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 .
Claim Objections
Claims 8 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 8 is directed towards the ferrite composition according to claim 1, wherein in observation of an observation region of 6 µm in length and 6 µm in width at a magnification of 20000, the proportion of the area occupied by the crystal grains with higher Sn concentration on the surface side than in the central portion is 30% or more.
Claim 9 is directed towards the ferrite composition according to claim 1, wherein in observation of an observation region of 6 µm in length and 6 µm in width at a magnification of 20000, the proportion of the area occupied by the crystal grains with higher Si concentration on the surface side than in the central portion is 30% or more.
The closest prior art is Wada et al. (US20150097137, hereinafter referred to as Wada) in view of Susumu et al. (JP200769503A with reference to machine translation, hereinafter referred to as Susumu). Wada in view of Susumu fails to disclose or make obvious in observation of an observation region of 6 µm in length and 6 µm in width at a magnification of 20000, the proportion of the area occupied by the crystal grains with higher Sn concentration on the surface side than in the central portion is 30% or more per instant claim 8. Wada in view of Susumu fails to disclose or make obvious in observation of an observation region of 6 µm in length and 6 µm in width at a magnification of 20000, the proportion of the area occupied by the crystal grains with higher Si concentration on the surface side than in the central portion is 30% or more per instant claim 9.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3-4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites “wherein crystal grains with higher Sn concentration on a surface side than in a central portion are included”, however, claim 3 depends upon claim 1 which recites “crystal grains with higher Sn concentration on a surface side than in a central portion are included”, and therefore claim 3 does not further limit claim 1.
Claim 4 recites “wherein crystal grains with higher Si concentration on a surface side than in a central portion are included”, however, claim 4 depends upon claim 1 which recites “the crystal grains with higher Si concentration on a surface side than in a central portion are included”, and therefore claim 4 does not further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wada et al. (US20150097137, hereinafter referred to as Wada) in view of Susumu et al. (JP2007269503A with reference to machine translation, hereinafter referred to as Susumu).
Regarding claim 1, Wada discloses a ferrite composition (see Wada at the Abstract, disclosing a ferrite composition) comprising a main component and a subcomponent (see Wada at the Abstract, disclosing a ferrite composition includes a main component and a subcomponent), wherein the main component includes 32.0 to 46.4 mol% of iron oxide in terms of Fe2O3 (see Wada at Table 1, Sample No. 29, disclosing an example of a ferrite composition comprising 45.0 mol% Fe2O3 in the main component), 4.4 to 14.0 mol% of copper oxide in terms of CuO (see Wada at Table 1, Sample No. 29, disclosing an example of a ferrite composition comprising 9.0 mol% CuO), and 8.4 to 56.9 mol% of zinc oxide in terms of ZnO (see Wada at Table 1, Sample No. 29, disclosing an example of a ferrite composition comprising 24.0 mol% ZnO); and the subcomponent includes 0.53 to 11.00 parts by weight of a silicon compound in terms of SiO2 (see Wada at Table 1, Sample No. 29, disclosing an example of a ferrite composition comprising 1.6 wt.% SiO2), and 0.5 to 7.0 parts by weight of a bismuth compound in terms of Bi2O3, with respect to 100 parts by weight of the main component (see Wada at Table 1, Sample No. 29, disclosing an example of a ferrite composition comprising 1.5 wt.% Bi2O3).
Wada does not disclose 2.1 to 9.4 parts by weight of a tin compound in terms of SnO2.
Susumu is directed towards a Ni-Cu-Zn based ferrite material capable of exhibiting the effect of SnO2 addition at a maximum (see Susumu at the Abstract). Susumu teaches the addition of SnO2 to a Ni—Cu—Zn-based ferrite material is effective in improving the anti-stress characteristics and further improving the temperature characteristics (see Susumu from the fifth to last paragraph of page 2 from the machine translation). Susumu discloses the sintered body contains 0.2 to 4 wt% of SnO2, which overlaps with the claimed range (See Susumu at the second to last paragraph of page 2 from the machine translation). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
Therefore, it would have been obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the invention of Wada to include SnO2 within the range disclosed by Susumu with a reasonable expectation of successfully providing a Ni-Cu-Zn based ferrite with improved anti-stress and temperature characteristics as taught by Susumu.
While Wada in view of Susumu does not explicitly disclose crystal grains with higher Sn concentration on a surface side than in a central portion are included, this is a function of the composition as detailed by the instant specification at [0043], as well as by calcination and mixing procedures as detailed by the instant specification at [0064] and [0067]. The instant specification at [0043] discloses with 0.8 parts by weight or more of the tin compound in terms of SnO2 included with respect to 100 parts by weight of the main component, crystal grains having higher Sn concentration on a surface side than in a central portion in a main phase are easily generated. This is substantially identical to Wada in view of Susumu, which discloses 0.2 to 4.0 wt % of SnO2 may be included (See Susumu at the second to last paragraph of page 2 from the machine translation). The instant specification at [0064] discloses when tin oxide and silicon oxide are added at this stage and mixed, adjusting a heating temperature in calcining makes it easier to obtain the ferrite composition having the crystal grains with higher Sn concentration and higher Si concentration on the grain surface side than in the central portion. The instant specification at [0066] discloses the calcination temperature is preferably 850°C, which is substantially identical to Wada in view of Susumu disclosing the ferrite composition can be sintered at about 900°C (see Wada at [0016]). The instant specification at [0067] discloses adding tin oxide and silicon oxide to the calcined material and mixing together makes it easier to obtain the ferrite composition having the crystal grains with higher Sn concentration and higher Si concentration on the grain surface side than in the central portion, which is substantially identical to Wada in view of Susumu as detailed in the rejection of claim 1 above whereby it is obvious to include 0.2 to 4.0 wt % of SnO2 (See Susumu at the second to last paragraph of page 2 from the machine translation).
Therefore, because the composition and calcination procedures of Wada in view of Susumu are substantially identical to the composition and calcination procedures of the instant application, Wada in view of Susumu would inherently possess the claimed property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
While Wada in view of Susumu does not explicitly disclose crystal grains with higher Si concentration on a surface side than in a central portion are included, this is a function of the composition as well as by calcination and mixing procedures as detailed by the rejection of claim 3 above. Furthermore, the instant specification at [0059] teaches the crystal grains with higher Sn concentration on the surface side than in the central portion tend to have higher Si concentration on the surface side. That means, in the present embodiment, the above-mentioned crystal grains α tend to have higher Si concentration on the surface side than in the central portion. (see the instant specification at [0059]).
Therefore, because Wada in view of Susumu makes obvious the claimed Sn concentration of claim 3 above, Wada in view of Susumu would inherently possess the claimed Si concentration of instant claim 4. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 2, Wada discloses the subcomponent includes 0.01 to 15.0 parts by weight of cobalt oxide in terms of Co3O4 with respect to 100 parts by weight of the main component (see Wada at Table 1, Sample No. 29, disclosing an example of a ferrite composition comprising 3.00 wt.% Co3O4).
Regarding claim 3, while Wada in view of Susumu does not explicitly disclose crystal grains with higher Sn concentration on a surface side than in a central portion are included, this is a function of the composition as detailed by the instant specification at [0043], as well as by calcination and mixing procedures as detailed by the instant specification at [0064] and [0067]. The instant specification at [0043] discloses with 0.8 parts by weight or more of the tin compound in terms of SnO2 included with respect to 100 parts by weight of the main component, crystal grains having higher Sn concentration on a surface side than in a central portion in a main phase are easily generated. This is substantially identical to Wada in view of Susumu, which discloses 0.2 to 4.0 wt % of SnO2 may be included (See Susumu at the second to last paragraph of page 2 from the machine translation). The instant specification at [0064] discloses when tin oxide and silicon oxide are added at this stage and mixed, adjusting a heating temperature in calcining makes it easier to obtain the ferrite composition having the crystal grains with higher Sn concentration and higher Si concentration on the grain surface side than in the central portion. The instant specification at [0066] discloses the calcination temperature is preferably 850°C, which is substantially identical to Wada in view of Susumu disclosing the ferrite composition can be sintered at about 900°C (see Wada at [0016]). The instant specification at [0067] discloses adding tin oxide and silicon oxide to the calcined material and mixing together makes it easier to obtain the ferrite composition having the crystal grains with higher Sn concentration and higher Si concentration on the grain surface side than in the central portion, which is substantially identical to Wada in view of Susumu as detailed in the rejection of claim 1 above whereby it is obvious to include 0.2 to 4.0 wt % of SnO2 (See Susumu at the second to last paragraph of page 2 from the machine translation).
Therefore, because the composition and calcination procedures of Wada in view of Susumu are substantially identical to the composition and calcination procedures of the instant application, Wada in view of Susumu would inherently possess the claimed property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 4, while Wada in view of Susumu does not explicitly disclose crystal grains with higher Si concentration on a surface side than in a central portion are included, this is a function of the composition as well as by calcination and mixing procedures as detailed by the rejection of claim 3 above. Furthermore, the instant specification at [0059] teaches the crystal grains with higher Sn concentration on the surface side than in the central portion tend to have higher Si concentration on the surface side. That means, in the present embodiment, the above-mentioned crystal grains α tend to have higher Si concentration on the surface side than in the central portion. (see the instant specification at [0059]).
Therefore, because Wada in view of Susumu makes obvious the claimed Sn concentration of claim 3 above, Wada in view of Susumu would inherently possess the claimed Si concentration of instant claim 4. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 5, Wada discloses an electronic component including the ferrite composition (see Wada at the Title, disclosing a ferrite composition and electronic component).
Regarding claim 6, Wada discloses the subcomponent includes 1.1 to 3.8 parts by weight of the bismuth compound in terms of Bi2O3 with respect to 100 parts by weight of the main component (see Wada at Table 1, Sample No. 29, disclosing an example of a ferrite composition comprising 1.5 wt.% Bi2O3).
Regarding claim 7, while Wada in view of Susumu does not explicitly disclose when measured at a measurement frequency of 1 MHz and a temperature of 25°C and when an electric current value at a time when a permeability value decreased by 10% compared to the permeability value at a time when a DC current of 0 A was applied is defined as Idc, the ferrite composition has a DC bias characteristic Idc of 1.0 A or more, this is a property which depends upon the composition. The instant specification at [0037] discloses when the amount of iron oxide is too large, DC bias characteristic is easily degraded. The instant specification at [0047] discloses the ferrite composition according to the present embodiment, the composition range of each constituent of the main component is controlled to the above-mentioned range. Additionally, the silicon compound, the tin compound, and the bismuth compound are contained in the subcomponent within the above-mentioned ranges. Consequently, the ferrite composition having excellent DC bias characteristic and reduced relative permittivity can be obtained. Because the composition of Wada in view of Susumu is substantially identical to the instant composition, the ferrite composition of Wada in view of Susumu would inherently possess the claimed property.
Response to Arguments
Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive. At the last paragraph of page 4 to the first paragraph of page 5 of the Remarks, Applicant argues that the particular mixing conditions are the reasons for the claimed Si and Sn surface concentration limitations, and that the mixing conditions of Wada in view of Susumu would not inherently possess the claimed Si and Sn surface concentration limitations. Examiner respectfully disagrees, and notes this conclusion does not appear to be supported by evidence of the record. Arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)).
At the first full paragraph of page 4, Applicant alleges that Susumu merely teaches the addition of Sn for improving magnetic characteristics, however, the present application simultaneously introduces Si and Sn during the specific pulverization step and utilizes the difference in diffusion behavior and interaction of these components during firing, resulting in the claimed concentration gradient of Sn and Si. In the next paragraph, Applicant argues that in Wada, these materials are mixed together from the beginning, and in Susumu Sn is merely added as an additive, which leads to different diffusion behavior. Examiner respectfully disagrees, and notes that the evidence of the record does not appear to support this conclusion. Additionally, the selection of any order of mixing ingredients is prima facie obvious (see MPEP 2144.04).
At pages 5-6, Applicant alleges that the firing conditions of Susumu are substantially different from the instant firing conditions, and would therefore not inherently produce the claimed product. Examiner respectfully disagrees, and notes the rejection of claim 1 is over Wada in view of Susumu, not merely Susumu. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Additionally, Examiner notes that [0071] of the instant PGPub states, while the firing conditions and the like are not limited, the firing temperature is preferably 930° C. Examiner notes this is not a “hard boundary” which states that there is some criticality to the firing temperature, but that the firing temperature is not particularly limited and merely has an expressed preference. As such, Applicant’s arguments are not convincing.
At page 6 of the Remarks, Applicant argues that Susumu does not disclose or suggest reduced relative permittivity and improved DC bias characteristic can be achieved. Examiner notes this is not relevant to the instant question of patentability. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112(I)).
As such, Applicant’s arguments are not convincing.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
Prosecution Insights