Detailed Office Action
The communication dated 7/7/2026 has been entered and fully considered. Claims 6 and 16-20 are withdrawn from examination. Claims 1-20 remain pending.
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 .
Election/Restrictions
Applicant's election with traverse of Invention I and species A in the reply filed on 7/7/2026 is acknowledged. The traversal is on the ground(s) that there should be no burden to the Examiner to examine both species. This is not found persuasive because in the restriction requirement of 5/7/2026, the Examiner outlined the reason for the search burden and the Applicant needs to specifically address that argument. The requirement is still deemed proper and is therefore made FINAL. Claims 6 and 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species B and Invention II.
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.
Claims 1-2, 4, 7-8, 10-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over YAMAGISHI (US-2022/0190695), hereinafter YAMAGISHI, in view of LEE (US-2026/0100630), hereinafter LEE, HIGUCHI (US 4,819,322), hereinafter HIGUCHI, and TAKESHIMA (US-2021/0391776), hereinafter TAKESHIMA. Note that the italicized text below are the instant claims.
Regarding claims 1 and 10, YAMAGISHI discloses A system for manufacturing winding for an electric motor of a vehicle {[abstract] note that the disclosed winding can be used in an electric motor of a vehicle, also note that the preamble limitation of electric motor of a vehicle is intended use of the device and may not impart patentability, see MPEP 2111.02 (II)}, the system comprising:
a substrate extending along a longitudinal axis {[abstract] body is the substrate, [FIG. 1] note the body or substrate 13 is extended along axis X};
a substrate support selectively engageable with a portion of the substrate or the UCC material {[FIG. 3] 14/15 are the substrate support and as seen 14 can selectively engage with substrate 13}.
YAMAGISHI, however, is silent on winding an ultra-conductive composite foil on the substrate. YAMAGHISHI discloses winding a ribbon or wire rod 11 on the substrate 13 {[FIG. 13]} and is silent on the material or composition of this ribbon or how conductive it is.
In the same field of endeavor that is related to winding of electric motor, LEE discloses an ultra-conductive composite (UCC) foil material having a thickness of 5-30 micrometers and overlapping a portion of the substrate {note overlapping is shown by YAMAGISHI above when ribbon 11 touches the substrate 13, [abstract], [0003], [0007], [0029], [0058] note a mixture, thus a composite, [0068]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have used the superconducting composite material of LEE for the ribbon 11 of YAMAGISHI, since YAMAGISHI is silent on the material of this ribbon and thus one would have been motivated to look to prior art to determine an appropriate material. Furthermore, and as disclosed by LEE, the advantage of this material is its near zero electrical resistance and thus high efficiency {[0003]}.
Regarding the limitation of thickness being in the range of 5-30 micrometer, LEE discloses that the thickness of the film determines the maximum current that can be applied to the winding {[0029]}. Therefore, LEE recognizes the thickness of the film as a result-effective variable.
It is well established that determination of optimum values of result-effective variables (in this case the thickness of the film) is within the skill of one practicing in the art {see MPEP 2144.05 (ll)(B)}. At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have optimized the thickness of the UCC film, which is a result-effective variable, through routine experimentation to have determined the thickness necessary to handle the desired current which in certain cases may match the levels that are claimed.
Combination of YAMAGISHI and LEE is, however, silent on the last limitation of claim 1 reciting “and a finishing mechanism including a joining mechanism and a cutting mechanism, the finishing mechanism being configured to move along or parallel to the longitudinal axis”.
In the same field of endeavor that is related to manufacturing coil, HIGUCHI discloses and a finishing mechanism including a joining mechanism {[C4, L1]-[C5, L4] note adhering is joining}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of HIGUCHI in the combination system of YAMAGISHI and LEE and have included the joining mechanism of HIGUCHI in the combination system. As disclosed by HIGUCHI, the advantage of the joining mechanism is that it ensures joining of the layers {[C4, L1]-[C5, L4]}. The Examiner notes that the UCC film of LEE also contains a binder {[0058]} and will benefit from the joining mechanism of HIGUCHI.
Combination of YAMAGISHI, LEE, and HIGUCHI, however, is silent on the finishing mechanism also having a cutting mechanism (claim 1) and that the cutting mechanism is a laser (claim 10).
In the same field of endeavor that is related to rotor manufacturing device, TAKESHIMA discloses and a finishing mechanism including a cutting mechanism (claim 1), wherein the cutting mechanism is a laser (claim 10) {[FIG. 10] note cutting mechanism 60 cuts sheet 14 after winding is done, [0059] note use of laser for cutting}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have included the cutting mechanism of TAKESHIMA in the combination system of YAMAGISHI, LEE, and HIGUCHI. The Examiner submits that it is known to an artisan that after the process of winding is finished, the wrapping sheet needs to be cut and therefore, one of ordinary skill in the art would have been motivated to look to analogous prior art and find an appropriate device for this task. Such art is TAKESHIMA.
Regarding the last limitation of claim 1 reciting “the finishing mechanism being configured to move along or parallel to the longitudinal axis”, the Examiner notes that the claims under examination are apparatus claims and this limitation recites what the disclosed apparatus is configured to do. Apparatus claims cover what a device is, not what a device does. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed (i.e., “configured”) does not differentiate claimed apparatus from a prior art apparatus” {see MPEP 2114 (II)}.
However, the Examiner submits that at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have configured the finishing mechanism of the disclosed apparatus above to move along the substrate, since it is obvious that all points of the substrate need to be joined together and at end of the process the laser needs to move along the substrate to cut the sheet since the laser point is a focused beam and cannot cut the entire width of the sheet while stationery.
Regarding claim 2, modified YAMAGISHI discloses further including a first articulation device and a second articulation device spaced from the first articulation device {[FIG. 3] note motors 24 and 124 and their associated accessories are the first and second articulation devices that are spaced apart}.
Regarding claim 4, modified YAMAGISHI discloses wherein the substrate extends between the first articulation device and the second articulation device and between a tensioner and a holder {[FIG. 5] note substrate 13 extend between the first/second articulation devices 124/24 and 10h is the tensioner, [0046] note tensioning, [0031] note the latch part and notch part are the holder}.
Regarding claim 7 limitation of “wherein the finishing mechanism is positioned on a rail that is arranged parallel to the longitudinal axis” and claim 8 limitation of “wherein the finishing mechanism is movable along the rail between a first articulation device and a second articulation device”, as discussed above under claim 1, it would have been obvious to have configured the finishing mechanism to be moveable along the substrate.
Modified YAMAGISHI extensively teaches using rail mechanism for movement of various components of its system {[0037], [0042]-[0043], [0047], [0052], [0055]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have positioned the moveable finishing mechanism of modified YAMAGUCHI in a pair of rails parallel to the longitudinal axis of the substate to have implemented the movement of the finishing mechanism, since YAMAGUCHI clearly teaches the use of rails for movement of various components as discussed above.
Regarding claims 11, 13, and 15, YAMAGISHI discloses A system for manufacturing winding for an electric motor {[abstract] note that the disclosed winding can be used in an electric motor, also note that the preamble limitation of electric motor is intended use of the device and may not impart patentability, see MPEP 2111.02 (II)}, the system comprising:
a first articulation device and a second articulation device spaced from the first articulation device {[FIG. 3] note motors 24 and 124 and their associated accessories are the first and second articulation devices that are spaced apart};
a substrate extending along a longitudinal axis and held by the first articulation device and the second articulation device {[abstract] body is the substrate, [FIG. 1] note the body or substrate 13 is extended along axis X, [FIG. 5] note substrate 13 extends between the first/second articulation devices 124/24 and is held by them};
a material held by a tensioner and selectively by a holder {[FIG. 5] 10h is the tensioner, [0046] note tensioning, [0031] note the latch part and notch part are the holder},
a substrate support selectively engageable with a portion of the substrate or the UCC material {[FIG. 3] 14/15 are the substrate support and as seen 14 can selectively engage with substrate 13}.
YAMAGISHI, however, is silent on winding an ultra-conductive composite on the substrate. YAMAGHISHI discloses winding a ribbon or wire rod 11 on the substrate 13 {[FIG. 13]} and is silent on the material or composition of this ribbon or how conductive it is.
In the same field of endeavor that is related to winding of electric motor, LEE discloses the ultra-conductive composite (UCC) material overlapping a portion of the substrate {note overlapping is shown by YAMAGISHI above when ribbon 11 touches the substrate 13, note that being held and tensioned discussed above, [abstract], [0003], [0007], [0029], [0058] note a mixture, thus a composite, [0068]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have used the superconducting composite material of LEE for the ribbon 11 of YAMAGISHI, since YAMAGISHI is silent on the material of this ribbon and thus one would have been motivated to look to prior art to determine an appropriate material. Furthermore, and as disclosed by LEE, the advantage of this material is its near zero electrical resistance and thus high efficiency {[0003]}.
Combination of YAMAGISHI and LEE is, however, silent on the last limitation of claim 11 reciting “and a finishing mechanism including a joining mechanism and a cutting mechanism that are selectively movable with respect to where the UCC material overlaps the substrate, the finishing mechanism being configured to move between the first articulation device and the second articulation device” and claim 13 limitation of “wherein the joining mechanism is configured to couple the UCC material to a portion of a perimeter of the substrate”.
In the same field of endeavor that is related to manufacturing coil, HIGUCHI discloses and a finishing mechanism including a joining mechanism (claim 11), wherein the joining mechanism is configured to couple the UCC material to a portion of a perimeter of the substrate (claim 13) {[C4, L1]-[C5, L4] note adhering is joining, note as discussed below, LEE’s UCC material has a binder thus, the joining mechanism adheres the UCC to the substrate as well}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of HIGUCHI in the combination system of YAMAGISHI and LEE and have included the joining mechanism of HIGUCHI in the combination system. As disclosed by HIGUCHI, the advantage of the joining mechanism is that it ensures joining of the layers {[C4, L1]-[C5, L4]}. The Examiner notes that the UCC film of LEE also contains a binder {[0058]} and will benefit from the joining mechanism of HIGUCHI.
Combination of YAMAGISHI, LEE, and HIGUCHI, however, is silent on the finishing mechanism also having a cutting mechanism (claim 11) and that the cutting mechanism is a laser (claim 15).
In the same field of endeavor that is related to rotor manufacturing device, TAKESHIMA discloses and a finishing mechanism including a cutting mechanism (claim 11), wherein the cutting mechanism is a laser (claim 15) {[FIG. 10] note cutting mechanism 60 cuts sheet 14 after winding is done, [0059] note use of laser for cutting}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have included the cutting mechanism of TAKESHIMA in the combination system of YAMAGISHI, LEE, and HIGUCHI. The Examiner submits that it is known to an artisan that after the process of winding is finished, the wrapping sheet needs to be cut and therefore, one of ordinary skill in the art would have been motivated to look to analogous prior art and find an appropriate device for this task. Such art is TAKESHIMA.
Regarding the last limitation of claim 11 reciting “that are selectively movable with respect to where the UCC material overlaps the substrate, the finishing mechanism being configured to move between the first articulation device and the second articulation device”, the Examiner notes that the claims under examination are apparatus claims and this limitation recites what the disclosed apparatus is configured to do. Apparatus claims cover what a device is, not what a device does. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed (i.e., “configured”) does not differentiate claimed apparatus from a prior art apparatus” {see MPEP 2114 (II)}.
However, the Examiner submits that at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have configured the finishing mechanism of the disclosed apparatus above to move along the substrate that is between the first and the second articulation devices, since it is obvious that all points of the substrate need to be joined together and at end of the process the laser needs to move along the substrate to cut the sheet since the laser point is a focused beam and cannot cut the entire width of the sheet while stationery.
Regarding claim 12, modified YAMAGISHI discloses wherein the first articulation device and the second articulation device are configured to rotate the substrate about the longitudinal axis {[abstract] note rotation of the winding body or the substrate, [0032] note the winding motor or articulation device rotates the substrate}.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of YAMAGISHI, LEE, HIGUCHI, and TAKESHIMA as applied to claims 1-2 above, and further in view of BROWN (US-2015/0288260), hereinafter BROWN.
Regarding claim 3, the combination above discloses all the limitations of claims 1-2 as discussed above. This combination, however, is silent on the first and the second articulation devices being stepper motors.
In the same field of endeavor that is related to stator coil lacing, BROWN discloses wherein the first articulation device and the second articulation device are stepper motors configured to rotate the substrate with respect to the longitudinal axis {[0077]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of BROWN in the combination device of YAMAGISHI, LEE, HIGUCHI, and TAKESHIMA and have used a stepper motor for the motor or articulation devices of YAMAGISHI.
As disclosed by BROWN, the advantage of this rotation provided by the stepper motor is a step-wise rotation {[0073]} that could be beneficial in ensuring proper wrapping of the UCC foil by being able to inspect it in a step-wise fashion.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of YAMAGISHI, LEE, HIGUCHI, and TAKESHIMA as applied to claim 1 above, and further in view of RUSSELL (US-2026/0095082), hereinafter RUSSELL.
Regarding claim 5, the combination above discloses all the limitations of claim 1 as discussed above. YAMAGISHI further discloses wherein the substrate includes a rectangular cross section {[0030]}.
The combination above, however, is silent on the material of construction of the substrate being copper.
In the same field of endeavor that is related to rotor construction, RUSSELL discloses wherein the substrate is made of copper {[0017]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of RUSSELL in the combination device of YAMAGISHI, LEE, HIGUCHI, and TAKESHIMA and have used copper for the substrate of YAMAGISHI. Copper is known to be conductive to electricity and an artisan would have been motivated to look to prior art to determine appropriate material of construction, since YAMAGISHI is silent on the material of construction of the substrate.
Claims 9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of YAMAGISHI, LEE, HIGUCHI, and TAKESHIMA as applied to claims 1 and 11 above, and further in view of HORIBA (US-2015/0028712), hereinafter HORIBA.
Regarding claims 9 and 14, the combination above discloses all the limitations of claims 1 and 11 as discussed above. This combination, however, is silent on the joining mechanism being an ultrasonic horn.
In the same field of endeavor that is related to rotating electric machine construction, HORIBA discloses wherein the joining mechanism is an ultrasonic horn (claims 9 and 14) {[0046]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the heating device of the combination apparatus of YAMAGISHI, LEE, HIGUCHI, and TAKESHIMA with the ultrasonic horn as the joining mechanism, since it has been held that a simple substitution of one known element for another to obtain predictable results is within the skill of an artisan { see MPEP 2143 (I)(B)}. Predictable results will be obtained since as disclosed by HORIBA, this device can generate heat {[0046]} and therefore can used instead of the heating rolls 22 of HIGUCHI {[FIG. 6]}.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748
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