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 .
The amendment filed 5/26/2026 has been entered. Claims 2-5 have been canceled. Claims 1 and 6-14 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Terminal Disclaimer
The terminal disclaimer filed on 5/26/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/268806 has been reviewed and is accepted. The terminal disclaimer has been recorded, and hence, the provisional obviousness-type double patenting rejection as recited in Paragraphs 21-22 of the prior office action dated 5/26/2026 has been withdrawn by the Examiner.
Specification
The disclosure is objected to because of the following informalities: on page 5, at line 18; on page 14, at lines 15 and 18; on page 22, at lines 10 and 17; on page 26, at lines 3 and 8; and on page 27, at lines 4, 9, and 23, the specification recites, “barium sulfate (Ba2SO4)” (emphasis added), however, the chemical formula in parentheses is an incorrect (and chemically unstable) formula for barium sulfate which has a chemical formula of BaSO4 (see the attached Wikipedia.org article entitled “Barium sulfate”).
Appropriate correction is required.
Claim Objections
Claim 7 is objected to because of the following informalities: “barium sulfate (Ba2SO4)” (emphasis added) should read “barium sulfate (BaSO4)” given that the correct chemical formula for barium sulfate is BaSO4 as noted above. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 6-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1, 13, and 14 have been amended replacing “Chemical Formula 1” with “Chemical Formula 2” and although the amended claims define or include a description of “L” as recited in canceled claim 4 which was the same as recited in original claim 1 with respect to Chemical Formula 1, the amended claims no longer define or recite a value for “n” given the deletion of said definition/recitation from the amended claims. Hence, “n” in the amended claims is no longer bound to any particular values, and given that the original disclosure at the time of filing provides support for the claimed formula when n=1 to 10 only, the amended chemical formula constitutes new matter.
Claims 1 and 6-14 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. Claims 1, 13, and 14 have been amended replacing “Chemical Formula 1” with “Chemical Formula 2” and although the amended claims include a description of substituent “L” as recited in canceled claim 4 which was the same as recited in original claim 1, the amended claims no longer define or recite a value for “n” as discussed above, and 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.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Lastly, it is noted that as discussed in MPEP § 2111.03, the term “comprising”, which is synonymous with “containing” (or “contains”), is an open-ended transitional phrase that does not exclude additional, unrecited elements.
Hence, given the above and that one skilled in the art would readily understand that a reaction product “formed by reacting” A and B does not exclude the incorporation of other reactants aside from A and B, e.g., C, D, etc. (see for example, Lu, US2020/0056072A1, Abstract, Claims), the Examiner notes that absent any clear recitation that specifically limits and/or excludes any additional unrecited elements, including with respect to the reaction product, the instant claims (including the reaction product or “polyurethane resin”) have been interpreted as being open-ended, particularly given that instant claim 6 does not require the polyurethane resin to contain the recited wt% ranges of “the aromatic diisocyanate monomer” and “the polyol” such that the total thereof is required to equal 100wt%, and more particularly given that one skilled in the art would readily understand the difficulty in obtaining 100% of a 2,4’-diphenylalkane diisocyanate such as 2,4′-diphenyl methane diisocyanate (MDI) (encompassed by the claimed Chemical Formula 2 and specifically utilized in Applicant’s examples) as the sole MDI isomer (see for example, the attached Google Search AI Overview results, page 1).
Claim Rejections - 35 USC § 102
Claims 1 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu (CN108610934A, again please refer to the attached machine translation for the below cited sections), for generally the reasons recited in the prior office action and restated below with respect to the amended claims.
As discussed in the prior office action, Liu discloses a polyurethane waterproof coating composition comprising: (A) talcum powder, light calcium carbonate powder, or a 1:1 mass ratio mixture thereof, treated with a coupling agent (reading upon the claimed “inorganic pigment” of instant claim 1 and particularly as in instant claim 7); and (B) a polyurethane resin produced by reacting polyether polyol with diphenyl methane diisocyanate (MDI, an aromatic diisocyanate), particularly in one embodiment, a mixture of 4,4’-MDI and 2,4’-MDI in a molar/weight ratio of 1:1, 1:2, or 2:1, and thus the ratio of 1:2 as in working example 3 specifically includes a majority or more 2,4’-MDI than 4,4’-MDI (reading upon the claimed “polyurethane resin formed by reacting an aromatic diisocyanate of Chemical Formula 2 as in amended claim 1 in light of the 2,4’-MDI and the above Claim Interpretation section); wherein the mixing ratio of (A) to (B) is 1:1 (Entire document, particularly Paragraphs 0012-0016, 0018-0019, 0024, and 0039-0040), falling within the claimed range of 20 to 150 parts by weight of inorganic pigment with respect to 100 parts by weight of the polyurethane resin as in instant claim 1. Hence, Liu discloses a coating composition comprising a polyurethane resin and an inorganic pigment, particularly talc and calcium carbonate as in instant claim 7, wherein the inorganic pigment is contained in a weight ratio of 1:1 with respect to the polyurethane resin, i.e., an amount of 100 parts by weight with respect to 100 parts by weight of the polyurethane resin, falling within the claimed range as recited in instant claim 1, and the polyurethane resin is formed by reacting a polyol with 2,4’-MDI, an aromatic diisocyanate monomer represented by the claimed Chemical Formula 2 as in instant claim 1, and given again that the instantly claimed invention as recited does not exclude the incorporation of additional aromatic diisocyanate monomers that are not represented by the claimed Chemical Formula 2, as in the case of 4,4’-MDI utilized in admixture with the 2,4’-MDI in the examples of Liu, and that the claimed “electrical steel sheet adhesive” constitutes intended end use of the coating composition wherein the coating composition disclosed by Liu is capable of the same intended end use, the Examiner maintains her position that Liu anticipates instant claims 1 and 7.
With respect to instant claim 8, as noted above, Liu discloses that the talc and calcium carbonate powders are treated with a coupling agent thereby anticipating instant claim 8.
Claims 1, 7-8, and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikebe (US2009/0005492A1) for generally the reasons recited in the prior office action and restated below with respect to the amended claims.
As discussed in the prior office action, Ikebe discloses a surface finishing material that is a two-component ambient temperature curable polyurethane coating composition that upon mixing of the two components, or A and B sides, ensures a given usable operating time and suppressed adhesion of the surface after curing by reacting an A-side composed mainly of a urethane prepolymer having terminal isocyanate groups and a B-side composed mainly of a polyol containing a crosslinker and a filler (Abstract, Paragraphs 0011-0012 and 0043), wherein the urethane prepolymer is the reaction product of a polyisocyanate composed of at least 50% by weight 2,4’-MDI (thus a range of 50wt% to 100wt%) with a polyol (Paragraph 0012; as in instant claim 1 with 2,4’-MDI reading upon the instantly claimed aromatic diisocyanate having a chemical formula/structure as in Chemical Formula 2 as recited in amended claim 1). Ikebe discloses that the remaining less than 50% polyisocyanate used to produce the urethane prepolymer may be made up of 4,4’-MDI alone, or 4,4’-MDI with a very small amount of 2,2’-MDI as isomers of 2,4’-MDI, and that in some cases, an isocyanate other than the MDI type such as toluene diisocyanate (TDI) may be included (Paragraphs 0027-0028); but that preferably the polyisocyanate used to produce the urethane prepolymer of side-A contains 2,4’-MDI in an amount of from 70 to 98%, wherein “[w]hen the content of 2,4'-MDI is less than 50%, the reaction balance of 4,4'-MDI and 2,4'-MDI is bad, the surface to which the surface finishing material is applied is sticky after curing for a long time, adhesive force is left and workability is bad” and that “[p]articularly advantageous usable times, strength and suppression of residual adhesive force, are achieved by using 2,4'-MDI in amounts of from 80 to 98%, most preferably, of from 95 to 98%” wherein “[t]he more 2,4’-MDI present, the better is the effect” (Paragraphs 0026-0027), as evidenced by the working examples which utilize 2,4’-MDI in amounts ranging from 0% to 97% with 4,4’-MDI or in the case of one example, 80% of 2,4’-MDI with 20% of 2,4’-TDI to compare the properties of the resulting composition and cured coating and the effects of the 2,4’-MDI thereon (Examples, particularly Tables 1-13).
Ikebe discloses that the filler is preferably a filler containing an acid filler having a pH of less than 7, such as some clays like kaolin clay, silica, and the like, in a filler content of generally 25% or more of the total weight of the filler, with non-acid fillers that may be utilized in combination with the acid filler including calcium carbonate, barium sulfate, zeolite, talc, anhydrous gypsum (CaSO4), mica, and the like, alone or in combination (Paragraphs 0036-0038; reading upon the instantly claimed “inorganic pigment” as recited in instant claim 1 and particularly as in instant claim 7); wherein the total amount of filler(s) is 90% or less of the total weight of B-side, preferably 1 to 70% (Paragraph 0039). Ikebe discloses that the B-side may also optionally include a catalyst (as in instant claim 8), a coloring agent such as iron oxide or titanium oxide (also reading upon the claimed “inorganic pigment”), a moisture absorbent, a defoaming agent (also reads upon a “wetting agent” as in instant claim 8), a plasticizer, a stabilizer, a leveling agent, a modifier, or the like according to need in addition to the polyol, crosslinker, and filler as essential components (Paragraphs 0040-0042); and the A-side may also include one or more additives such as a plasticizer and/or a defoaming agent in addition to the urethane prepolymer (Paragraph 0033). Ikebe specifically discloses working examples utilizing 2,4’-MDI (as in amended claim 1) reacted with a polyol to produce the urethane prepolymer and thus the resulting polyurethane of the coating composition (reading upon the instantly claimed polyurethane resin “formed by reacting an aromatic diisocyanate monomer represented by…Chemical Formula 2 and a polyol”), wherein after mixing parts A and B, with part B including the inorganic filler/pigment as well as a crosslinking/curing agent, a curing catalyst, and other additives (as in instant claim 8), the content of inorganic filler/pigment of almost all of the working examples falls within the instantly claimed range of “20 to 150 parts by weight with respect to 100 parts by weight of the polyurethane resin”, whether as the urethane prepolymer of the A-side taken alone or the resulting polyurethane based upon the total weight of urethane prepolymer of the A-side and the polyol of the B-side (Examples, Tables 1-13, see particularly Examples 17-18 and 24-25 which utilize 97% of 2,4’-MDI as the polyisocyanate and calcium carbonate, as in instant claim 7, as inorganic filler in an amount as in instant claim 1); and given that the polyurethane coating composition of Ikebe, particularly as in the working examples, is capable of being utilized as an “electrical steel sheet adhesive coating composition”, the Examiner maintains her position that Ikebe anticipates instant claims 1 and 7-8.
With respect to instant claims 10-12, Ikebe discloses working examples comprising additives reading upon the instantly claimed “curing agent” (i.e., crosslinker), “curing catalyst” (i.e., catalyst), and “wetting agent” (i.e., FLOREN AC-1190 utilized by Ikebe as a “leveling agent”), respectively, in contents as instantly claimed (Examples, particularly Tables 5-13). Hence, the Examiner maintains her position that Ikebe discloses the claimed invention with sufficient specificity to anticipate instant claims 10-12.
Claims 1 and 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wintermantel (US2006/0020101A1, if the polyurethane is meant to be produced by a “pure” aromatic diisocyanate of Chemical Formula 2). Wintermantel discloses polyurethane prepolymers (“polyurethane resin”) based on 2,4’-diphenylmethane diisocyanate (MDI) (Abstract) that are useful in producing polyurethane polymers, coatings, sealants and/or adhesives, particularly moisture-curing sealants and/or adhesives based on the prepolymers (Paragraph 0054). Wintermantel discloses that the polyurethane prepolymer is produced by reacting A) an isocyanate which is an MDI type containing at least 95% by weight of 2,4’-MDI with B) a polyether polyol mixture, wherein the MDI type used as isocyanate A) preferably has a 2,4’-MDI content of at least 97wt%, more preferably at least 97.5wt% (Paragraphs 0014-0029) with working examples prepared on the basis of “pure 2,4’-MDI” and particularly an example utilizing a diisocyanate having an isomer distribution of 99.92% 2,4’-MDI with 0.04% 4,4’-MDI and 0.04% 2,2’-MDI (Examples, e.g., essentially 100% of an aromatic diisocyanate monomer according to the claimed Chemical Formula 2). Wintermantel discloses that to prepare sealants and/or adhesives with the NCO-containing polyurethane prepolymers of the invention, customary plasticizers, fillers, pigments, thixotropic agents, catalysts, adhesion promoters and further auxiliaries and additives can be incorporated; with suitable fillers including precipitated silicas, pyrogenic silicas, mineral chalks, and precipitated chalks; suitable thixotropic agents including pyrogenic silicas; and suitable adhesion promoters including functional silanes (Paragraphs 0056-0059 and 0064). Wintermantel specifically discloses a working example comprising a polyurethane prepolymer binder produced by reacting “pure” MDI, particularly diisocyanate IV with 99.92% 2,4’ MDI, with a polyol, wherein to determine mechanical properties thereof, 270 grams of the resulting polyurethane prepolymer binder (“polyurethane resin”) are blended with 405 grams of calcium carbonate as a filler (reading upon the claimed “inorganic pigment” as in instant claim 1 and particularly as in instant claim 7; Examples, particularly Examples 5-6 and Paragraph 0123), thus disclosing a coating composition comprising a polyurethane resin and an inorganic pigment, wherein the inorganic pigment, particularly calcium carbonate as in instant claim 7, is contained in an amount of 150 parts by weight with respect to 100 parts by weight of the polyurethane resin, and the polyurethane resin is formed by reacting an aromatic diisocyanate monomer represented by the claimed Chemical Formula 2 and a polyol as in instant claim 1, and thereby anticipating instant claims 1 and 7.
With respect to instant claims 8-11, as noted above, Wintermantel discloses that the composition may include a catalyst as well as other auxiliary and additives including additives reading upon the broadly claimed additives as recited in instant claim 8, and given that the above example to determine mechanical properties specifically includes 2.7 g of dibutyltin dilaurate, i.e., a curing catalyst, with respect to 270 g of the polyurethane prepolymer binder (thus 1 part by weight to 100 parts by weight of the polyurethane resin falling within the claimed range as recited in instant claim 11); 5.4 g of GLYMO (glycidyl 3-(trimethoxysilyl)propyl ether), also known as 3-glycidyloxypropyl)trimethoxysilane (reading upon the claimed coupling agent) with respect to 270 g of the polyurethane prepolymer binder (thus 2 parts of coupling agent with respect to 100 parts by weight of the polyurethane resin falling within the claimed range as recited in instant claim 9); and 21 g of DESMODUR® VH 20 (a polyisocyanate semiprepolymer reading upon the broadly claimed “curing agent”) with respect to 270 g of the polyurethane prepolymer binder (thus about 0.8 parts of “curing agent” with respect to 100 parts of the polyurethane resin falling within the claimed range as recited in instant claim 10), Wintermantel anticipates instant claims 8-11.
Claim Rejections - 35 USC § 103
Claims 1 and 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Michaud (US2021/0122869A1, particularly if Applicant’s amended claims are meant to require the “polyurethane resin” to be “formed by reacting an aromatic diisocyanate monomer represented by the [claimed] Chemical Formula 2 and a polyol” to be formed by said diisocyanate monomer as the sole diisocyanate for producing said polyurethane resin, although not necessarily the sole diisocyanate of the claimed composition). Michaud teaches “a composition comprising: an NCO component comprising: A) at least one polyurethane comprising at least two NCO terminal groups produced by an addition polymerisation reaction of at least one [asymmetric] diisocyanate and at least one polyol, and B) at least one polyisocyanate comprising at least three NCO isocyanate functions, selected from the group consisting of biurets, isocyanurates, adducts of diisocyanates and of triols, and the mixtures thereof; and an OH component comprising: at least one polyol; and a total content of filler(s) higher than or equal to 35 wt. %, in relation to the total weight of said OH component” (Abstract, Paragraph 0015, Claim 21); wherein the OH component/NCO component ratio by volume is within the ranges from 1/3 to 3/1 (Paragraph 0255), with the OH component comprising a total polyol content in the range from 10 to 65% by weight (Paragraph 0081-0085), and the NCO component comprising 60 to 95% by weight of the polyurethane(s) A) (Paragraphs 0241-0243). Michaud teaches that filler(s) in the OH component are chosen from those as recited in Paragraph 0088, most preferably calcium carbonate (Paragraphs 0088, 0090, and 0099-0101); and that the NCO component can also comprise additives such as fillers in a total content of additive(s) of 0% to 35% by weight, preferably 0% to 20% by weight (Paragraphs 0245-0246).
Michaud teaches that the asymmetric diisocyanate monomer(s) which can be used to prepare the polyurethane having NCO groups A) of the NCO component can be aliphatic or aromatic, with limited specific examples thereof including isophorone diisocyanate (IPDI), 2,4-toluene diisocyanate (2,4-TDI), and 2,4’-diphenylmethane diisocyanate (2,4’-MDI); and more preferably, chosen from the 2,4’-MDI isomer, the 2,4-TDI isomer, a mixture of MDI isomers comprising 90% by weight and preferably 95% by weight of at least 2,4’-MDI isomer, or a mixture of TDI isomers comprising 90% by weight and preferably at least 95% by weight of at least 2,4-TDI isomer, with the percentages expressed respectively with respect to the weight of the mixture of isomers (Paragraph 0177); thereby clearly teaching a polyurethane resin formed by reacting an aromatic diisocyanate monomer represented by Chemical Formula 2 (which may be the sole diisocyanate for producing the polyurethane A) having NCO groups) and a polyol as recited in instant claim 1; and given that Michaud teaches that the NCO component comprising the above polyurethane having NCO groups A) may further comprise pigments and/or fillers in a content of up to 35% by weight, with respect to the total weight of said NCO component (Paragraphs 0245-0246), and that the overall composition may be utilized as an adhesive composition, sealant or coating, but preferably as an adhesive (Paragraphs 0254 and 0265) for adhesive bonding of two substrates such as steel substrates in the transportation, motor vehicle, or construction field (Paragraphs 0265-0270), Michaud provides a clear teaching and/or suggestion of the claimed adhesive coating composition comprising a polyurethane resin and an inorganic pigment in parts by weight as instantly claimed and with the polyurethane resin being formed by reacting an aromatic diisocyanate monomer represented by the claimed Chemical Formula 2 and a polyol as instantly claimed, and hence, the claimed invention as recited in instant claim 1 would have been obvious over the teachings of Michaud given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claim 6, Michaud teaches that the amounts by weight of diisocyanate monomer(s) and polyol(s) to be charged to a reactor for producing the polyurethane A) are determined on the basis of a ratio of NCO/OH of preferably 1.5 to 2, more preferably 1.6 to 1.9 (Paragraphs 0204-0208), and given the specific polyols and diisocyanate compounds taught by Michaud and the working examples utilizing 50wt% of diisocyanate monomer(s) and 50wt% of polyol monomer(s), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 6 would have been obvious over the teachings of Michaud (Paragraphs 0166-0206, Examples).
With respect to instant claim 7, given that Michaud teaches that suitable fillers for the OH component of the composition may include calcium carbonate as instantly claimed as discussed above, and that the NCO component comprising the polyurethane A) may also include pigments and fillers, it would have been obvious to one having ordinary skill in the art before the effective filing date to utilize the same fillers in the NCO component as recited as being preferred for the OH component. Additionally, given that the NCO component is mixed with the OH component in a ratio as noted above to produce the overall composition, wherein the OH component comprises greater than or equal to 35% by weight, preferably greater than or equal to 40% by weight, and advantageously greater than or equal to 50% by weight of said filler(s) based on the total weight of said -OH component (Paragraph 0085), the claimed invention as recited in instant claim 7 would also have been obvious over the teachings of Michaud with respect to the overall composition.
With respect to instant claims 8-12, Michaud teaches that the OH component can comprise at least one polyamine comprising at least one primary or secondary amine functional group (Paragraphs 0104-0106) in a content ranging from 0.1% to 6% by weight of the total weight of the OH component (Paragraph 0129, thus reading upon the claimed “curing agent” as in instant claim 8 in a content as in instant claim 10 based upon the above overall contents taught by Michaud); as well as “at least one additive chosen from the group consisting of plasticizers, catalysts, solvents, pigments, adhesion promoters, moisture absorbers, UV stabilizers (or antioxidants), dyes and their mixtures” (Paragraph 0130), with a total amount of catalyst(s) ranging from 0.01% to 5% by weight with respect to the total weight of the OH component (Paragraph 0159, thus reading upon the claimed “curing catalyst” as in instant claim 8 in a content as in instant claim 11 based upon the overall contents taught by Michaud); while the NCO component can similarly comprise “at least one additive chosen from the group consisting of plasticizers, catalysts, solvents, pigments, adhesion promoters, moisture absorbers, UV stabilizers (or antioxidants), dyes, fillers, rheological agents and their mixtures” (Paragraph 0245) with a total content of said additive(s) in the NCO component ranging from 0% to 35% by weight with respect to the total weight of said NCO component (Paragraph 0246), and given that a “coupling agent” is an obvious species of “adhesion promoters” in the art, the claimed invention as recited in instant claims 8-11 would have been obvious over the teachings of Michaud given that one skilled in the art before the effective filing date of the claimed invention would have been motivated to utilize any of the above additives taught by Michaud in amounts falling within the ranges taught by Michaud for the composition, and particularly in light of the working examples taught by Michaud (Examples). Further, with respect to instant claim 12, given that a “wetting agent” is an obvious species of additives in the art and may also be considered a “rheological agent”, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 12 would have been obvious over the teachings of Michaud.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Michaud (US2021/0122869A1), as applied to claims 1 and 6-12 above, and in further view of Kim (WO2020/067703A1, please refer to US2022/0001646A1 as an English language equivalent of the WO document for the below cited sections), or alternatively, Kim in view of Michaud.
The teachings of Michaud are discussed in detail above and incorporated herein by reference, wherein it is again noted that Michaud teaches an adhesive composition as recited in instant claim 1 which similarly reads upon the adhesive composition as recited in instant claims 13-14, wherein it is further noted that Michaud teaches that with respect to a method of assembling a laminate from two substrates by adhesive bonding, the OH and NCO components are mixed to form the adhesive composition that is then coated onto at least one of the two substrates to be assembled (thereby clearly teaching coating and then the two substrates are brought into contact, and although Michaud teaches that appropriate substrates include steel substrates, and that the composition cures to provide an adhesive bond therebetween, Michaud does not teach that the steel substrates are electrical steel substrates and that after applying the adhesive coating composition onto at least one of the two substrates, the composition is (at least partially) cured to form an adhesive coating layer that upon stacking of a plurality of said steel substrates is then heated to form a fusion layer as recited in instant claim 14. However, given that electrical steel is an obvious species of steel substrate material utilized in the art, particularly in the transportation, motor vehicle, or construction field, absent any clear showing of criticality and/or unexpected results, the claimed “plurality of electrical steel sheets” as recited in instant claims 13-14 would have been obvious over the teachings of Michaud.
Further, Kim teaches an electrical steel sheet product and a method of manufacturing the electrical steel sheet product by “preparing an adhesive coating composition; forming an adhesive coating layer by applying and then curing the adhesive coating composition onto a surface of an electrical steel sheet; forming a heat-fused layer by laminating and heat-fusing a plurality of electrical steel sheets on which the adhesive coating layers are formed; and cooling the heat-fused electrical steel sheets” (Abstract); wherein the adhesive coating may contain an organic/inorganic complex containing an organic resin such as a urethane-based resin (as in Michaud) and an inorganic nanoparticle substituted for the organic resin; and an inorganic substance (Paragraphs 0018-0019). Kim teaches that the inorganic nanoparticle may be substituted in the organic/inorganic complex in an amount of 1 to 60 parts by weight with respect to 100 parts by weight of the organic resin (Paragraph 0022), and may include one or more inorganic oxides as recited in Paragraph 0021 such as SiO2 and TiO2 (e.g., “inorganic pigment” as in the claimed invention, also falling within the broadly recited pigments or fillers of the teachings of Michaud), and given that Kim does not limit the organic resin of the adhesive coating composition, particularly the urethane-based resin to any particular urethane-based resin, nor the overall adhesive coating composition aside from mixing the organic/inorganic complex (e.g., the resin taught by Michaud) with an inorganic substance, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the polyurethane composition taught by Michaud to produce a steel laminate, particularly an electrical steel product as in Kim, which is an obvious steel laminate and method of production thereof in the art; or alternatively, to product an electrical steel laminate as taught by Kim utilizing the urethane-based resin and/or adhesive composition taught by Michaud which advantageously exhibits reduced, or even zero, content of residual diisocyanate monomers and thus is advantageously nontoxic and nonhazardous in comparison to a polyurethane that is not formed by the asymmetric diisocyanate(s) as taught by Michaud (Entire document, particularly Abstract, Paragraphs 0003-0009 and 0256).
Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 13-14 would have been obvious over the teachings of Michaud in view of Kim, or alternatively, Kim in view of Michaud, given that prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Response to Arguments
Applicant's arguments filed 5/26/2026 have been fully considered but they are not persuasive and/or moot in view of the additional remarks above and/or new grounds of rejection presented above with respect to the amended claims. More specifically, with respect to the anticipation rejection over Liu or Ikebe as restated above, the Applicant argues that “Liu and Ikebe do not exclude the use of 4,4’- and 2,2’-diisocyanate monomer, nor do they suggest that these should be excluded for electrical steel sheet self-bonding applications” (see page 10 of the response). However, the Examiner again notes that the claimed invention does not exclude the incorporation of other reactants, particularly other diisocyanate monomers that are not represented by the claimed Chemical Formula 2, as discussed in detail above in the Claim Interpretation section, and hence, Applicant’s arguments over Liu and Ikebe are not persuasive and the Examiner maintains her position that the recited claims are anticipated by Liu or Ikebe.
Any objection or rejection from the prior office action that is not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 5/26/2026.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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