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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 28, 2025 has been entered.
Information Disclosure Statement
The information disclosure statement filed October 30, 2025 has been submitted for consideration by the Office. It has been placed in the application file and the information referred to therein has been considered.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Oya et al (Pub Num 2017/0084361, herein referred to as Oya) in view of Hayashizaka et al (Pub Num 2018/0201804, herein referred to as Hayashizaka). Oya discloses a laminate (Figs 1-4) comprising at least one conductor and an insulating coating forming an insulated wire, wherein the insulated wire is excellent in both abrasion resistance and thermal aging resistance, while also suppressing lowering in rupture strength and having high partial discharge inception voltage (Paragraph 21). Specifically, with respect to claim 1, Oya discloses a laminate (1-5, Figs 1-2) comprising at least a conductor (1) and an insulating coating (2-5), wherein the insulating coating (2-5) includes a first insulating coating (4) and a second insulating coating (5), wherein the second insulating coating (5) is formed of a resin composition containing a metal oxide (Paragraph 145), wherein a content of the metal oxide in the resin composition is 6 to 50 parts by mass with respect to 100 parts by mass of the resin (i.e. 30-100 parts, Paragraph 146), a thickness of the second insulating coating is 5µm or more (5-50µm, Paragraph 131), wherein a ratio of the thickness of the second insulating coating (5) is less than 75% of a thickness of the entire insulating coating (i.e. second insulating coating (5) is 5-50µm, Paragraph 131 and the total insulating coating (2-5) may be 100 µm or greater thickness (Paragraph 132, i.e. 50%<100%), and an inorganic insulating layer is formed on the insulating coating (2-5), when the laminate is exposed to partial discharge caused by inverter surges (Paragraph 145). With respect to claim 2, Oya discloses that the first insulating coating (4) is formed of a resin containing no filler (Paragraphs 117 & 121). With respect to claim 3, Oya discloses that the second insulating coating (5) is not in contact with the conductor (1, Figs 1-2). With respect to claim 4, Oya discloses that the first insulating coating (4) and the second insulating coating (5) each contain a common resin (Paragraphs 121 & 155). With respect to claim 5, Oya discloses that the metal oxide hydrate is an alumina (Paragraph 145). With respect to claim 6, Oya discloses that the resin constituting the resin composition and the insulating coating (4-5) may be at least one selected from the group consisting of a formal resin, a polyurethane, an epoxy resin, a polyester, a polyester imide, a polyetherimide, a polyamide imide, a polyimide, and precursors thereof (Paragraphs 121 & 155). With respect to claims 7-9, Oya discloses the laminate (1-5) is in the form of an insulated electric wire (Figs 1-2) forming a coil for usage with a rotating electric machine (Paragraph 52). With respect to claims 10-11, Oya discloses that an insulating paint (2-5) comprising a resin composition containing a metal oxide hydrate (Paragraphs 145 & 155), for producing a laminate formed as an insulating film of a resin composition on a conductor (1, Paragraphs 145 & 155, Figs 1-2). With respect to claim 12, Oya discloses that the first insulating coating (4) does not contain a metal oxide hydrate (Paragraphs 117 & 121).
While Oya discloses that the resin composition contains a metal oxide, such as alumina (Paragraph 145), Oya doesn’t necessarily disclose the metal oxide being a metal oxide hydrate (claim 1), such as hydrated alumina (claim 5).
Hayashizaka teaches an improved partial discharge resistant electrical insulating resin composition (Figs 1-5), which may be utilized as an insulating paint or insulating laminate of an electrical wire forming a coil wire of a rotating electric machine (Paragraph 35), which inhibits deterioration of the insulator due to partial discharge (abstract) and forms an inorganic insulating layer (i.e. alumina), when the laminate is exposed to partial discharge caused by inverter surges (Paragraph 50-52). Specifically, with respect to claims 1 & 5, Hayashizaka teaches an electrical insulating resin composition (12, Fig 3) which may be applied to a conductor (Paragraph 35), wherein the insulating coating (12) may be form of a resin, such as one of a formal resin, a polyurethane, an epoxy resin, a polyester, a polyester imide, a polyetherimide, a polyamide imide, a polyimide, and precursors thereof (Paragraph 63) containing a metal oxide hydrate (Paragraph 42), such as alumina hydrate (i.e. boehmite alumina, Paragraph 42), wherein a content of the metal oxide hydrate in the resin composition is 6 to 50 parts by mass with respect to 100 parts by mass of the resin (i.e. 1-60%, Paragraph 61), wherein a thickness of the insulating coating may be 5µm or more (5-200 µm, Paragraph 117), wherein an inorganic insulating layer is formed on the insulating coating (12), when the laminate is exposed to partial discharge caused by inverter surges (Paragraphs 50-52).
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the insulated wire containing a laminate of resin containing a metal oxide of Oya to comprise the laminate of resin containing a metal oxide hydrate configuration as taught by Hayashizaka because Hayashizaka teaches that such a laminate configuration provides an improved partial discharge resistant electrical insulating resin composition (Figs 1-5), which may be utilized as an insulating paint or insulating laminate of an electrical wire forming a coil wire of a rotating electric machine (Paragraph 35), which inhibits deterioration of the insulator due to partial discharge (abstract) and forms an inorganic insulating layer (i.e. alumina), when the laminate is exposed to partial discharge caused by inverter surges (Paragraph 50-52) and since it has been held to be within general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed July 28, 2025, have been fully considered but they are not persuasive. Specifically, the applicant argues the following
Based on the teachings of Oya et al, it would be counterproductive to specifically include a metal oxide hydrate, due to the risk of lowering partial discharge resistant substance (i.e. PDIV).
With respect to argument A, the examiner respectfully traverses. While the applicant is correct that Oya is concerned with PDIV, Oya clearly teaches that the insulating layers may contain PDIV materials as long as PDIV is incorporated within a particular limit (Paragraph 146, see below).
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Specifically, Oya discloses that the second insulating coating (5) is formed of a resin composition containing a metal oxide (Paragraph 145), wherein a content of the metal oxide in the resin composition is 6 to 50 parts by mass with respect to 100 parts by mass of the resin (i.e. 30-100 parts, Paragraph 146), wherein the metal oxide hydrate may be an alumina (Paragraph 145). Oya clearly discloses that such a PDIV material being incorporated within the insulation layer within the limit of 30-100 mass parts of resin component would not adversely affect the purpose of the claimed invention. Therefore, Oya doesn’t teach that utilizing PDIV in the insulation layer would be counterproductive.
Secondly, based on the teaching of both Oya and Hayashizaka, it would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the insulated wire containing a laminate of resin containing a metal oxide of Oya to comprise the laminate of resin containing a metal oxide hydrate configuration as taught by Hayashizaka because Hayashizaka teaches that such a laminate configuration provides an improved partial discharge resistant electrical insulating resin composition (Figs 1-5), which may be utilized as an insulating paint or insulating laminate of an electrical wire forming a coil wire of a rotating electric machine (Paragraph 35), which inhibits deterioration of the insulator due to partial discharge (abstract) and forms an inorganic insulating layer (i.e. alumina), when the laminate is exposed to partial discharge caused by inverter surges (Paragraph 50-52) and since it has been held to be within general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
In light of the above, it is respectfully submitted that 35 USC 103(a) rejections presented above are proper and just.
Conclusion
This action is a Non Final Rejection.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MAYO III whose telephone number is (571)272-1978. The examiner can normally be reached on M-Thurs (5:30a-3:00p) Fri 5:30a-2p (w/alternating Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani Hayman can be reached on (571) 270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/William H. Mayo III/
William H. Mayo III
Primary Examiner
Art Unit 2847
WHM III
October 31, 2025