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 .
Election/Restrictions
Applicant’s election without traverse of Group I, corresponding to Claims 1-17, in the reply filed on January 17, 2026 is acknowledged. Applicant’s election of species (i), wherein the coating of the magnet wire is formed by multiple alternating layers, corresponding to Claims 1-4 and 6-17, in the reply filed on May 12, 2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the election of species requirement, the election has been treated as an election without traverse. M.P.E.P. § 818.01(a). Claims 5 and 18-29 are withdrawn from consideration.
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.
Claims 1-4 and 6-17 are 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.
Claim 1 recites the limitation “thermally conductive filler” in line 4. There is insufficient antecedent basis for this limitation in the claim. The full antecedent basis for this claim limitation is a thermally conductive inorganic filler.
Claim 1 recites that the thermally conductive filler has a surface treatment to “fully integrate” it into the polymer. The scope of this limitation is unclear. How is the filler fully integrated into the polymer? What does full integration mean? How does the person having ordinary skill in the art avoid full integration? The Specification does not provide any description as to what is meant by the scope of this limitation, and how is it meant to differentiate from a material that would be considered to be partially integrated. As such, Claim 1 is indefinite.
Claim 1 recites “the thermally conductive inorganic filler can be formed from nanostructures, which in turn can be fullerenes or other structures, such as platelets, flakes, hexagonal shapes.” However, the phrases “can be” and “such as” render the claim indefinite because it is unclear whether the limitations following these phrases are part of the claimed invention. See M.P.E.P. § 2173.05(d). Moreover, the compound use of these phrases in succession renders it difficult to ascertain the proper scope of the claim. Is it optional that the thermally inorganic filler comprises nanostructures? Is it optional that the nanostructures are fullerenes? Is it optional that the nanostructures comprise platelets, flakes, or hexagonal shapes? Claim 1 is indefinite.
Claim 1 recites that the inorganic filler can be nanostructures, which, in turn, can be fullerenes. The scope of this limitation is unclear. Fullerene is a carbon-based organic material. However, Claim 1 already requires that the filler is inorganic. It is unclear whether Applicant intends for the filler material to be inorganic or a carbon-based fullerene. How does a fullerene structure mesh with an inorganic substance? Claim 1 is indefinite.
Claim 2 recites the limitation “thermally conductive dielectric coating” in line 1. There is insufficient antecedent basis for this limitation in the claim. The proper antecedent basis for this claim limitation, from parent Claim 1, is a composite coating. Additionally, it is unclear what the scope of a material being both thermally conductive and dielectric would entail, given that a dielectric material provides insulating properties, rather than conductive properties. The Specification does not address this mix of characteristics, and its usage in the claims is confusing.
Claim 4 recites the limitation “thermally conductive coating” in line 1. There is insufficient antecedent basis for this limitation in the claim. The proper antecedent basis for this claim limitation, from parent Claim 1, is a composite coating.
Claim 8 recites the limitation “the fullerene-type nanostructures” in line 1. There is insufficient antecedent basis for this limitation in the claim. Parent Claim 1 makes reference to nanostructures, but the does not utilize the indefinite adjective of being “fullerene-type.”
Claim 8 recites the limitation “the fullerene-type nanostructures” in line 1. The phrase “-type” renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by “-type”), thereby rendering the scope of the claim unascertainable. See M.P.E.P. § 2173.05(d). How is an inorganic material similar to a fullerene structure when it lacks the carbon atoms necessary to provide a fullerene structure?
Claim 8 recites that fullerene-type nanostructures are selected from BeO, hBN, SiO2, AlN, TiO2, graphene, and Fe2O3. How do these materials have a fullerene-type nanostructure? Fullerene materials are provided with their shape and three-dimensional structure via carbon atom bonding. The listed materials do not possess carbon atoms. So, in what way would these materials be considered to be fullerene-type? Claim 8 is indefinite.
Claim 8 recites that the nanostructures, which are characterized as being thermally conductive in Claim 1, can comprise silicon dioxide or titanium dioxide. However, these materials are generally considered to be insulators rather than conductors. The scope of what the “thermally conductive inorganic filler” recited in Claim 1 is indefinite, as it appears to encompass materials that do not thermally conduct. Why can a material be characterized as conductive, on the one hand in Claim 1, and be formed from material that provides insulation and does not conduct, on the other hand in the dependent claim? The Specification does not provide an explanation to provide clarity.
Claim 9 recites the limitation “thermally conductive filler” in line 1. There is insufficient antecedent basis for this limitation in the claim. The full antecedent basis for this claim limitation, from parent Claim 1, is a thermally conductive inorganic filler.
Claim 10 recites the limitation “fullerene-type nanostructures” in line 1. There is insufficient antecedent basis for this limitation in the claim. Parent Claim 1 makes reference to nanostructures, but the does not utilize the indefinite adjective of being “fullerene-type.”
Claim 10 recites the limitation “the fullerene-type nanostructures” in line 1. The phrase “-type” renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by “-type”), thereby rendering the scope of the claim unascertainable. See M.P.E.P. § 2173.05(d).
Claim 11 recites the limitation “the electrical conductor” in line 1. There is insufficient antecedent basis for this limitation in the claim. No prior reference is made an electrical conductor. The scope of this claim is unclear.
Claim 11 recites the limitation “the coating” in line 2. There is insufficient antecedent basis for this limitation in the claim. The proper antecedent basis for this claim limitation, from parent Claim 1, is a composite coating.
Claim 14 recites the limitation “the filler” in line 1. There is insufficient antecedent basis for this limitation in the claim. The full antecedent basis for this claim limitation, from parent Claim 1, is a thermally conductive inorganic filler.
Claim 15 recites the limitation “the coating” in line 1. There is insufficient antecedent basis for this limitation in the claim. The proper antecedent basis for this claim limitation, from parent Claim 1, is a composite coating.
Claim 16 recites the limitation “the coating” in line 1. There is insufficient antecedent basis for this limitation in the claim. The proper antecedent basis for this claim limitation, from parent Claim 1, is a composite coating.
Claim 17 recites the limitation “the coating” in line 1. There is insufficient antecedent basis for this limitation in the claim. The proper antecedent basis for this claim limitation, from parent Claim 1, is a composite coating.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 6, 8, 10, 11, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2010/0009185 to Fang et al. (“Fang”).
With regard to Claims 1 and 8, Fang discloses an enameled wire comprising a metallic wire and at least one layer of insulating coating, wherein at least one layer of the at least one layer of insulating coating includes a nano-filler. See, e.g., Abstract, entire document. Fang discloses that the insulating coating comprises 1 part by weight of silicon dioxide to 25 to 100 parts by weight of synthetic resin. Paragraph [0034]. Fang discloses that the silicon dioxide has a primary particle size of about 15 nm. Paragraph [0017]. The silicon dioxide disclosed by Fang satisfies the limitations of the claimed thermally conductive inorganic filler because of its recitation in dependent Claim 8, and because it is modified with an organic solvent and an organic silane coupling agent. Paragraph [0016]. Fang teaches that the silicon dioxide is fully integrated with the resin via the silane coupling agent, which ensures high dispersion. Paragraphs [0017] and [0062]. With regard to Claims 2, 4, and 11, Fang discloses a first layer (40) of insulating coating disposed around a metallic wire (10B), a second layer (20B) of insulating coating containing a modified silicon dioxide slurry disposed around the first layer, and a third layer (30A) of insulating coating is disposed around the second layer (20B) so as to form an enameled wire having three-layers. Figure 3 and paragraph [0061]. With regard to Claim 6, Fang discloses that the polymeric resin may be well known thermoplastic or thermosetting resins, such as polyester resin, polyimide resin, polyurethane resin, polyamide imide resin, or polyesterimide resin. Paragraph [0026]. With regard to Claim 10, Fang discloses that solvent can be used with the resin and the nanofiller, such as phenol, cresol, xylenol, N-methyl-2-pyrrolidone, or N,N-dimethyl acetamide. Paragraph [0028]. With regard to Claim 14, Fang discloses that the organic silane coupling agent bonded to the filler can be used as a surfactant. Paragraph [0018].
Claims 1-4, 6-8, 10-13, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2010/0101828 to Duarte Pena et al. (“Pena”).
With regard to Claims 1 and 3, Pena discloses a magnet wire comprising an electrical conductor and a coating around the electric conductor, wherein the coating is composed of 82% to 99.95% by weight of polymeric resin and 0.05% to 18% by weight of fullerene-type nanostructures. See, e.g., Abstract, entire document. Pena discloses that the fullerene-type nanostructures can undergo a surface treatment, paragraph [0038], and are fully integrated into the polymer via homogenous dispersion. Paragraph [0054]. Pena discloses that the nanostructures have high thermal conductivity that can be greater than 20 W/m*K. Paragraph [0037]. With regard to Claims 2, 4, and 11, Pena discloses that the electrical conductor 30 is covered with coating 20 composed by an inner layer 50 and an external layer 60 of polymeric resin, with an intermediate layer 70 of polymeric resin completed with homogeneously dispersed fullerene-type nanostructures. Paragraph [0054]. With regard to Claim 6, Pena discloses that the coating composition “contains one or more thermoplastic or thermoset polymer resins among which are acrylics, alkyds of terephthalic acid, polyesters, polyesteramides, polyesteramides, polyesteramidaimides, polyesterurethanes, polyurethanes, epoxy resins, polyvinylformals, polyamides, polyimides, polyamidaimides, polysulfones, polyvinylbutiral, silicon resins, polymers incorporating polyhydantoin, phenol resins, vinyl copolymers, polyolefins, polycarbonates, polyethers, polyetherimides, polyetheramides, polyetheramideimides, polyisocyanates, polyesteramideimides, polyamide-esters, polyimida-esters, and combinations thereof and the like.” Paragraph [0027]. With regard to Claim 7, Pena discloses that the polymer resin has a dielectric resistance of at least about 7874 V/mm. Paragraph [0051]. With regard to Claim 8, Pena discloses that the nanostructures can comprise titanium dioxide. Paragraph [0038]. With regard to Claim 10, Pena discloses that the “polymeric resin and fullerene-type nanostructures are mixed with at least one common solvent selected from cresylic acid, N-methylpyrrolidone, phenol, aromatic hydrocarbons (for example, aromine 100, aromine 150 aromine 200), dimethylformamide, mesitol, benzyl alcohol, paracresol, metacresol, m-cresol, toluene, xylene, tetrahydrofuran, dimethyl sulfoxide, butyl alcohol, butyl cellsolve, and combinations thereof.” Paragraph [0040]. With regard to Claims 11 and 12, Pena discloses that “a first layer can be applied between the electrical conductor and the coating to improve adhesion of the latter. The first layer may consist of any variety of polymer resins such as polyvinyl acetal, polyvinylformal, epoxies, and combinations thereof.” Paragraph [0044]. With regard to Claim 13, Pena discloses that the magnet wire can further include an adhesive layer disposed around the coating. Paragraph [0045]. With regard to Claim 15, Pena discloses use of a slip promoting agent into the coating, such as polyvinyl fluoride, tetrafluoroethylene-perfluoro(alky vinyl ethylene) copolymer, tetrafluoroethylene-hexafluoropropylene-perfluoro(alkyl vinyl ether) copolymer, tetrafluoroethylene-perfluoro(alkyl vinyl ether) copolymer, ethylene-tetrafluoroethylene copolymer, polytetrafluoroethylene, polyvinylidene fluoride, ethylene-chlorotrifluoroethylene copolymer, polychlorotrifluoroethylene, carnauba, montan wax, and combinations thereof. Paragraph [0041]. With regard to Claim 16, Pena discloses a coloring agent, such as titanium dioxide or chromium dioxide can be used in the coating. Paragraph [0043].
Claims 1, 3, 6-9, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Internation Patent Application Publication No. WO 2016/106398 to Bhosale et al. (“Bhosale”).
With regard to Claim 1, Bhosale discloses a thermally conductive wire enamel used to form a conductor wire. See, e.g., Abstract, entire document. Bhosale discloses the enamel composition comprises a resin matrix and a thermally conductive filler. Paragraphs [0019] and [0023]. Bhosale discloses that the thermally conductive filler is present in an amount of about 3% to about 20%, by weight, paragraph [0042], with the balance mostly comprising the polymeric resin. Bhosale discloses that the filler can be subjected to a surface treatment. Paragraphs [0061] to [0064]. With regard to Claim 3, Bhosale discloses that the filler particles can comprise boron nitride having a thermal conductivity greater than 300 W/mK. Paragraph [0031]. With regard to Claim 6, Bhosale discloses that suitable resins include a polyvinyl formal, a polyester, a polyurethane, a polyamide, a polyimide, a polyamideimide, a polyepoxide, a polyesterimide, and combinations of two or more thereof. Paragraph [0022]. With regard to Claim 7, Bhosale discloses that the coating has a dielectric strength of at least 10000 kV/mm. Paragraph [0066]. With regard to Claim 8, Bhosale discloses that suitable fillers include boron nitride, beryllium oxide, silica, aluminum nitride, and titanium oxide. Paragraph [0024]. With regard to Claim 9, Bhosale discloses that the enamel coating has an in-plane thermal conductivity of at least about 1.0 W/mK. Paragraph [0033]. With regard to Claim 14, Bhosale discloses that the surface of the filler can be treated with materials that provide surfactant properties. Paragraph [0060].
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 17 is rejected under 35 U.S.C. 103 as being unpatentable over Pena.
With regard to Claim 17, Pena discloses that the coating has a conductivity in the range of about 1x10-12 S/cm to about 1x103 S/cm. Paragraph [0057]. As such, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the coating with a conductivity in the range of 1x100 S/cm to about 1x10 S/cm because such a range is within the values already taught by Pena that can be achieved within the scope of their invention without any undue burden, and because “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. M.P.E.P. 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 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, Marla D. McConnell can be reached at 571-270-7692. 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.
JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
Prosecution Insights