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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 54 – 72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 22 of U.S. Patent No. 12,087,468 (hereinafter Pat. ‘468). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claim 54, Pat. ‘468 discloses a winding wire for electrical machines, comprising: a flat or round wire made of one or more electrically conductive materials, the flat or round wire having an exterior surface that is free of an oxide layer (claim 1, lines 1 – 4); and an insulating layer adhering directly to the oxide-layer-free exterior surface to form a coating around the oxide-layer-free exterior surface, the insulating layer being made of at least one thermoplastic material which provides electrical insulation (claim 1, lines 5 – 9); wherein the at least one thermoplastic material comprises polyetheretherketone [PEEK] (claim 7, lines 1 – 4); wherein the flat or round wire is designed to conduct an electrical current (claim 1, lines 10 – 11); wherein the adhesion between the insulating layer and the oxide-layer-free exterior surface resists detachment such that said detachment, in response to the insulating layer being cut circumferentially in a direction perpendicular to an axis of the flat or round wire and the insulated electric conductor being stretched by 20%, is at most 3 mm as measured in a direction of a conductor axis (claim 9).
Regarding claim 61, Pat. ‘468 discloses a winding wire for electrical machines, comprising: a flat or round wire made of copper, aluminum, or a copper alloy, the flat or round wire having an exterior surface that is free of an oxide layer (claim 1, lines 1 – 4 and claim 8); and an insulating layer adhering directly to the oxide-layer-free exterior surface to form a coating around the oxide-layer-free exterior surface, the insulating layer being made of at least one thermoplastic material which provides electrical insulation (claim 1, lines 5 – 9); wherein the at least one thermoplastic material comprises polyaryletherketone [PAEK] (claim 7, lines 1 – 4); wherein the flat or round wire is designed to conduct an electrical current (claim 1, lines 10 – 11); wherein the adhesion between the insulating layer and the oxide-layer-free exterior surface resists detachment such that said detachment, in response to the insulating layer being cut circumferentially in a direction perpendicular to an axis of the flat or round wire and the insulated electric conductor being stretched by 20%, is at most 2 mm as measured in a direction of a conductor axis (claims 9 and 15; claims 9 and 15 recite that the insulated electric conductor is at most 3mm and 1 mm, respectively --- 2 mm falls within the range of 1 mm to 3 mm).
Regarding claim 68, Pat. ‘468 discloses a winding wire for electrical machines, comprising: a flat or round wire made of copper, aluminum, or a copper alloy, the flat or round wire having an exterior surface that is free of an oxide layer (claim 1, lines 1 – 4 and claim 8); and an insulating layer adhering directly to the oxide-layer-free exterior surface to form a coating around the oxide-layer-free exterior surface, the insulating layer being made of at least one thermoplastic material which provides electrical insulation (claim 1, lines 5 – 9); wherein the at least one thermoplastic material is polyetheretherketone [PEEK] (claim 7, lines 1 – 4); wherein the flat or round wire is designed to conduct an electrical current (claim 1, lines 10 – 11); wherein the adhesion between the insulating layer and the oxide-layer-free exterior surface resists detachment such that said detachment, in response to the insulating layer being cut circumferentially in a direction perpendicular to an axis of the flat or round wire and the insulated electric conductor being stretched by 20%, is at most 1 mm as measured in a direction of a conductor axis (claim 15).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREMESHA W BURNS whose telephone number is (571)270-3391. The examiner can normally be reached Monday-Friday 8am - 4:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Thompson can be reached at (571) 272-2342. 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.
TREMESHA W. BURNS
Primary Examiner
Art Unit 2847
/TREMESHA W BURNS/Primary Examiner, Art Unit 2847
Prosecution Insights