DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 30, 2025 has been entered.
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
Receipt is acknowledged of certified copies of JP 2021-193545 filed November 29, 2021 and JP 2021-008348 filed January 22, 2021 as required by 37 CFR 1.55.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed October 30, 2025 and Applicant’s After-Final Remarks filed September 25, 2025.
Claims Filing Date
October 30, 2025
Amended
4
Cancelled
1-3, 6, 7
Pending
4, 5, 8-16
Withdrawn
10-12
Under Examination
4, 5, 8, 9, 13-16
Withdrawn Claim Rejections - 35 USC § 112
The following 112(a) rejection is withdrawn due to claim amendment:
Claim 4 lines 10-14 “the smoothness being defined by a following formula: smoothness = (hmax-hmin)/20, based on a maximum value hmax and a minimum value hmin of a thickness of the soft magnetic alloy ribbon”.
The following 112(b) rejection is withdrawn due to claim amendment and argument:
Claim 4 lines 13-19 “based on a maximum value hmax and a minimum value hmin of a thickness of the soft magnetic alloy ribbon, wherein twenty soft magnetic ribbons cut to length of 120 mm are stacked and set on a flat sample stage, and a flat anvil having a diameter of 16 mm is placed on the stacked twenty soft magnetic alloy ribbons at a pressure of 50 kPa, and a height is measured at intervals of 10 mm in a width direction, and the smoothness is determined based on the maximum value hmax and the minimum value hmin of the height”.
The applicant persuasively argues amended claim 4 defines the smoothness as a value obtained from twenty stacked soft magnetic alloy ribbons, such that dividing by 20 in the formula gives a smoothness value for each of the twenty stacked ribbons (10/30/25 Remarks p. 5 para. 2).
Response to Remarks filed September 25, 2025 and October 30, 2025
Ohta in view of Ohta ‘115 and Ito
Applicant's arguments filed September 25, 2025 and October 30, 2025 with respect to Ohta in view of Ohta ‘115 and Ito have been fully considered but they are not persuasive.
The applicant argues the claimed smoothness is not disclosed by Ohta, Ohta ‘115, or Ito (9/25/25 Remarks p. 6 para. 2), where the 100 um or less ripple height of Ito is defined differently than the claimed smoothness, it differs by orders of magnitude, and is measured using calipers that have units only of 0.1 mm (100 um) (9/25/25 Remarks p. 6 paras. 3-5) as evidenced by the one decimal point significant figures in Ito Table 1 (10/30/25 Remarks p. 5 para. 6).
Arguments presented by applicant cannot take the place of evidence in the record. MPEP 716.01(c)(II). Evidence to substantiate how the expression with significant figures proves the units of the alleged calipers used for measurement has not been presented.
Further, applicant’s specification, such as [0061] and [0077], disclose that a soft magnetic alloy ribbon with suppressed wrinkles has a high lamination factor, high smoothness, and good density. Similarly, Ohta ‘115 in view of Ito discloses benefits of suppressed ripples with a maximum height of 100 um (0.1 mm) improves the space factor when stacking nanocrystalline ribbons (Ito p. 3 para. 5), where an improve space factor, such as 85% or higher, suppressed undulation, wrinkles, or warpage (Ohta ‘115 [0112], [0150]). “Expected beneficial results are evidence of obviousness of a claimed invention”. MPEP 716.02(c)(II).
The applicant argues the claimed smoothness is achieved by applying the heat treatment conditions of applicant’s [0047]-[0049] as evidenced by Table 6 Example Nos. 7, 8, and 9 in comparison to Comparative Example No. 54, which is not disclosed by Ito either alone or in combination with Ohta and/or Ohta ‘115 (9/25/25 Remarks p. 7 paras. 1-2).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the heat treatment conditions of applicant’s [0047]-[0049]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The pending claims are directed to a “soft magnetic alloy ribbon” product. According to MPEP 2113(I), 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 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. Evidence that the prior art does not render obvious the claimed smoothness has not been presented.
Therefore, for the above cited reasons, the rejection of Ohta in view of Ohta ‘115 and Ito is maintained.
Yoshizawa
Applicant's arguments filed September 25, 2025 and October 30, 2025 with respect to Yoshizawa have been fully considered but they are not persuasive.
The applicant argues Yoshizawa does not disclose a smoothness of 3 um or less (10/30/25 Remarks p. 6 para. 1).
Yoshizawa discloses a surface roughness, Ra, of about 0.35 to about 0.8 um ([0048], Fig. 4). The surface roughness Ra of Yoshizawa correlates with the space (lamination) factor P, with lower surface roughness, Ra, having higher space (lamination) factor P (Yoshizawa Fig. 4). The magnetic alloy of Yoshizawa also has “small characteristic variation made of a nanocrystalline alloy that is heat-treated” ([0049]). Therefore, the disclosed surface roughness, Ra, of Yoshizawa reads on and overlaps with the claimed smoothness such that a prima facie case of obviousness exists. MPEP 2144.05(I).
Further, “Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.” MPEP 716.02(c)(II). Both applicant’s invention and Yoshizawa are directed to a soft magnetic alloy ribbon with a high space (lamination) factor and small characteristic variation (smoothness) of a nanocrystalline alloy (applicant’s claim 1; Yoshizawa [0049]), which relates to suppressed variations in crystals and wrinkles.
The applicant argues Yoshizawa discloses Nb of 0.1 to less than 1 at% and Mo of 1 to 1.0 at% for a combined total of 1.1 to less than 11 at%, whereas amended claim 4 recited M as one or more of Nb, Mo, V, Zr, Hf and W in a range of 0.4 to 1.0 at% (10/30/25 Remarks).
The lower limit of the range of Nb+Mo of Yoshida of 1.1 is close to the claimed upper limit of 1.0 such that prima facie one skilled in the art would have expected the claimed soft magnetic alloy ribbon and that of the prior art (Yoshizawa) to have the same properties. In support, Yoshizawa discloses properties of grain size ([0020], [0024], [0048]), thickness ([0017]), lamination factor ([0048], Fig. 4), and smoothness ([0048], Fig.1 ). Therefore, absent evidence to the contrary, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close. MPEP 2144.05(I).
For the above cited reasons the rejection of Yoshizawa is maintained.
New Grounds
A new grounds of rejection is made over Ohta in view of Yoshizawa.
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 4, 5, 8, 9, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta (WO 2008/133301 machine translation) in view of Ohta ‘115 (US 2019/0074115) and Ito (WO 2017/150440 machine translation).
Regarding claim 4, Ohta discloses a soft magnetic alloy ([0001]) in the form of a thin strip formed by roll quenching (i.e. ribbon) ([0026], [0032], [0034], [0036], [0039]) with a composition that overlaps with that claimed ([0006]-[0013], [0015]-[0022]), a grain size of 60 nm or less after heat treatment in an amorphous phase ([0009], [0024]), and a high saturation magnetic flux density of 1.7 T or higher ([0007], [0015]). The broadest teaching of Ohta groups together the Si and B content as X. The inventive examples in Ohta include 1 or 2 at% Si with 13 or 14 at% B (Table 1). As the Si and B contents of inventive examples of Ohta fall within the claimed ranges, it appears that these values for Si and B both combined and individually overlap with the claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claimed Element
Claimed Subscript
Claim 4, at%
Ohta Element
Ohta subscript
Ohta, at%
Ohta Citation
A: Ni and/or Co
X
0 to 0.1
Ni and/or Co
-
Ni: less than 2
Co: less than 1
[0021]
FeA
A
82.4 to 86
Fe
100-x-y-z
More than 78
[0016]
Si
B
0.2 to 2.4
X: B and Si
z
12 to 16
[0018]
B
C
12.5 to 15.0
-
-
-
-
Cu
D
0.05 to 0.8
A: Cu
x
0.7 to 1.3
[0018]
M: Nb, Mo, V, Zr, Hf, W
E
0.4 to 1.0
M: Zr, Hf, V, Nb, Mo, W
y
0.4 to 2.5
[0018]
Ohta discloses examples with thicknesses of about 21 um ([0032], [0036], [0039]). This thickness is so close to the claimed 25 um or more that prima facie one skilled in the art would have expected the prior art soft magnetic alloy to have the same properties as the claimed soft magnetic alloy. For example, applicant’s claim 4 recites a property of saturation magnetic flux density of 1.74 T or more and Ohta discloses a saturation magnetic flux density of 1.7 T or higher (Ohta [0007], [0015]). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close. MPEP 2144.05(I).
In the event it is determined that the thickness teaching of about 21 um in Ohta does not read on claim 7, then the below rejection in view of Ito is applied.
Ohta is silent to the soft magnetic alloy ribbon having a thickness of 25 um or more.
Ito discloses a nanocrystalline alloy ribbon (pg. 1 para. 1, pg. 2 paras. 3, 5) with a thickness of 10 to 30 um (pg. 7 para. 2).
It would have been obvious to one of ordinary skill in the art for the soft magnetic alloy ribbon of Ohta to have a thickness of 10 to 30 um because it ensures mechanical strength of the amorphous alloy ribbon and a stable amorphous state while suppressing breakage during manufacturing and processing (Ito pg. 7 para. 2). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Ohta is silent to the lamination factor of the soft magnetic alloy ribbon.
Ohta ‘115 discloses a nanocrystalline alloy ribbon ([0013]) having a grain size of 1 nm to 30 nm ([0022]) with a space (lamination) factor of 85% or higher ([0014], [0057]-[0060], [0096]).
It would have been obvious to one of ordinary skill in the art for the soft magnetic alloy ribbon of Ohta to have a space (lamination) factor of 85% or higher so that in a multilayer block deterioration of magnetic properties caused by undulation, wrinkles, or warpage is suppressed (Ohta ‘115 [0112], [0150]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Ohta is silent to the smoothness of the soft magnetic alloy ribbon being 3 um or less.
Ito discloses a nanocrystalline alloy ribbon (p. 1 para. 1) with a composition that overlaps with that claimed (p. 3 para. 2, p. 5 paras. 8-11, p. 6 paras. 1-6) and a grain size of 1 to 40 nm in an amorphous matrix (p. 8 paras. 5, 7, 10) with suppressed ripples with an even more preferred maximum ripple height (hmax) of less than 0.1 mm (100 um) (p. 3 paras. 4-5).
It would have been obvious to one of ordinary skill in the art for the soft magnetic alloy ribbon of Ohta to have suppressed ripples with a maximum height (hmax) of 100 um (0.1 mm) to improve the space factor when stacking nanocrystalline ribbons (Ito p. 3 para. 5). Further, an improved space lamination, such as a factor of 85% or higher, advantageously results in a multilayer block deterioration of magnetic properties caused by undulation, wrinkles, or warpage is suppressed (Ohta ‘115 [0112], [0150]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. The court found that the overlapping endpoint of the prior and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range. MPEP 2144.05(I).
The limitation of “smoothness = (hmax-hmin)/20, based on a maximum value hmax and a minimum value hmin of a thickness of twenty soft magnetic alloy ribbons that are stacked, wherein the twenty soft magnetic alloy ribbons cut to a length of 120 mm are stacked and set on a flat sample stage, and a flat anvil having a diameter of 16 mm is placed on the stacked twenty soft magnetic alloy ribbons at a pressure of 50 kPa, and a height is measured at intervals of 10 mm in a width direction, and the smoothness is defined based on the maximum value hmax and the minimum value hmin of the height” has been considered and determined to recite the method of determining the claimed property of smoothness. Determination of patentability is based on the product itself. 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 (determined) by a different process. MPEP 2113(I). The claimed smoothness and the prior art’s ripple height are both related to the maximum height of a soft magnetic alloy ribbon, such that they read on each other. The claimed smoothness is based on the difference between the maximum thickness and minimum thickness of a stack of twenty soft magnetic alloy ribbons divided by twenty. Therefore, even though the claimed smoothness is measured for a stack of twenty ribbons, dividing it by 20 calculates the smoothness of one ribbon. Therefore, one ribbon with a ripple height (smoothness) of less than 0.1 mm (100) (Ito p. 3 paras. 4-5) reads on the claimed smoothness.
Ohta discloses the alloy has a lower magnetic core loss (Ohta [0030]).
Ohta ‘115 discloses a space (lamination) factor of more than 85% (0.85) ([0014], [0057]-[0060]) results in reduced core losses by the formation of a closed magnetic path in a multilayer block ([0062], [0086], [0088]). The prior art discloses an overlapping lamination factor (Ohta ‘115 [0014], [0057]-[0060]), which is a result effective variable for reduced core loss (Ohta ‘115 [0062], [0086], [0088]). The determination of the optimum or workable ranges of core loss is characterized as routine experimentation. MPEP 2144.05(II)(B).
Further, Ohta also discloses a process of manufacturing the alloy of melting, quenching, and solidifying into a ribbon on a Cu roll ([0024]-[0026]) then heat treating to increase the volume fraction of bcc-Fe crystal grains ([0027]-[0029]). The composition (Ohta [0001], [0006]-[0013], [0015], [0022]), structure (Ito p. 3 para. 5, p. 7 para. 2; Ohta ‘115 [0014], [0057]-[0060]), and process (Ohta [0024]-[0029]) of the prior art are substantially similar to the claimed composition and structure (claim 4) and the process used to make applicant’s claimed soft magnetic alloy (applicant’s specification [0029]-[0038]) that it appears the product of the prior art is substantially similar to the product claimed, including exhibiting a core loss of 25 W/kg or less at 1 kHz and 1 T.
Regarding claim 5, Ohta in view of Ito and Ohta ‘115 discloses a lamination factor of more than 85% (0.85) (Ohta ‘115 [0014], [0057]-[0060]) forms a closed magnetic path in a multilayer block (Ohta ‘115 [0062], [0086], [0088]) (improves density). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
Further, the composition (Ohta [0001], [0006]-[0013], [0015], [0022]), structure (Ito p. 3 para. 5, p. 7 para. 2; Ohta ‘115 [0014], [0057]-[0060]), and process (Ohta [0024]-[0029]) of the prior art are substantially similar to the claimed composition and structure (claim 4) and the process used to make applicant’s claimed soft magnetic alloy (applicant’s specification [0029]-[0038]). It appears the product of the prior art is substantially similar to the product claimed, including having a density of 7.45 g/cm3 or more.
In support, applicant’s specification at [0027] and [0052] recites that when the density is 7.45 g/cm3, a high volume fraction of nanocrystals is obtained and a high saturation magnetic flux density is obtained. A high volume fraction of nanocrystals is 50 area% or more (applicant’s specification [0026]) and a high saturation magnetic flux density is 1.74 T or more (applicant’s specification [0027]). Similarly, Ohta discloses bcc-Fe crystals with a diameter of 60 nm or less at 30 vol% or more (i.e. a high volume fraction of nanocrystals) (Ohta [0024]) and a saturation magnetic flux density of 1.7 T or more (i.e. a high saturation magnetic flux density) (Ohta [0007], [0015]). Therefore, the properties the claimed density achieves as recited in applicant’s specification are also taught by the prior art, Ohta.
Regarding claims 8 and 9, the composition (Ohta [0001], [0006]-[0013], [0015], [0022]), structure (Ito p. 3 para. 5, p. 7 para. 2; Ohta ‘115 [0014], [0057]-[0060]), and process (Ohta [0024]-[0029]) of the prior art are substantially similar to the claimed composition and structure (claim 4) and the process used to make applicant’s claimed soft magnetic alloy (applicant’s specification [0029]-[0038]). It appears the product of the prior art is substantially similar to the product claimed, including a ratio (L/W) of a value of a magnetic flux density L produced when a magnetic field of 80 A/m is applied in a casting direction of the soft magnetic alloy ribbon to a value of a magnetic flux density W produced when a magnetic field of 80 A/m is applied in a direction orthogonal to the casting direction of the soft magnetic alloy ribbon of 0.7 to 1.3 (claim 8) and a saturation magnetostriction of 20 ppm or less (claim 9).
Regarding claims 13 and 14, Ohta discloses the soft magnetic alloy for use in various reactors for large current applications, choke coils for active filters, smooth choke coils, various transformers, electromagnetic shielding materials, laser power sources, pulse power magnetic components for accelerators, motors, generators, and the like, noise countermeasure components, laser powder supplies, accelerators, antenna magnetic cores, etc. (i.e. a magnetic core constituted using the soft magnetic alloy ribbon, claim 13, and a component comprising the magnetic core and a winding, claim 14) ([0001], [0002], [0014], [0031]).
Regarding claims 15 and 16, the heat treatment process of claims 15 and 16 has been considered and determined to recite a product-by-process claim limitation.
“[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.” The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art. MPEP 2113(I).
The structure implied by the heat treatment process steps of claims 15 and 16 has been considered and, in light of applicant’s specification, such as [0061], has been determined to result in the lamination factor and smoothness of claim 4.
Ohta in view of Ohta ‘115 discloses lamination factor larger than 85% (Ohta ‘115 [0014], [0057]-[0060]). This teaching overlaps with the claimed lamination factor such that a prima facie case of obviousness exists. MPEP 2144.05(I). (See claim 4 rejection.)
Ohta in view of Ito also discloses a preferred maximum ripple height (hmax) of less than 0.1 mm (100 um) (Ito p. 3 paras. 4-5) that approaches zero. This teaching overlaps with the claimed smoothness (which also approaches zero) such that a prima facie case of obviousness exists. MPEP 2144.05(I). (See claim 4 rejection.)
Since the disclosure of the prior art (Ohta in view of Ohta ‘115 and Ito) renders obvious the claimed lamination factor and smoothness, then the structure implied by the heat treatment process of claims 15 and 16 is also rendered obvious.
Claims 4, 5, 8, 9, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta (WO 2008/133301 machine translation) in view of Yoshizawa (JP H11-080908 machine translation).
Regarding claim 4, Ohta discloses a soft magnetic alloy ([0001]) in the form of a thin strip formed by roll quenching (i.e. ribbon) ([0026], [0032], [0034], [0036], [0039]) with a composition that overlaps with that claimed ([0006]-[0013], [0015]-[0022]), a grain size of 60 nm or less after heat treatment in an amorphous phase ([0009], [0024]), and a high saturation magnetic flux density of 1.7 T or higher ([0007], [0015]). The broadest teaching of Ohta groups together the Si and B content as X. The inventive examples in Ohta include 1 or 2 at% Si with 13 or 14 at% B (Table 1). As the Si and B contents of inventive examples of Ohta fall within the claimed ranges, it appears that these values for Si and B both combined and individually overlap with the claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claimed Element
Claimed Subscript
Claim 4, at%
Ohta Element
Ohta subscript
Ohta, at%
Ohta Citation
A: Ni and/or Co
X
0 to 0.1
Ni and/or Co
-
Ni: less than 2
Co: less than 1
[0021]
FeA
A
82.4 to 86
Fe
100-x-y-z
More than 78
[0016]
Si
B
0.2 to 2.4
X: B and Si
z
12 to 16
[0018]
B
C
12.5 to 15.0
-
-
-
-
Cu
D
0.05 to 0.8
A: Cu
x
0.7 to 1.3
[0018]
M: Nb, Mo, V, Zr, Hf, W
E
0.4 to 1.0
M: Zr, Hf, V, Nb, Mo, W
y
0.4 to 2.5
[0018]
Ohta discloses examples with thicknesses of about 21 um ([0032], [0036], [0039]). This thickness is so close to the claimed 25 um or more that prima facie one skilled in the art would have expected the prior art soft magnetic alloy to have the same properties as the claimed soft magnetic alloy. For example, applicant’s claim 4 recites a property of saturation magnetic flux density of 1.74 T or more and Ohta discloses a saturation magnetic flux density of 1.7 T or higher (Ohta [0007], [0015]). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close. MPEP 2144.05(I).
In the event it is determined that the thickness teaching of about 21 um in Ohta does not read on claim 7, then the below rejection in view of Ito is applied.
Ohta is silent to the soft magnetic alloy ribbon having a thickness of 25 um or more.
Yoshizawa discloses a soft magnetic alloy ribbon ([0009], [0017], [0023]), wherein the soft magnetic alloy ribbon has a thickness of 25 µm or more (3 to 30 µm) ([0017]).
It would have been obvious to one of ordinary skill in the art for the soft magnetic alloy ribbon of Ohta to have a thickness of 3 to 30 um because to reduce defects on the ribbon surface and nozzle clogging (Yoshizawa [0017]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Ohta is silent to the lamination factor of the soft magnetic alloy ribbon and the smoothness of the soft magnetic alloy ribbon being 3 um or less.
Yoshizawa discloses a soft magnetic alloy ribbon ([0009], [0017], [0023]), wherein the soft magnetic alloy ribbon has a lamination factor of 86% or more (space factor P, about 75% to about 86%) ([0048], Fig. 4) and the soft magnetic alloy ribbon has a smoothness (surface roughness, Ra) of 3 µm or less (about 0.35 to about 0.8 um) ([0048], Fig. 4).
It would have been obvious to one of ordinary skill in the art for the soft magnetic alloy ribbon of Ohta to have a space (lamination) factor P of about 75% to about 86% and a surface roughness, Ra, of about 0.35 to about 0.8 um for excellent manufacturability when mass-produced (Yoshizawa [0038]), where improved surface roughness contributes to excellent space factor (Yoshizawa [0044]-[0048]), such that the magnetic alloy has stable magnetic properties and shape and is a high-performance magnetic core with little variation in properties (Yoshizawa [0001], [0021], [0049]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
The limitation of “smoothness = (hmax-hmin)/20, based on a maximum value hmax and a minimum value hmin of a thickness of twenty soft magnet alloy ribbons that are stacked, wherein the twenty soft magnetic alloy ribbons cut to a length of 120 mm are stacked and set on a flat sample stage, and a flat anvil having a diameter of 16 mm is placed on the stacked twenty soft magnetic alloy ribbons at a pressure of 50 kPa, and a height is measured at intervals of 10 mm in a width direction, and the smoothness is defined based on the maximum value hmax and the minimum value hmin of the height” has been considered and determined to recite the method of determining the claimed property of smoothness. Determination of patentability is based on the product itself. 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 (determined) by a different process. MPEP 2113(I). The claimed smoothness and the prior art’s surface roughness, Ra, are both related to the maximum height of a soft magnetic alloy ribbon, such that they read on each other. The claimed smoothness is based on the difference between the maximum thickness and minimum thickness of a stack of twenty soft magnetic alloy ribbons divided by twenty. Therefore, even though the claimed smoothness is measured for a stack of twenty ribbons, dividing it by 20 calculates the smoothness of one ribbon. Therefore, one ribbon with a surface roughness, Ra (smoothness), of about 0.35 to about 0.80 um (Yoshizawa [0048], Fig. 4) reads on the claimed smoothness.
Ohta discloses the alloy has a lower magnetic core loss (Ohta [0030]). Ohta also discloses a process of manufacturing the alloy of melting, quenching, and solidifying into a ribbon on a Cu roll (Ohta [0024]-[0026]) then heat treating to increase the volume fraction of bcc-Fe crystal grains (Ohta [0027]-[0029]). The composition (Ohta [0001], [0006]-[0013], [0015], [0022]), structure (Yoshizawa [0048], Fig. 3), and process (Ohta [0024]-[0029]) of the prior art are substantially similar to the claimed composition and structure (claim 4) and the process used to make applicant’s claimed soft magnetic alloy (applicant’s specification [0029]-[0038]) that it appears the product of the prior art is substantially similar to the product claimed, including exhibiting a core loss of 25 W/kg or less at 1 kHz and 1 T.
Regarding claim 5, Ohta in view of Yoshizawa discloses a lamination factor of 86% or more (space factor P, about 75% to about 86%) ([0048], Fig. 4) forms a high-performance magnetic cores with high space factor (density) and small characteristic variation (surface roughness) made from nanocrystalline alloys that have been heat-treated (Yoshizawa [0001], [0021], [0049]). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
Further, the composition (Ohta [0001], [0006]-[0013], [0015], [0022]), structure (Yoshizawa [0048], Fig. 4), and process (Ohta [0024]-[0029]) of the prior art are substantially similar to the claimed composition and structure (claim 4) and the process used to make applicant’s claimed soft magnetic alloy (applicant’s specification [0029]-[0038]). It appears the product of the prior art is substantially similar to the product claimed, including having a density of 7.45 g/cm3 or more.
In support, applicant’s specification at [0027] and [0052] recites that when the density is 7.45 g/cm3, a high volume fraction of nanocrystals is obtained and a high saturation magnetic flux density is obtained. A high volume fraction of nanocrystals is 50 area% or more (applicant’s specification [0026]) and a high saturation magnetic flux density is 1.74 T or more (applicant’s specification [0027]). Similarly, Ohta discloses bcc-Fe crystals with a diameter of 60 nm or less at 30 vol% or more (i.e. a high volume fraction of nanocrystals) (Ohta [0024]) and a saturation magnetic flux density of 1.7 T or more (i.e. a high saturation magnetic flux density) (Ohta [0007], [0015]). Therefore, the properties the claimed density achieves as recited in applicant’s specification are also taught by the prior art, Ohta.
Regarding claims 8 and 9, the composition (Ohta [0001], [0006]-[0013], [0015], [0022]), structure (Yoshizawa [0048], Fig. 4), and process (Ohta [0024]-[0029]) of the prior art are substantially similar to the claimed composition and structure (claim 4) and the process used to make applicant’s claimed soft magnetic alloy (applicant’s specification [0029]-[0038]). It appears the product of the prior art is substantially similar to the product claimed, including a ratio (L/W) of a value of a magnetic flux density L produced when a magnetic field of 80 A/m is applied in a casting direction of the soft magnetic alloy ribbon to a value of a magnetic flux density W produced when a magnetic field of 80 A/m is applied in a direction orthogonal to the casting direction of the soft magnetic alloy ribbon of 0.7 to 1.3 (claim 8) and a saturation magnetostriction of 20 ppm or less (claim 9).
Regarding claims 13 and 14, Ohta discloses the soft magnetic alloy for use in various reactors for large current applications, choke coils for active filters, smooth choke coils, various transformers, electromagnetic shielding materials, laser power sources, pulse power magnetic components for accelerators, motors, generators, and the like, noise countermeasure components, laser powder supplies, accelerators, antenna magnetic cores, etc. (i.e. a magnetic core constituted using the soft magnetic alloy ribbon, claim 13, and a component comprising the magnetic core and a winding, claim 14) ([0001], [0002], [0014], [0031]).
Regarding claims 15 and 16, the heat treatment process of claims 15 and 16 has been considered and determined to recite a product-by-process claim limitation.
“[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.” The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art. MPEP 2113(I).
The structure implied by the heat treatment process steps of claims 15 and 16 has been considered and, in light of applicant’s specification, such as [0061], has been determined to result in the lamination factor and smoothness of claim 4.
Ohta in view of Yoshizawa discloses a lamination factor of 86% or more (space factor P, about 75% to about 86%) and the soft magnetic alloy ribbon has a smoothness (surface roughness, Ra) of 3 µm or less (about 0.35 to about 0.8 um) (Yoshizawa [0048], Fig. 4). These teachings overlap with the claimed lamination factor and smoothness such that a prima facie case of obviousness exists. MPEP 2144.05(I). (See claim 4 rejection.)
Since the disclosure of the prior art (Ohta in view of Yoshizawa) renders obvious the claimed lamination factor and smoothness, then the structure implied by the heat treatment process of claims 15 and 16 is also rendered obvious.
Claims 4, 5, 8, 9, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa (JP H11-080908 machine translation).
Regarding claim 4, Yoshizawa discloses a soft magnetic alloy ribbon ([0009], [0017], [0023]) in which an alloy composition is represented by a composition formula (Fe1-xAx)aSibBcCudMe, wherein A is at least one of Ni and Co, M is one or more selected from the group consisting of Nb, Mo, V, Zr, Hf, and W, and 82.4≤a≤86, 0.2≤b≤2.4, 12.5≤c≤15.0, 0.05≤d≤0.8, 0.4≤e≤1.0, and 0≤x≤0.1 in at% (Fe100-x-y-z-cAxNbyMozX’c, at%, A is Cu and X’ is Si and B, 0.3≤x≤3, 0.1≤y<1, 1≤z≤10, 4≤c≤30, with examples including 0 to 20 at% Si and 6 to 18 at% B) ([0008]-[0016], Table 2),
wherein the soft magnetic alloy ribbon has a structure in which crystal grains having a grain size of 60 nm or less are present in an amorphous phase (50 nm or less) ([0020], [0024], [0048]), and
wherein the soft magnetic alloy ribbon has a lamination factor of 86% or more (space factor P, about 75% to about 86%) ([0048], Fig. 4),
wherein the soft magnetic alloy ribbon has a thickness of 25 µm or more (3 to 30 µm) ([0017]),
wherein the soft magnetic alloy ribbon has a smoothness (surface roughness, Ra) of 3 µm or less (about 0.35 to about 0.8 um) ([0048], Fig. 4).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 4 recites M is Nb and Mo and is 0.4 to 1.0 at%. Yoshizawa discloses NbyMoz, where y is at least 0.1 and less than 1 and z is 1 to 10, such that Nb+Mo is 1.1 to less than 11. 1.1 is so close to the claimed 1.0 such that prima facie one skilled in the art would have expected them to have the same properties. This is supported by Yoshizawa disclosing the claimed grain size ([0020], [0024], [0048]), thickness ([0017]), lamination factor ([0048], Fig. 4), and smoothness ([0048], Fig. 4). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. MPEP 2144.05(I).
The limitations of a saturation magnetic flux density of 1.74 T or more and a core loss of 25 W/kg or less at 1 kHz and 1 T have been considered and determined to recite properties of the claimed soft magnetic alloy ribbon. Yoshizawa discloses a soft magnetic alloy ribbon ([0009], [0017], [0023]) with a high saturation magnetic flux density ([0004]) an overlapping composition ([0008]-[0016], Table 2), and an overlapping structure (crystal grain size [0020], [0024], [0048]; lamination factor [0048], Fig. 4; thickness [0017]; smoothness [0048], Fig. 4) manufactured by a similar process (Yoshizawa [0024]-[0031]; applicant’s specification [0029]-[0038]), such that the claimed properties naturally flow from the disclosure of the prior art, including a saturation magnetic flux density of 1.74 T or more and a core loss of 25 W/kg or less at 1 kHz and 1 T.
In the event it is determined that the surface roughness, Ra, of Yoshizawa does not read on the claimed smoothness, then the follow rationale is applied.
Yoshizawa discloses high-performance magnetic cores with high space factor and small characteristic variation (surface roughness) made from nanocrystalline alloys that have been heat-treated ([0001], [0021], [0049]). Generally, differences in concentration or temperature (or smoothness) will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature (or smoothness) is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
The limitation of “smoothness = (hmax-hmin)/20, based on a maximum value hmax and a minimum value hmin of a thickness of twenty soft magnetic alloy ribbons that are stacked, wherein the twenty soft magnetic alloy ribbons cut to a length of 120 mm are stacked and set on a flat sample stage, and a flat anvil having a diameter of 16 mm is placed on the stacked twenty soft magnetic alloy ribbons at a pressure of 50 kPa, and a height is measured at intervals of 10 mm in a width direction, and the smoothness is defined based on the maximum value hmax and the minimum value hmin of the height” has been considered and determined to recite the method of determining the claimed property of smoothness. Determination of patentability is based on the product itself. 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 (determined) by a different process. MPEP 2113(I). The claimed smoothness and the prior art’s surface roughness, Ra, of one ribbon (Yoshizawa [0048], Fig. 4) are both related to the maximum height of a soft magnetic alloy ribbon, such that they read on each other. Alternatively, the prior art disclosure of small characteristic variation of one ribbon (Yoshizawa [0001], [0021], [0049]) renders the claimed smoothness obvious. The claimed smoothness is based on the difference between the maximum thickness and minimum thickness of a stack of twenty soft magnetic alloy ribbons divided by twenty. Therefore, even though the claimed smoothness is measured for a stack of twenty ribbons, dividing it by 20 calculates the smoothness of one ribbon.
Regarding claim 5, Yoshizawa discloses a lamination factor of 86% or more (space factor P, about 75% to about 86%) ([0048], Fig. 4) forms a high-performance magnetic cores with high space factor (density) and small characteristic variation (surface roughness) made from nanocrystalline alloys that have been heat-treated ([0001], [0021], [0049]). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
Further, the composition ([0008]-[0016], Table 2), structure (crystal grain size [0020], [0024], [0048]; lamination factor [0048], Fig. 4; thickness [0017]; smoothness [0048], Fig. 4), and manufacturing process (Yoshizawa [0024]-[0031]) of the prior art are substantially similar to the claimed composition and structure (claim 4) and manufacturing process (applicant’s specification [0029]-[0038]) such that it appears the product of the prior art is substantially similar to the product claimed, including having a density of 7.45 g/cm3 or more.
Regarding claims 8 and 9, the composition ([0008]-[0016], Table 2), structure (crystal grain size [0020], [0024], [0048]; lamination factor [0048], Fig. 4; thickness [0017]; smoothness [0048], Fig. 4), and manufacturing process (Yoshizawa [0024]-[0031]) of the prior art are substantially similar to the claimed composition and structure (claim 4) and manufacturing process (applicant’s specification [0029]-[0038]) such that it appears the product of the prior art is substantially similar to the product claimed, including a ratio (L/W) of a value of a magnetic flux density L produced when a magnetic field of 80 A/m is applied in a casting direction of the soft magnetic alloy ribbon to a value of a magnetic flux density W produced when a magnetic field of 80 A/m is applied in a direction orthogonal to the casting direction of the soft magnetic alloy ribbon of 0.7 to 1.3 (claim 8) and a saturation magnetostriction of 20 ppm or less (claim 9).
Regarding claim 13, Yoshizawa discloses a magnetic core constituted using the soft magnetic alloy ribbon according to claim 4 ([0001], [0019]-[0026], [0034]).
Regarding claim 14, Yoshizawa discloses a component comprising the magnetic core according to claim 13 and a winding ([0026], [0040], [0043]).
Regarding claim 15, Yoshizawa discloses the soft magnetic alloy ribbon of claim 4 formed by a process comprising heat treatment with heating the alloy composition from room temperature to temperature T1 at a rate of temperature rise of 50°C/sec. or more, heated from temperature T1 to temperature T2 at a rate that is equal to or less than 400°C/sec (average heating rate of 0.1°C/min to 200°C/min and heat treatment in multiple stages) ([0028]-[0030]).
Further, the heat treatment process of claim 15, including heating from temperature T1 to temperature T2 at a rate of temperature rise that is less than the rate of temperature rise taken until temperature T1 and is equal to or less than 400°C/sec, has been considered and determined to recite a product-by-process claim limitation.
“[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.” The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art. MPEP 2113(I).
The structure implied by the heat treatment process steps of claim 15 has been considered and, in light of applicant’s specification, such as [0061], has been determined to result in the lamination factor and smoothness of claim 4.
Yoshizawa discloses a lamination factor of 86% or more (space factor P, about 75% to about 86%) ([0048], Fig. 4) and a smoothness (surface roughness, Ra) of 3 µm or less (about 0.35 to about 0.8 um) ([0048], Fig. 4). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
In the event it is determined that the surface roughness, Ra, of Yoshizawa does not read on the claimed smoothness, then the follow rationale is applied.
Yoshizawa discloses high-performance magnetic cores with high space factor and small characteristic variation (surface roughness) made from nanocrystalline alloys that have been heat-treated ([0001], [0021], [0049]). Generally, differences in concentration or temperature (or smoothness) will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature (or smoothness) is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
Since the disclosure of the prior art renders obvious the claimed lamination factor and smoothness, then the structure implied by the heat treatment process of claim 15 is also rendered obvious.
Regarding claim 16, Yoshizawa discloses the soft magnetic alloy ribbon of claim 15 wherein the alloy composition is cooled after reaching temperature T2 (range of 450°C to 650°C) or is held at a temperature between a temperature of T2-50°C and temperature T2 for 0.5 to 60 seconds (preferably 4 hours or less), and then cooled ([0028]-[0030].
Related Art
Baolong (CN 102719746 machine translation)
Baolong discloses a soft magnetic alloy material ([0002], [0020]) for use as a magnetic core (claim 13) ([0008]) in miniaturized electronic equipment (i.e. a component comprising the magnetic core and a winding) ([0004]) in the form of a strip (i.e. ribbon) ([0062], [0065]) with a composition that overlaps with that claimed, where the lower limit for the Fe, Si, B, P, and Cu is calculated by multiplying the taught at% by 0.97 (i.e. the lower limit for f) ([0022], [0024], [0046]-[0053]), a grain size of 5 to 25 nm ([0028], [0062]) in an amorphous matrix ([0027]), a high saturation magnetic induction Bs above 1.72 T and below 1.90 T ([0030], [0054]), and a loss of 0.08 to 0.22 W/kg at 1.0 T and 50 Hz ([0031], [0056]).
Claimed Element
Claimed Subscript
Claim 4, at%
Baolong Element
Baolong subscript
Baolong, at%
Baolong Citation
A: Ni and/or Co
X
0 to 0.1
-
-
-
-
FeA
a
82.4 to 86
Fe
a
73 to 87
[0046]
Si
b
0.2 to 2.4
Si
b
0.97 to 3
[0050]
B
c
12.5 to 15.0
B
c
4.85 to 14
[0051]
Cu
d
0.05 to 0.8
Cu
e
0.485 to 1.5
[0053]
M: Nb, Mo, V, Zr, Hf, W
e
0.4 to 1.0
M: V, Mo, Nb
g
0.5 to 1.5
[0048]
-
-
-
P
d
More than 0 to 2
[0046]
Baolong also discloses a process of manufacturing the alloy of melting, quenching, and solidifying into a ribbon on a Cu roll ([0025]-[0027], [0059]-[0061]) then heat treating to crystallize ([0028], [0062]).
Yuan (Yuan et al. Si microalloying optimizes the thermal stability, crystallization behaviors and magnetic properties of Fe-rich Fe-B-C-Hf alloys. Journal of Magnetism and Magnetic Materials 500 (2020) 166339.)
Yuan discloses an Fe86B13-xSixCu0.4Hf0.6 alloy ribbon where x = 0.25 or 0.5 (2. Experiment) that falls within the claimed range that is a soft magnetic material with an alpha-Fe amorphous dual phase structure (Abstract, 4. Conclusion), which are known to have a grain size of about 30 nm (1. Introduction). Yuan also discloses a process of manufacturing the alloy of melting, casting a ribbon, and annealing (Yuan 2. Experimental).
Claimed Element
Claimed Subscript
Claim 4, at%
Yuan 2. Experiment
Yuan 2. Experiment
A: Ni and/or Co
X
0 to 0.1
0
0
FeA
a
82.4 to 86
86
86
Si
b
0.2 to 2.4
0.25
0.5
B
c
12.5 to 15.0
12.75
12.5
Cu
d
0.05 to 0.8
0.4
0.4
M: Nb, Mo, V, Zr, Hf, W
e
0.4 to 1.0
Hf: 0.6
Hf: 0.6
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/STEPHANI HILL/Examiner, Art Unit 1735