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 .
Examiner’s Comment
The Examiner notes that Claim 5 recite(s) nominal apparatus and/or methods of making limitations, in combination with product limitations encompassing those of Claims 1-3 and 5. As such, there is presently no undue burden in examining these, technically, divergent statutory classes of invention. Should Applicants amend these claims to include non-nominal apparatus and/or method limitations, these newly added claims may be subject to restriction by original presentation.
Claim Objections
Claims 1-5 are objected to because of the following informalities: Claims 1 and 5 recite “a resin thickness of the resin”. It appears that a resin thickness should be directed to the resin layer and not the resin itself. Appropriate correction is required.
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 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a laminated magnetic material comprising a plurality of quenched alloy strips and a resin layer disposed between the quenched alloy strips having a specific adhesive stress and with specific properties and materials for each of its respective resin and alloy strips, does not reasonably provide enablement for all possible materials and properties for the alloy strips and resin, wherein the claimed adhesive stress relationship is dependent upon general magnetic and resin material properties required in Claims 1 and 5. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
The test of enablement is whether one skilled in the art could make and use the claimed invention coupled with information known in the art without undue experimentation (See United States v. Theketronic Inc., 8 USPQ2d 1217 (Fed. Cir. 1988)). Whether undue experimentation is required is not based upon a single factor but rather a conclusion reached by weighing many factors (See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400 and MPEP 2164.01.). These factors are:
(A) The breadth of the claims;
The pending claims (at least the independent claims) are broad. There are millions and millions of possible resin layer and alloy strips compositions that would potentially read on the claimed breadth, given the lack of specific material compositions and property values claimed. Further, the magnetic component in the laminated magnetic material is not necessarily limited or directed to the quenched alloy strips, but may be the resin layer made of resin.
(B) The nature of the invention;
At the time of Applicants’ invention, a laminated magnetic material comprising a plurality of quenched alloy strips and a resin layer disposed therebetween are not an excessively difficult invention, per se, as this class of magnetic devices have been known for many years (i.e. rotors, stators, antennas, etc.). However, there are many different formulations for the quenched alloy strips and resin layer and the Examiner notes that chemical variations do not always yield predictable results.
(C) The state of the prior art;
The prior art recognizes that adhesive magnetic laminate of alloy ribbons/strips are known, and that many different materials and properties can be used for the respective alloy strips and resin/adhesive. Producing all possible laminate constructs covered by the breadth of the claims would require undue experimentation to a skilled artisan.
(D) The level of one of ordinary skill;
The level of ordinary skill in the art is probably a research chemist or material engineer having a minimum of two or three years of experience.
(E) The level of predictability in the art;
Chemical arts, in most aspects, are relatively predictable when dealing with a relatively small number of substituents and/or well-established structures. However, as the number of possible substituents increases or the lack of previous knowledge increases, the ability to easily ascertain the interactions becomes more difficult and non-trivial. The present specification does not provide any illumination to this question other than specific embodiments used in the examples.
(F) The amount of direction provided by the inventor;
As noted above, there is almost no direction provided by the inventor as to how to produce some of the millions and millions of possible constructs covered by at least the independent claims. The specification only recites examples which are directed to a very limited subset of the embodiments, as compared to the breadth covered by the independent claims.
(G) The existence of working examples; and
The specification provides only a limited number of examples, where these examples have a very limited structure (in terms of materials and properties) as compared to the full breadth disclosed in the independent claims. The specification provides no clear comparative analysis on how one would synthesize the different embodiments.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A very large number of experiments are required in order to determine what will and will not work. The pure number of possible materials and properties for each of the alloy strips and resin, as well as the breadth of broad recitation in the independent claims, results in interactions among the alloy strips and the resin layer not easily envisioned by a person of ordinary skill in the art. Without specific limitations on exact materials, properties, thicknesses, etc., the Examiner deems that the breadth of the claim scope is immensely relative to what is taught in the as-filed specification.
Given the above analysis of the factors, which courts have determined, are critical in asserting whether a claimed invention is enabled, it must be considered that a skilled artisan would have to conduct undue and excessive experimentation in order to practice the claimed invention. Applicant is advised to positively set forth specific structural limitations or to present specific arguments on the record as to why a POSITA would view the claimed limitations as enabling.
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.
Claims 1-5 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 5 recite the property “the room temperature is denoted by RT”. The instant property is silent on the unit of measurement. For the purpose of evaluating prior art, the room temperature is in kelvins [K].
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over US 20040150285 (“Decristofaro et al.”) in view of Overview of Materials for Epoxy Adhesive, 2015, web.archive.org/web/20150930141840/www.matweb.com/search/datasheettext.aspx?matguid=c1ec1ad603c74f628578663aaf44f261f (“MatWeb”).
With regards to Claims 1 and 5, Decristofaro et al. teaches a laminated magnetic material, and a method of make thereof, comprising a plurality of quenched alloy strips and a resin layer made of resin and disposed between the quenched alloy strips ([0053], [0054], [0061], and [0076]).
Decristofaro et al. recognizes the resin layer made of resin disposed between the quenched alloy strips are the adhesive means used to adhere the plurality of quenched alloy strips to each other, thereby providing a bulk, three-dimensional object. This bonding affords sufficient structural integrity that permits the laminated magnetic material to be handled and used, or incorporated into a larger structure. The resin have a low shrinkage, low elastic modulus, and a thermal expansion of coefficient approximately equal to that of the quenched alloy strips or about 10 ppm. A variety of adhesive resins are suitable, including epoxies. The curing temperature of the resin adhesive is 175°C (448 K), and one of ordinary skill in the art recognizes that room temperature is generally in the range of 293 K to 298 K. A thickness of each of the quenched alloy strips is 20-25 μm ([0054], [0055], and [0059]).
Based on the method of applying the resin adhesive, a thickness of the resin would be less than a thickness of the quenched alloy strips ([0055] and [0076]). As disclosed in paragraph [0076], it is estimated that a resin thickness of the resin is about 1.56 mm and a thickness of the quenched alloy strips is about 2.64 mm. Thus, the ratio of h1/h2 is about 0.59.
While Decristofaro et al. teaches the modulus of elasticity of the resin is low [0054], Decristofaro et al. does not quantitatively teach the modulus of elasticity of the resin.
However, MatWeb, an online materials property database, discloses that an epoxy adhesive has an average modulus of elasticity of 3.29 GPa or 4.39 GPa (3290 MPa or 4390 MPa). With the teachings above, Decristofaro et al. has an adhesive stress greater than 1.8 MPa. Thus, it would have been obvious to one of ordinary skill in the art to optimize Decristofaro et al.’s laminated magnetic material to have an adhesive stress of 1.8 MPa or more in order to ensure great adhesion and bonding in the laminated magnetic material.
With regards to Claim 2, Decristofaro et al. teaches the laminated magnetic material has an iron loss Pcm of less than or approximately equal to 9.5 W/kg at a frequency of approximately 2,000 Hz and a maximum magnetic flux density of approximately 1.0 T [0035].
With regards to Claims 3 and 5, eddy current loss constitutes one component of the overall iron loss in a laminated magnetic material. In general, iron loss includes hysteresis loss, eddy current loss, and other associated magnetic losses. Considering that Decristofaro et al. teaches the laminated magnetic material has an iron loss Pcm of less than or approximately equal to 9.5 W/kg at a frequency of approximately 2,000 Hz and a maximum magnetic flux density of approximately 1.0 T [0035], the eddy current loss must be less than 9.5 W/kg or less among an iron loss Pcm at a frequency at 2000 Hz and a maximum magnetic flux density of 1.0 T.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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