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 .
Status of the Claims
By amendment filed April 03, 2026, claims 11, 12, 17, 19 and claims 23 through 25 have been amended. Claims 11 through 14 and 16 through 27 are currently pending.
Response to Arguments
Applicant's arguments filed April 03, 2026 have been fully considered but they are not persuasive. Applicant’s argument that that the claims require that the second resin component was not attached to any filler particles is not persuasive because Groppel teaches that when a formulation comprising the second resin component was provided the second resin component was not attached to any filler particle. Instead Groppel teaches that the second resin component/organosilicon compound attaches to a filler particle when it undergoes a condensation reaction (Column 4 Lines 1-11). Therefore, the claims are still obvious in view of the previously cited prior art.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, applicant argues that there is no reason to add the second resin component of Groppel in the absence of filler materials. This argument is not persuasive because primary reference Huber taught a formulation that comprised filler materials and, as acknowledged by applicant, the claims of the present application require filler materials.
The amendments to the claims have overcome the 112(d) rejection of claim 17.
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.
Claims 11-14 and 16-27 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 requires that the second, silicon-oxygen-based resin component with at least one hydroxyl functionality is not attached to any filler particle when provided in step a). This limitation is not disclosed within the specification of the present application as originally filed and therefore fails to comply with the written description requirement.
Claim 12 requires that the powder coating formulation includes an electrically conductive filler not attached to the second resin component. This limitation is not disclosed within the specification of the present application as originally filed and therefore fails to comply with the written description requirement.
Claim 19 requires that the formulation further comprises fillers not attached to the second component. This limitation is not disclosed within the specification of the present application as originally filed and therefore fails to comply with the written description requirement.
Claim 25 requires that the second, silicon-oxygen-based resin component with at least one hydroxyl functionality is not attached to any filler particle when provided in step a). This limitation is not disclosed within the specification of the present application as originally filed and therefore fails to comply with the written description requirement.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 11, 13, 14, 16-19, 21-25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Huber et al (WIPO Patent Publication No. WO2019/154932A1; national stage U.S. Patent # 12,131,841 is referenced hereafter as an English translation) in view of Groppel et al (U.S. Patent # 9,589,699).
In the case of claims 11, 16, 17 and 25, Huber teaches a method for producing one or more components of an insulation system comprising a main insulation of an electrical machine which included rotating machines using a formulation comprising a first hydrocarbon-based resin component, a second silicon-oxygen resin component and a hardener/curing agent (Abstract, Column 1 Lines 19-27 and Column 3 Lines 50-67). Huber teaches that the formulation was provided as either a dry powder coating formulation of a wet enamel/liquid formulation (Column 2 Lines 47-55) which was applied/sprayed onto a conductor (Column 3 Lines 14-30) and the providing and applying was repeated until a desired thickness was attained (Column 11 Lines 5-19). Furthermore, Huber teaches that the conductor the formulation was applied to comprised a coil or bar (Column 1 Lines 45-51).
Huber further teaches that the first resin was a monomeric and/or oligomeric diepoxidized epoxy resin in the form of diepoxidic carbon-based resin and that the second resin was a monomeric and/or oligomeric glycidyl-based aryl-/alkylsiloxane (Column 14 Claim 13). Furthermore, Huber does not teach that the second resin was attached to any filler particles.
Huber does not teach that the second component comprised a silicon-oxygen-based resin having at least one hydroxyl functionality and was not a filler particle having a chemical attachment. However, as was discussed previously, the formulation of Huber comprised an epoxy resin based first component and further comprised filler in the form of metal oxide ceramic particles such as aluminum oxide and silicon dioxide particles (Column 7 Lines 20-31).
Groppel teaches an insulation system for rotating electrical machines which included an adhesion promoter that inhibited erosion (Abstract and Column 1 Lines 18-45). Groppel teaches that the insulation system was formed from a substance comprising an epoxy resin and aluminum oxide or silicon dioxide filler particles (Column 3 Lines 53-61). Groppel teaches that the adhesion promoters included silanes including oligomeric silsesquioxane (Column 4 Lines 1-4 and 47-50 and Column 5 Lines 1-5). Groppel further teaches that the silanes comprised reactive functionality including hydroxyl groups (Column 5 Lines 18-23 and 38-47).
Based on the teachings of Groppel, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have included oligomeric silsesquioxane having at least one hydroxyl functionality in the formulation of Huber in order to improve the erosion resistance of the insulation system.
As for claims 13 and 27, Huber teaches having applied the formulation on a heated/hot metal substrate and cooled (Column 10 Lines 40-64).
As for claim 14, Huber teaches that the powder coating formulation was applied by dipping in a fluidized bed by fluidized bed spraying (Column 9 Lines 33-36).
As for claim 18, as was discussed previously, the formulation of Huber in view of Groppel comprised an oligomeric silsesquioxane.
As for claims 19, 21 and 22, Huber teaches that the formulation included fillers including those which are at least partially electrically insulating such as mica or quartz. Huber further teaches that the filler included additives and/or sinter aids. (Column 7 Lines 20-45)
As for claims 23 and 24, Huber teaches that the formulation comprised cationic or anionic hardeners/curing agents which comprised organic salts and imidazolium salt (Column 6 Lines 28-40).
Claims 12, 20 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Huber et al in view of Groppel et al as applied to claims 11, 19 and 25 above, and further in view of Lang et al (U.S. Patent Publication No. 2018/0145554).
The teachings of Huber in view of Groppel as it applies to claims 11, 19 and 25 have been discussed previously and are incorporated herein.
In the case of claims 12, 20 and 26, as was discussed previously, Huber taught including filler in the formation applied to the components of an insulation system. However, Huber did not teach that the formulation further comprised an electrically conductive filler. Huber did teach that the insulation system comprised corona shields (Column 1 Lines 45-51).
Lang teaches a resistance coating for corona shielding system of electrical machines wherein electrically conductive particles an incorporated into the electrically insulating matrix o the resistance coating (Abstract and Page 2 Paragraph 0026). Lang teaches that the incorporation of conductive particles increased the erosion pathway of partial discharges and therefore increased the lifetime of an insulation system (Page 3 Paragraph 0041).
Based on the teachings of Lang, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have included electrically conductive filler in the formulation of Huber in view of Groppel so that the erosion pathway of partial discharges in the insulation system were increased thereby increasing the lifetime of an insulation system.
Conclusion
Claims 11 through 14 and 16 through 27 have been rejected. No claims were allowed.
THIS ACTION IS MADE FINAL. 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 MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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