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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). The certified copy has been filed in present Application No. 18/929,741, filed on October 29, 2024.
Information Disclosure Statement
The information disclosure statement filed October 29, 2024, has been submitted for consideration by the Office. It has been placed in the application file and the information referred to therein has been considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
Extensive mechanical and design details of apparatus should not be given.
The abstract of the disclosure is objected to because in line 1, the abstract recites the terms “Provided are……”, which is improper language for the abstract. The applicant should delete the terms, to provide the abstract with proper language. Correction is required. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. In certain patents, particularly those for compounds and compositions, wherein the process for making and/or the use thereof are not obvious, the abstract should set forth a process for making and/or use thereof. If the new technical disclosure involves modifications or alternatives, the abstract should mention by way of example the preferred modification or alternative.
The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
Where applicable, the abstract should include the following:
(1) if a machine or apparatus, its organization and operation;
(2) if an article, its method of making;
(3) if a chemical compound, its identity and use;
(4) if a mixture, its ingredients;
(5) if a process, the steps.
Extensive mechanical and design details of apparatus should not be given.
In lines 3-5, the abstract refers to purported merits or speculative applications of the invention, which is improper content for the abstract. The applicant should delete the references to purported merits or speculative applications of the invention to provide the abstract with proper content.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-4 are rejected under 35 U.S.C. 102(a)(1) anticipated as being anticipated by Tsutsumi et al (Pub Num 2021/0017337, herein referred to as Tsutsumi). Tsutsumi discloses an insulating coating material that can be cured at a low temperature, turned into a cured product superior in mechanical properties, heat resistance, relative permittivity, dielectric tangent, moisture resistance, and adhesiveness (abstract) and capable of coating an electrical wire (i.e. coating material, Paragraph 11). Specifically, with respect to claim 1, Tsutsumi discloses an insulating coating material comprising: (A) a maleimide compound having a number average molecular weight of 5,000 to 50,000 (i.e. 3,000-50,000, Paragraph 20) and defined by the following formula (1):
PNG
media_image1.png
160
550
media_image1.png
Greyscale
(Page 2, Formula 1), wherein b=n & a=m,
PNG
media_image2.png
102
572
media_image2.png
Greyscale
wherein in the formula (1), each Q1 independently represents a divalent group defined
PNG
media_image3.png
126
534
media_image3.png
Greyscale
(Page 2, Formula I as shown above, wherein X1 independently represents a divalent group selected from any one of the following formulas
PNG
media_image4.png
150
658
media_image4.png
Greyscale
As shown on Page 2, Paragraph 15 (see below)
PNG
media_image5.png
198
310
media_image5.png
Greyscale
and wherein, in the formula (1), a is a number of 0 to 50 (i.e. a=m, which may be 1-30, Paragraph 14), b is a number of 1 to 50 (i.e. b=n, which may be 1-5, Paragraph 14), and each of A1 and A2 independently represents a group defined by the formula (2) or (3):
PNG
media_image6.png
282
724
media_image6.png
Greyscale
As shown in Paragraph 17 (see below)
PNG
media_image7.png
224
270
media_image7.png
Greyscale
wherein, in the formulas (2) and (3), each X2 independently represents a divalent group selected from any one of the following formulas:
PNG
media_image8.png
150
760
media_image8.png
Greyscale
As shown on Page 2, Paragraph 18 (see below)
PNG
media_image5.png
198
310
media_image5.png
Greyscale
and wherein, in the formula (2), each R1 independently represents a hydrogen atom, a chlorine atom, or a substituted or unsubstituted aliphatic hydrocarbon group having 1 to 6 carbon atoms (Paragraph 18) and (B) a reaction initiator (Paragraphs 39-41). With respect to claims 2-3, Tsutsumi discloses that the reaction initiator may be an organic peroxide (i.e. dicumyl peroxide, t-butyl peroxybenzoate, t-amyl peroxybenzoate, dibenzoyl peroxide, dilauroyl peroxide, 2,5-dimethyl-2,5-di(t-butylperoxy)hexane, 1,1-di(t-butylperoxy)cyclohexane, di-t-butyl peroxide, dibenzoyl peroxide, and 1,6-bis(t-butylperoxycarbonyloxy)hexane, Paragraph 98), which has an 1 hour half-life temperature of 110-150oC (i.e. the applicant has stated that the above stated reaction initiators exhibit the characteristics of having an 1 hour half-life temperature of 110-150oC). With respect to claim 4, Tsutsumi discloses that the insulating coating material may further comprise (C) an organic solvent (i.e. xylene, anisole, and cyclohexanone, Paragraph 45), which as a boiling point of 135-200oC (i.e. the applicant has stated that the above stated organic solvents exhibit the characteristics of having a boiling point of 135-200oC).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tsutsumi (Pub Num 2021/0017337) in view of Satoru et al (JP Pat Num 2022-011106A, herein referred to as Satoru). Tsutsumi discloses an insulating coating material that can be cured at a low temperature, turned into a cured product superior in mechanical properties, heat resistance, relative permittivity, dielectric tangent, moisture resistance, and adhesiveness (abstract) and capable of coating an electrical wire (i.e. coating material, Paragraph 11). Specifically, with respect to claims 5-7, Tsutsumi discloses that the cured film layer of the insulating material comprising: (A) a maleimide compound having a number average molecular weight of 5,000 to 50,000 (i.e. 3,000-50,000, Paragraph 20) and defined by the following formula (1):
PNG
media_image1.png
160
550
media_image1.png
Greyscale
(Page 2, Formula 1), wherein b=n & a=m,
PNG
media_image2.png
102
572
media_image2.png
Greyscale
wherein in the formula (1), each Q1 independently represents a divalent group defined
PNG
media_image3.png
126
534
media_image3.png
Greyscale
(Page 2, Formula I as shown above, wherein X1 independently represents a divalent group selected from any one of the following formulas
PNG
media_image4.png
150
658
media_image4.png
Greyscale
As shown on Page 2, Paragraph 15 (see below)
PNG
media_image5.png
198
310
media_image5.png
Greyscale
and wherein, in the formula (1), a is a number of 0 to 50 (i.e. a=m, which may be 1-30, Paragraph 14), b is a number of 1 to 50 (i.e. b=n, which may be 1-5, Paragraph 14), and each of A1 and A2 independently represents a group defined by the formula (2) or (3):
PNG
media_image6.png
282
724
media_image6.png
Greyscale
As shown in Paragraph 17 (see below)
PNG
media_image7.png
224
270
media_image7.png
Greyscale
wherein, in the formulas (2) and (3), each X2 independently represents a divalent group selected from any one of the following formulas:
PNG
media_image8.png
150
760
media_image8.png
Greyscale
As shown on Page 2, Paragraph 18 (see below)
PNG
media_image5.png
198
310
media_image5.png
Greyscale
and wherein, in the formula (2), each R1 independently represents a hydrogen atom, a chlorine atom, or a substituted or unsubstituted aliphatic hydrocarbon group having 1 to 6 carbon atoms (Paragraph 18) and (B) a reaction initiator (Paragraphs 39-41), wherein the cured film may be directly formed on the surface of a coating layer (Paragraph 114).
However, Tsutsumi doesn’t necessarily recite the cured film being utilized in an insulated wire comprising a conductor wherein the cured film is applied directly to the conductor or the cured film is formed on a coating layer of the conductor, wherein the conductor has a coating layer on a surface of the conductor (claim 5), nor a coil comprising the insulated wire (claim 6), nor an electric or electronic device comprising a coil (claim 7).
Satoru teaches an insulating coating material for coating an electrical wire (Fig 11) having improved breaking voltage of an insulating layer without impairing the storage stability, low viscosity, breaking toughness, low thermal expansion, and excellent heat resistance (abstract). Specifically, with respect to claims 5-7, Satoru discloses an insulated wire (Fig 11) comprises a conductor (15), an coating layer (16), and a cured film layer (4) formed of an insulating coating material comprising (A) a maleimide compound (Paragraph 8) having a number average molecular weight of 5,000 to 50,000 (i.e. YPS-007A30 (bisphenol A type / bisphenol S type copolymer phenoxy resin, styrene equivalent average molecular weight is 49000), Paragraph 265), (B) an reaction initiator that may be an organic peroxide ((i.e. dicumyl peroxide or 2,5-dimethyl-2,5-di(t-butylperoxy)hexane, Paragraph 42), which has an 1 hour half-life temperature of 110-150oC (i.e. the applicant has stated that the above stated reaction initiators exhibit the characteristics of having an 1 hour half-life temperature of 110-150oC), and (C) an organic solvent (i.e. cyclohexanone, Paragraph 21), which as a boiling point of 135-200oC (i.e. the applicant has stated that the above stated organic solvents exhibit the characteristics of having a boiling point of 135-200oC), wherein the cured film layer (4) is formed on the coating layer (16) of the conductor (15), wherein the coating layer (16) is on a surface of the conductor (16, Fig 11), wherein the insulated wire (Fig 11) may be utilized as a coil (Paragraph 100) in an electronic device (i.e. switchgear, Fig 10)
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the insulating coating material of Tsutsumi to be utilized as a coating material on an insulated wire configuration as taught by Satoru because Satoru teaches that such a configuration provides an insulating coating material for coating an electrical wire (Fig 11) having improved breaking voltage of an insulating layer without impairing the storage stability, low viscosity, breaking toughness, low thermal expansion, and excellent heat resistance (abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the enclosed PTO-892 form for the citation of pertinent art in the present case, all of which disclose insulating coating materials comprising a maleimide compounds.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MAYO III whose telephone number is (571)272-1978. The examiner can normally be reached on M-Thurs (5:30a-3:00p) Fri 5:30a-2p (w/alternating Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani Hayman can be reached on (571) 270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/William H. Mayo III/
William H. Mayo III
Primary Examiner
Art Unit 2847
WHM III
August 22, 2026
Prosecution Insights