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 .
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.
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.
Claim(s) 10-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dahlund et al, WO 94/10423 in view of Kokubo et al, U.S. Patent Application Publication No. 2016/0009620.
Dahlund teaches adding C60 carbon fullerenes in amounts of 0.01-15 percent by weight, (see page 2, lines 10-17), to enamel coatings for wires, (see example 5, page 5), in order to provide improved breakdown resistance to electrical load and increased resistance to oxidative breakdown, (see page 6, lines 1-4. The range of 0.01-15 satisfies the values in new claims 15 and 16.
Dahlund differs from the claimed invention because it does not teach the claimed fullerene derivative.
However, Kokubo teaches that fullerene derivatives such as those having a general formula as claimed can be readily incorporated into polymeric resins by first adding them to a solvent and then adding them to the polymeric resins, and that the fullerenes are useful in electrical and electronic equipment, building materials, molding, etc. See paragraph 0101.
Therefore, it would have been obvious to have employed the particular fullerene derivatives in a solvent as taught by Kokubo in view of their art recognized suitability for this intended purpose.
Once the composition of Dahlund was modified by Kokubo, it is reasonable to expect that it would have the claimed properties of dielectric breakdown since like materials must have like properties.
With regard to the order of steps, the selection of any order of steps is prima facia obvious in the absence of new or unexpected results.
Applicant's arguments filed 11/18/25 have been fully considered.
Applicant argues that Dahlund does not teach the claimed amount of fullerenes and that in the examples Dahlund uses a higher amount than the claimed amount. However, Dahlund teaches that the purpose of incorporating the fullerenes is to improve resistance to breakdown. Dahlund teaches adding the fullerenes to enamel coatings for wires. Dahlund teaches a range of 0.01-15 percent by weight. Therefore, one of ordinary skill would have been able to select the amount of fullerenes which provided sufficient protection when added to an enamel wire coating through the process of routine experimentation within the range that Dahlund teaches. Clearly the purpose of adding the fullerenes is to improve resistance to breakdown. Additionally the disclosure of Dahlund is not limited to the examples. One of ordinary skill would therefore consider the entirety of the teachings and ranges of Dahlund to arrive at the optimum amounts within the ranges taught by Dahlund using no more than routine skill in the art.
With regard to the combination of Kokubo with Dahlund, Applicant argues that the mechanics of improving heat resistance is different from that of dielectric breakdown lifetime. However, Dahlund already teaches that adding the fullerenes to enamel wire coatings improves their resistance to breakdown. Kokubo teaches that the particularly claimed fullerenes are useful for providing protection to electrical and electronic components. Therefore, one of ordinary skill would have had a reasonable expectation that the particular fullerenes disclosed by Kokubo would have been useful to add to enamel wire coatings to improve their resistance to breakdown.
Applicant argues that the fullerenes in Dahlund are different than those disclosed in Kokubo. However, Kokubo discloses that the particularly claimed fullerenes are also useful as additives for electrical and electronic components which provides at least a reasonable expectation that the fullerenes of Kokubo would also provide protection as taught by Dahlund.
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.
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/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789