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 .
Response to Arguments
Applicant argues claim 1 requires the oxidation level of the copper-based wire rod to be less than 25 immediately prior to rolling or drawing and that “Guo discloses neither any means for identifying such a surface condition nor any evaluation or control based on the claimed threshold of less than 25.” Applicant also contends the oxidation degree is not merely a desired result but that it is a parameter “representing the physical and chemical surface condition of the wire rod.” The Examiner respectfully submits that the claimed parameter precludes the limitation to also be a desired result, a result from a manufacturing process and a measuring process. After all, results are often described by a parameter.
This parameter, however, is not standard parameter recognized in the art, but requires the use of specific equipment at specific moments on a copper wire rod that corrodes over time. MPEP 2113 guides that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
The claimed process has been considered as to whether the claimed process establishes a structural difference from the prior art; however, the claimed process only describes a measuring process and no manipulation of the copper rod is found that structurally distinguishes from the cited prior art. Furthermore, it appears the wire rod of the admitted prior art would have the claimed properties of little to no oxidation since the copper has been peeled and has only just begun oxidizing.
As to Applicant’s arguments that Guo does not show an oxide film having been peeled or an oxidation level prior to drawing or rolling, the Examiner is not persuaded as the film is not an element of the wire rod, the act of peeling does not make the product different from Guo.
As to Applicant’s inherency argument that a substantially identical structure has not been shown, the Examiner is not persuaded. Guo shows all the claimed structure except for the process of making the rod, i.e. peeling an oxide layer, and the process for measuring whether the copper rod passed the oxidation measurement test. MPEP 2113(III) guides that a rejection under 35 U.S.C. § 102 to be reasonable because the examination of the claims would require the Patent Office to obtain all the existing copper-based wire rods, obtain the exact measuring device claimed, and perform measurements on every copper-based wire rod.
Claim Rejections - 35 USC § 102
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 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Applicant admitted prior art (AAPA).
Claim 1 is directed to the structure of a wire rod. The only structural limitation is that the wire rod is mostly composed of copper. The remainder of the claim describes a process of making the wire rod by performing a measuring process 645103
using a measurement system, and desired measurement results. These recitations do not serve to distinguish.
With these considerations, AAPA shows:
1. A wire for use as a conductor material for enameled wire, the wire rod mainly composed of copper and having a surface from with an oxide film has been peeled (para. [0004]: “In general, a wire rod is used as a conductor of an enameled wire in a state called ‘peeled material,’ in which an oxide film on the surface of the wire rod has been peeled off”; this statement of process of making the wire rod does not serve to structurally differentiate. See MPEP 2113(I)),
wherein oxidation degree measured on the surface of the wire rod using Raman spectral analysis immediately prior to drawing or rolling is less than 25 (Since the wire rod of AAPA is mainly composed of copper it is identical in structure to the claimed wire rod, it is reasonable to conclude it would have an oxidation degree of less than 25 when measured as claimed. In addition, the wire rod having just been peeled would have this property since the wire rod would not have had time to oxide. Furthermore, this limitation is directed as process of making by performing the measuring and does not limit the structure of the wire rod, nor serve to structurally distinguish from AAPA. See MPEP 2113),
wherein measurement of the oxidation degree is performed by mapping Raman spectra under conditions described below, a histogram is created from peak areas of Raman spectral peaks in respective pixels of an obtained mapping image, an average value of a plurality of the peak areas is determined from the histogram, and the average value is measured as the oxidation degree (this limitation is directed at a process of making by measuring and does not limit the structure of the wire rod, and thus, does not serve to structurally distinguish from the wire rod of AAPA),
wherein a plurality of the Raman spectral peaks are peaks attributed to a lattice vibration of a vibrational mode 2Eu of Cu2O (this limitation is directed at a process of making by measuring and does not limit the structure of the wire rod, and thus, does not serve to structurally distinguish from the wire rod of AAPA), and
wherein the histogram has a horizontal axis representing 256 levels into which a range from minimum to maximum of the plurality of the peak areas are divided, and a vertical axis representing a frequency, which is a number of pixels in each level (this limitation is directed at desired measurement results and does not limit the structure of the wire rod, nor serve to structurally distinguish from the wire rod of AAPA),
wherein Raman measurement system is configured, such that a laser wavelength is 532.06 nm, a width of an incident slit of a spectrometer is 50 μm, a ratio of light intensity after attenuation to maximum laser light intensity of ND filter (attenuation ratio) is 215/255, a number of engraved lines in diffraction grating is 600 gr/mm, a magnification of objective lens is 100x, a numerical aperture (NA) is 0.9, a mapping range is 88 × 60 μm, and a pixel size is 2 × 2 μm (this limitation is directed at desired measurement results and does not limit the structure of the wire rod, nor serve to structurally distinguish from the wire rod of AAPA).
2. An enameled wire, comprising: a conductor formed by drawing (the manner of making the wire rod is not found to impart any structural difference to the wire rod) a wire rod according to claim 1, and an insulative coating (2) formed around the conductor.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo et al (CN 206711622).
Claim 1 is directed to the structure of a wire rod. The only structural limitation is that the wire rod is mostly composed of copper. The remainder of the claim describes a measuring process, a measurement system, and desired measurement results. These recitations directed at the measuring process, the measuring system, and desired measurement results do not serve to distinguish.
With these considerations, Guo shows:
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1. A wire (1, See Fig. 1, and "Preferred embodiment": "conductor 1 is a tinning soft copper conductor") for use as a conductor material for enameled wire (statements of intended use does not serve to structurally differentiate), the wire rod mainly composed of copper and having a surface from with an oxide film has been peeled (this statement of process of making the wire rod does not serve to structurally differentiate. See MPEP 2113(I)),
wherein oxidation degree measured on the surface of the wire rod using Raman spectral analysis immediately prior to drawing or rolling is less than 25 (this limitation is directed as process of making by performing the measuring and does not limit the structure of the wire rod, nor serve to structurally distinguish from Guo. See MPEP 2113),
wherein measurement of the oxidation degree is performed by mapping Raman spectra under conditions described below, a histogram is created from peak areas of Raman spectral peaks in respective pixels of an obtained mapping image, an average value of a plurality of the peak areas is determined from the histogram, and the average value is measured as the oxidation degree (this limitation is directed at a process of measuring and does not limit the structure of the wire rod, and thus, does not serve to structurally distinguish from Guo),
wherein a plurality of the Raman spectral peaks are peaks attributed to a lattice vibration of a vibrational mode 2Eu of Cu2O (this limitation is directed at a process of measuring and does not limit the structure of the wire rod, and thus, does not serve to structurally distinguish from Guo), and
wherein the histogram has a horizontal axis representing 256 levels into which a range from minimum to maximum of the plurality of the peak areas are divided, and a vertical axis representing a frequency, which is a number of pixels in each level (this limitation is directed at desired measurement results and does not limit the structure of the wire rod, nor serve to structurally distinguish from Guo),
wherein Raman measurement system is configured, such that a laser wavelength is 532.06 nm, a width of an incident slit of a spectrometer is 50 μm, a ratio of light intensity after attenuation to maximum laser light intensity of ND filter (attenuation ratio) is 215/255, a number of engraved lines in diffraction grating is 600 gr/mm, a magnification of objective lens is 100x, a numerical aperture (NA) is 0.9, a mapping range is 88 × 60 μm, and a pixel size is 2 × 2 μm (this limitation is directed at the measurement system and does not limit the structure of the wire rod, nor serve to structurally distinguish from Guo).
2. An enameled wire, comprising: a conductor formed by drawing (the manner of making the wire rod is not found to impart any structural difference to the wire rod) a wire rod according to claim 1, and an insulative coating (2) formed around the conductor.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hwa Andrew S Lee whose telephone number is (571)272-2419. The examiner can normally be reached Mon-Fri 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hwa Andrew Lee/Primary Examiner, Art Unit 2877
