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 .
DETAILED ACTION
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.
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.
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 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.
Claims 1-5 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Muto et al. (US Patent Application 2015/0325333 A1, published 12 Nov. 2015, hereinafter Muto) in view of Taguchi and Satou (US Patent Application 2004/0012478, published 22 Jan. 2004, hereinafter Taguchi) and further in view of Ito et al. (WO 2019/244694 A1, published 26 Dec. 2019, hereinafter Ito).
Regarding claims 1-5 and 13-20, Muto teaches an enamel resin-insulated wire comprising a surface layer including at least one thermosetting resin (Abstract and paragraph 0031). Muto teaches his surface layer has thickness of 10 to 40 µm (paragraph 0088). Muto teaches that his polymeric varnish for the surface layer is baked (cured) (paragraph 0139).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a layer thickness from the overlapping portion of the range taught by Muto because overlapping ranges have been held to be prima facie obviousness.
Muto does not teach the claimed cured product. Muto teaches that his insulating layer includes at least one thermosetting resin selected from a polyimide resin, a polyamideimide resin, a polyesterimide resin, a polyetherimide resin and a polyimidehydantoin modified polyester resin (paragraph 0031).
Taguchi teaches an insulating layer comprising at least one resin selected from the group consisting of a thermosetting polyimide, a thermosetting poly(ether ketone), and a thermosetting bismaleimide (paragraph 0023).
Given that Muto and Taguchi are drawn to electrically insulating layers comprising thermosetting resins and given that Taguchi discloses the equivalence and interchangeability of a thermosetting polyimide resin and a thermosetting poly(ether ketone) resin, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a thermosetting poly(ether ketone) as taught by Taguchi in the insulating layer taught by Muto. Since Muto and Taguchi are both drawn to electrically insulating layers comprising thermosetting resins, one of ordinary skill in the art would have a reasonable expectation of success in using a thermosetting poly(ether ketone) as taught by Taguchi in the insulating layer taught by Muto, since Taguchi teaches that the thermosetting poly(ether ketone) is functionally equivalent to the thermosetting polyimide taught by Muto. Therefore, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art that a thermosetting poly(ether ketone) and a thermosetting polyimide taught by Taguchi can be substituted one for the other in the insulating layer taught by Muto.
Ito teaches the claimed curable poly(ether ketone) with a number average molecular weight of 1,000-15,000, a solvent solubility at 25°C of at least 1 g/100 g of solvent, and a 5% weight loss temperature of at least 300°C measured at a temperature heating rate of 10°C/min (Abstract). Ito teaches his compound has the structure shown in Formula 1 (paragraph 0010):
[Note the Formula with chemical structures cited below are available in the original WO patent document. These Formulas are not shown in the supplied English Translation.]
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190
812
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With L represents a combination of the two repeat units shown in Formula 2 (paragraph 0010):
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312
620
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With Ar1, Ar2, and Ar3 may be the same or different and represent a group in which two hydrogen atoms have been removed from the structural formula of an aromatic ring, or a group in which two or more aromatic rings are bonded via a single bond or a linking group and two hydrogen atoms have been removed from the structural formula. X represents -CO-, -S-, or -SO2; Y may be the same or different and represents -S- , -SO<sub>2</sub>-, -O-, -CO-, -COO-, or -CONH-, and n represents an integer of 0 or more) (paragraph 0052).
With R1 and R2 represent independently one of the structures shown in Formula 3 or 7 (paragraphs 0012 and 0053):
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440
854
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296
572
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With Q represents C or Ch, n’ being an integer of 0 to 3, R3-R6 represents a hydrogen atom, a saturated or unsaturated aliphatic hydrocarbon group (preferably an alkyl group having 1 to 10 carbon atoms, an alkenyl group having 2 to 10 carbon atoms, or an alkynyl group having 2 to 10 carbon atoms), an aromatic hydrocarbon group (preferably an aryl group having 6 to 10 carbon atoms such as a phenyl group or a naphthyl group), or a group in which two or more groups selected from the saturated or unsaturated aliphatic hydrocarbon group and the aromatic hydrocarbon group are bonded. Two groups selected from R3 to R6 may be bonded to each other to form a ring together with adjacent carbon atoms (paragraph 0054).
With D1 and D2 represent independently one of the structures shown in Formula 4 (paragraph 0013):
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512
672
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With R1-D1 and R2-D2 represent independently one of the structures shown in Formula 10 (paragraph 0068):
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200
400
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Ito teaches that two embodiments of structure L are given by Formula 13 (paragraph 0223):
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530
876
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Ito teaches his curable compound has a dielectric constant of 2.52-2.69 (paragraph 0215 and Table 8 [see original WO patent document]), and Ito measured the relative permittivity of his laminates at a frequency of 10 GHz (paragraph 0204).
Ito teaches his curable composition contains, more preferably, 90 wt.% of more of his curable compound (paragraph 0122).
Ito teaches the claimed curable compound has a 5% weight loss temperature of at least 300°C measured at a temperature heating rate of 10°C/min (Abstract). Two of Ito’s curable compounds had 5% weight loss at about 500°C (Figure 15 [see original WO patent document]). Ito does not disclose the 5% weight loss for a heating rate of 20°C/min; however, given the high value at a heating rate of 10°C/min, it is the examiner’s position that Ito’s curable composition would have the claimed 5% weight loss temperature at heating rate of 20°/min.
Ito teaches his curable compound has an exothermic peak temperature of, particularly preferably, 220 to 420°C (paragraph 0115). Ito conducted his DSC measurements in a nitrogen atmosphere (paragraph 0163). Ito does not disclose the heating rate nor the onset temperature (instead of the peak temperature) of his curable compound; however, given the relatively high temperature for the peak and the cured compound of Ito’s is the same as the claimed compound, the exothermic onset temperature would inherently be that of the claimed exothermic onset temperature.
Ito teaches his curable compound has good solvent solubility in ketones, such as cyclohexanone (paragraph 0034), and the solubility of his curable compound at 25°C is preferably 10 grams or more per 100 grams of solvent (paragraph 0035).
Ito does not disclose the solubility of his curable compound in cyclopentanone at 23°C; however, given that cyclohexanone and cyclopentanone are analogous solvents, it is the examiner’s position that Ito’s curable composition would have the claimed solubility in cyclopentanone at the claimed temperature.
Given that Muto and Ito are drawn to thermosetting resins with electrical insulating properties, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polyether ether ketone curable (thermosetting) composition as taught by Ito as the thermosetting poly(ether ketone) in the surface layer as taught by Muto in view of Taguchi. Since Muto and Ito both drawn to thermosetting resins with electrical insulating properties, one of ordinary skill in the art would have a reasonable expectation of success in using the polyether ether ketone curable composition as taught by Ito as the thermosetting poly(ether ketone) in the surface layer as taught by Muto in view of Taguchi. Further, Ito teaches his curable compound has ultra-high heat resistance, insulating properties, and flame retardancy (paragraph 0038).
Response to Arguments
Applicant's arguments filed 20 May 2026 have been fully considered. Examiner has set forth new grounds of rejection above; therefore, this Office Action is non-final.
Applicant did not amend the claims.
Applicant argues that Muto nor Ito disclose the claimed configuration.
As presented above, Muto teaches an insulated wire, with the insulation comprising a thermosetting polyimide resin, Taguchi teaches the functional equivalence of a thermosetting polyimide resin and a thermosetting poly(ether ketone) resin, and Ito teaches a thermosetting poly(ether ketone) resin with ultra-high heat resistance, insulating properties, and flame retardancy (Ito, paragraph 0038).
Applicant argues that an insulating film, by containing the cured product of the compound represented by Formula (1), has no voids or pinholes and exhibits high insulating properties.
However, the data is not persuasive given that it is not commensurate in scope with the scope of the present claims. Specifically, the data utilizes a single manifestation of the many compounds represented by Formula (1), whereas the various optional constituent groups on Formula (1) require about 24 lines to enumerate. Further, no comparative examples containing resins that do not satisfy Formula (1) are provided.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787
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