DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office Action is responsive to the Applicant's communication filed 15 December 2025. In view of this communication and the amendment concurrently filed, claims 1-2, 5-8, and 10 are now pending in the application.
Response to Arguments
The Applicant’s arguments, filed 15 December 2025, have been fully considered but are only partially persuasive.
The Applicant’s first argument (page 9 of the Remarks) alleges, regarding the newly added subject matter of the drawings, specification, and claims, that said subject matter is properly supported by paragraphs 0061-0063 of the published specification and newly replaced figures 3A and 3B. However, the specification and drawings, as originally filed, did not contain the newly added subject matter (i.e. the application as originally filed disclosed the heat pipe tapering from the protruding end to the inner region, while the amended subject matter discloses/recites the heat pipe tapering from the inner region to the protruding end). Thus, the amendments are now objected to, and the claims are now rejected, as containing new matter.
The Applicant’s second argument (pages 10-14 of the Remarks) alleges, regarding the previous grounds of rejection under 35 U.S.C. 103, that the prior art, specifically the Yun reference, does not disclose the heat pipe tapering from the inner region to the protruding end as recited in the amended claims. This argument is persuasive as Yun clearly discloses the opposite arrangement. However, the Roy reference (previously only cited) does clearly disclose this feature as its accommodating portion is wider in the inner region where it absorbs heat and its accommodating portion is narrower in the protruding end where heat is dissipated. Thus, new grounds of rejection have been made below in view of Matsuki, Kitahara, and Roy.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), which papers have been placed of record in the file.
Drawings
The replacement drawings were received on 15 December 2025. These drawings are unacceptable.
Newly filed figures 3A and 3B show features not disclosed in the application as originally filed. These drawings show the heat pipe tapering from the inner region to the protruding end, while the application as originally filed disclosed/recited the heat pipe tapering from the inner region to the protruding end. As such, the amendment to the drawings constitutes new matter.
Disclosure
The amendment filed 15 December 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The application as originally filed disclosed the accommodation portion of the heat pipe tapering from the protruding end to the inner region, i.e. the inner/insertion portion having a smaller diameter than the protruding end. However, the amended subject matter discloses/recites the accommodation portion of the heat pipe tapering from the inner region to the protruding end, i.e. the inner/insertion portion having a greater diameter than the protruding end.
Applicant is required to cancel the new matter in the reply to this Office Action.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL. — The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-2, 5-8, and 10 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 8 recite the newly added limitation “the accommodating portion has a tapered shape whose diameter decreases as it extends from an inner region located within the rotor toward the protruding end located outside the rotor”. The application as originally filed only disclosed the opposite arrangement, where the diameter of the accommodating portion increases from the inner region toward the protruding end.
While the associated Remarks allege that these new limitations, and the amendments made to the disclosure, are supported by the foreign priority document, an applicant may not rely on the disclosure of that document to support correction of an error in the pending U.S. application. Ex parte Bondiou, 132 USPQ 356 (Bd. Pat. App. & Int. 1961). This prohibition applies regardless of the language of the foreign priority documents because a claim for priority is simply a claim for the benefit of an earlier filing date for subject matter that is common to two or more applications, and does not serve to incorporate the content of the priority document in the application in which the claim for priority is made. See MPEP 2163.07(II).
Since the application as originally filed did not explicitly incorporate the foreign priority document by reference, this prohibition applies to the current application. Thus, the newly added subject matter constitutes new matter.
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 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.
Claim(s) 1-2 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitahara (US 2019/0280565 A1), hereinafter referred to as “Kitahara”, in view of Roy (US 2021/0215439 A1), hereinafter referred to as “Roy”.
Regarding claim 1, Kitahara discloses a motor [1] (fig. 1-2; ¶ 0030) comprising:
a stator [3] in which a coil [32] is wound and which forms a magnetic field by a current flowing through the coil [32] (fig. 2; ¶ 0031-0032; 0034);
a rotor [4] which is surrounded by the stator [3] and is rotated by the magnetic field (fig. 1-2; ¶ 0034); and
a heat pipe [6] inserted into the rotor [4] (fig. 1-4; ¶ 0041, 0044, 0050-0051),
wherein the heat pipe [6] is formed to protrude at one end [61] thereof out of the rotor [4] (fig. 1-2; ¶ 0047), and cools the rotor [4] by causing heat exchange between the rotor [4] and the protruding end [61] (¶ 0066-0068),
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wherein the heat pipe [6] comprises an accommodating portion [63] forming an internal space [65] that contains a two-phase cooling fluid [S1] (fig. 4; ¶ 0069-0073; “by repeating the cycle of evaporation and condensation of the operation liquid S1 in the heat pipe 6, a heat exchange is effectively performed”), and
wherein the accommodating portion [63] has an inner region [62] located within the rotor [4] and the protruding end [61] is located outside the rotor [4] (fig. 2; ¶ 0067), and
wherein, when the rotor [4] rotates, the two-phase cooling fluid [S1] moves toward the inner region, evaporates by absorbing heat from the rotor [4], and vapor generated in the inner region [62] moves toward the protruding end [61] to condense and return as liquid within the accommodating portion [63] (fig. 4; ¶ 0069-0073).
Kitahara does not disclose that the accommodating portion [63] has a tapered shape whose diameter decreases as it extends from an inner region [62] located within the rotor [4] toward the protruding end [61] located outside the rotor [4], and
wherein, when the rotor [4] rotates, the two-phase cooling fluid [S1] moves toward the inner, larger-diameter region by centrifugal force, evaporates by absorbing heat from the rotor [4], and vapor generated in the inner region [62] moves toward the protruding end [61] to condense and return as liquid within the accommodating portion [63].
Roy discloses a motor [400] comprising a stator [420] and a rotor [410], the rotor [410] comprising a heat pipe [100] with an accommodating portion [110] for a two-phase cooling fluid [200] (fig. 1; ¶ 0024, 0033, 0050),
wherein the accommodating portion [110] has a tapered shape whose diameter decreases as it extends from an inner region [175] located within the rotor [410] toward the protruding end [125] located outside the rotor [410] (fig. 1; ¶ 0024), and
wherein, when the rotor [410] rotates, the two-phase cooling fluid [200] moves toward the inner, larger-diameter region [175] by centrifugal force, evaporates by absorbing heat from the rotor [410], and {the hot phase} generated in the inner region [175] moves toward the protruding end [125] to condense and return as {the cold phase} within the accommodating portion [110] (fig. 1; ¶ 0036-0040).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the accommodating portion of Kitahara having a tapered shape as taught by Roy, in order to increase the heat transport capacity of the heat pipe by providing high velocities of the phase change material (¶ 0040 of Roy).
Further, it has been held that a mere change in shape of a particular component of a device is a matter of design choice involving only routine skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 2, Kitahara, in view of Roy, discloses the motor [1] of claim 1, as stated above, wherein the heat pipe [6] comprises:
an insertion portion [62] which contacts the inside of the rotor [4] (fig. 2-4; ¶ 0050-0053); and
a protrusion [61] which extends from the insertion portion [62] and protrudes out of the rotor [4] (fig. 2-4; ¶ 0050-0053),
wherein the insertion portion [62] absorbs heat generated in the rotor [4], and the protrusion [61] transfers the heat absorbed by the insertion portion [62] to the outside to cool the rotor [4] (¶ 0066-0068).
Regarding claim 6, Kitahara, in view of Roy, discloses the motor [1] of claim 1, as stated above, wherein the rotor [4] comprises a shaft [5] rotatably disposed at a center thereof (fig. 1-2; ¶ 0031-0032), and
wherein the heat pipe [6] is provided as a hollow cylinder (fig. 3-4) and inserted into the rotor [4] in a form surrounding an outer surface of the shaft [5] (fig. 2-3).
Regarding claim 7, Kitahara, in view of Roy, discloses the motor [1] of claim 1, as stated above, wherein the heat pipe [6] is provided as a plurality of cylinders, and the heat pipes [6] are spaced apart from each other in a circumferential direction of the rotor [4] (fig. 2-3; ¶ 043-0044; the heat pipes are arranged radially inside of the magnet holes which are disposed around the rotor in the circumferential direction).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitahara and Roy as applied to claim 1 above, and further in view of Fedoseyev et al. (US 2014/0368064 A1), hereinafter referred to as “Fedoseyev”.
Regarding claim 5, Kitahara, in view of Roy, discloses the motor [1] of claim 1, as stated above, wherein the rotor [4] comprises a shaft [5] rotatably disposed at a center thereof (fig. 1-2; ¶ 0031-0032).
Kitahara does not disclose that the heat pipe [6] is provided as a single cylinder and inserted into a center of the shaft [5].
Fedoseyev discloses a motor comprising a rotor [100], wherein the rotor [100] comprises a shaft [107] rotatably disposed at a center thereof (fig. 1-3; ¶ 0020-0022), and a heat pipe [117] is provided as a single cylinder and inserted into a center of the shaft [107] (fig. 1-3; ¶ 0020-0022).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the heat pipes of Kitahara in a center of the shaft as taught by Fedoseyev, in order to achieve a temperature balance within the motor (¶ 0003 of Fedoseyev). Further, it has been held that merely rearranging the essential working parts of a device would be an obvious matter of design choice. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Claim(s) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuki et al. (US 2013/0069456 A1), hereinafter referred to as “Matsuki”, in view of Kitahara and Roy.
Regarding claim 8, Matsuki discloses a motor cooling system [2] (fig. 2; ¶ 0030) comprising:
a motor [1] in which a cooling fluid [oil] accommodated therein absorbs heat (fig. 2, 5; ¶ 0032-0035);
a filter [24,28] which filters the cooling fluid [oil] having passed through the motor [1] (fig. 2, 5; ¶ 0034-0036); and
a cooler [heat exchanger] which cools the cooling fluid having absorbed heat from the motor [1] (fig. 2, 5; ¶ 0058; the “heat exchanger (not shown)” is disposed between the motor outlet port [651], after filter [28], and the hydraulic pump [21]),
wherein the cooling fluid cooled by the cooler [heat exchanger] is introduced into the motor [1] again to cool the motor [1] (fig. 2; ¶ 0058; “cooled by the heat exchanger… sent again to the electric motor 1 by the hydraulic pump 21”),
wherein the motor [1] comprises:
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a stator [9] in which a coil [92] is wound and which forms a magnetic field by a current flowing through the coil [92] (fig. 5; ¶ 0039, 0052-0053);
a rotor [8] which is surrounded by the stator [9] and is rotated by the magnetic field (fig. 5; ¶ 0030, 0050-0051; the coils of the stator generate a magnetic field when energized, which act on the permanent magnets disposed in the rotor); and
wherein the cooling fluid absorbs heat generated in the rotor [8] while in the rotor [8] (fig. 5; ¶ 0051).
Matsuki does not disclose a heat pipe which is inserted into the rotor [8].
Kitahara discloses a motor [1] (fig. 1-2; ¶ 0030) comprising a stator [3] (fig. 2; ¶ 0031-0032; 0034); a rotor [4] (fig. 1-2; ¶ 0034); and
a heat pipe [6] inserted into the rotor [4] (fig. 1-4; ¶ 0041, 0044, 0050-0051),
wherein a two-phase cooling fluid [S1] absorbs heat generated in the rotor [4] while in the heat pipe [6] (fig. 1-4; (¶ 0066-0068), and
wherein the heat pipe [6] comprises an accommodating portion [63] forming an internal space [65] containing the two-phase cooling fluid [S1] (fig. 4; ¶ 0069-0073; “by repeating the cycle of evaporation and condensation of the operation liquid S1 in the heat pipe 6, a heat exchange is effectively performed”), and
wherein the accommodating portion [63] has an inner region [62] located within the rotor [4] and the protruding end [61] is located outside the rotor [4] (fig. 2; ¶ 0067), and
wherein, when the rotor [4] rotates, the two-phase cooling fluid [S1] moves toward the inner region, evaporates by absorbing heat from the rotor [4], and vapor generated in the inner region [62] moves toward the protruding end [61] to condense and return as liquid within the accommodating portion [63] (fig. 4; ¶ 0069-0073).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the rotor of Matsuki having a heat pipe adjacent to the permanent magnet as taught by Kitahara, in order to directly cool the permanent magnet thereby preventing degradation of the magnetic force of the permanent magnet (¶ 0004 of Kitahara).
Kitahara does not disclose that the accommodating portion [63] has a tapered shape whose diameter decreases as it extends from an inner region [62] located within the rotor [4] toward the protruding end [61] located outside the rotor [4], and
wherein, when the rotor [4] rotates, the two-phase cooling fluid [S1] moves toward the inner, larger-diameter region by centrifugal force, evaporates by absorbing heat from the rotor [4], and vapor generated in the inner region [62] moves toward the protruding end [61] to condense and return as liquid within the accommodating portion [63].
Roy discloses a motor [400] comprising a stator [420] and a rotor [410], the rotor [410] comprising a heat pipe [100] with an accommodating portion [110] for a two-phase cooling fluid [200] (fig. 1; ¶ 0024, 0033, 0050),
wherein the accommodating portion [110] has a tapered shape whose diameter decreases as it extends from an inner region [175] located within the rotor [410] toward the protruding end [125] located outside the rotor [410] (fig. 1; ¶ 0024), and
wherein, when the rotor [410] rotates, the two-phase cooling fluid [200] moves toward the inner, larger-diameter region [175] by centrifugal force, evaporates by absorbing heat from the rotor [410], and {the hot phase} generated in the inner region [175] moves toward the protruding end [125] to condense and return as {the cold phase} within the accommodating portion [110] (fig. 1; ¶ 0036-0040).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the accommodating portion of Kitahara having a tapered shape as taught by Roy, in order to increase the heat transport capacity of the heat pipe by providing high velocities of the phase change material (¶ 0040 of Roy).
Further, it has been held that a mere change in shape of a particular component of a device is a matter of design choice involving only routine skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 10, Matsuki, in view of Kitahara and Roy, discloses the motor cooling system [2] of claim 8, as stated above, further comprising a pump [21] which moves the cooling fluid from the filter [24,28] to the cooler [heat exchanger] or from the cooler [heat exchanger] to the motor [1] (fig. 2, 5; ¶ 0032-0033, 0058).
Kitahara and Roy disclose two-phase cooling fluids, as stated above.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Prior art:
Saviers et al. (US 2023/0143600 A1) discloses a motor comprising a stator having heat pipes with the windings that extend out of one axial end of the stator.
Yun et al. (US 2020/0358325 A1) discloses a motor comprising a stator [400] with an accommodating portion [438] for a cooling fluid (fig. 9; ¶ 0055), wherein the accommodating portion [438] has a tapered shape whose diameter increases as it extends from the {stator} to the outside (fig. 9; ¶ 0055; the portion narrows at the axial center [466] and widens at the axial ends [468]).
Katsura et al. (US 2020/0366155 A1) discloses a motor comprising a rotor with a heat pipe centrally located within its shaft and extending axially out of one end of the rotor.
Satoh et al. (US 2014/0306450 A1) discloses a motor comprising a rotor with a heat pipe located within its shaft and extending axially out of one end of the rotor, the heat pipe being located either centrally or around the perimeter of the shaft.
Hassett et al. (US 2010/0026108 A1) discloses a motor comprising a stator having heat pipes with the windings that extend out of one axial end of the stator.
Potoradi et al. (US 2004/0155539 A1) discloses a motor comprising a stator with windings and a rotor with heat pipes extending out of one or both of its axial ends, the heat pipes being disposed either surrounding the rotor shaft or centrally located within the rotor shaft.
Corman et al. (US 3,801,843) discloses a motor comprising a rotor and a stator, each having heat pipes extending out of one or both axial ends thereof.
Conclusion
Applicant's amendment necessitated any 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 extension fee 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 date of this final action.
This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted.
General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/patent-trial-and-appeal-board/about-ptab/new-ptab. The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. It also includes information on pro bono (free) legal services and advice available for those who are under-resourced and considering an appeal at: https://www.uspto.gov/patents/patent-trial-and-appeal-board/patent-trial-and-appeal-board-pro-bono-program-independent. The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1). The current fee amount is available at: www.uspto.gov/Fees.
If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final replay that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Andrews whose telephone number is (571)270-7554. The examiner can normally be reached on Monday-Thursday, 8:30am-3:00pm.
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, Oluseye Iwarere can be reached at 571-270-5112. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael Andrews/
Primary Examiner, Art Unit 2834