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 .
Disposition of Claims
Claims 21-23, 27-40 and 42 are pending in the application. Claims 1-20, 24-26 and 41 have been cancelled. Claims 33-40 are withdrawn from consideration due to Applicant’s elections.
Amendments to claims 21 and 42, filed on 8/28/2026, have been entered in the above-identified application.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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) 21, 23, 27-28, 31-32 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US 2007/0089899 A1) with evidence from Wikipedia (“Polyethylene terephthalate,” attached).
Regarding claims 21 and 31-32, Roberts teaches an electric insulating material that is composed of a glass fiber layer with a mica layer disposed thereon (Abstract). The mica layer is typically in the form of mica paper, although mica flakes, flake paper, or splittings may also be used ([0019]). The glass fiber layer is typically a woven glass fabric, but non-woven fabrics may be used where the fabric is sufficiently strong and thin ([0012]). For the electric insulating material, a mica layer is typically laminated to the glass fiber layer by means of at least one polymeric resin, and commonly two or more resins are used to bind the mica layer to the glass fabric ([0018]). Suitable resin systems include thermosetting epoxy resins (a precursor binder composition comprising a thermoset material as claimed), especially epoxy phenolic novolac resins, butadiene-based resins, polyesters, silicones, bismaleimides and cyanate esters ([0019]). Resin content may range from about 3% to about 25% by weight, preferably from about 5% to about 18% by weight in tapes for use in a VPI process ([0019]). A basic process for production of a mica tape is to impregnate the mica paper and/or the glass fabric with a resin and laminate the two ([0021]). A polymeric film, for example, a polyester or polyimide, may be included in the electric insulating materials, usually on one or both outer surfaces thereof the two ([0022]).
Roberts does not explicitly disclose an embodiment in which the thermoset material is 5% to 49% by weight of a total binder formulation, a thermoplastic material is 51% to 95% by weight of a total binder formulation and the bonded non-woven mat has a Gurley stiffness of 500 mg to 2000 mg.
However, in Example 1 (Tape #1), Roberts teaches a layer of polyethyleneterephthalate film (a coating binder composition comprising a thermoplastic material) was applied in a thickness of about 0.25 mil ([0027]). The examiner notes that, in Example 2 (Tape #2), an additional layer of polyethyleneterephthalate film (alternatively, a coating binder composition comprising a thermoplastic material) is placed on the glass scrim side ([0028]). Table 1 shows that Tape #2 has an approximate weight of 0.031 lbs/sq. ft (about 151 g/m2, as calculated by the examiner) and a Gurley stiffness of 600 mg.
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have similarly made the tapes in the various embodiments of Roberts with a 0.25 mil thick polyethyleneterephthalate (PET) film on one or both sides, with an overall approximate weight of about 0.031 lbs/sq. ft (about 151 g/m2) and with a Gurley stiffness of about 600 mg in order to obtain electrical insulation tapes suitable for use in the applications taught by Roberts, such as for wrapping and insulating electrical conductors like wires or coils used in high voltage electrical motors and generators (Abstract, [0024]-[0025] and the paragraphs cited above).
As evidenced by Wikipedia, PET has a density of about 1.4 g/cm3 (see the Table on the right). As calculated by the examiner, a PET film with a thickness of about 0.25 mil would therefore have an area weight of about 8.9 g/m2. As applied above, Roberts teaches that the thermosetting resin content may range from about 3% to about 25% by weight in tapes for use in a VPI process ([0019]). As calculated by the examiner for a tape with an approximate weight of 0.031 lbs/sq. ft (about 151 g/m2), the amount of the thermosetting resin would range from about 4.5 g/m2 to about 38 g/m2. In this case, the amount of thermoset material by weight of the total amount of thermoset material and PET (thermoplastic material) would range from about 34 to 81 wt.%, and the amount of PET by weight of the total amount of thermoset material and PET would range from about 19 to 66 wt% (e.g., 8.9/[8.9+4.5] = 66.4 wt%), which overlaps with the claimed ranges.
Regarding claim 23, with regard to the claimed tensile strength property, the examiner notes that the materials and structure of Roberts discussed above are the same as or substantially the same as those disclosed by applicant. Therefore, it is the position of the Office that the composition of Roberts would have the claimed properties as the same compound necessarily has the same properties. In the alternative, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to expect that the claimed properties would be so provided, as the reference teaches the same materials as those claimed, and as the properties cannot be separated from the materials. 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). Therefore, absent an objective showing to the contrary, Roberts meets the claimed limitations.
Regarding claims 27-28, as applied above to claim 21, as calculated by the examiner for a tape with an approximate weight of 0.031 lbs/sq. ft (about 151 g/m2), the amount of the thermosetting resin would range from about 4.5 g/m2 to about 38 g/m2, which overlaps with the claimed ranges of 2 g/m2 to 6 g/m2 and 2.5 g/m2 to 4.5 g/m2 recited, respectively, in claims 27 and 28. Therefore, Roberts meets the claimed limitations. In addition, the amounts are so close that prima facie one skilled in the art would have expected them to have the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 42, the examiner notes that applying a layer of polyethyleneterephthalate film to the glass fabric impregnated with the thermosetting resin would result in the claimed core-shell arrangement. In addition, Roberts in view of Staley is applied below to claim 42.
Claim(s) 21-23, 27-28, 31-32 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US 2007/0089899 A1) with evidence from Wikipedia (“Polyethylene terephthalate,” attached), as applied to claim 21 above, in view of Groff (US Patent No. 3,539,438).
Regarding claims 21, 23, 27-28, 31-32 and 42, Roberts remains as applied above, teaching the claimed limitations.
In addition, or in the alternative, with respect to the claimed Gurley stiffness ranges of 500 mg to 2000 mg (claim 21) and 1000 mg to 2000 mg (claim 22), Groff is further applied below.
Groff teaches an electrically insulative soft, pliable mica-paper tape (Abstract). The tape, for example, is sufficiently flexible that it may be tightly wound on itself without splitting or being damaged (col. 1, lines 52-54). The new tape is conveniently wrapped around all varieties of coils to give a snug, conforming electrically insulative cover (col. 1, lines 54-56). In an embodiment, in Example 1, Groff teaches that a tape having three layers—mica paper, glass cloth, and polyethylene terephthalate film—was prepared using a resin composition (col. 4, lines 34-36). The initial Gurley stiffness of the tape was 505 milligrams and, after one week's accelerated aging at 180° C. (356° F.), was 1,363 milligrams (col. 4, lines 62-65). The examiner notes that Examples 2-6 also teach tapes having an initial Gurley stiffness ranging from 637 mg to 1318 mg, and an aged Gurley stiffness ranging from 1,110 mg to 1,567 mg.
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have provided the electrically insulating tape of Roberts with an initial stiffness of around 505 mg and/or an aged Gurley stiffness of around 1,360 milligrams in order to obtain a tape that is sufficiently flexible that it may be tightly wound on itself without splitting or being damaged and/or can conveniently be wrapped around all varieties of coils to give a snug, conforming electrically insulative cover, even after long periods of storage, as suggested by Groff (see the paragraphs cited above).
Claim(s) 23 is rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US 2007/0089899 A1) with evidence from Wikipedia (“Polyethylene terephthalate,” attached), as applied to claim 21 above, in view of Lintz et al. (US 2012/0085567 A1).
Regarding claim 23, Roberts remains as applied above.
In addition, or in the alternative, with respect to the bonded non-woven mat having a tensile strength (MD+CD) of at least 105 N/ 50 mm as claimed, Lintz is further applied below.
Lintz teaches an electrical insulation material comprising a fiber component, a binder element, and a dielectric additive (Abstract). The sheet or tape may have a machine direction (MD) tensile strength of from about 10 lbs/inch width (4.5 kg/25.4 mm) to about 100 lbs/inch width ( 45.4 kg/25.4 mm) (about 87.6 N/ 50mm to about 876 N/ 50mm, as calculated by the examiner) ([0018] and [0061]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have provided the electrical insulation tape of Roberts with a tensile strength of about 87.6 N/ 50mm to about 876 N/ 50mm at least in the MD direction in order to provide sufficient strength for wrapping of the tape on an electrical conductor, as suggested by Lintz ([0003] and the paragraphs cited above).
Claim(s) 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US 2007/0089899 A1) with evidence from Wikipedia (“Polyethylene terephthalate,” attached), as applied to claim 21 above, in view of Staley (GB 2081732 B, see attachment).
Regarding claims 29-30, Roberts remains as applied above.
Roberts does not explicitly disclose wherein the coating binder is present in the bonded non-woven mat in an amount of 2 g/m2 to 8 g/m2, or in an amount of 3.5 g/m2 to 5.5 g/m2.
However, Staley teaches a composite electrical insulation tape based on polybutadiene impregnated mica paper (page 1, lines 4-6). The electrical insulation tape comprises (d) a polyethyleneterephthalate sealing layer next to the mica on a side of the mica opposite a glass scrim (page 2, lines 7-18). The examiner notes that the tape may additionally contain a layer of polyethyleneterephthalate on the glass scrim side (page 2, lines 25-26 and 7-18). Preferably, layer (d) is up to about one mil thick (25.4 microns) (pages 2-3, lines 26-4).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have included the polyethyleneterephthalate layer on one or both sides of the electrical insulation tape of Roberts in a thickness of up to about one mil thick (25.4 microns) in order to provide a sealing/backing layer that can help ensure that a polybutadiene impregnant does not migrate out of the tape during processing, storing and subsequent handling of the tape (pages 4-5, lines 25-24).
As calculated by the examiner, for PET, which has a density of about 1.4 g/cm3, a thickness of up to about one mil thick is equivalent to an area weight of up to about 35.6 g/m2.
Regarding claim 42, Roberts remains as applied above.
In addition, the examiner notes that Staley describes the PET layer as being a sealing layer (page 2, lines 16-18 and 25-26). To ensure that a mica-polybutadiene impregnant does not migrate out of a tape during processing, storing and subsequent handling, polymeric sealing layers are applied to both sides of the impregnated mica paper-glass scrim composite (pages 4-5, lines 25-5). Again, the key is sealing of the mica impregnant and securing the glass scrim (page 5, liens 17-18). The polyester layer not only serves as a backing for the mica and glass scrim, but has excellent insulating properties as well (page 5, lines 18-21).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have applied the polyester layer in such a manner that it forms a shell around the thermosetting resin (e.g., polybutadiene) impregnated in and/or on the glass mat in order to ensure that the resin-impregnated glass mat is fully sealed, as suggested by Staley (see the paragraphs cited above).
Claim(s) 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US 2007/0089899 A1) with evidence from Wikipedia (“Polyethylene terephthalate,” attached) and in view of Groff (US Patent No. 3,539,438), as applied to claim 21 above, further in view of Staley (GB 2081732 B, see attachment).
Regarding claims 29-30, Roberts in view of Groff remains as applied above.
Roberts in view of Groff does not explicitly disclose wherein the coating binder is present in the bonded non-woven mat in an amount of 2 g/m2 to 8 g/m2, or in an amount of 3.5 g/m2 to 5.5 g/m2.
However, Staley teaches a composite electrical insulation tape based on polybutadiene impregnated mica paper (page 1, lines 4-6). The electrical insulation tape comprises (d) a polyethyleneterephthalate sealing layer next to the mica on a side of the mica opposite a glass scrim (page 2, lines 7-18). The examiner notes that the tape may additionally contain a layer of polyethyleneterephthalate on the glass scrim side (page 2, lines 25-26 and 7-18). Preferably, layer (d) is up to about one mil thick (25.4 microns) (pages 2-3, lines 26-4).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have included the polyethyleneterephthalate layer on one or both sides of the electrical insulation tape of Roberts in view of Groff in a thickness of up to about one mil thick (25.4 microns) in order to provide a sealing/backing layer that can help ensure that a polybutadiene impregnant does not migrate out of the tape during processing, storing and subsequent handling of the tape (pages 4-5, lines 25-24).
As calculated by the examiner, for PET, which has a density of about 1.4 g/cm3, a thickness of up to about one mil thick is equivalent to an area weight of up to about 35.6 g/m2.
Regarding claim 42, Roberts remains as applied above.
In addition, the examiner notes that Staley describes the PET layer as being a sealing layer (page 2, lines 16-18 and 25-26). To ensure that a mica-polybutadiene impregnant does not migrate out of a tape during processing, storing and subsequent handling, polymeric sealing layers are applied to both sides of the impregnated mica paper-glass scrim composite (pages 4-5, lines 25-5). Again, the key is sealing of the mica impregnant and securing the glass scrim (page 5, liens 17-18). The polyester layer not only serves as a backing for the mica and glass scrim, but has excellent insulating properties as well (page 5, lines 18-21).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have applied the polyester layer in such a manner that it forms a shell around the thermosetting resin (e.g., polybutadiene) impregnated in and/or on the glass mat in order to ensure that the resin-impregnated glass mat is fully sealed, as suggested by Staley (see the paragraphs cited above).
Response to Arguments
Applicant’s arguments with respect to claim(s) 21-23, 27-32 and 42 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Worrell whose telephone number is (571)270-7728. The examiner can normally be reached Monday-Friday.
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/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
