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 apparatus and claim 1-4, in the reply filed on 10/03/2025 is acknowledged.. Election was made without traverse in the reply filed on 10/03/2025. Applicant did not elect claims 5-9.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Inventorship
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
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 3 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 3 last line-3-4 recites “a rotating… thickness”, as a first recitation, it is confusing if it is the first recited limitation or a new thickness,
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as obvious over Heimann et al. (US Patent 6995484 hereinafter “Heimann”) in view of obviousness of ranges eMPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024].
Re-claim 1, Heimann discloses a coated rotating electric machine (1), comprising at least one substrate coated with intumescent coating (Col.14, Example 20, L.22-30), wherein the intumescent coating has a
wherein the intumescent coating is applied on every external and/or exposed and/or apparent surface of the coated rotating electric machine (coating is coated on surface of the rotor, as indicated below, rotor is dipped in rotor therefore is applied to all surface of the rotor),
wherein the intumescent coating is cured (after, it is cured, put in furnace over) and the curing temperature is lower than the temperature at which the intumescent coating begins to expand (Product by process limitations, Examiner points out this limitation is considered a product-by-process limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777F, 2d 659, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see also MPEP 2113.), and wherein the intumescent coating has a thickness (coating in Heimann has a thickness of at least 1 to 10 mill,Col.6, L.25-27,coating composition is 1 to 10 mill, so it is homogenous) of wall thickness.
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Heimann is silent in regards to the range corresponding to a value between 1 % and 25% or preferably between 10% and 20% of the rotating electric machine housing wall thickness.
However, the structure of Heimann is a rotor that has a certain thickness and the coating is a thickness on top of the rotor body which ranges in 1 to 10mill, therefore it would be obvious for the thickness to be at least 1 mill or 1% of the thickness of the rotor thickness, or it could be up to 10 mill which might fall in the 25% range to 1%, see eMPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS, it is obvious that the structure is similar having a layer on the rotor that has a certain thickness and this is a mere change in range, optimization of thickness of the coating, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent". Therefore, saying the coating is small or big or a certain percentage compared to the thickness of the rotor or housing or wall, is a mere engineering and design and manufacturing choice that is mere experimentation that is typically done for coating structures etc, therefore it obvious to have a coating thickness of 1 % and 25% or preferably between 10% and 20% of a rotating electric machine housing wall thickness.
Re-claim 2, Heimann discloses the coated rotating electric machine according to claim 1, wherein the intumescent coating has a homogeneous distribution (Col.6, L.25-27,coating composition is 1 to 10 mill, so it is homogenous) throughout a surface of the at least one substrate (on rotor, or other parts of motor) of the rotating electric machine.
Re-claim 3, Heimann discloses the coated rotating electric machine according to claim 1, wherein the intumescent coating has a thickness (coating in Heimann has a thickness of at least 1 to 10 mill).
Heimann is silent in regards to the range corresponding to a value between 10% and 20% of a rotating electric machine housing wall thickness.
However, the structure of Heimann is a rotor that has a certain thickness and the coating is a thickness on top of the rotor body which ranges in 1 to 10mill, therefore it would be obvious for the thickness to be at least 1 mill or 1% of the thickness of the rotor thickness, or it could be up to 10 mill which might fall in the 20% range to 10%, see eMPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS, it is obvious that the structure is similar having a layer on the rotor that has a certain thickness and this is a mere change in range, optimization of thickness of the coating, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent". Therefore, saying the coating is small or big or a certain percentage compared to the thickness of the rotor or housing or wall, is a mere engineering and design and manufacturing choice that is mere experimentation that is typically done for coating structures etc, therefore it obvious to have a coating thickness of between 10% and 20% of a rotating electric machine housing wall thickness.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as obvious over Heimann et al. (US Patent 6995484 hereinafter “Heimann”) in view of Maleika et al. (US PG PUB 20240318032 hereinafter “Maleika”).
Re-claim 4, Heimann discloses the coated rotating electric machine according to claim 1.
However, Heimann fails to explicitly teach wherein the intumescent coating is a hydrocarbon-based intumescent coating.
However, Maleika teaches wherein the intumescent coating is a hydrocarbon-based intumescent coating (C1,).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filling date of the invention to make the coating of Heimann wherein the coating intumescent coating is a hydrocarbon-based intumescent coating as suggested by Maleika to give wet enamel for an insulation system to protect the motor making increase reliability device lifetime (Maleika, P[0009]).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as obvious over Heimann et al. (US Patent 6995484 hereinafter “Heimann”) in view of Lizuka (EP0236520A1 hereinafter “Lizuka”).
Re-claim 10, Heimann as modified discloses the coated rotating electric machine of claim 1,
Heimann fails to explicitly teach wherein the intumescent coating is configured to withstand temperatures of up to 600 C for at least 2 hours.
However, Lizuka teaches the intumescent coating is configured to withstand temperatures of up to 600 C for at least 2 hours (claim 11, Ceramic Coat layer at 600c for at least one hour, which includes 200 hours for more).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filling date of the invention to modify the coating used in Heimann wherein the intumescent coating is configured to withstand temperatures of up to 600 C for at least 2 hours as suggested by Lizuka to prevent damage, peeling or weak bonding standing high temperatures, and remove impurities, making more reliable part (Lizuka, P[0005-0006]).
Re-claim 11, Heimann as modified discloses the coated rotating electric machine of claim 1.
Heimann fails to explicitly wherein the intumescent coating is a thermally resistant coating.
However, Lizuka wherein the intumescent coating is a thermally resistant coating (thermal barrier coating, TCB,claim 11, Ceramic Coat layer at 600c for at least one hour, which includes 200 hours for more).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filling date of the invention to modify the coating used in Heimann wherein the intumescent coating is a thermally resistant coating as suggested by Lizuka to prevent damage, peeling or weak bonding standing high temperatures, and remove impurities, making more reliable part (Lizuka, P[0005-0006]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in PTO892. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAGED M ALMAWRI whose telephone number is (313)446-6565. The examiner can normally be reached on Monday - Thursday.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher M. Koehler can be reached on 5712723560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MAGED M ALMAWRI/Primary Patent Examiner, Art Unit 2834
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