticipate instant claims 9-10, particularly given that the claims do not clearly specify how said D50 and D90 are determined.
With respect to instant claims 11-12 and 14, given that these claims merely further limit an alternative water dispersible organic emulsion as the claimed “water dispersible organic emulsion B comprising at least one” of said emulsions as recited in instant claim 1, from which these claims depend, without positively reciting that the water dispersible organic emulsion B comprises said “epoxy emulsion and a curing agent thereof” (e.g., as in instant claim 13), the Examiner takes the position that the insulating coating disclosed by Loudermilk comprising the acrylic resin latex reading upon the claimed water dispersible organic emulsion comprising a polyacrylate, as discussed in detail above, would also anticipate instant claims 11-12 and 14.
With respect to instant claim 15, given that the ethylene-vinyl acetate may account for 0% of the solid content of the water dispersible organic emulsion B as instantly claimed, and thus is not a required component of the claimed insulating coating, the Examiner takes the position that the invention disclosed by Loudermilk comprising 0% of ethylene vinyl acetate copolymer anticipates instant claim 15.
With respect to instant claim 19, given the lack of clarity thereof as discussed above and that an aggregate of two of the inorganic particulate silicate having an average diameter of 0.3-60 µm as disclosed by Loudermilk, particularly an aggregate of two of the hydrous aluminum silicate particles having an average particle size of 400 nm as in examples as discussed above, would fall within the claimed range of 50 nm to 800 nm for “aggregates of the inorganic nanoparticles”, the Examiner takes the position that Loudermilk anticipates instant claim 19.
With respect to instant claim 22, given that the insulating coating of instant claim 1 from which instant claim 22 depends, does not require the heat-resistant reinforcing additive C2 to be present in the insulating coating given that the claimed additive C only needs to require “at least one of” C1 and C2, the Examiner takes the position that the insulating coating disclosed by Loudermilk comprising an additive reading upon the claimed “structure reinforcing additive C1” as “at least one” additive C would also anticipate instant claim 22.
Claims 1-2, 6-8, 11-12, 14-15, 17-18, 20-24, and 27-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cao (CN110885571A, please refer to the attached machine translation for the below cited sections). Cao discloses an insulating coating for a non-oriented silicon steel plate and a coated silicon steel plate formed by applying the coating on a surface of the steel plate to a thickness of 0.3-1 µm (as in instant claims 27-28; Paragraphs 0026-0028), wherein the coating comprises inorganic components, an epoxy acrylate composite emulsion, a silane polymer, a polyol, and a defoamer in a mass ratio of (6-22):1:(0.1-1.0):(0.1-1.0):(0.01-0.05), inorganic components:epoxy acrylate emulsion:silane polymer:polyol:defoamer (Paragraphs 0002, 0004, 0011-0012, and 0032). Cao discloses that the inorganic components include, by mass, 15-30 parts silica sol, 14-28 parts aluminum dihydrogen phosphate (i.e., a water-soluble metal inorganic salt A, particularly a water-soluble phosphate A1, and more particularly a water-soluble phosphate of aluminum as in instant claims 1 and 7-8), 10-20 parts chromium dihydrogen phosphate (also reading upon a water-soluble metal inorganic salt A and water-soluble phosphate A1 or may be considered “an additive C” in general and/or “an auxiliary agent D1” in general), 0.1-0.8 parts boric acid (reading upon the claimed “heat-resistance reinforcing additive C2” that “is selected from at least one of boric acid” as in instant claim 1, and particularly as in instant claim 22), and 40-100 parts water (i.e., a solvent; Paragraph 0012).
Cao discloses that the epoxy acrylate composite emulsion comprises epoxy/acrylate core/shell particles produced from a mixture of acrylate monomers, acrylic acid, and hydroxyethyl acrylamide in the presence of deionized water, a composite emulsifier including an anionic emulsifier, and glycidyl methacrylate such that the resulting core/shell structure includes a core containing epoxy groups and a shell of the acrylic resin, including hydrophilic carboxyl groups as well as the amide groups of the hydroxyethyl acrylamide, physically coating the core epoxy resin such that when a crosslinking reaction occurs, the acrylic resin exhibits high gloss and excellent corrosion resistance while the epoxy resin exhibits excellent adhesion (Paragraphs 0036 and 0044-0048), thus reading upon the claimed water dispersible organic emulsion B, particularly an emulsion of “a polyacrylate” as in instant claim 1 and “an anionic water dispersion emulsion with high molecular weight” as in instant claim 17, and/or particularly “an epoxy emulsion and a curing agent thereof” given that the epoxy resin core reacts/crosslinks with hydroxyl and/or amine groups of the resin shell (e.g. “amino resin as in instant claim 11). Cao discloses that the polyol is ethylene glycol or glycerol (Paragraph 0022, reading upon the claimed auxiliary agent D1 and/or the claimed solvent D2); the defoamer is one or more of polyoxyethylene polyoxypropylene pentaerythritol ether, polyoxyethylene polyoxypropylene alcohol ether, polyoxypropylene glycerol ether, polyoxypropylene polyoxyethylene glycerol ether, and polydimethylsiloxane (Paragraph 0023, also reading upon the claimed auxiliary agent D1, particularly as in instant claim 24, and/or solvent D2, and/or more broadly “an additive C” in general). Cao also discloses that the silane polymer is formed by polymerizing γ-methacryloxy-propyltrimethoxysilane and 3-glycidoxypropyltrimethoxysilane, with or without N-(β-aminoethyl)-α-aminopropyl trimethoxysilane, and then adding 0.1% to 0.5% nano-SiO2 particles to the silane polymer to form a sol-gel system (Paragraph 0021), such that the nano-SiO2 particles read upon the claimed structure reinforcing additive C1 that comprises inorganic nanoparticles as in instant claim 1, particularly as in instant claims 20-21.
Hence, Cao discloses an insulating coating and a coated silicon steel plate comprising a coating formed from the insulating coating on its surface, wherein the insulating coating comprises components as recited in instant claims 1, 7, 11, 17, 20-22, and 24, and given the working examples disclosed by Cao as summarized in Tables 1-2 and 4, with Table 1 summarizing the overall composition with respect to the contents by mass of the inorganic components, the silane polymer, the polyol, and the defoamer, respectively, per 1 gram or part by mass of the epoxy acrylate resin; Table 2 summarizing the inorganic component composition with respect to the contents by mass of the silica sol, aluminum dihydrogen phosphate, chromium dihydrogen phosphate, boric acid, and water, respectively; and Table 4 summarizing properties of the coating including thickness in the last column, wherein at least one example contains a solid content ratio of the aluminum dihydrogen phosphate taken alone or with the chromium dihydrogen phosphate as component A or A1 to the water dispersible epoxy acrylate emulsion as component B falling within the claimed (35-85) : (15-65) ratio in parts by mass as recited in instant claim 1, and more particularly within the claimed (40-75) : (25-60) ratio of instant claim 2, as well as contents of the components reading upon the claimed contents as recited in instant claims 6, 8, 18, and 23 (particularly given the lack of clarity thereof as discussed in detail above), Cao anticipates instant claims 1-2, 6-8, 11, 17-18, 20-24, and 27-28.
Additionally, with respect to instant claim 11 as well as instant claims 12 and 14, given that the epoxy acrylate core shell emulsion disclosed by Cao may be equated to the at least one emulsion comprising “a polyacrylate” and not the “epoxy emulsion and a curing agent thereof”, wherein claims 11, 12, and 14 merely further limit the alternative epoxy emulsion without positively reciting that the water dispersible organic emulsion B actually comprises an epoxy emulsion and a curing agent thereof, the Examiner takes the position that the insulating coating disclosed by Cao comprising the epoxy acrylate emulsion as the claimed water dispersible organic emulsion comprising a polyacrylate, as discussed in detail above, would also anticipate instant claims 11-12 and 14.
With respect to instant claim 15, given that the ethylene-vinyl acetate may account for 0% of the solid content of the water dispersible organic emulsion B as instantly claimed, and thus is not a required component of the claimed insulating coating, the Examiner takes the position that the invention disclosed by Cao comprising 0% of ethylene vinyl acetate copolymer anticipates instant claim 15.
Claims 1-2, 6-8, 11-12, 14-15, 17-18, 20-22, 24, and 26-28 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Takeda (WO2023/145800A1, please refer to EP4471178A1 as an English translation of the WO document for the below cited sections).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Takeda discloses a non-oriented electromagnetic steel sheet (1) comprising a base metal steel sheet (10) containing Si, Al, and Mn as basic elements (reading upon the claimed “silicon steel plate” of instant claim 27; Paragraph 0027); and an insulating coating film (20) on the surface of the base metal steel sheet (10) (as in instant claim 27), wherein the “insulating coating film (20) contains a metal phosphate (201), and 5 to 35 parts by mass of an organic resin (202) per 100 parts by mass of the metal phosphate (201)”, and the “organic resin (202) contains 5 parts by mass or more of an amino resin per 100 parts by mass of the metal phosphate (201)” (Abstract). Takeda discloses that the content of organic resin (202) includes the total content of amino resins, and acrylic resins, polyester resins, and other resins (Paragraph 0045), wherein preferably, the organic resin (202) further contains one or more types selected from an acrylic resin and a polyester resin, the content thereof is preferably 1 part by mass or more to 25 parts by mass or less per 100 parts by mass of the metal phosphate (Paragraphs 0049-0053); with a particularly preferred other resin being an epoxy resin given its excellent insulation properties and corrosion resistance, wherein the content of the other resin(s) is 0 to 10 parts by mass per 100 parts by mass of the metal phosphate (Paragraphs 0054-0056).
Takeda discloses that in addition to the metal phosphate (201) and the organic resin (202), the insulating coating film (20) may contain other components, for example, a water-soluble organic compound(s) such as one or more selected from the group consisting of a surfactant, an emulsifier, a defoamer, and a leveling agent (reading upon the claimed “auxiliary agent D1” of instant claim 1 and particularly as in instant claim 24), in a content of the other components of 5.0 parts by mass or less per 100 parts by mass of the metal phosphate (201) (Paragraph 0062). Takeda discloses that the content of boric acid (as the claimed additive C2) in the insulating coating film (201) is less than 1 part by mass per 100 parts by mass of the metal phosphate (201), and similarly, the content of colloidal silica (as the claimed additive C1 comprising inorganic nanoparticles) in the insulating coating film (20) is less than 1 part by mass per 100 parts by mass of the metal phosphate (201), wherein an excessive content of boric acid or colloidal silica may impair the adhesion and corrosion resistance of the insulating coating film (20) (Paragraph 0063).
Takeda discloses that the insulating coating film (20) may be formed from a surface treatment agent, particularly an aqueous insulation coating solution, containing the metal phosphate, organic resin, and other components in the same contents or ratios as above (Paragraphs 0035 and 0071); wherein in preparing a metal phosphate solution, it is preferable to mix at least one of an oxide, a carbonate, and a hydroxide of the metal ions with various phosphoric acids (Paragraph 0070), with preferred metal phosphates being Zn phosphate, Mn phosphate, Al phosphate, and Mo phosphate (reading upon the claimed “water-soluble metal inorganic salt A” and “water-soluble phosphate A1” as in instant claim 1, with the first three phosphates specifically reading upon the claimed “water-soluble phosphate A1 includes a water-soluble phosphate of at least one of aluminum, zinc, magnesium and manganese” and the last one or Mo phosphate reading upon the claimed “an additive C comprising at least one of a structure reinforcing additive C1 and a heat-resistance reinforcing additive C2…wherein the heat-resistance reinforcing additive C2 is selected from at least one of boric acid and water-soluble salts of molybdenum” as recited in instant claim 1; Paragraphs 0035-0037). Takeda specifically discloses working examples comprising aqueous treatment solutions formed from an aqueous solution containing 50 mass% of the resins (A) to (J) as recited in Paragraphs 0081-0082 using an emulsifier (i.e., “a water dispersible organic emulsion”), and then mixing the aqueous solution of the resins with a 30 mass% metal phosphate solution to prepare the composition of each test number in Table 1, wherein each composition includes a viscosity modifier (reading upon the claimed “auxiliary agent D1”), an antioxidant (also reading upon the claimed “auxiliary agent D1”), and a solvent selected from ethyl alcohol, isopropyl alcohol, or ethylene glycol monobutyl ether (reading upon the claimed “solvent D2” with or without the water as a solvent, with at least the latter also reading upon the claimed “auxiliary agent D1” as in instant claim 1 and particularly as in instant claim 24), in a content of 5% or less relative to the total mass of the obtained aqueous solutions to obtain a 30% by mass aqueous solution (reading upon the claimed solids content as in instant claim 26); with various examples reading upon the claimed insulating coating comprising a water-soluble metal inorganic salt A comprising a water-soluble phosphate A1, wherein the water-soluble phosphate A1 includes a water-soluble phosphate of aluminum (as in instant claims 1 and 7-8); a “water dispersible organic emulsion B comprising at least one of an epoxy emulsion and a curing agent thereof, a polyester…a polyacrylate” as in instant claim 1, in a content ratio of the aluminum phosphate as the claimed water-soluble metal inorganic salt A to the total content of the water dispersible organic emulsion B falling within the claimed ratio range as recited in instant claims 1 and 2; with at least one of said examples further comprising Mo phosphate as the claimed C2 (Test No. 4 containing 20 parts of emulsion resin to 90 parts of Al phosphate, on a solids basis, as the only A1 phosphate or inorganic salt A given that the Mo phosphate can be attributed to C2, reading upon instant claims 6-8), boric acid as the claimed C2 of instant claims 1 and 22 (Test No. 16, containing 20 parts of emulsion resin to 100 parts of Al phosphate as the only water-soluble metal inorganic salt A and water-soluble phosphate A1 as in instant claims 6-8), or colloidal silica as the claimed C1 of instant claims 1 and 20-21 (Test No. 17, containing 25 parts emulsion resin to 100 parts of Al phosphate as the only A and A1 as in instant claims 6-8), each of which falls within the claimed content ratio of A to B as recited in instant claim 1. Hence, Takeda discloses an insulating coating and coated silicon steel plate comprising the insulating coating on a surface thereof, wherein the insulating coating contains components as instantly claimed such that Takeda anticipates instant claims 1, 6-8, 20-22, 24, and 26-27.
With respect to instant claim 2, given that as discussed in detail above, Takeda discloses that the organic resin emulsion may be present in a content of 35 parts per 100 parts of the metal phosphate, i.e., a ratio of A to B as in instant claims 1-2 of about 74:26 falling within the content ratio range recited in instant claim 2, with inventive examples utilizing contents of the organic resin emulsion closer to the upper limit of 35 parts per 100 parts, particularly an example at 30 parts for about 77:23, the Examiner takes the position that Takeda discloses the claimed invention with sufficient specificity to anticipate instant claim 2.
With respect to instant claims 11, 12, and 14, given again that the claims do not positively recite that the water dispersible organic emulsion contains the epoxy emulsion and the curing agent, the Examiner takes the position that Takeda, particularly in light of the working examples as noted above, anticipates instant claims 11, 12, and 14.
With respect to instant claim 15, given that the ethylene-vinyl acetate may account for 0% of the solid content of the water dispersible organic emulsion B as instantly claimed, and thus is not a required component of the claimed insulating coating, the Examiner takes the position that the invention disclosed by Takeda comprising 0% of ethylene vinyl acetate copolymer anticipates instant claim 15.
With respect to instant claim 17, given that Test No. 4 of Takeda utilizes a polyester emulsion and that instant claim 17 does not positively recite that the water dispersible emulsion is a polyurethane and/or a polyacrylate, both of which are alternatives to the polyester emulsion specifically disclosed by Takeda in Test No. 4, the Examiner takes the position that Takeda anticipates instant claim 17. Additionally or alternatively, given the acrylic resins (F) and (G) disclosed by Takeda in the examples, each of which comprises polymer obtained by copolymerizing (meth)acrylic acid monomers, the Examiner takes the position that said acrylic resin emulsion would read upon the claimed “polyacrylate is an anionic water dispersible emulsion with high molecular weight” as recited in instant claim 17 such that Takeda further anticipates instant claim 17.
With respect to instant claim 18, it is noted that Test No. 4 containing 10 parts of Mo phosphate as C2 to 110 parts of the total of Al phosphate as A1/A and polyester emulsion as the claimed B falls within the claimed content range, while Test No. 16 containing 2 parts of boric acid as the claimed C2 to 120 parts of Al phosphate and acrylic resin emulsion as A and B, respectively, also falls within the claimed content range, particularly the “preferably 0.5% to 5%” range. Hence, Takeda anticipates instant claim 18.
With respect to instant claim 28, Takeda discloses that the thickness of the insulating coating film (20) is not particularly limited, with a preferred thickness being 0.2 to 1.6 µm, (Paragraph 0065), substantially overlapping the claimed 0.3 µm to 2 µm; and given that Takeda discloses that the examples are coated such that the amount applied was 0.8 g/m2 (Paragraph 0084), the Examiner takes the position that Takeda discloses the claimed invention with sufficient specificity to anticipate instant claim 28.
Claims 1-2, 6-8, 11-15, 17-18, and 20-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN101486866A, on IDS dated 5/14/2024, please refer to the attached machine translation for the below cited sections). Zhang discloses a chromium-free water-based insulating coating for silicon steel sheets, wherein the insulating coating comprises, on a solids basis, 100 parts of organic resin, 100-400 parts of inorganic matter, 0-30 parts of curing agent, and 1-20 parts of other additives, with the remainder being water (reading upon the claimed “solvent D2”) resulting in a solid content of 30-50% (Paragraphs 0002 and 0012). Zhang discloses that the organic resin can be one or a mixture of a polyacrylic acid resin or copolymers of acrylates with other olefin monomers, or epoxy resins (Paragraph 0012), in the form of aqueous emulsions or solutions through conventional emulsion polymerization methods or by first obtaining the resin through bulk or solution polymerization and then emulsifying or self-emulsifying, or dispersing or dissolving in water (Paragraph 0014, reading upon the claimed “water dispersible organic emulsion B comprising at least one of an epoxy emulsion and a curing agent thereof, a polyester, a polyurethane, a polyacrylate and an ethylene-vinyl acetate copolymer” as in instant claim 1). Zhang discloses that the inorganic matter can be mainly composed of water-soluble phosphates, including one or a mixture of aluminum dihydrogen phosphate, magnesium dihydrogen phosphate, zinc dihydrogen phosphate, etc. (reading upon the claimed “water-soluble metal inorganic salt A comprising a water-soluble phosphate A1, wherein the water-soluble phosphate A1 includes a water-soluble phosphate of at least one of aluminum, zinc, magnesium and manganese” as in instant claim 1); wherein appropriate amounts of water-insoluble inorganic matter, such as oxides or hydroxides of aluminum, magnesium, or zinc, etc.; or borates, etc., in the form of ultra-finely treated particles having a particle size D90 of less than 1.5 µm (i.e., D90 less than 1500 nm) can also be added in an amount of 10% to 30% of the total inorganic matter, wherein these water-insoluble inorganic substances can increase rust resistance and corrosion inhibition of silicon steel sheets (Paragraphs 0012 and 0017, thus reading upon the claimed “inorganic nanoparticles” of C1 of additive C, as well as the claimed “auxiliary agent D1” of instant claim 1, particularly “flash rush inhibitor” as in instant claim 24). Zhang discloses that the total amount of inorganic components accounts for 40% to 80% of the total solids in the coating liquid, typically 50% to 70%, with water-soluble phosphates accounting for the largest portion or making up 70% to 90% of the total inorganic content and 30 to 70% of the total solids in the coating solution; while the water-soluble inorganic components, account for 10% to 30% of the total inorganic content and 3% to 20% of the total solids in the coating solution (Paragraph 0018). Zhang discloses that to accelerate the curing of the coating, an appropriate amount of curing agent can be added depending upon the type of organic resin utilized, wherein polymers containing hydroxyl or amine groups can be cross-linked and cured with di- or poly-organic acids or anhydrides, amino resins, epoxy resins, etc.; while polymers containing epoxy groups can be cross-linked and cured with amino resins, low molecular weight polyamides, etc. (as in instant claim 11); with the amount of curing agent used being 0% to 30% of the organic resin (Paragraph 0019, thus with the exception of the “epoxy emulsion and a curing agent thereof” as the claimed emulsion B, the curing agent of Zhang would read upon the claimed “auxiliary agent D1” while in the case of the epoxy emulsion, the curing agent of Zhang would read upon the claimed “a curing agent thereof” as in instant claim 1 and particularly as in instant claim 11). Zhang discloses that the additive is a mixture of one or more of a suitable surfactant, glycerin, and ethylene glycol, in an amount of 0.15% to 10% of the total solids in the coating liquid (Paragraph 0020, with the surfactant reading upon the claimed “auxiliary agent D1” and the glycerin and ethylene glycol reading upon the claimed “solvent D2”).
Hence, Zhang clearly discloses an insulating coating comprising components reading upon the instantly claimed A1, B, C1, D1, and D2 as discussed above, with a content of the water-soluble phosphates, i.e., of Al, Zn, and/or Mg, being 70% to 90% of the total inorganic matter of 100 to 400 parts (e.g., 70 to 360 parts) to 100 parts of the organic resin, for a ratio of the water-soluble phosphate(s) to the organic resin of about 41:59 to about 78:22 falling within the claimed ratio as recited in instant claim 1, and substantially overlapping the ratio of instant claim 2; and given that Zhang specifically discloses working examples with a ratio of the water-soluble dihydrogen phosphate(s), whether aluminum with magnesium and/or zinc as the only water-soluble metal inorganic salts, to the organic resin, whether acrylic or epoxy emulsion with curing agent, falling within the ratios of instant claims 1-2, see Examples 4-9, each of which provides an insulating coating on a silicon steel sheet as in instant claim 27 wherein the coating has a thickness as in instant claim 28, Zhang anticipates instant claims 1-2, 6-7, 11, and 27-28.
With respect to instant claim 8, Zhang clearly discloses that the water-soluble phosphate can include “one or a mixture of aluminum dihydrogen phosphate, magnesium dihydrogen phosphate, zinc dihydrogen phosphate” (emphasis added, Paragraph 0012) and thus disclosing 100% of any one of the recited phosphates, i.e., 100% of aluminum dihydrogen phosphate as in instant claim 8; and given that Zhang also discloses examples utilizing a mixture with aluminum accounting for 60% of the water-soluble phosphates, the Examiner takes the position that Zhang discloses the claimed invention with sufficient specificity to anticipate instant claim 8.
With respect to instant claims 11-12 and 14, the Examiner again notes that these dependent claims do not positively recite that the water dispersible organic emulsion comprises the epoxy emulsion and curing agent thereof, and given that Zhang specifically discloses examples utilizing an acrylic emulsion reading upon the claimed alternative water dispersible organic emulsion of “a polyacrylate”, the Examiner takes the position that the working examples of Zhang comprising an acrylic emulsion anticipate instant claims 11-12 and 14.
With respect to instant claim 13, Zhang discloses an example (Example 9) utilizing 125 g of a waterborne epoxy resin having a solid content of 30% (i.e., 37.5g solids) with 2g of sebacic acid curing agent (B), 40g of aluminum dihydrogen phosphate (A1), 20g of magnesium dihydrogen phosphate (A1), 15g of zinc dihydrogen phosphate (A1), 4g ultrafine zinc oxide ZnO (nano)particles (C1 and/or D1), 4g of ultrafine alumina Al2O3 (nano)particles (C1 and/or D1), 0.5g of ultrafine aluminum tripolyphosphate (C1 and/or D1), and 110g of deionized water (D2), such that the solids content of the epoxy resin emulsion accounts for 94.9% of the total solid content of the epoxy emulsion and the curing agent thereof, thereby anticipating instant claim 13.
With respect to instant claim 15, given that the ethylene-vinyl acetate may account for 0% of the solid content of the water dispersible organic emulsion B as instantly claimed, and thus is not a required component of the claimed insulating coating, the Examiner takes the position that the invention disclosed by Zhang comprising 0% of ethylene vinyl acetate copolymer anticipates instant claim 15.
With respect to instant claim 17, given that the claim does not positively recite that the water dispersible emulsion is a polyurethane and/or a polyacrylate, both of which are alternatives to the epoxy emulsion which is specifically disclosed and utilized in examples of Zhang, the Examiner takes the position that the epoxy examples of Zhang anticipates instant claim 17.
With respect to instant claims 18 and 20-21, given the lack of clarity with respect to “the additive C” as in instant claim 18 such that any one or more of the ultrafine water-insoluble components disclosed by Zhang, particularly the ultrafine ZnO and/or ultrafine Al2O3 (nano)particles may read upon the claimed “additive C” or C1 thereof, and more particularly as recited in instant claims 20-21, with at least Example 9 as described in detail above containing 8 g of ultrafine ZnO and Al2O3 (nano)particles to 124.5 g of water-soluble phosphate as claimed component A or A1, and epoxy emulsion and curing agent thereof as claimed component B, Zhang anticipates instant claims 18 and 20-21.
With respect to instant claim 22, given that the insulating coating of instant claim 1 from which instant claim 22 depends, does not require the heat-resistant reinforcing additive C2 to be present in the insulating coating given that the claimed additive C only needs to require “at least one of” C1 and C2, and that instant claim 22 does not positively recite that the insulating coating comprises the heat-resistance reinforcing additive C2, the Examiner takes the position that the insulating coating disclosed by Zhang comprising an additive reading upon the claimed “structure reinforcing additive C1” as “at least one” additive C, i.e., ultrafine ZnO and Al2O3 (nano)particles as utilized in Example 9, would anticipate instant claim 22.
With respect to instant claim 23, given that Example 4 of Zhang utilizes 1g of ultrafine aluminum tripolyphosphate reading upon the claimed “auxiliary agent D1” and 10g of glycerol reading upon the claimed “solvent D2”, to 75g of water-soluble phosphate as the claimed water-soluble metal inorganic salt A with 25g solids content of acrylic emulsion as the claimed water dispersible organic emulsion B, thus a total mass of D1 and D2 of 11g to 100g of a total mass of A and B or 11%, Zhang anticipates instant claim 23.
With respect to instant claim 24, given that any of the water-insoluble inorganic components disclosed by Zhang that increase rust resistance and corrosion inhibition of silicon steel sheets, e.g., a flash rust inhibitor; and/or the additive that is a mixture of one or more of a suitable surfactant, glycerin (i.e., glycerol), and ethylene glycol, each of which additive may read upon the claimed “defoaming agent” and/or “wetting agent” and/or “leveling agent” and/or “thickening agent” and/or “anti-settling agent”, Zhang anticipates instant claim 24.
With respect to instant claim 25, as noted above, Zhang clearly discloses that the additive may be a mixture of one or more of a suitable surfactant, glycerin (glycerol) and ethylene glycol, and that given Zhang specifically utilizes glycerol or ethylene glycol in working examples 4-8, both of which are listed as “solvent D2” in instant claim 25, the Examiner takes the position that Zhang discloses the claimed invention with sufficient specificity to anticipate instant claim 25.
With respect to instant claim 26, as noted above, Zhang discloses that the resulting insulating coating has a solid content of 30-50% (Paragraph 0012), and given that Zhang discloses at least one working example having a solid content within the claimed range of 15% to 40% (Examples), Zhang anticipates instant claim 26.
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 1-28 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang as applied above to claims 1-2, 6-8, 11-15, 17-18, and 20-28, and in further view of Guo (CN102477235A, cited on IDS dated 5/14/2024, please refer to the attached machine translation for the below cited sections). The teachings of Zhang are discussed in detail above and incorporated herein by reference, wherein the Examiner notes that in addition to the working examples disclosed by Zhang that anticipate the claimed invention as recited in instant claims 1-2, 6-8, 11-15, 17-18, and 20-28 for the reasons discussed above, particularly in light of the lack of clarity thereof as discussed in detail above with respect to components reading upon one another, the Examiner additionally, or alternatively, takes the position that the claimed invention as recited in instant claims 1-2, 6-8, 11-15, 17-18, and 20-28 would have been obvious over the teachings of Zhang given that Zhang clearly teaches components reading upon each of components A, B, C, D1, and D2 as instantly claimed and in contents reading upon and/or overlapping the claimed ratios and/or percentages as instantly claimed, particularly given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Further, with respect to the claimed insulating coating as recited in instant claim 1, in particular with respect to the claimed additive C, Guo teaches a similar chromium-free or non-chrome insulating coating for an electrical steel sheet as in Zhang, wherein the insulating coating is formed from a mixture comprising, based on solids content, 5-35% by weight of a film former that is one or more of a styrene-acrylic emulsion, an epoxy emulsion, and a pure acrylic emulsion (Paragraph 0012 and 0024-0027), e.g., as in Zhang; 10-50% by weight of dihydric phosphate salt that can be one or more of calcium dihydrogen phosphate, magnesium dihydrogen phosphate, zinc dihydrogen phosphate, and aluminum dihydrogen phosphate (Paragraph 0031), with the latter three similarly recited in Zhang; 2-20% by weight of inorganic filler similar to the general inorganic matter taught by Zhang; and a solvent, particularly water in a content of 10-85% by weight, preferably 30-65% by weight (Abstract, Paragraphs 0018, 0031, 0044), similar to Zhang. Guo more specifically teaches that the inorganic filler is one or more of silica sol, water-soluble silicate, and inorganic boron compound (Paragraph 0012), wherein the particle size of the silica sol is 10-120 nm, preferably 10-30 nm (Paragraph 0032, as in instant claim 19-21); the water-soluble silicate can be sodium silicate with a modulus of 1-3 (Paragraph 0033, additional A as in instant claims 3-5); and the inorganic boron compound may be selected from one or more of boric acid (as with the claimed additive C2), metaboric acid, borates (similar to the teachings of Zhang), perborates, tetraboric acid, tetraborates and metal borides, and is preferably boric acid (Paragraph 0035). Hence, given that Zhang does not specifically limit the inorganic component(s) utilized in the insulating coating and broadly teaches oxides, borates, “etc.” with reference in the background section to similar insulating coatings that also comprise silicates and other inorganic fillers (Paragraphs 0006-0007), and that Guo teaches a similar insulating coating for the same end use as in Zhang, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any of the inorganic components taught by Guo as part of the inorganic component in the insulating coating taught by Zhang, such as boric acid as an alternative inorganic boron compound to borates, reading upon the instantly claimed C2 as in instant claim 1 and particularly as in instant claim 22; and/or the preferred silica sol with a particle size of 10-120 nm and/or water-soluble sodium silicates (water glass) with a modulus of 1-3 as taught by Guo from the standpoint of improved insulation performance (Paragraph 0034), reading upon the claimed C1 as in instant claims 1 and 19-20, and/or reading upon the claimed additional A as in instant claims 3-5, respectively, given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results prima facie obviousness to combine prior art elements according to known methods to yield predictable results, such that if the claimed invention is meant to require component C2, instant claims 1-2, 6-8, 11-15, 17-18, and 20-28 as well as instant claims 3-5 and 19 would have been obvious over the teachings of Zhang in view of Guo.
With respect to instant claims 9-10, although Zhang and Guo do not specifically limit the particle size of the resin emulsion as instantly claimed, given that Zhang teaches examples wherein the resulting coating thickness is only about 0.4 to 0.9 µm (Examples) with Guo teaching a coating thickness of preferably 1-2 µm (Paragraph 0038), and both references teach inorganic particle sizes similar to the recited emulsion sizes, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, it would have been obvious to one having ordinary skill in the art to utilize emulsion particle diameters, D50 and/or D90, similar to the coating thickness taught by Zhang and/or similar to the inorganic particle sizes taught by Zhang and/or Guo, thereby rendering instant claims 9-10 obvious over Zhang in view of Guo.
Further with respect to instant claims 11-12, in addition to the discussion above with respect to the curing agent wherein Zhang clearly teaches the use of a curing agent in the coating composition, and that the curing agent may be selected based upon the organic resin utilized, with curing agents for epoxy resins or polymers containing epoxy groups including “amino resins, low molecular weight polyamides, etc.” (Paragraph 0019), reading upon the claimed curing agent as recited in instant claim 11, it is further noted that dicyandiamide is an obvious species of curing agent for epoxy resin in the art and given that as discussed above with respect to the organic resin particle size of instant claims 9-10, it would have been obvious to one having ordinary skill in the art to utilize similar particle sizes for all of the components of the insulating coating composition, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 11-12 would have been obvious over the teachings of Zhang in view of Guo.
Further with respect to instant claim 14, given that Zhang does not specifically limit the epoxy resin utilized in the insulating coating and specifically utilizes a commercially available E50 type bisphenol A type epoxy resin having an epoxy value of 0.5, while Guo also does not limit the epoxy emulsion to be utilized and broadly teaches an epoxy emulsion having an epoxy equivalent of 180-6000 g/eq, the claimed invention as recited in instant claim 14 would have been obvious over the teachings of Zhang in view of Guo.
With respect to instant claims 15-16, Zhang teaches that the organic resin can be one or more of a mixture of epoxy resin or polyacrylic acid resin or copolymers of acrylates with other olefin monomers such as vinyl acetate (Paragraphs 0012 and 0014), and given that ethylene is an obvious species of olefin monomer in the art to be copolymerized with acrylate(s) and/or vinyl acetate and that Zhang specifically teaches an example wherein vinyl acetate is utilized in a content of 16wt% of the acrylate/vinyl acetate copolymer, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 15-16 would have been obvious over the teachings of Zhang in view of Guo given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Xu (CN103834263A, machine translation also attached) discloses a silicon steel comprising an inorganic-organic insulating coating on a surface thereof, wherein the insulating coating is formed from a coating composition comprising metal dihydric phosphate, particularly aluminum dihydrogen phosphate; a water soluble epoxy resin dispersion; and a curing agent selected from an amino resin or melamine and dicyandiamide.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787