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
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-10, 13-20, and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Xue et al (CN Pat Num 206179876 U, herein referred to as Xue) in view of Koyama et al (EP Pat Num 0602647, herein referred to as Koyama). Xue discloses a resin coated superconducting wire (Fig 1) that has excellent mechanical properties and extreme current carrying ability (Paragraph 7). Specifically, with respect to claim 1, Xue discloses a resin coated superconducting wire (Fig 1) comprising an insulating material (7) comprising an insulating material (Paragraph 25) and a single superconducting wire (5, 6) in the insulating material (7) and forming the outermost surface of the resin coated superconducting wire (Fig 1), wherein, in a transverse cross section of the resin coated superconducting wire (Fig 1), a cross section area of the insulating layer (7) is larger than that of the single superconducting wire (5, 6). With respect to claim 2, Xue discloses that the single superconducting wire (6) may comprises niobium-titanium (Paragraph 26) and the single superconducting wire (5) may comprise magnesium diboride (Paragraph 26). With respect to claims 13-14, Xue discloses that the single superconducting wire (5,6) is a single wire (Fig 1) made of a plurality of stranded wires (5, 6). With respect to claim 16, Xue discloses that the transverse section of the resin coated superconducting wire (5, 6) has a circular shape (Fig 1). With respect to claim 24, Xue discloses that the single superconducting wire (5,6) is a single wire (5 or 6). With respect to claim 25, Xue discloses that the cross section of the resin coated superconducting wire (Fig 1) is completely outside the single superconducting wire (5 or 6).
However, Xue doesn’t necessarily disclose the insulating layer being a synthetic resin material (claim 1), nor the synthetic resin material being a thermoplastic resin material (claim 3), nor the thermoplastic resin material having a melting point of 290oC or less (claim 4), nor the thermoplastic resin material having a melting point of 210oC or less (claim 5), nor the synthetic resin material being a polyamide or a polyolefin (claim 6), nor the polyamide being nylon (claim 7), nor the synthetic resin material being nylon 11, nylon 12, or polyethylene (claim 8), nor the synthetic resin material is an amorphous resin having a glass transition point of 2500C or less (claim 9), nor superconducting wire being utilized in a superconducting coil (claim 19), nor the superconducting wire being utilized in a shield coil (claims 20 & 23), nor the ratio of the cross sectional are of the matrix resin to the single conducting wire being 2 or more (claim 22).
Koyama teaches a resin coated superconducting wire (Figs 1-8), that may be utilized in superconducting magnet, a superconducting magnet coil, and a magnetic resonance imaging apparatus (Page 2, lines 5-6), wherein the superconducting wire utilizes a resin of low cooling restricted thermal stress and high toughness (Page 3, lines 3-4). Specifically, with respect to claims 1 & 3-9, Koyama teaches a resin coated superconducting wire (3, 4, Fig 1) comprising a matrix resin (2), wherein the resin (2) may be a thermoplastic resin, such as polyamide, polyethylene, and polyether sulfone (Page 4, lines 33-39), which has an melting point of 290oC or less and an amorphous resin having a glass transition point of 2500C or less (i.e. applicant has stated that polyether sulfone is a material exhibiting such characteristics). With respect to claims 19-20, Koyama teaches that superconducting wire (3, 4, Fig 1) may be utilized in a superconducting coil (Page 2, line 13) or a shield coil in a MRI machine (Page 22, lines 39-44).
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the resin coated superconducting wire of Xue to comprise the material and shape configurations as taught by Koyama because Koyama teaches that such a configuration provides a resin coated superconducting wire (Figs 1-8), that may be utilized in superconducting magnet, a superconducting magnet coil, and a magnetic resonance imaging apparatus (Page 2, lines 5-6), wherein the superconducting wire utilizes a resin of low cooling restricted thermal stress and high toughness (Page 3, lines 3-4).
Modified Xue also doesn’t necessarily disclose the transverse section of the resin coated superconducting wire being rectangular shape (claim 15), nor the resin coated superconducting wire has a dimensional accuracy of +0.10 mm or less in width and a dimensional accuracy of +0.10 mm or less in thickness (claim 17), nor the resin coated superconducting wire has a dimensional accuracy of +0.05 mm or less in width and a dimensional accuracy of +0.05 mm or less in thickness (claim 18), nor the cross section area of the matrix resin to that of the single superconducting wire to be 2 or more (claim 22).
With respect to claims 15 & 22, it would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the resin coated superconducting wire of modified Xue to comprise rectangular shape and the cross section area of the matrix resin to that of the single superconducting wire (5, 6) may be 2 or more since it has been held that a change in form cannot sustain patentability where involved is only extended application of obvious attributes from a prior art. In re Span-Deck Inc. vs. Fab-Con Inc. (CA 8, 1982) 215 USPQ 835.
With respect to claims 17-18, it would have been obvious to one having ordinary skill in the art at the time the invention was made the resin coated superconducting wire of modified Xue to comprise the resin coated superconducting wire has a dimensional accuracy of +0.10 mm or less in width and a dimensional accuracy of +0.10 mm or less in thickness, or more specifically a dimensional accuracy of +0.05 mm or less in width and a dimensional accuracy of +0.05 mm or less in thickness, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 10-12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Xue (CN Pat Num 206179876 U) in view of Koyama (EP Pat Num 0602647), as applied to claim 1 above (herein referred to as modified Xue), further in view of Brechna (Pat Num 3,527,873). Modified Xue discloses a resin coated superconducting wire (Fig 1) that has excellent mechanical properties and extreme current carrying ability (Paragraph 7). Specifically, with respect to claim 11, modified Xue teaches that the inner matrix resin layer (2) may be an olefin-based copolymer, polyethylene or epoxy resin containing a carboxylic acid metal salt (Page 6, lines 30-37 of the Koyama reference). With respect to claim 12, modified Xue teaches that the inner matrix resin layer (2) may be an olefin-based copolymer, polyethylene or epoxy resin containing a carboxylic acid metal salt (Page 6, lines 30-37 of the Koyama reference).
However, modified Xue doesn’t necessarily disclose the resin coated superconducting wire is a multilayer coated wire, and the matrix resin comprises two or more matrix resin layers including an inner matrix resin layer covering an outer circumference of the single superconducting wire and at least one outer matrix resin layer covering an outer circumference of the inner matrix resin layer (claim 10), nor the single superconducting wire comprises one selected from the group consisting of a composite of metal and niobium-titanium, a composite of metal and niobium-3 tin (Nb3Sn), and a composite of metal and magnesium diboride (claim 21).
Brechna teaches a resin coated superconducting wire (Figs 1-3) that may be utilized as both AC and DC transmission lines, magnets, and electrically machines, while also having high heat capacity and more attractive economically (Col 3, lines 5-14). Specifically, with respect to claim 10, Brechna teaches a resin coated superconducting wire (10, Fig 1) comprising a matrix resin (18) comprising a synthetic resin material (i.e. epoxy resin, Col 3, lines 51-53) and a superconducting wire (14) in the matrix resin (18), wherein, in a transverse cross section of the resin coated superconducting wire (10), a cross section area of the matrix resin (18) is larger than that of the superconducting wire (14, Fig 1), wherein the resin coated superconducting wire (10) is a multilayer coated wire (Fig 1), wherein matrix resin (18 & 24) comprises two or more matrix resin layers (18 & 24) including an inner matrix resin layer (18) covering an outer circumference of the superconducting wire (14) and at least one outer matrix resin layer (24) covering an outer circumference of the inner matrix resin layer (18, Fig 1, Col 3, lines 45-66). With respect to claim 21, Brechna teaches that the superconducting wire (10) may comprises niobium titanium (Col 1, lines 34-36), wherein the superconducting conductor may be incorporated with metals, such as silver, copper, or aluminum to form a superconductor, in order to protect the superconducting wire against possible destruction (Col 1, lines 56-64).
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the resin coated superconducting wire of modified Xue to comprise the resin coated superconducting wire being a multilayer coated wire configuration as taught by Brechna because Brechna teaches that such a configuration provides a resin coated superconducting wire (Figs 1-3) that may be utilized as both AC and DC transmission lines, magnets, and electrically machines, while also having high heat capacity and more attractive economically (Col 3, lines 5-14).
Response to Arguments
Applicant's arguments filed July 15, 2025, have been fully considered but they are not persuasive. Specifically, the applicant argues the following
A) Therefore, Xue's Figure 1 does not teach or suggest "in a transverse cross section of the resin coated superconducting wire, a cross section area of the matrix resin is equal to or larger than that of the single superconducting wire" as recited in Claim 1.
B) In Koyama. a superconducting wire is wound to obtain a coil and then the coil is impregnated into a resin to fix the wire with the resin. Winding Xue's superconducting wire to manufacture a coil like Koyama is technically difficult. Arguendo. even if Xue is modified in view of Koyama, a skilled artisan would not have arrived at the resin coated superconducting wire of the present application.
C) Xue does not teach or suggest "a single strand of superconducting wire" as recited in Claim 24.
D) Claim 11 recites "a copolymer of the olefin-based resin" instead of "a copolymer of an olefin- based resin" or "a copolymer of any olefin-based resin". Thus, Koyama's olefin copolymers do not teach or suggest "a copolymer of the olefin-based resin" of Claim 11.
With respect to arguments A & C, the examiner respectfully traverses. Firstly, it must be stated that the examiner is required to give the claims the broadest reasonable interpretation. Specifically, MPEP 2111 states:
During patent examination, the pending claims must be “given *>their< broadest
reasonable interpretation consistent with the specification.” > In re Hyatt, 211 F.3d
1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).< Applicant always has the
opportunity to amend the claims during prosecution, and broad interpretation by the
examiner reduces the possibility that the claim, once issued, will be interpreted more
broadly than is justified. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-
51 (CCPA 1969).
Given the above state guidelines, the examiner respectfully submits that the term “a single superconducting wire” is referred to just that. Specifically, Xue teaches that superconducting stranded wire includes an single intermediate wire (5) and six stranded single superconducting wires (6) evenly twisted on the circumference of the intermediate superconducting wire (5, Paragraph 8). The claims call for “a single superconducting wire in the matrix resin” wherein “the cross section area of the matrix resin is equal to or larger than that of the single superconducting wire” as denoted by claim 1. It is respectfully submitted that Xue discloses a single superconducting wire (single 5 or any single 6) is disclosed in the matrix resin. While the single superconducting wires (5 & 6) together form a single stranded superconducting wire, Xue clearly discloses that the single superconducting wire (5 or 6) is incorporated in the matrix resin material, and therefore teaches “a single superconducting wire in the matrix resin”. Also, it is unclear where the applicant obtains the numerical values for determining the areas presented in the arguments, since Xue doesn’t disclose any such numbers. However, hypothetically speaking, if the numerical values were disclosed and utilized with respect to the claim language the area would be area of (5, 6, 7) – the area of one single conductor (5 or 6), therefore resulting in 37.77 however, the area of a single superconducting wire is 7.21 (single superconducting wire), and therefore 37.77 (area of matrix resin) is greater than the area of a single superconducting wire 7.21 and therefore means the claimed language.
With respect to argument B, the examiner respectfully traverses. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With respect to argument D, the examiner respectfully traverses. Claim 11 recites “wherein the inner matrix resin layer comprises an olefin-based resin having at least one functional group selected from the group consisting of an epoxy group, an oxazolyl group, an amino group, and a maleic anhydride residue, or comprises a copolymer of the olefin-based resin.” The examiner respectively submits that the claim 11 has alternative language, such as A or B. In this case, the applicant is arguing that none of the cited references disclose A, however, if A or B is present in the prior art references, then claim 11 is met. In this case, Koyama teaches a resin coated superconducting wire (3, 4, Fig 1) comprising a matrix resin (2), wherein the resin (2) may be a thermoplastic resin, such as polyamide, polyethylene, and polyether sulfone, such as high density polyethylene (Page 4, lines 33-39), all of which are copolymer of olefin based resins. Therefore, since the combination of Xue and Koyama teaches that usage of copolymers of olefin based resin, it is respectfully submitted that the claim limitations of claim 11 are met.
Given the above comments, the examiner respectfully submits that the above 35 USC 103(a) rejections are proper and just.
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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MAYO III whose telephone number is (571)272-1978. The examiner can normally be reached on M-Thurs (5:30a-3:00p) Fri 5:30a-2p (w/alternating Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani Hayman can be reached on (571) 270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/William H. Mayo III/
William H. Mayo III
Primary Examiner
Art Unit 2847
WHM III
November 3, 2025