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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5, 8-9, and 13-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “at least one spacer region” in the preamble, and the claim also recites “at least three spacer regions” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1, 3, 8-9, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto (US 2021/0129218) in view of Hayashi et al. (US 2003/0134152).
Furthermore, Matsumoto discloses that the large particle has particle size of 0.25-250.00 µm [0033], which thereby has a surface area of 196349.54-196349540849.36 nm2 when calculated. Matsumoto discloses that the small particle is present per 43-10000 nm2 surface area of the large particle [0036], wherein the particle diameter of the small particle is 4-40 nm (area of a circle: 12.57-1256.64 nm2; surface area: 50.27-5026.55 nm2). Matsumoto thereby would disclose an overlapping range of the coverage percentage of the small particles.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Matsumoto discloses that the mutual buffer film comprises silicon oxide [0045], however, fails to explicitly disclose that the mutual buffer film comprises silicon oxide derived from tetraethoxysilane as presently claimed.
Hayashi discloses a plurality of magnetic particles having small particles adhered to or contacted with the surface thereof, and comprises of a mutual buffer film (Abstract). Hayashi discloses that the silicon oxide is derived from tetraethoxysilane ([0064-0067], [0136]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hatsumoto’s silicon oxide to be of silicon oxide derived from tetraethoxysilane, since Hayashi discloses that this is a known material to sufficiently fixed the small particles onto the surface of each magnetic particle [0068].
Regarding claim 8, Hatsumoto in view of Hayashi discloses the material and property as claimed (Hatsumoto: [0041], [0045]; Hayashi: [0064-0067]).
Regarding claim 9, the limitation “obtained by a sol-gel reaction…”, even 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113)
Regarding claim 13, Hatsumoto discloses an electronic component as claimed [0015-0018].
Claims 1, 3, 5, 8-9, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto (US 2021/0129218) in view of Ikeda et al. (US 2019/0131040).
Regarding claims 1, 3, 5, and 14, Matsumoto discloses a core comprising magnetic large particles (2) and at least 3 spacer regions (Fig. 1-2), wherein one or small particles (3) having an average particle size smaller than that of the large particles exist as spacers to form the spacer region between the large particles in a field of view, wherein the spacer region is at least 3 in the predetermined range (Figs. 1-2). Figs. 1-2 in Matsumoto only discloses a small portion of the magnetic core. However, Fig. 4 clearly illustrates that multiple magnetic particles are present. In light of Figs. 1-2 and 4, Matsumoto would disclose the spacer region between the large particles in a field of view within a predetermined range where 10-40 of the large particles are observable in a cross-section of the element body. Matsumoto further discloses at least part of surfaces of the large particles (23) located between the small particles (3) existing around the large particles is covered with at least a mutual buffer film (4) in the field of view within the predetermined range (Figs. 1-2), the small particles (3) are directly attached to the surfaces of the large particles (Fig. 1), the mutual buffer film (4) continuously covers the surfaces of the large and small particles (Fig. 1). Further, Matsumoto discloses that the small particles have an average particle size of 4-40 nm [0037] with the materials and properties as claimed [0036-0040], and the average thickness of the mutual buffer film is 2-20 nm [0043], which therefore overlaps the claimed ratio t/r.
Furthermore, Matsumoto discloses that the large particle has particle size of 0.25-250.00 µm [0033], which thereby has a surface area of 196349.54-196349540849.36 nm2 when calculated. Matsumoto discloses that the small particle is present per 43-10000 nm2 surface area of the large particle [0036], wherein the particle diameter of the small particle is 4-40 nm (area of a circle: 12.57-1256.64 nm2; surface area: 50.27-5026.55 nm2). Matsumoto thereby would disclose an overlapping range of the coverage percentage of the small particles.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Matsumoto discloses that the mutual buffer film comprises silicon oxide [0045], however, fails to explicitly disclose that the mutual buffer film comprises silicon oxide derived from tetraethoxysilane as presently claimed.
Ikeda discloses a silica-based insulating film, which corresponds to the claimed mutual buffer film, between magnetic particles (Abstract). Ikeda discloses that the silica-based insulating film is a TEOS-derived SiO2 film ([0071], [0106]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hatsumoto’s silicon oxide to be of silicon oxide derived from tetraethoxysilane, since Ikeda discloses that this is a known material to sufficiently join the magnetic particles together [0063].
Regarding claim 8, Hatsumoto discloses the material and property as claimed (Hatsumoto: [0041], [0045]).
Regarding claim 9, the limitation “obtained by a sol-gel reaction…”, even 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113)
Regarding claim 13, Hatsumoto discloses an electronic component as claimed [0015-0018].
Response to Arguments
Applicant's arguments filed 9/11/25 have been fully considered but they are not persuasive.
Applicant argues that a pressure of at least 6 t/cm2 is required to form at least 3 spacer regions and that when the pressure increases, the number of spacer regions similarly increases. Applicant argues that Matsumoto therefore would not have the spacer regions because Matsumoto teaches performing compaction at a pressing pressure equal to or lower than the bending strength of each of the forming materials and specifically lists the following bending strengths of the alleged small particles: aluminum oxide (about 350 MPa), quartz (about 150 MPa), and amorphous silica (about 150 MPa), polytetrafluoroethylene (about 600 MPa). This has been found unpersuasive.
It appears that the molding pressure is not the requirement to produce the spacer regions. Table 1 and 4 of the instant specification also disclose the same molding pressure (6-10 t/cm2) but yet produces no spacer regions (emphasis added). Therefore, the examiner contends that the molding pressure is not what contributes to the spacer regions.
Although Matsumoto discloses different pressure when forming a core, Matsumoto clearly discloses spacer regions are actually present (Fig. 1-2). Using specific pressure, even though product-by-process 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). As set forth above, Matsumoto discloses the spacer regions as claimed.
Additionally, patents are relevant as prior art for all they contain. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Matsumoto explicitly discloses spacer regions are present (Fig. 1-2). Applicant has not provided evidence that Matsumoto would not have spacer regions.
Applicant argues that the increased amount of spacer regions, the DC superimposition characteristics and initial magnetic permeability each improved as demonstrated in Tables 2-3 and Fig. 5.
Applicants are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D'Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
Nevertheless, the evidence provided is not commensurate in scope with the claims. The provided evidence does not support unexpected results for all the possible combinations of material and structural properties of the large and small particles, and the limitless amount of spacer regions encompassed by the claims. The examiner contends that the data points in the instant specification example is not sufficiently close to the “at least three spacer regions in the predetermined range”, thus are not in commensurate in scope with the claims. The closest values outside the claimed is 0 (Table 1 and 4). These data points do not, by itself, establish that values of more than 3 fail to satisfy DC superimposition characteristics and initial magnetic permeability. Without additional data points, especially data points closer to more than 3 endpoint, the criticality of the range cannot be adequately evaluated. Therefore, there is no showing that the claimed range of more than 3 spacer regions is DC superimposition characteristics and initial magnetic permeability by the Applicant.
For the reasons set forth above, the rejections are being maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785