DETAILED ACTION
Response to Arguments
Applicant's arguments filed 03/17/2026 have been fully considered but they are not persuasive.
The applicant, in section A, argues that paragraph 31 provides support for the newly added claim limitations. This argument is not persuasive because, while paragraph 31 provides support for some of the newly added limitations, it is not clear that paragraph 31 provides support for two different types of inorganic fillers mixed with resin. While paragraph 31 appears to discuss a generic inorganic filler, it is not clear what specific material it is made of. It appears that this section of paragraph 31 refers to prior art of the cited Japanese publication, or prior art state in general. Paragraph 31 states that in particular the resin material contains…silica. It appears that this means that the specific inorganic filler material chosen to be used in the disclosed device is silica.
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 1-2 and 4-9 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 includes newly added limitation of “amorphous silica…among inorganic fillers in the resin material.” It is not clear from the cited section of the specification that there is sufficient support for this newly added limitation. It is not clear from the cited section of the disclosure that there is more than one inorganic material in the disclosed structure.
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.
Claim(s) 1-2 and 4-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitada (US 2014/0327329) in view of Table 17-1.
In re claim 1, Kitada, in figures 1-9, discloses a rotor core comprising: a stacked core (110) constituted by stacking a plurality of electromagnetic steel sheets (112) containing silicon (silicon is not explicitly mentioned, however, it is well known in the art that electromagnetic steel contains silicon), the stacked core including a magnet housing portion provided so as to extend in a stacking direction of the electromagnetic steel sheets; a permanent magnet (120) disposed in the magnet housing portion of the stacked core; and a thermosetting resin material (130) filled in the magnet housing portion between the stacked core and the permanent magnet to fix the permanent magnet in the magnet housing portion, the resin material contains silica as an inorganic filler (this is disclosed throughout the specification; paragraphs 68-70 disclose the amounts of silica that is within the claimed weight range). Kitada teaches the expansion coefficient of resin material extending down to 10 um/°C (paragraphs 157-160) but does not explicitly teach the expansion coefficient of steel. Table 17-1 however, discloses iron and some steels having an expansion coefficient of 11.7 um/°C as well as other steels having coefficients close to the claimed range. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used steel having an expansion coefficient with the claimed values as disclosed by Table 17-1 in the device of Kitada, to allow for improved retention of the magnets within the steel sheets.
In re claim 2, Kitada in view of Table 17-1 discloses that the coefficient of linear expansion of the resin material is smaller than the coefficient of linear expansion of the electromagnetic steel sheets.
In re claim 4, Kitada in view of Table 17-1 discloses that the coefficient of linear expansion of the resin material is equal to or less than the coefficient of linear expansion of the electromagnetic steel sheets, and more than a coefficient of linear expansion of the permanent magnet (the permanent magnet of Kitada is made from the same material as the magnet of the invention (see paragraph 34) thereby inherently meeting this limitation).
In re claim 5, Kitada in view of Table 17-1 discloses that the coefficient of linear expansion of the permanent magnet is in the claimed range (this is inherent because Kitada magnet is made from the same material as the magnet of the invention).
In re claim 6, Kitada in view of Table 17-1 discloses the coefficient of linear expansion of the resin material is a value that is closer to the coefficient of linear expansion of the electromagnetic steel sheets than a middle value between the coefficient of linear expansion of the electromagnetic steel sheets and the coefficient of linear expansion of the permanent magnet (this is inherently present since the materials of the prior art are the same as the materials of the invention).
In re claim 7, Kitada in view of Table 17-1 discloses that the magnet housing portion is a space formed by overlapping hole portions provided in the electromagnetic steel sheets in an axial direction, a periphery of the space being closed (as best seen in figures 3-6).
In re claims 8-9, Kitada in view of Table 17-1 discloses a process of manufacturing. In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e resin, does not depend on its method of production, i.e. heating and curing at first and second temperatures. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
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 Alexander Talpalatski whose telephone number is (571)270-3908. The examiner can normally be reached 10 AM - 6 PM PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shawki Ismail can be reached at 5712723985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alexander Talpalatski/Primary Examiner, Art Unit 2837
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