DETAILED ACTION
Claims 1-11 of U.S. Patent Application No. 17/876,739, filed on 29 July, 2022, were presented for examination. In the response to election/restriction filed 18 September, 2024, claims 1-10 were elected for examination without traverse. In the Office Action mailed, 18 November, 2024, claim 11 was removed from consideration. In the response filed 27 January, 2025, claim 2 was canceled and claim 11’s status was listed as withdrawn. In the response filed 25 September, 2025, claims 4, 7, and 9 were canceled. Claims 1, 3, 5-6, 8, and 10-11 are currently pending in the application, with claim 11 withdrawn.
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 Arguments
Applicant's arguments filed 25 September, 2025, have been fully considered but they are not persuasive.
Beginning on the bottom of page 6 of the arguments/remarks, Applicant lists the rejections of claims 1, 3, and 6-8 under 35 U.S.C. 102(a)(1) as anticipated by Yoshinaga, claims 4 and 9 under 35 U.S.C. 103 as unpatentable over Yoshinaga, and claims 5 and 10 under 35 U.S.C. 103 as unpatentable over Yoshinaga in view of Ishikawa.
In the main bulk of page 5 of the arguments/remarks, claim 1 as currently amended is provided in full, and at the bottom of page 5, a handful of the Examiner’s interpretations of certain nomenclature in the Yoshinaga reference are listed without comment. The main bulk of page 8 consists in comparing portions of claim 1, as it appeared before the most recently filed amendment, with Yoshinaga.
The primary arguments against the anticipation by the Yoshinaga begin at the top of page 9. Therein Applicant argues that Yoshinaga is silent with regard to “wherein in a magnetization process of magnetizing the magnet body, a magnetizer facing an outer peripheral surface of the field magneton core applies a first magnetic field intensity to the magnet body at an end in an axial direction of the field magneton and a second magnetic field intensity to the magnet body at a center in the axial direction of the field magneton, the first magnetic intensity being greater than the second magnetic intensity and the second magnetic intensity being less than a magnetic intensity to saturate the magnet body” which recitation, after the most recently filed amendment, is fully incorporated into claim 1.
The Examiner does concur that Yoshinaga is at least partially silent with regard to a non-negligible proportion of the clause cited by Applicant and which is now the most extensive clause of claim 1.
The Examiner first notes that in addition to these limitations being inserted into claim 1 via the amendment, a significant amount of content was deleted from claim 1, such that the claim is completely different now from its pre-amended form.
The Examiner asserted in the prior Office Action during the rejection of claim 1 therein, while providing citations from the MPEP, that it has been long held, and firmly established by case law, that the process of manufacturing a product does not form a determination of patentability of the product itself. MPEP 2113(I) says, and it is quoted multiple times within this Office Action lest Applicant misses the importance of it apropos the currently-amended claim 1, “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 does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”. Applicant is advised to review the relevant sections of the MPEP on this matter (Section 2113) in preparing a reply or otherwise furthering the prosecution.
Claim 1, as currently amended, does not have any structure or feature that ties it to the process on which Applicant is resting their case, other than “residual magnetic flux density” which Yoshinaga explicitly teaches as remnant magnetic flux density. Yoshinaga simply teaches the structural features of claim 1 including the higher residual flux density near the axial end and the lower residual flux density at the axial center. The process for making Yoshinaga’s machine is not at issue herein. Claim 1 comprises multiple structural limitations, and also the limitation about residual flux densities, which are taught by Yoshinaga’s disclosure.
Regardless of how the machine is manufactured, how its magnets are sourced, how its magnets are magnetized, how it is shipped to its location of use, how it is incorporated into the mechanism it will eventually drive with mechanical torque, the product (machine) consists or does not consist of a finite combination of elements, and for applicability vis-à-vis a product claim (such as for a machine), those elements need to be verifiable in their present state, the state of evidentiary inspection, to be able to determine what is constituted by the product and whether it infringes on the claim.
The relevant citation from the MPEP is quite explicit about these matters and the case law provided therein is instructive.
The Examiner emphasizes that, so long as the application is directed to product/apparatus claims, this impediment is apparently substantial, at least insofar as Applicant’s attempts to claim/argue around Yoshinaga have been shown to come up against it. If the method of making the magnets is the only content within the specification as originally filed that can be found to circumvent the prior art applied in the prosecution so far, Applicant is reminded that the withdrawn claim 11, having been withdrawn as directed to a non-elected process invention, can form the basis of a Divisional Nonprovisional U.S. Patent Applicant as long as the Divisional Applicant is filed before this Application is abandoned.
As currently amended, claim 1 is indistinguishable in structure and form from Yoshinaga, regardless of the process clause introduced into it in the most recent amendment, because it has no structure defining over Yoshinaga that is not a process step or a relationship directly tied to said process step that cannot be verified without invoking the process step (such as the later limitation in claim 1 wherein the residual flux density is “based on the applied first magnetic intensity and the applied second magnetic intensity”).
Therefore, even though Yoshinaga is “silent” to some of the process limitations of claim 1, the rejection is maintained, even though claim 1 has been altered so extensively.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 6, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshinaga (US 2005/0179334 A1).
With respect to claim 1, Yoshinaga teaches a rotating electric machine (see abstract, line 1), comprising:
a field magneton [rotor 20]; and
an armature [stator 30] (see ¶ 0044),
wherein the field magneton [20] comprises:
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a field magneton core [11]; and
a magnet body [magnet 13] (see ¶ 0043),
wherein in a magnetization process of magnetizing the magnet body, a magnetizer facing an outer peripheral surface of the field magneton core applies a first magnetic field intensity to the magnet body at an end in an axial direction of the field magneton and a second magnetic field intensity to the magnet body at a center in the axial direction of the field magneton, the first magnetic intensity being greater than the second magnetic intensity and the second magnetic intensity being less than a magnetic intensity to saturate the magnet body {see MPEP 2113(I) – PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS – states “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 does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim") – in other words, since Yoshinaga teaches the structural elements/properties of the claim outside of this process clause, the activities performed during a magnetization step to manufacture the magnet body do not distinguish the claimed machine over Yoshinaga’s, for the claimed invention and Yoshinaga are undistinguishable once the manufacturing process has been completed}, and
wherein a residual magnetic flux density of the magnet body [13] at a center [at rotor member 21] (see annotated excerpt of fig. 6 attached below) in an axial direction [along shaft line 10] of the field magneton [20] is lower than a residual magnetic flux density of the magnet body [13] at an end [at rotor member 22a] in the axial direction of the field magneton [20] (¶ 0082, lines 4-10 recite “remanent flux densities of the magnets 13 are adjusted individually… each magnet 13 embedded in the first rotor member 21 is less in the remanent flux density than each magnet 13 embedded in the second rotor member 22 by 25-75 percents” – the Examiner equates the term “remanent flux density” with “residual flux density” as they both generally mean “the flux density remaining after the magnetizing field has been removed”) based on the applied first magnetic intensity and the applied second magnetic intensity {this sub-clause is connected and inextricably linked, patentability-wise, to the clause above which was entirely directed to the process of manufacturing and to which the Examiner laid forth a product-by-process rationale under MPE 2113(I) – again, repeating from MPEP 2113(I), “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”}.
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wherein a material of the magnet body at the center is the same as a material of the magnet body at the end (the reference is silent as to the type/types of magnets for 13 – in the absence of discussion of their being different, the default understanding is necessarily that there is only one type of magnet being used – this interpretation is reinforced by the consistency in using the same reference numeral, 13, for all the magnets of all rotor segments throughout the disclosure).
With respect to claim 3/1, Yoshinaga teaches the machine of claim 1, and further teaches wherein the magnet body includes:
an end magnet [a magnet 13 residing in rotor member 22a] arranged at the end in the axial direction [along shaft direction 10] of the field magneton [20]; and
a center magnet [a magnet 13 residing in rotor member 21] arranged on the center side in the axial direction [along shaft direction] of the field magneton [20] with respect to the end magnet (the magnets 13 in rotor member 22a cannot be integral or continuous with the magnets 13 in rotor member 21 because the rotor members are skewed – see the abstract and ¶ 0049 and 0055), and
wherein a residual magnetic flux density of the center magnet [13 in 21] is lower than a residual magnetic flux density of the end magnet [13 in 22a] ((¶ 0082, lines 4-10 recite “remanent flux densities of the magnets 13 are adjusted individually… each magnet 13 embedded in the first rotor member 21 is less in the remanent flux density than each magnet 13 embedded in the second rotor member 22 by 25-75 percents”).
With respect to claim 6/1, Yoshinaga teaches the machine of claim 1, and further teaches wherein the field magneton [20] is skewed in a plurality of steps in the axial direction [along the shaft direction 5] of the field magneton [20] (see abstract, which recites that the first and second rotor members are formed into a skewed type” – so for the embodiment of fig. 6 and ¶ 0081-0082, there would be two skew steps – there are fifty other mentions of skewing the rotor members 21/22 in the reference, and all nine of the “modifications” of ¶ 0059-0086 are different approaches for adjusting the amounts of field magnetic flux; the adjusting and the skewing are two complementary and intertwined endeavors of the reference – even though the “seventh modification” of ¶ 0081-0082 does not mention skewing, since these modifications are a listing of various ways of the adjusting. In other words, the first embodiment, consisting of all nine modifications, comprises in every modification, a) skewing and b) adjusting the field magnetic flux. The “modifications” take for granted that the rotor members are skewed relative to each other, and just deals with the nine approaches to adjusting the field magnetic flux).
With respect to claim 8/3/1, Yoshinaga teaches the machine of claim 3, and further teaches wherein the field magneton [20] is skewed in a plurality of steps in the axial direction [along the shaft direction 5] of the field magneton [20] (see rejection of claim 6 above – since claim 8 is the same as claim 6, except for depending on claim 3 which is also rejected under 35 U.S.C. 102 as anticipated by Yoshinaga, the rest of the rejection will not be repeated).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshinaga in view of Ishikawa (US 2018/0062462 A1).
With respect to claim 5/1, Yoshinaga teaches the machine of claim 1, and further teaches wherein the magnet body [13] is provided to the field magneton core [11] (see fig. 3), but omits teaching wherein the magnet body includes an end core block arranged at the end in the axial direction of the field magneton, a center core block arranged on the center side in the axial direction of the field magneton with respect to the end core block, and wherein a cross section of the end core block that is taken orthogonal to an axial center of the field magneton is different from a cross section of the center core block that is taken orthogonal to the axial center of the field magneton.
Ishikawa discloses a rotor of a permanent-magnet-embedded electric motor including a rotor core and permanent magnets inserted into magnet insertion holes (abstract) in the rotor core.
Ishikawa teaches wherein the field magneton core [10] includes:
an end core block [10b] (see the fig. 7 excerpt attached below) arranged at the end in the axial direction of the field magneton; and
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a center core block [10a] arranged on the center side in the axial direction of the field magneton with respect to the end core block, and
wherein a cross section of the end core block [10b] that is taken orthogonal to an axial center (see cross section fig. 4 below) of the field magneton [3] is different from a cross section of the center core block [10a] that is taken orthogonal to the axial center (see cross section fig. 6 below) of the field magneton [3] (end core block 10b cross section in fig. 6 comprises voids/slits 15a, 15b which are not present in center core block 10a cross section in fig. 4).
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It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the machine of Yoshinaga, while incorporating the multiple core blocks with varying cross section, as taught by Ishikawa, in order to maintain efficiency of the motor by preventing a reduction in the torque obtained at the same current as well as to reduce the torque ripple (Ishikawa ¶ 0008).
It is noted that another embodiment of Yoshinaga (specifically the “eighth modification” of ¶ 0083-0084), teaches adjusting the amounts of flux short-circuiting such that there is less short-circuiting in rotor member 21 than in rotor member 22 (see ¶ 0084). However, Yoshinaga comes short of providing the detail that is provided in Ishikawa.
With respect to claim 10/5/1, Yoshinaga in view of Ishikawa teaches the machine of claim 5, Yoshinaga further teaches wherein the field magneton [20] is skewed in a plurality of steps in the axial direction [along the shaft direction 5] of the field magneton [20] (see abstract, which recites that the first and second rotor members are formed into a skewed type” – so for the embodiment of fig. 6 and ¶ 0081-0082, there would be two skew steps – there are fifty other mentions of skewing the rotor members 21/22 in the reference, and all nine of the “modifications” of ¶ 0059-0086 are different approaches for adjusting the amounts of field magnetic flux; the adjusting and the skewing are two complementary and intertwined endeavors of the reference – even though the “seventh modification” of ¶ 0081-0082 does not mention skewing, since these modifications are a listing of various ways of the adjusting. In other words, the first embodiment, consisting of all nine modifications, comprises in every modification, a) skewing and b) adjusting the field magnetic flux. The “modifications” take for granted that the rotor members are skewed relative to each other, and just deals with the nine approaches to adjusting the field magnetic flux).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DANIEL K SCHLAK whose telephone number is (703)756-1685. The examiner can normally be reached Monday - Friday, 9:30 am - 6:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Seye Iwarere can be reached at (571) 270 - 5112. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Daniel K Schlak/Examiner, Art Unit 2834
/OLUSEYE IWARERE/Supervisory Patent Examiner, Art Unit 2834