The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In view of the appeal brief filed on 2/2/2026, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/CHRISTOPHER M KOEHLER/ Supervisory Patent Examiner, Art Unit 2834
Response to Arguments
Applicant's arguments filed 5/27/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument regarding factual error 1, this is not found persuasive because every element has a degree of electrical insulative properties as well as thermal conductivity properties. As extrinsic evidence, the website, engineering toolbox will be used to prove this fact. As it stands, applicant has not specified in the claims to what degree the insulating layer is electrically insulating and thermally conductive.
In response to applicant’s argument regarding legal error 1, this too is not found persuasive because the examiner addressed this limitation in the previous rejections. This is an intended use limitation because there is no claimed/disclosed structure that would distinguish applicant’s invention over that of the prior art (MPEP2111.02). This is apparent when viewing applicant’s independent claims and figs 3A-6 and comparing them with the broadest reasonable interpretation of the claimed limitations while viewing Masami’s figures 1-5. Still further, The Garrard et al. reference was included in the rejection statement by mistake as it shows a turbocharger including a rotating electric machine which indicates a rotor.
In response to applicant’s argument regarding factual error 3, this too is not found persuasive because it is known that additive manufacturing is used to make manufacturing a product easier in less time. The examiner included Kuriyama to show that fact in regards to a magnetic portion, that one would also use it to make other portions such as an insulating layer to save time and make manufacturing the insulating layer easier. The examiner would hope that a reference is not required that shows an insulating layer as well as the magnetic layer being produced by an additive manufacturing process to show that using an additive manufacturing process saves time and makes manufacturing easier.
In response to applicant’s argument regarding factual error 4, this too is not found persuasive for a few reasons. Firstly, the recitation of the limitation “a magnetic layer that is elongated and extends from one end of the rotor towards another end of the rotor” is met by Masami’s figs 2-5. The discs of Masami are circumferentially elongated around the shaft in such a way that they extend from one end of the rotor to another end of the rotor. The limitation does not specify that the magnetic layer extends the entire length of the rotor. Secondly, the rotor in Masami’s fig 5 meets this limitation as it closely resembles applicant’s figs 5 and 6. The only difference is that applicant has not claimed that the magnetic layer is sectioned like a pie or some equivalent language.
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, 3, 6-8, 10, 13-18 & 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masami (JPS 6318950) in view of Kuriyama (JP 2018182084) and Thermal Conductivity of Common Materials - Solids, Liquids and Gases (hereinafter TCCM) as extrinsic evidence.
1. Masami teaches:
A rotor assembly (figs 1-5) included in an electric motor (that is the purpose of a rotor) configured for inclusion in an electrically-controlled turbocharger (this limitation is an “intended use” in the preamble that does not offer any structure that would distinguish applicant’s claimed and disclosed invention over that of the prior art…As such the limitation is not being given patentable weight, MPEP 2111.02 II “Intended Use” in the preamble”), comprising:
a magnetic layer 1, including a magnetic substrate 1, coupled to an output shaft 2 of an electric motor (this is why there is a shaft, MPEP 2112); and an insulating layer 3 (epoxy) that the insulating layer is electrically-insulating and thermally conductive (all substances, including Masami’s insulating layer 3 which is epoxy, have a degree of electrical insulating properties and thermal conductivity properties…Masami discloses the electrical insulating properties explicitly and implicitly/inherently discloses the thermal conductive properties of the insulating layer, see TCCM fig below), including an insulating substrate 3, coupled to the output shaft (figs 1-4) axially adjacent to the magnetic layer (fig 4); but does not teach the process of additive manufacturing of either of the magnetic or insulating substrate.
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Kuriyama teaches that a laminated magnet for a motor is made by the process of 3d-printing (excerpt of a machine translation below) to have more freedom of design when it comes to manufacturing the magnet as opposed to relying on molds or other manufacturing processes. Since one having ordinary skill in the art is concerned with freedom of design when it comes to the magnetic layer layout, why would a person having ordinary skill in the art not be concerned with the freedom of design that additive manufacturing brings when applying the insulating substrate that is in such close proximity to the magnetic layer? The answer is that a person having ordinary skill in the art would want to use additive manufacturing on as many parts of the rotor (namely the magnetic and insulating substrate) as possible to simplify the manufacturing process while saving time.
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Therefore, it would have been obvious to a person having ordinary skill in the art prior to the invention being effectively filed to modify the invention of Masami by using the process of additive manufacturing both the magnetic and insulating substrate, as taught by Kuriyama so as to ease the manufacturing process.
3. Masami teaches:
The rotor assembly recited in claim 1, wherein the magnetic layer has an axial length that is greater than an axial length of the insulating layer (figs 2-4).
6. Masami teaches:
The rotor assembly recited in claim 1, wherein the insulating layer is between 1 micrometer (µm) and 2µm in axial thickness (excerpt of machine translation below).
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7. Masami has been discussed above, re claim 1; but does not teach that the insulating material initially exists as a powder.
However, Kuriyama teaches that the magnet originally exists as a powder (exerpt above) and the 3d-printing process used to print the magnet eases the manufacturing of the magnet. That being established, to have the insulating layer being in powder form prior to the 3d-printing process would not be beyond the level of ordinary skill and the person having ordinary skill would be motivated to do so for the same benefit as using this process for the magnetic layer.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the invention being effectively filed to modify the invention of Masami so that the insulating material initially exists as a powder, as taught by Kuriyama so as to ease the manufacturing process.
8. Masami teaches:
The rotor assembly recited in claim 1, wherein the magnetic layer is between 1 millimeter (mm) and 2mm in axial thickness (abstract).
10. Masami teaches:
The rotor assembly recited in claim 1, wherein the magnetic layer initially exists as a powder (excerpt above).
13. Masami teaches:
A rotor assembly (figs 1-5) included in an electric motor (that is the purpose of a rotor), comprising:
a magnetic layer 1, including a magnetic substrate 1, coupled to an output shaft 2 of an electric motor (this is why there is a shaft, MPEP 2112); and
an insulating layer 3, including an insulating substrate 3, coupled to the output shaft such that a radial surface of the magnetic layer abuts a radial surface of the insulating layer (figs 1-5); but does not teach the process of additive manufacturing of either of the magnetic or insulating substrate.
Kuriyama teaches that a laminated magnet for a motor is made by the process of 3d-printing (excerpt of a machine translation below) to have more freedom of design when it comes to manufacturing the laminated magnet for a motor as opposed to relying on molds or other manufacturing processes. Since one having ordinary skill in the art is concerned with freedom of design when it comes to the magnetic layer layout, why would a person having ordinary skill in the art not be concerned with the freedom of design that additive manufacturing brings when applying the insulating substrate that is in such close proximity to the magnetic layer? The answer is that a person having ordinary skill in the art would want to use additive manufacturing on as many parts of the rotor (namely the magnetic and insulating substrate) as possible to simplify the manufacturing process while saving time.
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Therefore, it would have been obvious to a person having ordinary skill in the art prior to the invention being effectively filed to modify the invention of Masami by using the process of additive manufacturing both the magnetic and insulating substrate, as taught by Kuriyama so as to ease the manufacturing process.
14. Masami teaches:
The rotor assembly recited in claim 13, wherein the magnetic layer is elongated and extends axially along the output shaft (figs 1-5).
15. Masami teaches:
The rotor assembly recited in claim 13, wherein the magnetic layer has an axial length that is greater than an axial length of the insulating layer (figs 1-5).
16. Masami teaches:
The rotor assembly recited in claim 13, wherein the insulating layer is electrically-insulating and thermally conductive (since it has a low boiling point).
17. Masami teaches:
The rotor assembly recited in claim 13, wherein the insulating layer is between 1 micrometer (µm) and 2µm in axial thickness (excerpt of machine translation above).
18. Masami teaches:
The rotor assembly recited in claim 13, wherein the magnetic layer is between 1 millimeter (mm) and 2mm in axial thickness (abstract).
20. Masami teaches:
A rotor assembly (figs 1-5) included in an electric motor (that is the purpose of a rotor), comprising:
a magnetic layer 1, including a magnetic substrate 1, that is elongated and extends from one end of the rotor to another end of the rotor (figs 1-5), coupled to an output shaft 2 of an electric motor (this is why there is a shaft, MPEP 2112); and
an insulating layer 3, including an insulating substrate 3, that is elongated and extends from one end of the rotor to another end of the rotor (figs 1-5), coupled to the output shaft such that the magnetic layer abuts the insulating layer (figs 1-5); but does not teach the process of additive manufacturing of either of the magnetic or insulating substrate.
Kuriyama teaches that a laminated magnet for a motor is made by the process of 3d-printing (excerpt of a machine translation below) to have more freedom of design when it comes to manufacturing the laminated magnet for a motor as opposed to relying on molds or other manufacturing processes. Since one having ordinary skill in the art is concerned with freedom of design when it comes to the magnetic layer layout, why would a person having ordinary skill in the art not be concerned with the freedom of design that additive manufacturing brings when applying the insulating substrate that is in such close proximity to the magnetic layer? The answer is that a person having ordinary skill in the art would want to use additive manufacturing on as many parts of the rotor (namely the magnetic and insulating substrate) as possible to simplify the manufacturing process while saving time.
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Therefore, it would have been obvious to a person having ordinary skill in the art prior to the invention being effectively filed to modify the invention of Masami by using the process of additive manufacturing both the magnetic and insulating substrate, as taught by Kuriyama so as to ease the manufacturing process.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masami and Kuriyama in further view of Mori et al. (US 20020070621).
5. Masami has been discussed above, re claim 1; but does not teach that the insulating layer comprises aluminum nitride.
Mori et al. teach that the insulating layer comprises aluminum nitride (para 0015) to increase the thermal conductivity in the lamination configuration which aids in heat transfer which increases the service life of the laminations.
Consequently, it would have been obvious to a person having ordinary skill in the art before the invention was effectively filed to modify the invention of Masami so that the insulating layer comprises aluminum nitride, as taught by Mori et al. so as to increase the service life of the rotor.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masami and Kuriyama in further view of Focci et al. (US 20130099501).
9. Masami has been discussed above, re claim 1; but does not teach that the magnetic layer comprises neodymium, iron, and boron, or as samarium cobalt.
Focci et al. teach that the magnetic layer comprises neodymium, iron, and boron, or as samarium cobalt to give the rotor a high magnetic density which increase the torque.
Consequently, it would have been obvious to a person having ordinary skill in the art before the invention was effectively filed to modify the invention of Masami so that the magnetic layer comprises neodymium, iron, and boron, or as samarium cobalt, as taught by Focci et al. so as to increase the torque in the motor.
Claim(s) 11, 12 & 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masami and Kuriyama in further view of Shiao et al. (US 20090284093).
11. Masami has been discussed above, re claim 1; but does not teach a coating applied on an axial surface of the magnetic layer and the insulating layer.
Shiao et al. teach that a coating (adhesive) applied on an axial surface of the magnetic layer/magnets aids in the adhering of the protective sleeve 90 (para 0014). The person having ordinary skill in the art would be motivated to apply the coating on the axial surfaces of the insulating layer when looking at the configuration of Masami for the same benefit.
Consequently, it would have been obvious to a person having ordinary skill in the art before the invention was effectively filed to modify the invention of Masami with a coating applied on an axial surface of the magnetic layer and the insulating layer, as taught by Shiao et al. so as to aid in the adhering of the protective sleeve.
19. Masami has been discussed above, re claim 13; but does not teach a coating applied on an axial surface of the magnetic layer and the insulating layer.
Shiao et al. teach that a coating (adhesive) applied on an axial surface of the magnetic layer/magnets aids in the adhering of the protective sleeve 90 (para 0014). The person having ordinary skill in the art would be motivated to apply the coating on the axial surfaces of the insulating layer when looking at the configuration of Masami for the same benefit.
Consequently, it would have been obvious to a person having ordinary skill in the art before the invention was effectively filed to modify the invention of Masami with a coating applied on an axial surface of the magnetic layer and the insulating layer, as taught by Shiao et al. so as to aid in the adhering of the protective sleeve.
12. Masami has been discussed above, re claim 1; but does not teach one or more sleeves concentrically positioned relative to the magnetic layer and the insulating layer.
Shiao et al. teach that a one or more sleeves concentrically positioned relative to the magnetic layer and the insulating layer aids in preventing damage to the magnets which prolongs the service life of the rotor (para 0014).
Consequently, it would have been obvious to a person having ordinary skill in the art before the invention was effectively filed to modify the invention of Masami with one or more sleeves concentrically positioned relative to the magnetic layer and the insulating layer, as taught by Shiao et al. so as to prolong the service life of the rotor.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRANCE L KENERLY whose telephone number is (571)270-7851. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Koehler can be reached on 5712723560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TERRANCE L KENERLY/Primary Examiner, Art Unit 2834
Prosecution Insights