Prosecution Insights
Last updated: April 19, 2026
Application No. 18/039,533

ROTATING ELECTRICAL MACHINE

Non-Final OA §103
Filed
May 31, 2023
Examiner
SECK, AHMED F
Art Unit
2834
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Mitsubishi Electric Corporation
OA Round
3 (Non-Final)
67%
Grant Probability
Favorable
3-4
OA Rounds
3y 1m
To Grant
84%
With Interview

Examiner Intelligence

Grants 67% — above average
67%
Career Allow Rate
63 granted / 94 resolved
-1.0% vs TC avg
Strong +17% interview lift
Without
With
+16.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 1m
Avg Prosecution
36 currently pending
Career history
130
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
54.6%
+14.6% vs TC avg
§102
25.1%
-14.9% vs TC avg
§112
19.6%
-20.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 94 resolved cases

Office Action

§103
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 . Response to Arguments Applicant’s arguments, see page 6, filed 7/16/2025, with respect to the 35 USC 112b Rejection have been fully considered and are persuasive. The 35 USC 112b Rejection of Claim 7 has been withdrawn. Applicant’s arguments with respect to claim(s) 1-4, and 6 and 7 have been considered. Applicant argues that the primary and supplementary references do not teach the heat dissipating element is positioned between a cover and a heat sink. This argument is found persuasive and therefore Hirkoi has been introduced to cure the deficiencies of the primary and supplementary references lack of this teaching. 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 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (US 20190115806 A1) in view of Hiroki (JP2017229124). Claim 1 Yamashita teaches: A rotating electrical machine (100) that includes a heat dissipating structure of a heat generating portion of a control board (3) comprising: the control board (3) that includes a heating element (4a) on top of a main surface (top surface of 3); a heat sink (2) disposed so as to oppose the main surface (top surface of 3), and includes a recess (2a) that accommodates the heating element (4a) on an opposite surface that opposes the main surface top surface of 3); a heat dissipating material (7) formed in a gap (gap between surfaces of 4a and 2) between the heating element (4a) and the recess (2a). PNG media_image1.png 776 712 media_image1.png Greyscale PNG media_image2.png 412 416 media_image2.png Greyscale Yamashita is silent however to the following limitations: and a cover in which the control board and the heat sink are placed therein; wherein the heat dissipating material is placed between the cover and the heat sink in an axial direction. As illustrated in Yamashita’s Fig. 1, the heat sink (2) and the control board (3) are not comprised within a surrounding cover. It is known within the art however to have a heat sink and a supporting control board within an encasing cover. Hiroki for example teaches a rotating electrical machine (201) comprising of heat dissipating structure (11) positioned between a heat sink (9), and a heat dissipating structure (10) positioned between a heat generation component (101d), and a heat sink (9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to reinforce Yamashita’s rotating electrical machine such that a cover in which the control board and the heat sink are placed therein. Placing a cover over a motor’s heat sink and control board offers advantages in protection from environmental and physical damage, and ensures the reliability and extends the lifespan of sensitive electronic components. With a cover such as that taught by Hiroki being modified into Yamashita’s electrical machine, the limitation requiring the heat dissipating material be placed between the cover and the heat sink in an axial direction can be realized. The heat dissipating element (7) as illustrated in Yamashita’s Fig. 1 is positioned within a bottom recess of the heat sink (2) and above the heating element (4a). Portions of the heat sink (2) extend axially further down beyond the heat dissipating element as reproduced below. PNG media_image3.png 515 638 media_image3.png Greyscale The heat dissipating element (7) is positioned axially above the heat sink portions encircled above. With the modification of Yamashita by Hiroki to include a cover over the heat sink (2), the heat dissipating material would then inherently be positioned between the cover and the heat sink (at least the encircled portions) in an axial direction. Claim(s) 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita as modified by Hiroki in view of Shibata (US 20150189733 A1). Claim 2/1 Yamashita as modified by Hiroki teaches: The rotating electrical machine (100) according to claim 1, but is silent to: wherein: the recess includes a cross-sectional shape of a truncated cone; and a distance between a bottom surface of the truncated cone and a top surface of the heating element is greater than or equal to a distance between a region of the heat sink where the truncated cone is not formed on the surface opposite to the main surface of the control board and the main surface of the control board. Shibata conversely teaches a control board (1) comprising of a heating element (21-24) on top of a main surface (12); a heat sink (70) disposed so as to oppose the main surface (12), and includes a recess (73) wherein the recess (73) includes a cross-sectional shape of a truncated cone; and a distance (bottom most t1 labeled in Fig. 5) between a bottom surface of the truncated cone and a top surface of the heating element (21-24) is greater than or equal to a distance (top most t1 labeled in Fig. 5) between a region of the heat sink where the truncated cone is not formed on the surface opposite to the main surface of the control board and the main surface of the control board. PNG media_image4.png 530 924 media_image4.png Greyscale It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the recess to include the above limitations. Modifying the recess in this manner would be advantageous in reducing the stress applied to the heating element and local stress in the heating element is reduced (Shibata, para. 0082). Claim 4/1 Yamashita as modified by Hiroki teaches: The rotating electrical machine (100) according to claim 1, but is silent to wherein: a taper angle of the recess of the heat sink with respect to a side surface of the heating element and the main surface of the control board of the vicinity of the heating element is 30 degrees to 60 degrees. Shibata conversely teaches a taper angle (labeled “θ”) of a recess (73) of a heat sink (70) with respect to a side surface (labeled “SS”) of a heating element (21-24) and a main surface (labeled “MS”) of the control board (10) of the vicinity of the heating element (21-24) is an angle at least 30 degrees as illustrated below. PNG media_image5.png 586 1033 media_image5.png Greyscale It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure a taper angle of the above limitations. A modification of the taper to meet these parameters would be advantageous as it would help further reduce the stress applied to the heating element and local stress in the heating element is reduced (Shibata, para. 0082). Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashita in view of Morimoto (US 20190276072 A1). Claim 3/1 Yamashita teaches: A rotating electrical machine (100) that includes a heat dissipating structure of a heat generating portion of a control board (3) comprising: the control board (3) that includes a heating element (4a) on top of a main surface (top surface of 3); a heat sink (2) disposed so as to oppose the main surface (top surface of 3), and includes a recess (2a) that accommodates the heating element (4a) on an opposite surface that opposes the main surface (top surface of 3); and a heat dissipating material (7) formed in a gap (gap between surfaces of 4a and 2) between the heating element (4a) and the recess (2a), wherein: the heat dissipating material (7) is a heat dissipating grease (heat dissipating grease, para. 0040), Yamashita’s heat dissipating material (7) is illustrated as only making contact with the heating element (4A) on its top surface and not its side surfaces as a result of their not being enough of the heat dissipating material (7) being compressed between the heat sink (2) and the heating element (4A). Yamashita is therefore silent to the following limitations: and the heat dissipating grease covers the heating element on the heat sink axial side of the heating element and on sides of the heating element facing a radial direction of the rotating electrical machine. To meet this limitation, it would be ideal to apply an optimal amount of heat dissipating material between the heat sink and the heating element such that the heat dissipating material spread to the sides of the heating element due to compression of the viscous and malleable structure of the heat dissipating material between the heating element and the heat sink. For example, Morimoto conversely teaches a heat sink (4A), heating element (5A), and a heat dissipating grease (6A), wherein an ample amount of the heat dissipating grease is compressed between the heat sink (4A) and the heating element (5A) such that the heat dissipating grease (6A) covers the heating element (5A) on the heat sink (4A) axial side of the heating element (5A) and on sides of the heating element (5A) facing a radial direction. PNG media_image6.png 558 508 media_image6.png Greyscale It therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure Yamashita’s electrical machine such that the heat dissipating grease covers the heating element on the heat sink axial side of the heating element and on sides of the heating element facing a radial direction of the rotating electrical machine. Such a modification of expanding the surface area of contact of the heat dissipating material over the heating element would be advantageous to implement in promoting heat transfer of the heat generated by the control board (para. 0068). Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashita as modified by Hiroki in view of Hon (US 20190379258 A1). Claim 5/1 Yamashita a teaches: A rotating electrical machine (100) that includes a heat dissipating structure of a heat generating portion of a control board (3) comprising: the control board (3) that includes a heating element (4a) on top of a main surface (top surface of 3); a heat sink (2) disposed so as to oppose the main surface (top surface of 3), and includes a recess (2a) that accommodates the heating element (4a) on an opposite surface that opposes the main surface (top surface of 3); a heat dissipating material (7) formed in a gap (gap between surfaces of 4a and 2) between the heating element (4a) and the recess (2a); and a case (1) that accommodates a motor (100); wherein the heat sink (6) is screw-fixed. Yamashita is silent to the heat sink being screw-fixed to the case through the control board. Hon conversely teaches a rotating electrical machine (1) comprising a heat sink (20) that is screw-fixed to a case (case of 1) through a control board (10). ` PNG media_image7.png 750 402 media_image7.png Greyscale It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the heat sink to be screw-fixed to the case through the circuit board. Such a modification would be advantageous as it a direct screwing of the heat sink to the circuit board would enable a more concentrated heat dissipation form the heating elements of the heat sink to the heat sink. Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashita as modified by Hiroki in view of Erfinder (DE 102018004358 A1). Claim 7/1 Yamashita as modified by Hiroki teaches: The rotating electrical machine (100) according to claim 1, further comprising: the cover (30, Hiroki) having the control board (3) and the heat sink (2) therein, Yamashita as modified by Hiroki is silent to: and the heat sink and the cover are configured integrally. PNG media_image8.png 774 438 media_image8.png Greyscale Erfinder conversely teaches an electrical machine (Fig. 1) comprised of a heat sink (24) and a cover (11) that are configured integrally (Description, para. 40-43). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure Yamashita’s rotating electrical machine as modified by Hiroki such that the heat sink and the cover are formed integrally. Such a modification would be advantageous in order to provide compactness and weight reduction. A single molded or casted heat sink casing can provide both housing and thermal management. Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashita as modified by Hiroki and Shibata in view of Erfinder. Claim 8/4/1 Yamashita as modified by Hiroki and Shibata teaches: The rotating electrical machine according to claim 4, further comprising: the cover (30; Hiroki) having the control board (3) and the heat sink (2) therein, but is silent to: and the heat sink and the cover are configured integrally. Erfinder conversely teaches an electrical machine (Fig. 1) comprised of a heat sink (24) and a cover (11) that are configured integrally (Description, para. 40-43). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure Yamashita’s rotating electrical machine as modified by Hiroki and Shibata such that the heat sink and the cover are formed integrally. Such a modification would be advantageous in order to provide compactness and weight reduction. A single molded or casted heat sink casing can provide both housing and thermal management. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED F SECK whose telephone number is (571)272-4638. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm. 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, Christopher Koehler can be reached at (571) 272-3560. 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. /AHMED F SECK/Examiner, Art Unit 2834 /MAGED M ALMAWRI/Primary Patent Examiner, Art Unit 2834
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Prosecution Timeline

May 31, 2023
Application Filed
Apr 11, 2025
Non-Final Rejection — §103
Jul 08, 2025
Applicant Interview (Telephonic)
Jul 09, 2025
Examiner Interview Summary
Jul 16, 2025
Response Filed
Sep 15, 2025
Final Rejection — §103
Nov 17, 2025
Response after Non-Final Action
Dec 22, 2025
Non-Final Rejection — §103 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
67%
Grant Probability
84%
With Interview (+16.9%)
3y 1m
Median Time to Grant
High
PTA Risk
Based on 94 resolved cases by this examiner. Grant probability derived from career allow rate.

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