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 .
Preliminary Amendment
The preliminary amendment filed on January 17, 2025 has been entered. Claims 1-10 are pending.
Claim Objections
Claims 1 and 10 are objected to because of the following informalities. In claim 1, line 2, and claim 10, line 2, the term “an” should be inserted before the term “adhesive”.
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.
Claims 1-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 1, lines 3-4, the phrase “an adhesive resin composition consisting of an adhesive resin at least partly including…” (emphasis added) is indefinite as to scope. Specifically, the intermixing of closed claim language, i.e., “consisting of”, and open claim language, i.e., “including”, renders the scope of the claimed composition unclear.
In claims 6 and 7, the formulas for the heating time, i.e., Formula (i) and Formula (ii), are unclear, because the time variables, i.e., “t” and “t0”, do not have units associated with them, i.e., seconds, minutes, etc. These formulas are being interpreted as though the units for both of these variables, i.e., “t” and “t0” are the same.
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.
Claim Rejections - 35 USC § 102/103
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.
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 1-5 and 10 are rejected under 35 U.S.C. 102(a(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2-208034 as evidenced by JP 2014-96429. An English language translation of JP ‘034 was provided in the IDS of January 17, 2025. An English language translation of JP ‘429 is attached to this Office action. These translations are relied upon in the below rejections.
Regarding claims 1-2, 4-5, and 10, JP ‘034 discloses an adhesive resin composition-coated electrical sheet comprising a steel sheet (pg 4, last line) and an adhesive resin coating (pg 5, lines 3-4) on at least one surface of the steel sheet. The adhesive resin coating is a semi-cured material containing an adhesive resin that at least partially includes a thermosetting resin, such as an epoxy resin, and a curing agent, such as an amine-based curing agent (pg 5, lines 3-4). JP ‘034 does not specifically disclose or state (i) the maximum penetration of the adhesive coating of 3% or more and less than 100%; (ii) a part of the curing agent exists in the adhesive resin coating in a crystalline state; and (iii) an area fraction of the curing agent in the crystalline state is 0.10 to 40%.
Regarding (i) and (iii), JP ‘034 uses the same materials for the adhesive resin coating as the presently claimed invention and processes these adhesive resin composition-coated electrical steel sheet using the same process that includes applying a liquid thermosetting adhesive to a surface of the steel sheet (pg 5, line 8) and heating, drying, and solidifying (pg 5, lines 4-5 and 10) the adhesive composition at a temperature of 200 C (pg 9, lines 8-9). As set forth in MPEP 2112.01, products of identical chemical composition cannot have mutually exclusive properties. That is, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The MPEP further states that “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding (ii), as evidenced by JP ‘429, the heating, drying, and solidification steps of the epoxy adhesive resin would inherently bring the adhesive to a semi-cured state, which would have at least part of the composition in a crystalline state (JP ‘429: [0041]).
Regarding claims 3, since JP ‘034 uses the same materials for the adhesive resin coating as the presently claimed invention and processes these adhesive resin composition-coated electrical steel sheet using the same process that includes applying a liquid thermosetting adhesive to a surface of the steel sheet and heating, drying, and solidifying the adhesive composition at a temperature of 200 C, it is reasonable to conclude that the claimed softening start temperature of the adhesive resin of JP ‘034 would be within the claimed range. See MPEP 2112 explanation above.
Claims 6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2-208034 as evidenced by JP 2014-96429.
The teaching of JP ‘034 (as evidenced by JP ‘429) is relied upon as set forth above. Regarding claim 6, as set forth above, the process of JP ‘034 includes the steps of applying a liquid thermosetting adhesive to a surface of the steel sheet (pg 5, line 8) and heating, drying, and solidifying (pg 5, lines 4-5 and 10) the adhesive composition at a temperature of 200 C (pg 9, lines 8-9). JP ‘034 does not disclose that the heating time satisfies Formula (i). However, JP ‘034 does disclose the adhesive is heat cured. It would have been obvious to one of ordinary skill in the art to have heating the adhesive for a period of time that satisfies Formula (i) motivated by the desire to obtain a desired bonding strength that would result forth this specific heating time. See MPEP 2144.05.
Regarding claim 8, JP ‘034 disclose the adhesive resin can contain 50 wt% of more of an epoxy resin (pg 5, line 8).
Regarding claim 9, JP ‘034 discloses the adhesive rein can contain an amine-based curing agent (pg 5, line 4).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2-208034 in view of JP 2014-96429.
The teaching of JP ‘034 (as evidenced by JP ‘429) is relied upon as set forth above. JP ’034 does not disclose that the heating time satisfies Formula (ii). However, JP ‘034 does disclose the adhesive is heat cured. It would have been obvious to one of ordinary skill in the art to have heating the adhesive for a period of time that satisfies Formula (ii) motivated by the desire to obtain a desired bonding strength that would result forth this specific heating time. See MPEP 2144.05.
Additionally, JP ‘034 does not indicate that the heating, drying, and solidifying step is performed in the range of 100-180 C. However, JP ‘034 sets forth drying for 30 second to 20 minutes at a temperature of 100-250 C is suitable (pg 7, lines 29-31) depending on the types of components in the composition. Further, JP ‘429 that similar composition are dried in a range of 80-150 C. That is, the disclosed and conventionally known temperature ranges for heating, drying and solidifying overlap with the presently claimed range and are; thus, prima facie obvious. See MPEP 2144.05.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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