DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office Action is responsive to the Applicant's communication filed 08 July 2026. In view of this communication, claims 1-20 are now pending in the application, with claims 11-20 being withdrawn from consideration.
Response to Arguments
The Applicant’s arguments, filed 08 July 2026, have been fully considered but are only partially persuasive.
The Applicant’s first argument (page 6 of the Remarks) states that claim 8 has been amended to correct the indefiniteness issue raised in the non-final rejection. As such, the previous grounds of rejection under 35 U.S.C. 112(b) have been withdrawn.
The Applicant’s second argument (pages 6-7 of the Remarks) states that Makam does not disclose the amended limitation of claim 1, which specifies the “fluid passing into the plurality of cavities at the radially outward end” of the magnets. Since Makam discloses the fluid entering at the radially inside of the magnets, this argument is persuasive. However, new grounds of rejection have been made below.
The Applicant’s third argument (pages 7-8 of the Remarks) alleges that Orbay does not disclose using a fluid to actuate the magnets. While true, one cannot show non-obviousness 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). Since Makam discloses fluid actuation of the magnets, this point is moot.
The argument further alleges that Orbay would teach away from the present invention, but gives no explanation and presents no evidence in support of this broad allegation. Since a reference does not “teach away” if it does “not criticize, discredit or otherwise discourage investigation into the invention claimed” (see MPEP 2145(X)(D)), and no such criticism has been cited, this argument is unpersuasive and the previous grounds of rejection under 35 U.S.C. 103 are still deemed valid. Further, Makam teaches fluid actuation of the radially inner ends of the magnets while Orbay teaches actuation of the radially outer ends of the magnets. Thus, the combination of Makam and Orbay would teach both fluid actuation of the magnets and actuation of the radially outer ends of the magnets, as described in the new grounds of rejection below.
Disclosure
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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, 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.
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) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Makam et al. (US 2024/0162795 A1), hereinafter referred to as “Makam”, in view of Orbay (US 2021/0376705 A1), hereinafter referred to as “Orbay”.
Regarding claim 1, Makam discloses a method of field weakening [400] in a permanent magnet electric machine [128] having a rotor [136], an axis of rotation, and a stator [132] (fig. 2-3A, 4; ¶ 0019-0020, 0024), the method comprising:
rotating a rotor [136] comprising a plurality of magnets [140a-1,140b-1] arranged annularly about the axis of rotation with each of the plurality of magnets [140a-1,140b-1] being disposed in a respective at least one of a plurality of cavities [208] of the rotor [136] (fig. 3A; ¶ 0019-0020), each of the plurality of magnets [140a-1,140b-1] having a radially inward end and a radially outward end (fig. 3A);
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circulating a fluid through a fluid passageway [216] extending through the rotor [136] to each of the plurality of cavities [208] (fig. 3A, 4; ¶ 0020, 0025; “hydraulic fluid flows through hydraulic lines” to the permanent magnet cavities), the fluid passing into the plurality of cavities at the radially {inward} end of each of the plurality of magnets [140a-1,140b-1] (fig. 3A, 4; ¶ 0020, 0025); and
moving the {radially inward} end of each of the plurality of magnets [140a-1,140b-1] with the fluid from a first position [A] to a second position [B] within the plurality of cavities [208] (fig. 3A; ¶ 0020; the hydraulic fluid moves the magnets between the two positions, changing the angle of the magnets between θ1 and θ2).
Makam does not disclose the fluid passing into the plurality of cavities at the radially outward end of each of the plurality of magnets [140a-1,140b-1] or moving the radially outward end of each of the plurality of magnets [140a-1,140b-1].
Orbay discloses a method of field weakening in a permanent magnet motor [610] having a rotor [630] with permanent magnets [640], comprising moving the permanent magnets [640] from a first position to a second position (fig. 4-5a; ¶ 0110-0111), wherein moving the plurality of magnets [640] comprises moving the radially outward end of each of the magnets [640] (fig. 5a; ¶ 0070, 0111; the outward radial ends of the magnets change position while the inward radial ends of the magnets pivot about a fixed point).
While Orbay discloses the means of moving the magnets [640] to be a spring [670], other possible means are disclosed, including fluids (¶ 0078; the “positioning arrangement comprises an inflatable cushion, being controlled by a gas bladder, or a damping system for allowing a motion path for the permanent magnet”).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to move the magnets of Makam using a fluid provided at the radially outward end of the magnets as taught by Orbay, in order to provide improved field weakening by allowing different movement for ends of the magnet compared to its middle (¶ 0075-0076 of Orbay) and to pivot the magnet about a fixed axis thereby reducing the space required for movement of the magnets thereby allowing for use in a wider range of applications.
Further, this modification involves only reversing the movement action of the magnets from the radially inward end to the radially outward end, and it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Regarding claim 2, Makam, in view of Orbay, discloses the method [400] of claim 1, as stated above, wherein moving the plurality of magnets [140a-1,140b-1] comprises moving the plurality of magnets [140a-1,140b-1] with the fluid from the first position [A] to the second position [B] within the plurality of cavities [208] when a rotational speed of the rotor [136] is greater than a threshold rotational speed (¶ 0021-0022).
Regarding claim 3, Makam, in view of Orbay, discloses the method [400] of claim 2, as stated above, further comprising moving the plurality of magnets [140a-1,140b-1] with the fluid within the plurality of cavities [208] from the second position [B] to the first position [A] when the rotational speed of the rotor [136] is less than the threshold rotational speed (¶ 0021-0022).
Regarding claim 4, Makam, in view of Orbay, discloses the method [400] of claim 3, as stated above, further comprising moving a second plurality of magnets [140a-2,140b-2] with the fluid within a second plurality of cavities [208] from a third position [A] to a fourth position [B] when the rotational speed of the rotor [136] is greater than the threshold rotational speed (¶ 0021-0022).
Regarding claim 5, Makam, in view of Orbay, discloses the method [400] of claim 4, as stated above, further comprising moving the second plurality of magnets [140a-2,140b-2] with the fluid within the second plurality of cavities [208] from the fourth position [B] to the third position [A] when the rotational speed of the rotor [136] is less than the threshold rotational speed (¶ 0021-0022).
Regarding claim 6, Makam, in view of Orbay, discloses the method [400] of claim 1, as stated above, further comprising controlling a temperature of the plurality of magnets [140a-1,140b-1] with the fluid upon circulating the fluid through the fluid passageway extending through the rotor [136] to the plurality of cavities [208] (¶ 0017; moving the magnets results in “decreased heat generation and increased efficiency, particularly at high-speed operation regions”).
Regarding claim 7, Makam, in view of Orbay, discloses the method [400] of claim 1, as stated above, wherein moving the plurality of magnets [140a-1,140b-1] comprises pivoting each of the plurality of magnets [140a-1,140b-1] radially (fig. 3A; ¶ 0020).
Orbay further discloses that moving the plurality of magnets [640] comprises pivoting each of the plurality of magnets [640] radially about a magnet pivot axis that is parallel with the axis of rotation (fig. 5a; ¶ 0070, 0111; “movement direction R in this case is a pivot direction” in which the magnet moves rotationally).
Regarding claim 8, Makam, in view of Orbay, discloses the method [400] of claim 7, as stated above, wherein Orbay further discloses that the magnet pivot axis is centered at the radially inner end of each of the plurality of magnets [640] relative to the axis of rotation (fig. 5a; the pivot axis is located at the bottom-right of the magnet, which as shown in figure 4 corresponds to the radially-inner side of the magnet, closer to the rotation axis than the top-left side of the magnet which rotates along direction ‘R’).
Regarding claim 9, Makam, in view of Orbay, discloses the method [400] of claim 7, as stated above, wherein Orbay further discloses that pivoting each of the plurality of magnets [640] comprises pivoting each of the plurality of magnets [640] radially inwardly from the first position to the second position about the magnet pivot axis that is parallel with the axis of rotation (fig. 5a; ¶ 0070, 0111; “movement direction R in this case is a pivot direction” in which the magnet moves rotationally).
Regarding claim 10, Makam, in view of Orbay, discloses the method [400] of claim 7, as stated above, wherein Orbay further discloses that pivoting each of the plurality of magnets comprises pivoting each of the plurality of magnets [640] radially outwardly from the first position to the second position about the magnet pivot axis that is parallel with the axis of rotation (fig. 5a; ¶ 0070, 0111; “movement direction R in this case is a pivot direction” in which the magnet moves rotationally).
Conclusion
Applicant's amendment necessitated any 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 extension fee 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 date of this final action.
This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted.
General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/patent-trial-and-appeal-board/about-ptab/new-ptab. The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. It also includes information on pro bono (free) legal services and advice available for those who are under-resourced and considering an appeal at: https://www.uspto.gov/patents/patent-trial-and-appeal-board/patent-trial-and-appeal-board-pro-bono-program-independent. The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1). The current fee amount is available at: www.uspto.gov/Fees.
If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final replay that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Andrews whose telephone number is (571)270-7554. The examiner can normally be reached on Monday-Thursday, 8:30am-3:00pm.
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/Michael Andrews/
Primary Examiner, Art Unit 2834
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