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 § 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, 6, 9-10, 12-14, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (US 2021/0098163).
Regarding claims 1-2, 6, 10, and 23, Ishida discloses a powder magnetic core in which a magnetic powder is bonded via a binder layer, wherein the powder magnetic core contains 70-99 vol.% [0039], the magnetic powder is a soft magnetic powder that containing an iron element, the magnetic powder is a metallic glass or a nanocrystallized powder (amorphous) [0088], the binder layer comprises a low melting glass [0041-0042] and a resin material [0008], and a volume percentage of the low melting glass with respect to a volume of the magnetic powder is 0.1-5.0% ([0043], [0100], Table 1, claim 8: 1.0-4.0 vol.%). In light of the vol.% of the magnetic powder and the low melting glass of the binder layer, the remainder of the content of the resin material would overlaps the claimed vol.%, which thereby also overlaps the total amount of the binder layer per claim 6. 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.
Although Ishida discloses the same resin material as claimed, per claim 10 ([0098]: phenol, epoxy, and polyimide), Ishida fails to explicitly disclose that the resin is thermosetting. However, it would have been well within the purview of one of ordinary skill in the art before the effective filing date of the claimed invention to choose to use a thermosetting resin. One of ordinary skill in the art would be well aware that resin is either thermoset or thermoplastic. Thus, choice of a thermosetting resin given only two alternatives would be well within the level of ordinary skill in the art, especially since Ishida discloses that the resin material is not particularly limited [0098].
Although Ishida fails to explicitly disclose the percentage of parts of the binder layer having thicknesses of 20 nm or smaller in the binder layer that is present between particles of the magnetic powder is equal to or smaller than 6% as presently claimed, or lower than 3.3% per claim 2, Ishida discloses that the thickness of the binder layer is 5-500 [0037] or 10-250 nm [0092], and all values within the range appears to be functionally equivalent. It would have been obvious to choose any thickness from that ranged such that one area of the thickness is 0.01% being 20 nm based on the desired magnetic properties [0037] and that choosing thickness values would have rendered the claimed range obvious in the absence of showing criticality.
Furthermore, as set forth above, Ishida discloses the powder magnetic core contains 70-99 vol.% [0039], wherein the filling rate of the magnetic powder is increased [0031]. Given the filling rate of the magnetic powder and the vol.% of the magnetic particles being within the claimed range, this directly affect the thicknesses of the binder layer.
A person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the thickness of the binder layer since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivate to optimize the thickness of the binder such that only a very low percentage (0.000001%) of the thickness is 20 nm or less in order to obtain satisfactory magnetic properties [0039].
Alternatively, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, the difference between 0% of having thicknesses of 20 nm and 0.001% of having thicknesses of 20 nm does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed base layer thickness range. Thereby, choosing thickness values such as 20.01 nm or more would have rendered the claimed range obvious in the absence of showing criticality.
Furthermore, Ishida is silent on the iron loss of the powder magnetic core. It is the examiner's position that the reference to Ishida teaches the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed iron loss of the powder magnetic core.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Alternatively, the examiner deems that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum value of a results effective variable such low iron loss through routine experimentation, especially given the knowledge in the art that low iron loss of a magnetic core can impact the overall magnetic properties of the core. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the low iron loss of Ishida to be smaller than 1500 kW/m3, since low iron loss is a known results effective variable in the magnetic core art.
Regarding claim 3, Ishida discloses a particle size of 10 µm or more [0031]. 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.
Regarding claim 9, Ishida discloses the material as claimed [0041-0042].
Regarding claim 12-13, Ishida discloses a powder magnetic core as presently claimed, wherein the (l) x (w) x (t) is (1-12 mm) x (0.5-12 mm) x (0.5-6.0 mm) [0084]. 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.
Regarding the limitation “molding dies… heat to be transferred during hot forming…”, 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 14, Ishida discloses an inductor with a coil as claimed (Fig. 2).
Response to Arguments
Applicant's arguments filed 3/3/26 have been fully considered but they are not persuasive.
Applicant argues that the process of making the claimed powder magnetic core is different from that of Ishida, thereby Ishida fails to disclose the low iron loss of the powder magnetic core is smaller than 1500 kW/m3. This has been found unpersuasive. The present claims are directed to a product, a powder magnetic core, not manufacturing a powder magnetic core.
Applicant’s statement that the present invention that the powder magnetic core is manufactured by “hot forming… from 400-500°C”, even though product-by-process claims, which method of making is not claimed, 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).
Furthermore, applicant points to paragraph [0042] of Ishida that states that polyamideimide resin is preferably used as the insulating film of the coil conductor. Thereby, applicant concluded that it teaches away from being hot formed at 500°C as it would “decomposed and lost”. This has been found unpersuasive. It appears that paragraph [0065], not [0042], discloses the polyamideimide resin as one of the examples for an insulating material. However, Ishida explicitly disclose that the insulating substance is not particularly limited, thereby, the examiner contends that Ishida does not conclusively state that it must be of polyamideimide resin.
Nevertheless, the claim does not require a coil conductor nor a specific coating onto a coil conductor. Moreover, it is not even clear to the examiner how the property of iron loss is directly from an insulating coating of a coil conductor. Rather, it appears that the property is from the magnetic powder comprising Fe (PGPUB of instant spec: [0047-0048]).
Although Ishida is silent on the iron loss of the powder magnetic core. It is the examiner's position that the reference to Ishida teaches the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed iron loss of the powder magnetic core.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Alternatively, the examiner deems that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum value of a results effective variable such low iron loss through routine experimentation, especially given the knowledge in the art that low iron loss of a magnetic core can impact the overall magnetic properties of the core. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the low iron loss of Ishida to be smaller than 1500 kW/m3, since low iron loss is a known results effective variable in the magnetic core art.
Applicant argues the definition of the thickness of the insulating film is the distance between powders and the thickness of the insulating film made by adding the low-melting point glass and the resin. Here, applicant’s arguments referring to an “insulating film” is directed to the claimed “binder layer”. Applicant argues that Ishida teaches away from the definition of the insulating film because Ishida’s insulating film is directed solely to a glass and not additionally made of resin. This has not been found persuasive.
Indeed, Ishida discloses a glass insulating film, however, the examiner is not taking the position that the insulation of 14a1 (or 15) refers solely to the claimed binder layer. Rather, the examiner is taking the position that the binder layer of Ishida would include the insulation layer 14a1 (and/or insulator grain 15, which is the same makeup of insulation layer 14a1), and resin material ([0008], [0098]). Therefore, at a minimum, the thickness is at least 10 nm (5 nm x 2 from two sides of the magnetic particle). In addition, the examiner also stated that, Ishida discloses the powder magnetic core contains 70-99 vol.% [0039], wherein the filling rate of the magnetic powder is increased [0031]. Given the filling rate of the magnetic powder and the vol.% of the magnetic particles being within the claimed range, this directly affect the overall thicknesses of the binder layer which includes resin. As set forth above, one of ordinary skill in the art would obvious to optimize a percentage of parts of the binder layer having thickness of 20 nm or smaller in the binder layer that is present between the particles of the magnetic powder is between 0-6% in order to obtain satisfactory magnetic properties [0039].
Alternatively, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, the difference between 0% of having thicknesses of 20 nm and 0.001% of having thicknesses of 20 nm does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed base layer thickness range. Thereby, choosing thickness values such as 20.01 nm or more would have rendered the claimed range obvious in the absence of showing criticality.
Applicant argues that there is criticality associated with “a percentage of parts of the binder layer having thicknesses of 20 nm or smaller in the binder layer that is present between particles of the magnetic powder is larger than 0% but equal to or smaller than 6%”. Applicant points to Comparative Examples 2-1 and 6-3. The examiner respectfully disagrees.
This is because the data are not commensurate in scope with the instant claims. The instant claims broadly encompass any Fe magnetic powder and binder layer (glass and resin), however, the data only uses specific materials. It is not clear that every binder and magnetic powder as claimed would behave the same as the ones employed by Applicant in the instant Examples. In addition, the evidence does not support that the entire binder range is unexpected. While the comparative example uses 0%, the claims encompass the value of 0.0001. The lowest value used in the examples is 0.15%. This data point does not persuasively establish the whole range of more than 0 to 6% is critical. This is similar reasoning for the criticality of the end point 6%.
Further, comparative examples 6-1 to 6-3 are outside the claimed of the binder percentage range, however, it appears to disclose satisfactory permeability. Clarification is needed how the tables demonstrate the criticality of the claimed range. It appears that other factors would possibly contribute besides the specific materials used as highlighted in the Tables. Therefore, the examiner maintains that the issues with the data as highlighted above illustrate that such unexpected results have not been persuasively demonstrated.
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
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