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 .
Response to Amendment
Examiner acknowledges amended Claims 1, 5-7, 9, 10, and 32-35, canceled Claims 2, 8, 11-15, 28-31, and withdrawn Claims 16-27 in the response filed on 12/16/2025.
Response to Arguments
Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive.
Applicant argues that Deeney discloses “a core 10 for an electromagnetic device” wherein “[t]he core 10 is in the form of a coil formed by winding a strip of magnetic material in a helical configuration” (column 2, lines 61-64). Therefore, Deeney does not teach the claimed invention.
However, the Examiner respectfully disagrees. Claim 1 recites, inter alia, a plurality of magnetic material layers having a respective first central aperture and insulating layer(s) each having a respective second central aperture, wherein the insulating layers and the magnetic material layers are stacked coextensively with a central axis of an apparatus.
In that regard, Deeney teaches a plurality of magnetic materials and insulating layers stacked coextensively (e.g. Fig. 7), wherein the term “coextensive” is defined as having the same spatial or temporal scope or boundaries (Merriam-Webster). Deeney further teaches that these coextensively stacked layers are wound into a coil, which then produces the claimed first central aperture and second central aperture. This wound structure is also to be considered stacked coextensively with a central axis of the apparatus.
It is noted that the instant claims do not preclude its magnetic material layers and electrically insulating layer(s) from being wounded, the claims do not necessarily recite the direction of the stacking, and/or the first and second central apertures having the same size diameter, etc. 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).
Applicants further argued that Nakajima teaching of stainless steel is an electrical conductor and not an electrical insulator.
However, Applicant’s arguments are unpersuasive. The Examiner notes that “electrically insulating layer” is nomenclature only, without providing any additional structure, material, or functional limitations thereof, in and of themselves. According to Applicant’s Claim 5, an electrically insulating layer has a thermal conductivity of greater than 10 W/m-K. Stainless steel conventionally is known to having a thermal conductivity of 15- 25 W/m-K (please see UnitedAlloys document provided as evidence). In view of their low thermal conductivity, stainless steel is considered an “electrically insulating layer” by Applicant’s own standard/definition.
While the stainless steel of Nakajima may correspond to Applicant’s one or more first electrically insulating layers, Nakajima discloses the magnetic ribbons insulated by a polyethylene terephthalate film tape laminated between adjacent layers of its magnetic ribbons and is supported by the stainless steel rings (Element 15 in Fig. 6, and Col. 9: Line 66 bridging over to Col. 10: Line 5). Therefore, the polyethylene terephthalate film tape may corresponds to Applicant’s electrically insulating layer.
Examiner’s Comment
Regarding the limitation(s) “flexible” in Claims 33 and 35, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes the term "flexible" is a relative term. For the purpose of examination, Examiner interprets that everything is flexible to some degree (i.e. even a steel beam is going to flex some amount).
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, 3-7, 9, 10, and 32-35 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.
Claim 1 recites “one or more of a second electrically insulating layer is formed on and extends along the outer peripheral wall” fails to comply with the written description requirement (emphasis added). The instant limitation allows more than one electrically insulating layer on the outer peripheral wall, which is not described in the specification.
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, 3, 5, 6, 10, and 32-35 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 5541566 (“Deeney”), in view of US Pat. No. 5540904 (“Bovenkerk et al.”), and in view of US Pat. No. 4983859 (“Nakajima et al.”).
With regards to Claims 1, 3, 32, and 33, Deeney teaches an apparatus comprising a plurality of adjacent magnetic material layers, each one of the plurality of adjacent magnetic material layers having a respective first central aperture, one or more first electrically insulating layers each having a respective second central aperture, each of the one or more first electrically insulating layers (i) being disposed between each adjacent magnetic material layer of the plurality of adjacent magnetic material layers and (ii) including a thermally conductive dielectric material, and (iii) defining a stacked structure together with the plurality of adjacent magnetic material layers, wherein the one or more first electrically insulating layers and the plurality of adjacent magnetic material layers are stacked coextensively with a central axis of the apparatus and cooperatively define the stacked structure having a first end and an opposing second end, and wherein the stacked structure includes an outer peripheral wall extending from the first end to the second of the stacked structure, and a first inner peripheral wall cooperatively defined by the respective first central aperture and the second central aperture, the first inner peripheral wall defining a central bore extending from the first end to the second end of the stacked structure, having a central axis co-located with the central axis of the apparatus. Deeney further teaches the at least one first electrically insulating layer includes a thermally conductive dielectric material of a polycrystalline carbon (Title, Abstract, Figs. 4-5 and 7, Col. 3: Line 53 bridging over to Col. 4: Line 5, and Col. 4: Lines 46-50 and 55-56).
While it appears that Deeney’s polycrystalline carbon is polycrystalline diamond, Deeney does not explicitly state its polycrystalline carbon is diamond, wherein the diamond is one or more of isotopically pure carbon-12 diamond or isotopically pure carbon 13-diamond. Deeney does not teach one or more second electrically insulating layer is further formed on and extends along the outer peripheral wall and the first inner peripheral wall extending form the first end to the second end of the stacked structure.
Bovenkerk et al. teaches a thermally conductive dielectric material comprising a polycrystalline diamond, such as isotopically pure carbon-12 diamond or isotopically pure carbon 13-diamond (Abstract). Bovenkerk also recognizes that single-crystal isotopically-pure carbon-12 or carbon 13 diamond are known to possess improved thermal conductivity (Abstract). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Deeney use an appropriate diamond, such as a single or polycrystalline isotopically pure carbon-12 diamond or isotopically pure carbon 13-diamond, as its thermally conductive dielectric material in order to obtain a material with desirable thermal conductivity (Abstract and Col. 1: Line 65 bridging over to Col. 2: Line 16).
Nakajima et al. teaches an apparatus comprising a plurality of adjacent magnetic material layers having a respective first central aperture, and at least one first electrically insulating layer having a respective second central aperture, the first electrically insulating layer being disposed between each adjacent magnetic material layer of the plurality of adjacent magnetic material layers (Element 15 in Fig. 6, and Col. 9: Line 66 bridging over to Col. 10: Line 5).
Nakajima et al. further teaches the at least one electrically insulating layer and the plurality of adjacent magnetic material layers cooperatively define a stacked structure having a first end and an opposing second end, wherein the stacked structure includes an outer peripheral wall extending from the first end to the second end of the stacked structure, and a first inner peripheral wall cooperatively defined by the respective first and second apertures. Nakajima et al. teaches at least one second electrically insulating layer (16, 17) made of a flexible preformed material member that formed on and extends along the outer and inner peripheral walls from the first end to the second end of the stacked structure (Figs. 5-6, and Col. 9: Line 66 bridging over to Col. 10: Line 5). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have second electrically insulating layers formed on the outer and first inner peripheral walls of Deeney to support the stacked structure (Col. 10: Lines 1-5).
With regards to Claims 5 and 6, Deeney teaches the one or more first electrically insulating layers have a thermal conductivity of greater than 100 W/m-K (Col. 4: Lines 1-3).
With regards to Claim 10, Deeney teaches the at least one electrically insulating layer is at least a first electrically insulating layer, the stacked structure including a first stack subassembly and a second stack subassembly, wherein the first stack subassembly includes a first magnetic material layer of the plurality of adjacent magnetic material layers and the at least first electrically insulating layer, wherein the second stack subassembly includes a second magnetic material layer of the plurality of adjacent magnetic material layers and at least a second electrically insulating layer, wherein the first stack subassembly is bonded to the second stack subassembly (Fig. 7 and Col. 4: Lines 46-50).
With regards to Claims 34 and 35, Deeney does not teach its apparatus further comprising at least one second inner peripheral wall defining a cooling channel extending lengthwise in a direction that is parallel to the central axis of the apparatus, and one or more of the second electrically insulating layer is further formed on and extends along the at least one second inner peripheral wall from the first end to the second end of the stacked structure.
However, Nakajima et al. teach its apparatus further comprising one or more second inner peripheral wall defining a cooling channel (12a, 12b) extending lengthwise in a direction that is parallel to the central axis of the apparatus, and at least one second electrically insulating layer (16, 17) is further formed on and extends along the at least one second inner peripheral wall from the first end to the second end of the stacked structure (Figs. 4-6, and Col. 9: Line 30 bridging over to Col. 10: Line 5). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Deeney’s apparatus comprise the claimed cooling channel(s) with the second electrically insulating layers to remove unwanted heat and be thermally stable.
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 5541566 (“Deeney”), in view of US Pat. No. 5540904 (“Bovenkerk et al.”), and in view of US Pat. No. 4983859 (“Nakajima et al.”) as applied to Claim 1 above, and further in view of US Pub. No. 20140246929 (“Francese et al.”).
With regards to Claim 4, the prior art of record teaches a thermally conductive dielectric material including diamond as set forth above.
Deeney does not teach its thermally conductive dielectric material further includes beryllium oxide, silicon carbide, boron nitride, or aluminum nitride.
However, Francese et al. teaches an electrically insulating layer comprising diamond and at least one of boron nitride and aluminum nitride [0022]. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Deeney’s electrically insulating layer further comprise of boron nitride or aluminum nitride to obtain a desirable thermal conductivity for a specific application [0022].
With regards to Claim 7, the prior art of record teaches at least one electrically insulating layer as set forth above.
Deeney does not teach its at least one electrically insulating layer includes a polymer diamond composite.
However, Francese et al. teaches an electrically insulating layer comprising a polymer diamond composite [0022]. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Deeney’s electrically insulating layer comprise of a polymer diamond composite to obtain a desirable thermal conductivity for its intended application [0022].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 5541566 (“Deeney”), in view of US Pat. No. 5540904 (“Bovenkerk et al.”), and in view US Pat. No. 4983859 (“Nakajima et al.”) as applied to Claim 1 above, and further in view of US Pat. No. 4605343 (“Hibbs et al.”).
The prior art of record teaches a thermally conductive dielectric material including diamond as set forth above.
Deeney does not teach an adhesive layer for adhering the one or more first electrically insulating layers to a magnetic material layer of the plurality of adjacent magnetic material layers.
However, Hibbs et al. teaches an adhesive layer (16) on its diamond sheet (12), and recognizes that its adhesive layer has a capability of bonding to a diamond surface (Col. 2: Lines 35-55). Hibbs et al. further teaches its adhesive layer (16) is between a diamond sheet (12) and a nickel protective layer (17) (Fig. 2 and Col. 2: Lines 35-51). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Deeney comprise an adhesion layer for adhering the at least one electrically insulating layer to a magnetic material layer of the plurality of adjacent magnetic material layers as claimed in order to provide necessary bonding and/or protection (Col. 2: Lines 40-50).
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 LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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