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 .
Interview Practice
Beginning October 2025, the USPTO is implementing an updated interview practice for patent examination: One interview per new application or RCE (Request for Continued Examination, see 37 CFR 1.114 and MPEP 706.07(h)) will generally be granted. Additional interview(s) which serve to advance prosecution may be granted with supervisory approval.
Applicants are encouraged to avail themselves of the interview available, as discussions between an Applicant and an Examiner are often indispensable to advance the prosecution of a patent application by improving the mutual understanding of specific issues therein.
To request an interview, Applicant may, preferably, contact the Examiner at the telephone number provided at the end of this Office Action and/or Applicant may file an Applicant Initiated Interview Request (AIR) form (PTOL-413A), which may be found here: https://www.uspto.gov/patents/apply/forms.
It may be useful to also file an Authorization for Internet Communications form (PTO/SB/439, also found at the link provided above), which would allow the Examiner to substantively respond to Applicant using electronic communication (i.e., via email).
If an interview is desired, it is advisable to request the interview sufficiently ahead of the due date of any response to an outstanding Office Action, to allow adequate time to schedule, prepare for, and hold the interview. Submission of an Interview Agenda by Applicant is also generally required (see MPEP 713.01(IV)).
Requests for interviews after final rejection may be denied and generally will be denied in cases where the interview is merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search (see MPEP 713.09).
Response to Arguments
Regarding the rejections under 35 U.S.C. §112, Applicant's arguments filed 02/13/2026 with respect to claims 11-27 have been considered but are moot in view of Applicant’s amendments and the new ground(s) of rejection.
Regarding the rejection under 35 U.S.C. §102, Applicant's arguments filed 02/13/2026 have been fully considered but they are not persuasive.
Specifically, Applicant argues that “[a]t best, Hofmann teaches that the ring, which the segments form, is merely in thermal contact with the potting material. However, Hofmann lacks any disclosure that portions of the spring elements of the ring are potted within the potting compound” (Rem. 10).
Respectfully, however, Applicant does appear to indicate that the portions of the spring elements are potted within the compound. Specifically, Hofmann discloses on page 2 that “All gaps between the winding heat sections and the segments are then filled without voids using a highly thermally conductive compound,” for which a “particularly suitable material […] is a hardenable casting resin which […] ensures good thermal contact” (page 2, lines 15-19; emphasis added).
Hofmann continues on p. 4, stating that “[f]illing the spaces between the winding head conductors, the intervening heat transfer surfaces 2, and the remaining inner surfaces of the segments 1 with a highly thermally conductive material results in a void-free overall arrangement”—i.e., the elements are “fully potted”—and asserts that “[t]his enables particularly efficient dissipation of the heat generated in the winding to the outside, to the winding head cooler, and […] to the stator housing” (p. 4, ll. 7-12; emphasis added).
Thus, given Applicant’s definition of being “fully potted” which is “understood to mean that firstly the potting compound is formed cohesively and secondly all the conductors of a respective stator end winding of the stator are accommodated and thus potted in this cohesive potting compound"” (Rem. 9), it respectfully appears that Hofmann does, indeed, teach the claim feature of being fully “potted in the potting compound” and “configured to transport heat away from the stator end winding to the housing” as set forth in claim 11.
Thus, respectfully, Applicant’s arguments are not considered persuasive.
Regarding the rejection under 35 U.S.C. §103, Applicant's arguments filed 02/13/2026 have been fully considered but they, too, are not persuasive.
Applicant states that the “Office Action appears to be taking Office Notice that these features are allegedly obvious” and “submits that the application of Official Notice in the outstanding Office Action is improper” (Rem. 11).
In response, respectfully, it is unclear why Applicant is referring to Official Notice, as the term does not appear anywhere in the Office Action. Official Notice was not relied upon; rather, Legal Precedent was relied upon as source of supporting rationale, per MPEP 2144.04. To facilitate prosecution and further clarify the record in case Applicant chooses to pursue appeal, citation to prior art has been provided in the rejections below to illustrate the very well-known nature of the features Applicant appears to feel are somehow novel—e.g., connecting a heat conducting device to a housing via welding and using aluminum as a material for such elements.
Applicant’s Representative is also, respectfully, informed that had Official Notice been taken, Applicant’s traversal provided in the Remarks filed 02/13/2026 would not be considered adequate. Specifically, Applicant failed to state why the allegedly noticed facts would not be considered to be common knowledge or well-known in the art. Applicant’s apparent traversal appears merely to be a request that the Examiner provide documentary evidence, which is not a proper traversal. See MPEP 2144.03(C), 37 CFR 1.111(b).
It is the Examiner’s considered opinion that all of Applicant’s arguments have been taken note of, and the substance thereof answered above, pursuant to MPEP 707.07(f). The prior art of record has been found to clearly teach and/or render obvious Applicant’s claimed invention; as such, the rejections set forth herein are deemed appropriate.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11-16, 18-25, 27 are 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 pre-AIA the applicant regards as the invention.
Regarding claim 11, lines 3-5, the limitation “a stator comprising a plurality of conductors and at least one stator end winding of a winding formed from the plurality of conductors” is vague and indefinite.
First, the phrase “a stator comprising a plurality of conductors and at least one stator end winding” appears to set forth two separate and distinct elements which are “compris[ed]” by the “stator”—i.e., the “plurality of conductors” and the “at least one stator end winding”. However, the second feature—the “stator end winding”—appears, not to be separate and distinct, but rather to be “formed from the plurality of conductors”. Said differently, the “stator end winding” appears to be a portion of the “plurality of conductors” rather than a feature separate and distinct therefrom, as could otherwise be construed from the limitation “a stator comprising a plurality of conductors and at least one stator winding”. The claim should be amended to clearly set forth the metes and bounds of the “stator”.
Second, and relatedly, the phrase “a winding formed from the plurality of conductors” appears to require all “the plurality of conductors” to “form[]” the “winding”—i.e., the claim sets forth a “stator” comprising only a single “winding,” as all the claimed “conductors” form the “winding,” and no other “conductors” are set forth to form any other “winding[s]”. As “stator[s]” typically include multiple “winding[s],” unless Applicant is intending to set forth a “stator” with only a single “winding,” the claim should be amended to avoid this ambiguity.
Regarding claim 11, lines 9-10, the limitation “wherein the at least one spring element is partially conjointly potted in the potting compound with the conductors of the at least one stator end winding” is vague and indefinite. The claim fails to make clear what being “partially conjointly potted […]” (emphasis added) is intended to mean. Whereas the specification appears to provide a definition of being “fully potted” (as argued by Applicant; see Rem. 9), both the claim and the specification fail to make clear what being “partially conjointly potted […]” is intended to mean. Additionally, the only drawing figure appears to show a “spring 24” that is “fully potted” rather than any that would be “partially conjointly potted”.
Regarding claim 11, lines 10-11, the limitation “and is configured to transport heat away from the stator end winding to the housing” is vague and indefinite. The claim fails to make clear what element “is configured to transport heat away”—the “heat conducting device,” the “spring element,” and/or the “potting compound”.
Regarding claim 11, lines 4-5; and claim 18; the limitation “wherein the conductors of the at least one stator end winding are embedded in a potting compound” (claim 11) is vague and indefinite in light of the limitation of claim 18 requiring “the stator end winding is fully potted with the potting compound”. The claim fails to make clear how being “embedded in a potting compound” and being “fully potted with the potting compound” may be different. The two limitations appear to be synonymous—i.e., if the “stator end winding” is “embedded in a potting compound,” wouldn’t it already be “fully potted with the potting compound”? By setting forth the two limitations separately, it appears that Applicant distinguishes the two as setting forth different metes and bounds to the patent protection sought. However, it is unclear what the difference(s) between the two requirements may be, if any.
Regarding claim 12, the limitation “wherein the heat conducting device comprises an outer ring welded to the housing” (emphasis added) is vague and indefinite. The feature of being “welded to the housing” appears to comprise a process step and does not appear to structurally further limit the claimed invention, as required by 35 U.S.C. §112(d).
Regarding claim 20, lines 3-4, the limitation “introducing conductors forming a winding into a laminated core of a stator” is vague and indefinite. As previously discussed in the Non-Final Office Action of 11/13/2025, the claim appears to be requiring the “core” to already be “laminated” prior to “introducing conductors” therein. However, if the “core” is indeed already a “laminated core,” then how would it be possible to “introduce[e] conductors” therein? As previously discussed, the language used is confusing, especially as the claim does not appear to be setting forth, e.g., a method of making the electric machine.
For the purpose of examination, the phrase “introducing conductors forming a winding into a laminated core of a stator” will be understood as: —providing a stator, the stator comprising a stator winding in a laminated core, the stator winding comprising a plurality of conductors—.
Regarding claims 12-16, 18-19; and claims 21-25, 27; they are dependent on claims 1, 20, respectively, and thereby inherit the deficiencies thereof.
For the purpose of expediting prosecution, prior art will be applied in reference to the claims as best understood by the examiner.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 11, 14, 16, 18, 20, 23, 25, 27, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hofmann (DE 1613401, original submitted by Applicant, see previously-provided translation).
Regarding independent claim 11, as best understood, Hofmann discloses an arrangement for an electric machine 1, comprising:
a stator (stator, not separately numbered, housed within stator housing 10; see Fig. 1) comprising a plurality of conductors (e.g., coil sections 12) and at least one stator end winding (winding head 14) of a winding formed from the plurality of conductors is embedded in a potting compound (thermally conductive material 16; see Fig. 4 and, as discussed in Response to Arguments section above: p. 2, ll. 15-19; p. 4, ll. 7-12);
a housing (stator housing 10) configured to enclose an outer circumference of the at least the stator end winding (see, e.g., Figs. 1, 4); and
a heat conducting device (arch-like spring segments 1') comprising at least one spring element (spring-loaded connecting link 18), wherein the at least one spring element is partially conjointly potted in the potting compound (highly thermally conductive compound such as a hardenable casting resin; see, e.g., p. 2) with the conductors of the at least one stator end winding (see, e.g., p. 2, ll. 15-19; p. 4, ll. 7-12) and configured to transport heat (see p. 6, first paragraph) away from the stator end winding (winding head 14) to the housing (housing 10; see Fig. 5).
Regarding independent claim 20, as best understood, Hofmann discloses a method for providing an arrangement for an electric machine 2, comprising:
providing a stator (stator, not separately numbered, housed within stator housing 10; see Fig. 1), the stator comprising a stator winding (e.g., coil sections 12) in a laminated core (e.g., stator lamination stack 9), the stator winding comprising a plurality of conductors (conductors of coil sections 12);
fastening a heat conducting device (e.g., arch-like spring segments 1') to a housing (stator housing 10); and
potting at least one stator end winding (winding head 14) of the winding of the stator and at least one spring element (e.g., spring-loaded connecting link 18) of the heat conducting device in a common potting compound (thermally conductive material 16, such as a hardenable casting resin; see Fig. 4 and, as discussed in Response to Arguments section above: p. 2, ll. 15-19; p. 4, ll. 7-12).
Regarding claims 14, 23, Hofmann further discloses that the at least one spring element is a leaf spring (see, e.g., p. 5: the arch-like spring segments 1' may be made of a resilient—i.e., springy—material of commercially available light metal in strip form—this would appear to meet the term ‘leaf spring’).
Regarding claims 16, 25, Hofmann discloses that the heat conducting device is pressed in the housing (see, e.g., Fig. 5: arch-like spring segments 1' are pressed in/against stator housing 10).
Regarding claim 18, 27, Hofmann further discloses that the stator end winding is fully potted with the potting compound (see, e.g., Fig. 4 and, again, as discussed in Response to Arguments section above).
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 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.
Claims 12-13, 15, 21-22, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Hofmann (DE 1613401) in view of Jocham et al. (US 2019/0241209 A1).
Regarding claims 12, 21, as best understood, Hofmann further discloses that the heat conducting device comprises an outer ring (see, e.g., Fig. 5: ring formed by tangentially directed outer legs 19) held on the housing (stator housing 10).
However, Hofmann appears to be silent regarding the manner of connection between the outer ring and the housing, specifically that the ring may be welded to the housing. On the other hand, as previously indicated, there are numerous, very well-known ways to connect components of electric machines, including welding.
For example, Jocham teaches an arrangement for an electrical machine, the arrangement comprising, inter alia, a housing (motor housing 20) to enclose a motor (see, e.g., ¶ 41) and a heat conducting device (heat sink 30), and further discloses that the heat conducting device may be connected to the housing by several methods, including welding (see, e.g., Abstract: “[t]he heat sink is at least partially connected to the motor housing by calking or welding or screwing”; ¶ 53, Fig. 5: “heat sink 30 is welded to the motor housing 20”).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to form the arrangement of Hofman with any of a number of known connection methods, including welding between the heat conducting device and the housing, for the purpose of thermally connecting the heat conducting device to the housing to facilitate heat flow, and also for minimizing overall dimensions of the unit (see, e.g., ¶ 7), since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).
Regarding claims 13, 22, Hofmann further renders obvious that the at least one spring element is stamped out of the outer ring (see, e.g., p. 5: the arch-like spring segments 1' may be made using any known cutting and/or pressing [e.g., stamping] processes).
Regarding claims 15, 24, Hofmann further appears to disclose that the heat conducting device and the housing may comprise a metal (specifically, a light metal; see, e.g., p. 5).
However, Hofmann appears to be silent regarding the possibility that the metal may be aluminum. On the other hand, as previously indicated, it is exceedingly well known to use aluminum for both heat conducting devices and housings, as aluminum has a high thermal conductivity and is light weight—and so preferable to use in applications, e.g., motor vehicles, where weight is a concern due to fuel efficiency.
For example, Jocham teaches an arrangement for an electrical machine, the arrangement comprising, inter alia, a housing (motor housing 20) to enclose a motor (see, e.g., ¶ 41) and a heat conducting device (heat sink 30), wherein each of the heat conducting device and the housing may comprise aluminum (see, e.g., ¶ 27, claims 11, 14).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the arrangement of Hofmann with the use of aluminum for the heat conducting device and housing, as aluminum is a well-known “light metal” with a high thermal conductivity, for the purpose of improving the heat exchange of the system (see, e.g., ¶ 28), since 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 design choice. In re Leshin, 125 USPQ 416.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hofmann (DE 1613401) in view of Liang et al. (US 2002/0089242 A1).
Regarding claim 19, Hofmann discloses the arrangement set forth in claim 11 upon which claim 19 is dependent.
However, Hofmann appears to be silent regarding use of the electric machine in a motor vehicle. Whereas this may be implied, and use of an electric machine is certainly well-known in the art, the following is noted to expedite prosecution.
On the other hand, Liang et al. (Figures 2-3) discloses an arrangement for an electric machine (electric machine 10; see, e.g., ¶ 17) of a motor vehicle (see, e.g., ¶ 25), and notably the motor vehicle (see, e.g., ¶ 25: the electric machine may be used as a traction motor for an electric vehicle [EV] such as a fuel cell, pure, and/or hybrid EV), wherein the electric machine further comprises a rotor (rotatable rotor 12 positioned within stator core 14).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to use the arrangement of Hofmann in a motor vehicle, as taught by Liang et al., for the purpose of providing a traction motor in a use with particularly harsh thermal operating conditions (see, e.g., ¶ 25).
Conclusion
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.
Applicant should, in response to this Office Action, provide support for all language added to any original claims on amendment and any new claims. See MPEP 2163(II)(A). That is, Applicant should specifically note the page(s) and line number(s) in the original specification and/or feature(s) in the original drawing figure(s) where support for newly added claim language may be found. No new matter may be added. See 35 U.S.C. §132(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. MIKAILOFF whose telephone number is (571) 270-7894. The examiner can normally be reached Mon. - Thurs. 10am - 6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, T.C. PATEL can be reached at (571) 272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S. MIKAILOFF/Examiner, Art Unit 2834
September 4, 2026
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
1 Note that the phrase “of a motor vehicle” here in the preamble only recites an intended use of the claimed “arrangement” and does not result in a structural difference between the claimed invention and the cited prior art. Thus, it is not being given patentable weight. See MPEP 2111.02(II). See the rejection of claim 19 for further discussion regarding the feature of a “motor vehicle”.
2 See footnote for claim 11 above.
Prosecution Insights