Prosecution Insights
Last updated: October 02, 2026
Application No. 18/270,884

INSULATED ELECTRICAL WIRE AND PRODUCTION METHOD THEREFOR

Final Rejection §103§112
Filed
Jul 05, 2023
Priority
Mar 08, 2021 — JP 2021-036490 +1 more
Examiner
CHOI, PETER Y
Art Unit
1786
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Sumitomo Electric Wintec Inc.
OA Round
2 (Final)
21%
Grant Probability
At Risk
3-4
OA Rounds
1y 5m
Est. Remaining
54%
With Interview

Examiner Intelligence

Grants only 21% of cases
21%
Career Allowance Rate
135 granted / 654 resolved
-44.4% vs TC avg
Strong +33% interview lift
Without
With
+33.0%
Interview Lift
resolved cases with interview
Typical timeline
4y 8m
Avg Prosecution
71 currently pending
Career history
732
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
56.0%
+16.0% vs TC avg
§102
11.5%
-28.5% vs TC avg
§112
30.9%
-9.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 654 resolved cases

Office Action

§103 §112
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 . Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding claim 11, the claim recites that aggregated is defined as two or more primary particles in contact with each other such that the distance between the adjacent primary particles is 0.02 pm or less. The claim is dependent from claim 1, which does not recite “adjacent primary particles.” Therefore, the recitation of “the adjacent primary particles” lacks proper antecedent basis in the claims. Additionally, if the claim is referring to the two or more particles in contact with each other, it is unclear how the distance between the particles can be anything other than 0, as they are in contact with each other. 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. Claims 1-5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2020/0395145 to Knerr in view of USPN 9,984,796 to Gröppel and US Pub. No. 2010/0059704 to Davis Regarding claims 1-5 and 11, Knerr teaches a magnet wire with a conductor coated with corona resistant polyimide insulation, including a filler dispersed in a based polyimide material, wherein the filler includes silica oxide (Knerr, Abstract, paragraphs 0011-0012). Knerr teaches that filler material may be added at any suitable ratio, such as between approximately 10% and approximately 25% by weight (Id., paragraphs 0008-0009). Knerr teaches that the silica oxide may have a large surface area to permit more energy to penetrate through the insulation, thereby reducing the degradation of the insulation caused by high voltage and high frequency wave shapes in electrical devices (Knerr, paragraph 0131). Knerr teaches that silica is commercially available in grades having a wide variety of specific surface areas, such as ranging from approximately 90 to approximately 550 m2/g (Id.). Knerr teaches that the components of a filler may include any particle sizes, surface areas, and/or other dimensions, wherein a filler component may have a nominal particle size that is less than approximately one micron (Id., paragraph 0032). Knerr taches that a filler may be ball-milled or otherwise ground or milled in order to reduce agglomerates to below a desired amount (Id.). Knerr does not appear to expressly teach the claimed primary and secondary particles. However, Gröppel teaches an insulting system having improved partial discharge resistance including an insulating tape around a conductor, wherein the tape is impregnated with a resin and a filler present bimodally (Gröppel, Abstract). Gröppel teaches that “bimodal” means that the filler is present in two fractions, wherein each of the two fractions are of different respective size (Id., column 3 lines 32-51). Gröppel teaches that the filler is preferably a material based on silicon dioxide (Id., column 4 lines 65-67). Gröppel teaches that the fraction of the larger particles is preferably present in a higher concentration than the fraction of the smaller particles (Id., column 5 lines 1-10). Gröppel teaches that inorganic particles are not destroyed or damaged on exposure to partial discharge, wherein the resultant erosion inhibition effect is dependent on factors including the particle diameter and the particle surface which generates from it (Id., column 3 line 60 to column 4 line 2). Gröppel teaches that the greater the specific surface area of the particles, the greater the erosion inhibition effect on the particles (Id.) Gröppel teaches that the use of bimodal fillers inhibits erosion in an improved manner, as the combination of different-sized particles supports the agglomeration of particles, since the smaller particles and increased active surface area supports the agglomeration of the larger particles, resulting in an extremely erosion-resistant layer (Id., column 4 lines 31-45). Additionally, Davis teaches fumed silica of controlled aggregate size, comprising aggregates that have an aggregate size and a surface area that satisfy particular formulas relating aggregate size to surface area (Davis, Abstract). Davis teaches that primary particles are associated into secondary particles, generally referred to as aggregates, formed from primary particles that are bonded together by covalent bonds (Id., paragraph 0036). Davis teaches aggregates are approximately 0.1-0.5 µm in length, which in turn form agglomerates of 0.5-0.44 µm (Id., paragraph 0004), wherein agglomerates can be disassociated into the constituent aggregates via mechanical energy inputs (Id., paragraph 0036). Davis teaches the production of large-aggregate fumed silica with an increased aggregate size at a given surface area (Id., paragraphs 0014, 0118), wherein the fumed silica can have an aggregate size D of 120 nm or more and a surface area of 50-550 m2/g (Id., paragraphs 0030-0032). Davis teaches that fumed silica having an increased aggregate size at a given surface area with respect to conventional fumed silica provides many performance benefits for both rheological and reinforcement applications (Id., paragraph 0064). Davis teaches that fumed silica of increased aggregate size disperses faster than fumed silica of smaller aggregate size with the same surface area (Id.). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the polyimide coated wire of Knerr, wherein the silica fillers comprise bimodal fillers of silica with a fraction of larger particles at a higher concentration, such as resulting in a total area within the claimed range, as taught by Gröppel, and the larger particles comprise a diameter, such as within the claimed range, as taught by Davis, motivated by the desire of forming a conventional coated wire having predictably improved discharge resistance such as by increasing the larger particle size and area fraction within the surface areas set forth in Knerr. Regarding claim 3, the prior art combination teaches that the filler material may be added at any suitable ratio, such as between approximately 10% and approximately 25% by weight. Regarding claims 4 and 5, the prior art combination teaches polyimide formed by reacting a dianhydride component (e.g. pyrometllitic dianhydride or PMDA) with 4,4’-oxydianiline (ODA) (Knerr, paragraph 0021). Regarding claim 11, as set forth above, it is unclear exactly what is claimed. However, the prior art combination teaches that primary particles are associated into secondary particles, generally referred to as aggregates, formed from primary particles that are bonded together by covalent bonds, which would appear to be within the claimed range. Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Knerr in view of Gröppel and Davis, as applied to claims 1-5 and 11 above, and further in view of US Pub. No. 2016/0024256 to Miyamoto. Regarding claims 5 and 6, the prior art combination teaches polyimide formed by reacting a dianhydride component (e.g. pyrometllitic dianhydride or PMDA) with 4,4’-oxydianiline (ODA). The prior art combination does not appear to teach the claimed amounts. However, Miyamoto teaches a polyimide precursor composition including a condensation polymer of a tetracarboxylic dianhydride composed of a first tetracarboxylic dianhydride having a benzene ring to which two carboxylic anhydride groups are bonded, and a second tetracarboxylic dianhydride other than the first tetracarboxylic dianhydride, and a diamine compound (Miyamoto, Abstract). Miyamoto teaches that the first tetracarboxylic dianhydride is pyromellitic dianhydride (Id., paragraphs 0016, 0044). Miyamoto teaches preparation of a polyimide precursor composition including 4,4’-diaminodiphenyl ether (ODA), 3,3’,4,4’-biphenyltetracarboxylic dianhydride (BPDA), and pyromellitic dianhydride (Id., paragraph 0220, 0257; see generally Id., Tables 1-10). Miyamoto teaches that the first tetracarboxylic dianhydride is preferably included in the proportion of from 40% by mole to 95%by mole, and that the second tetracarboxylic dianhydride is preferably included in the proportion of from 5% by mole to 60% by mole (Id., paragraphs 0045, 0069). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the polyimide coated wire of the prior art combination, wherein the polyimide is formed by reacting pyromellitic dianhydride and ODA is amounts, such as within the claimed range, as taught by Miyamoto, motivated by the desire of forming a conventional polyimide composition comprising amounts of dianhydride and diamines known in the art as being predictably suitable for such compositions including silica. Response to Arguments Applicant’s arguments have been considered but are moot based on the new ground of rejection. Conclusion Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 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, Jennifer Boyd can be reached at 571-272-7783. 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. /PETER Y CHOI/Primary Examiner, Art Unit 1786
Read full office action

Prosecution Timeline

Jul 05, 2023
Application Filed
Aug 03, 2023
Response after Non-Final Action
Nov 30, 2023
Response after Non-Final Action
Apr 08, 2026
Non-Final Rejection mailed — §103, §112
Jul 06, 2026
Response Filed
Sep 09, 2026
Final Rejection mailed — §103, §112 (current)

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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
21%
Grant Probability
54%
With Interview (+33.0%)
4y 8m (~1y 5m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 654 resolved cases by this examiner. Grant probability derived from career allowance rate.

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