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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sashi et al US 2013/0115444 in view of Chun et al US 2012/0041102.
Per claim 10, Sashi teaches an electrical steel sheet comprising a semi organic insulation coating consisting of an inorganic component and an organic resin (abstract), wherein an insulation coating material comprises 55 mass% of Zr, 15 mass% of Si, and 38 mass% of the organic resin which is an epoxy resin [0086] (see Tables 1-4) (the parts by weight falling within the claimed range), wherein the Zr is zirconium phosphate [0033] and the Si is silica (claim 1, abstract, inventive example 4). Sashi is silent regarding the claimed two or more aliphatic or aromatic rings in a repeating unit. Chun teaches a novel epoxy resin with improved heat resistance and thermal expansion properties, wherein the epoxy resin can be represented by chemical formulas 1-4, which contain multiple aromatic rings in a repeating unit. It would have been obvious to one of ordinary skill in the art to have utilized the epoxy resin taught by Chun in the electrical steel sheet of Sashi because Chun teaches that this would, at least, increase enhance strength and processability (abstract).
Per claim 11, Sashi teaches the Zr compound is present from 20-70 mass percent and the Si compound is present from 10-50 mass%, which overlaps with the claimed range (see abstract). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art to have selected a value within the disclosed workable range of the prior art to arrive at the desired result with a reasonable expectation for success.
Per claim 12, Sashi teaches use of steel sheets which contain 0.1 to 10 mass% of Si+Al [0092], which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art to have selected a value within the disclosed workable range of the prior art to arrive at the desired result with a reasonable expectation for success.
Response to Arguments
Applicant's arguments filed 1/17/26 have been fully considered but they are not persuasive. Applicant’s first and fourth arguments are based on the difference in terms of objectives, effects, and principles. However, it is note that this is not persuasive because the prior art teaches all of the claimed steps and any objectives or effects would naturally flow from following the claimed steps. The examiner suggests amending the claim to include any omitted steps that would aid in the purported adhesion, principles, and insulation improvement that are not present in the process of Sashi.
Applicant also argues about the difficulty of combining Sashi and Chun. However, Sashi and Chun are considered prior art from the same field of endeavor (epoxy resin or insulating coating providing strong thermal properties and heat resistance, see Sashi [0004] and Chun (abstract)).
Applicant argues that Sashi does not disclose zirconium phosphate. However, Sashi clearly discloses zirconium phosphate at [0033].
Applicant’s final argument is directed towards “unexpectedly superior properties” of the present invention. However, Applicant has submitted no evidence or data to support the “unexpected superior properties” and as such, Applicant’s arguments are not persuasive. It is noted that objective evidence of unexpected results must be commensurate in scope with the claimed invention to rebut a prima facie case of obviousness (MPEP 716.02).
Conclusion
THIS ACTION IS MADE FINAL. 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 NATHAN T. LEONG whose telephone number is (571)270-5352. The examiner can normally be reached M-F 10:00-6:00pm.
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/NATHAN T LEONG/ Primary Examiner, Art Unit 1715