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 .
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi (JP 2019/116552 A).
Regarding Claim 1, Kobayashi discloses an anionic epoxy resin identical to that recited in the present claims, having a structural unit represented by Formula (1), at least one of the structural units represented by Formula (2) and Formula (3), and at least one of the structural units represented by Formula (4) and Formula (5):
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378
168
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wherein, in Formula (1), R1 represents a structure represented by the following Formula (1a), (2a), or (3a); in Formula (2), R7 represents a structure represented by the following Formula (4a) or (5a); in Formula (3), R8 represents a structure represented by the following Formula (6a) or (7a); in Formula (4), R9 represents a structure represented by the following Formula (8a) or (9a); and, in Formula (5), R10 represents a structure represented by the following Formula (10a) or (11a):
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156
454
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186
540
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150
510
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100
438
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100
468
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wherein, in Formula (1a), R2 represents a single bond, C(CH3)2, CH(CH3), CH2, S, O, or SO2; in Formula (2a), R3 to R6 each independently represent a hydrogen atom, a methyl group, an alkylcarbonyl group, an alkoxy group, or an alkoxycarbonyl group; in Formula (5a), R17 represents a hydrogen atom or an alkyl group; in Formula (8a), R11 to R13 each independently represent a hydrogen atom, a methyl group, or an alkoxy group; and, in Formula (10a), R14 and R15 each independently represent a hydrogen atom, a methyl group, or an alkoxy group (paras 0007-0013).
Kobayashi further discloses the anionic epoxy resin or salt thereof may be used to form a film (para 0014, 0061) applied to a metal surface (paras 0055, 0057), including in electronic components (para 0062).
Regarding Claim 2, Kobayashi discloses all the limitations of the present invention according to Claim 1 above.
While Kobayashi discloses that electronic components comprising the anionic epoxy resin film on a metal surface as claimed (para 0062), there is no explicit disclosure of the electronic components which constitutes a motor as claimed. However, Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kobayashi discloses electronic components comprising the anionic epoxy resin film on a metal surface as presently claimed, it is clear that the electronic components would be capable of performing the intended use, i.e. constituting a motor, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi as applied to claim 1 above, and further in view of Lee et al. (US 2021/0284850 A1).
Regarding Claim 2, Kobayashi discloses all the limitations of the present invention according to Claim 1 above. Kobayashi further discloses the anionic epoxy resin forms a film having excellent insulation properties and edge cover properties, and which can be expected to have excellent corrosion resistance (para 0014). It can be used in electrical components for electrical insulation (para 0062).
Kobayashi does not explicitly disclose the electrical components constitute a motor as claimed.
Lee discloses an insulating heat-radiating coating composition including a coating layer-forming component including a main resin and an insulating heat-radiating filler (Abstract), where the main resin may comprise one or more glycidyl ether-type epoxy resins (paras 0050-0051). The coating composition is applied to a metal substrate (paras 0106-0107), which is an electronic component such as a bus bar or an engine cooling apparatus (para 0129).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to use the anionic epoxy resin as one of the glycidyl ether-type epoxy resins of Lee, in a coating for a metal substrate, which is an electronic component such as a bus bar or an engine cooling apparatus. Doing so would form a film having excellent insulation properties and edge cover properties, and which can be expected to have excellent corrosion resistance.
Conclusion
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787