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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/05/2026 has been entered.
Response to Amendment
In response to the Amendment received on 02/05/2026, the examiner has carefully considered the amendments. The examiner acknowledges the cancellation of claim 3. The claim rejection under 35 U.S.C. § 112, 2nd paragraph for claims 1-8 have been overcome by the amendment and has hereby been withdrawn for consideration.
Response to Arguments
Applicant's arguments filed 02/05/2025 have been fully considered but they are not persuasive. Applicant appears to argue the cited reference (Ozawa) cannot anticipate or render obvious the instant claims because Ozawa does not disclose or suggest that the “quotient (A) / (B) of the melt viscosity of the crystalline radical polymerizable composition measured by the enhanced flow tester is in the range of 10 to 100 (A) Melt viscosity at shear rate 1/s (B) Melt viscosity at a shear rate of 250/s”. It is argued the teachings of Ozawa are directed to providing crystalline radical polymerizable composition having excellent thermal conductivity and good hardenability and fails to disclose or suggest a crystalline radical polymerizable composition directed to preventing deformation of a rotor core in magnets for a rotating electrical rotor core—page 6 of 8.
The court explained that "no utility need be disclosed for a reference to be anticipatory of a claim to an old compound." It is enough that the claimed compound is taught by the reference.)—see Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 1383, 81 USPQ2d 1001, 1013 (Fed. Cir. 2006).
As previously set forth Ozawa explicitly teaches the claimed composition, as well as, setting forth component A is solid at 23 deg. C and the inorganic filler (b) is added in amounts from 50 to 90 %. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present." When comparing cited example 6 with inventive example 1 (all components the same wherein, the difference being 50 parts by weight of fused silica less in the cited example 6 than found in the inventive example 1), the office, in absence of evidence to the contrary, has reason to suspect the crystalline radical compositions of the cited reference meets the claimed quotient. In the alternative, since the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
The rejections still stand.
Claim Interpretation
The limitation “for fixing a magnet of a rotating electric machine rotor core, characterized by fixing the magnet inserted in a magnet accommodating portion provided in a rotor core of a rotating electric machine formed of a laminated steel sheet and the laminated steel sheet” is a future intended use limitation”. The body of the claims fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). The limitation does not result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art, therefore, if the prior art structure is capable of performing the intended use, then it meets the claim.
Claim Rejections - 35 USC § 102/Claim Rejections - 35 USC § 103
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.
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 and 4-6 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ozawa et al (EP 3 590 973).
Ozawa sets forth a crystalline radical-polymerizable composition for electric/electronic components. Said compositions comprises at least one crystalline radical polymerizable compound, an inorganic filler, a silane coupling agent and a radical polymerization initiator—see abstract and [0049]. Said inorganic filler is contained in an amounts from 50-95 % in said polymerizable composition—see [0057]. Ozawa sets forth the overall composition has a melt viscosity is preferably in the range from 1-1000 Pa*s with a pressure of 30 kgf/cm2 at a temperature of 90 deg. C a die diameter of 0.5 mm and a die length of 1.0 mm or in the range of 1 to 7 Pa * s with a pressure of 1 kgf/cm2, wherein Ozawa sets forth the preferable range is from to 100 Pa*s—see [0057].
Ozawa sets forth the crystalline polymerizable compound can comprise at least one selected from a crystalline unsaturated polyester; a crystalline epoxy (meth) acrylate; a crystalline urethane (meth) acrylate; a crystalline polyester (meth)acrylate; a crystalline radically polymerizable monomer; and a crystalline radically polymerizable polymer—see [0051]. Said crystalline polymerizable compounds set forth by Ozawa are disclosed as being in a solid state at 23 deg. C and having melting points between 30 and 150 deg. C—see [0053] and [0055].
Ozawa sets forth the inorganic filler is contained in an amount of 50 % to 90 % by weight in the crystalline radical polymerizable composition—see [0057]. Ozawa explicitly teaches when said crystalline polymerizable composition is used for sealing electronics the inorganic filler component may be calcium carbonate; magnesium carbonate; barium carbonate, calcium hydroxide; aluminum hydroxide; magnesium hydroxide; magnesium oxide; alumina; silica; zinc oxide; mica; aluminum nitride and boron nitride, wherein silica is preferable from the viewpoint of flowability—see [0082]. Said filler has an average particle diameter (i.e., spherical) within a range of 100 microns or less, preferably from 0.01 to 50 microns—see [0083].
Said radically polymerizable composition may further include other components, such as mold release agents which are deemed meet the definition of the claimed lubricant (E) as found on page 25 of the disclosure (claim 6).
Per example 12, Ozawa sets forth a crystalline radical polymerizable composition comprising 50 parts of a crystalline unsaturated polyester (condensate of terephthalic acid and fumaric acid with 1,3-propanediol) having a melting point of 83 deg. C (solid at 23 deg. C); 50 parts by weight of a styrene monomer (not excluded from the instant claims); 900 parts of aluminum oxide; 100 parts magnesium oxide; 2 parts of a silane coupling agent; 14 parts of a mold release agent (zinc stearate, corresponding to applicant’s definition on page 25); 8 parts of a colorant; 30 parts of a thermoplastic resin; 3 parts of a radical polymerization initiator (dicumyl peroxide); and 0.1 parts of a polymerization inhibitor. Said composition has a melt viscosity of 1000 Pa*s at a shear rate of 1000 s-1 resulting in a shear velocity of 1 m/s by calculation—see [0201].
Per example 6, Ozawa explicitly sets forth a crystalline radically polymerizable-composition containing 50 parts of a crystalline urethane (meth) acrylate (a 2-hydroxyethyl methacrylate adduct of 1,6-hexamethylene diisocyanate) having a melting point of 77 deg. C (deemed inherently solid at 23 deg. C); 50 parts of a crystalline ethoxylated isocyanurate acid triacrylate; 650 parts fused silica; 3 parts of a methacrylated silane coupling agent; 1 parts of dicumyl peroxide, as a radical polymerization initiator; 10 parts of a mold release agent (lubricant); 0.1 parts of a polymerization inhibitor; and 0.2 parts of a colorant—see example 6, Table 2. Example 6 is reported as having a melt viscosity of 6 Pa*s which is encompassed in the claimed melt viscosity of 100 Pa*s of less at 90 deg. C and a shear rate of 250/s required in claim 1.
Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art--In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the alternative, since The Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Regarding claim 4, the inorganic filler in the overall teachings is preferably spherical having a diameter of 100 microns or less and when concerned with flowable should be a silica inorganic filler—see [0082]. Per the examples Ozawa set forth as the inorganic filler a fused silica, wherein fused silica is a purified type of amorphous silica. Thus, claim 4 is anticipated.
Regarding claim 5, the silica is found in an amount of 100 parts of the inorganic silica. Thus, claim 5 is anticipated. The zinc stearate in example 4 is deemed to anticipate applicant’s lubricant (E) since by applicant’s definition the lubricant includes known mold release agents—see disclosure page 25. Thus claim 6 is anticipated.
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) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ozawa as applied to claims 1-5 above, and further in view of Yamamuro (JP2017/186439).
Ozawa is set forth above as anticipating the instantly claimed crystalline polymerizable composition. Ozawa sets forth said compositions can be used in methods to obtain sealed body of electrical and electronic components using methods such as injection molding because the crystalline radical polymerizable composition has an extremely low degree of viscosity obtained when said composition is heated and melted during an injection molding process, and a flowability necessary for sealing a sealed body of an electrical and electronic component—see [0017]; [0043]; [0062] and [0121]. Additionally, Ozawa sets forth said compositions have excellent thermal conductivity—see [0122]. The primary difference is Ozawa does not expressly a rotating electric machine rotor core, wherein a magnet is fixed using said crystalline radical polymerizable composition, for fixing said magnet as set forth in claims 6-8.
It is known in the art of fixing magnets in a rotor to use thermosetting compositions having good flowability comprising thermosetting resins such as, radically polymerizable resins including (meth) acrylic resin and, unsaturated polyester resins; inorganic fillers, silane coupling agents and radical polymerizable curing agents, such as set forth in the overall teachings of Yamamuro. Yamamuro sets forth thermoplastic resin, wherein in the overall teachings of the reference set forth said resins include (meth) acrylate resins and unsaturated polyester resin (see [0046]) which have excellent thermal conductivity and fluidity (flowability) properties. Additionally, it is deemed the compositions taught by Yamamuro have similar melt viscosity properties, can be applied using the same techniques, as well as, used for the same type surfaces; therefore, it would have been within the skill level of an ordinary artisan to use the resin compositions of Ozawa as a composition for fixing magnets in rotating electronic machines in absence of evidence to the contrary and/or unexpected results. The courts have upheld known work in one field of endeavor may prompt variations of it for use in either the same field based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art in absence of evidence to the contrary and/or unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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, Heidi Riviere-Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc