DETAILED ACTION
This Office Action is responsive to the Applicant’s amendments filed 25 April 2026. In view of this communication, claims 1-2 and 4-18 are pending in the application.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant’s arguments, see the Remarks, filed 25 April 2026, with respect to the rejection(s) of claim(s) 1-2 and 4-18 under 35 USC 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Shibakita et al.
Claim Objections
Claim 5 is objected to because of the following informalities: as it appears in the amended claims submitted 25 April 2025, claim 5 depends from claim 14. The examiner believes that claim 14 should instead depend from claim 1 and will treat it accordingly for the purpose of the present examination. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claim(s) 1-2, 8-10, 14-15, and 17-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shibakita et al. (JP 2012009312 A), hereinafter referred to as Shibakita et al.
Regarding claim 1, Shibakita et al. teaches an enameled wire comprising:
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a conductor core (100) having an outer surface (page 2, third-to-last paragraph: conductor 100 with a surface);
an electrically insulating laminate (200) (page 2, third-to-last paragraph: covering layer 200 covering the conductor 100) completely covering the outer surface and formed by
at least two separate neutral outer layers (200a, 200c) surrounding the conductor core (100) and of a neutral polymer containing no functional filler affecting partial-discharge resistance (Abstract and page 3, fourth paragraph: the flexible layer 200a may be formed only of the base resin, without any inorganic fillers; page 3, fifth paragraph: the upper layer 200c may be formed of the base polyamideimide resin without any inorganic filler particles), and
at least two functional outer layers (300a-300e) surrounding the conductor core (100) and of a functional polymer including a functional filler increasing partial-discharge resistance of the laminate (page 2, final two paragraphs: the five partial discharge resistant layers 300a-300e may be formed of a polyamideimide resin and inorganic insulating particles to increase the partial discharge of the layers).
Regarding claim 2, Shibakita et al. teaches the enameled wire according to claim 1, wherein the functional outer layers (300a-300e) are between the neutral outer layers (200a, 200c) (Fig. 1 and page 2, third-to-last paragraph).
Regarding claim 8, Shibakita et al. teaches the enameled wire according to claim 1, wherein the filler of the functional layers is mica, kaolin, corundum, precious corundum, silicates, aluminum oxides, sulfates, silicon dioxides, titanium dioxide, zinc oxide, barium titanate, fullerenes, graphenes, graphite, tetracyanoquino- dimethane, thiophenes, phthalocyanines (page 2, final paragraph: the inorganic fine particles may be silica, titanium oxide, alumina, zirconium oxide, barium sulfate, etc.).
Regarding claim 9, Shibakita et al. teaches the enameled wire according to claim 1, wherein the base enamel layer and/or the neutral enamel layer and/or the functional enamel layers are is formed of polyester, polyesterimide, polyesteramideimide, polyurethane, polyamide, polyimide, and/or polyamide-imide (page 3, second paragraph: the resin may be polyurethane, polyester, polyesterimide, polyimide, polyamide, or polyamideimide).
Regarding claim 10, Shibakita et al. teaches the enameled wire according to claim 1, wherein at least one of the outer layers is outermost on the conductor core (page 2, third-to-last paragraph: layer 200a is outermost on the core and layer 200c is outermost on the wire).
Regarding claim 14, Shibakita et al. teaches the enameled wire according to claim 1, wherein the functional layers contain s 0.05% to 15% by weight of the filler (see page 3, fourth-to-last paragraph: the weight % of the fillers in the functional layers ranges from 0wt% to 20wt%).
Regarding claim 15, Shibakita et al. teaches the enameled wire according to claim 1, wherein the neutral layers are all formed from the same neutral varnish polymer (page 5, fifth paragraph: the upper layer 200c is formed of the polyamideimide resin of layer 200a).
Regarding claim 17, Shibakita et al. teaches the enameled wire according to claim 1, wherein the conductor core consists of copper and/or aluminum or essentially of copper and/or aluminum (page 2, third-to-last paragraph: the conductor 100 is an annealed copper wire).
Regarding claim 18, Shibakita et al. teaches the enameled wire according to claim 1, wherein the conductor core (100) is a flat or a round wire (see Fig. 1 – the copper wire 100 is round).
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 4-5 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibakita et al. in view of Lange (DE 102014215107 A1), hereinafter referred to as Lange.
Regarding claim 4, Shibakita et al. teaches the enameled wire according to claim 1, but does not teach that the electrically insulating laminate includes at least three such neutral layers.
Lange does teach that the electrically insulating laminate includes at least three such neutral layers (Lange page 3, third-to-last paragraph: the insulating coating 3, which is a neutral layer, may comprise three layers).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the insulating laminate of Shibakita et al. with three neutral layers as taught by Lange because additional neutral layers improve the insulating properties of the laminate. Further, it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St Regis Paper Co. V. Bemis Co., 193 USPQ 8.
Regarding claim 5, Shibakita et al. teaches the enameled wire according to claim 1, but does not teach that there are at least two of the outer functional layers (16, 20) and two of the outer neutral layers (14, 18, 22). Shibakita et al. does not teach that each neutral layer is directly between two of the outer functional layers.
Lange teaches forming the neutral layers as multiple layers, such that each neutral layer would be between two of the outer functional layers (Lange page 3, paragraphs 13-14: coating 3 is a multilayer insulating coating).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form each neutral layer as multiple layers as taught by Lange because the multilayer insulator of Lange has improved adhesion properties (Lange page 3, paragraph 14). Further, it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St Regis Paper Co. V. Bemis Co., 193 USPQ 8.
Regarding claim 12, Shibakita et al. teaches the enameled wire according to claim 1, but does not teach that at least the base, neutral, and/or functional layer is formed of 8 to 80 sublayers or partial layers.
Lange teaches that at least the base, neutral, and/or functional layer is formed of 8 to 80 sublayers or partial layers (Lange page 3, paragraphs 13-14: coating 3 is a multilayer insulating coating).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the neutral layer of Shibakita et al. in 8 to 80 sublayers because Lange teaches that it is mere repetition of the same dipping process to form a multilayer insulating layer and it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St Regis Paper Co. V. Bemis Co., 193 USPQ 8. Further, it would have been routine optimization to arrive at the claimed invention and a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibakita et al. in view of Wahl (US 3878319 A), hereinafter referred to as Wahl.
Regarding claim 6, Shibakita et al. teaches the enameled wire according to claim 1, but does not teach an inner base layer directly on the outer surface.
Wahl does teach an inner base layer directly on the outer surface (Wahl Fig. 1 and column 3, lines 4-10: an inner shield layer 14 may be provided directly on the outer surface of the metal conductor 12, on which the insulating layer 16 is formed).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form an inner base layer as taught by Wahl directly on the outer surface of the conductor of Shibakita et al. because the inner shield layer of Wahl improves the insulating properties of the wire insulation (Wahl Abstract and column 2, lines 45-54).
Regarding claim 7, Shibakita et al. in view of Wahl teaches the enameled wire according to claim 6, wherein one of the functional layers or one of the neutral layers lies directly on the inner base layer (the inner shield layer of Wahl as taught in Wahl column 3, lines 4-10 lies directly on the conductor and the insulating layers are formed directly on top of it).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibakita et al. in view of Knerr et al. (US 20190068020 A1), hereinafter referred to as Knerr et al.
Regarding claim 11, Shibakita et al. teaches the enameled wire according to claim 1, but does not teach that the laminate includes an extruded outermost outer layer of fluoroethylene propylene, ethylene-tetrafluoroethylenecopolymer, perfluoroalkoxy polymer, modified fluoroalkoxy polymer, polyvinylidene fluoride, polyether ketones, polyether ether ketone, polyaryletherketone, polyetherketoneketone, polyphenylene sulfone, polyphenylene sulfide, polysulfone, and/or thermoplastic polyimide.
Knerr et al. does teach that the laminate includes an extruded outermost outer layer of fluoroethylene propylene, ethylene-tetrafluoroethylenecopolymer, perfluoroalkoxy polymer, modified fluoroalkoxy polymer, polyvinylidene fluoride, polyether ketones, polyether ether ketone, polyaryletherketone, polyetherketoneketone, polyphenylene sulfone, polyphenylene sulfide, polysulfone, and/or thermoplastic polyimide (see Knerr et al. paragraph 28).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the outermost layer of Shibakita et al. from a suitable material such as polyetherketoneketone taught by Knerr et al. because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering choice. In re Leshin, 125 USPQ 416 (CCPA 1960).
Claim(s) 13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibakita et al. in view of Zhang et al. (US 20230047864 A1), hereinafter referred to as Zhang et al.
Regarding claim 13, Shibakita et al. teaches the enameled wire according to claim 1, but does not teach that a total thickness of the laminate is 20 µm to 500 µm.
Zhang et al. does teach that a total thickness of the laminate may be 20 µm to 500 µm (Zhang et al. paragraph 40: total thickness of the coating may be 0.13mm or 130 µm).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the laminate of Shibakita et al. with a total thickness of between 20 µm and 500 µm as taught by Zhang et al. because a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 16, Shibakita et al. teaches the enameled wire according to claim 1, but does not teach that the neutral layers are formed of different varnish polymers.
Zhang et al. does teach that the neutral layers may be formed of different varnish polymers (see Zhang et al. paragraph 26: the different insulating coatings are formed of at least polyimide, silicone, and polyamideimide).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the neutral layers of Shibakita et al. from different varnish polymers as taught by Zhang et al. because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering choice. In re Leshin, 125 USPQ 416 (CCPA 1960).
Conclusion
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/JOHN B FREAL/Examiner, Art Unit 2847
/TIMOTHY J THOMPSON/Supervisory Patent Examiner, Art Unit 2847
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