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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/05/2025 has been entered.
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.
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 11/05/2025 have been fully considered but they are not persuasive. At the last two paragraphs of page 4, Applicant argues that the examples of Kakuda with no tin correspond to samples 13, 18, 23, and 27 from Table 1 of the instant specification, which have inferior specific resistance. This is not convincing because a person having ordinary skill in the arts would not be motivated by disclosures and teachings of the instant specification. Additionally, 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). In the instant case, Claim 1 is rejected over Wada in view of Susumu as detailed above.
At the third paragraph of page 5, Applicant argues that a person skilled in the arts would not predict the favorable results of paragraph [0083] from the instant specification which are a result of the claimed composition. Examiner notes this is not convincing because "the 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)).
At the fourth paragraph of page 5 from the Remarks, Applicant argues that the claimed amount of Sn component provides unexpected results. Examiner notes this appears to be the foundation for a “criticality of the claimed range” argument, however, such an argument cannot be found convincing via an unsupported conclusion. Arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)). Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (emphasis added, see MPEP 716.02(d)). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716,02(d)(II)). In the instant case, for an argument concerning unexpected results to be found convincing, Applicant must present evidence of exactly which compositional ranges are critical, show that unexpected results occur within the entire claimed range, and demonstrate that examples both below and above the claimed range do not provide unexpected results.
At page 6 of the Remarks, Applicant argues that Kakuda does not disclose Bi within the range of instant claim 6. Examiner notes this is not convincing as Kakuda at the Abstract discloses 2 to 8.0 pts. wt. of bismuth compound in terms of Bi2O3 with respect to 100 pts. wt. of the main component. However, Examiner notes this is moot because instant claim 1 is rejected over Wada in view of Susumu as detailed above. However, Examiner notes that the above rejection of claim 1 could made over Example 14 of Table 1 from Kakuda in view of Susumu in the same manner as the rejection of claim 1 of Wada in view of Susumu, mutatis mutandis.
At the last four paragraphs of page 6 of the Remarks, Applicant argues that the examples of Susumu do not meet the Bi and Si limitations of instant claim 1. 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). In the instant case, Claim 1 is rejected over Wada in view of Susumu as detailed above. Examiner further notes the rejections are not limited to the specific examples in the arts, but may be made over the broader disclosures as detailed in the MPEP 2123(II) which states “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”.
At page 8 of the Remarks, Applicant argues that the examples of Kakuda in view of Susumu contain smaller amounts of silicon and/or bismuth as compared with the claimed composition. Examiner respectfully disagrees per Example 14 of Table 1 from Kakuda in view of Susumu, however, Examiner notes instant claim 1 is rejected over Wada in view of Susumu where the example of Wada discloses Si and Bi within the instantly claimed range. As such, this argument is not convincing.
At page 9 of the Remarks, Applicant argues that the composition of Kakuda in view of Susumu would not inherently possess the claimed property of instant claim 7 because the Bi and Si content of Kakuda only has a vague teaching of Bi at the Abstract and the examples of Kakuda are outside of the claimed Bi and Si range. Examiner respectfully disagrees per Example 14 of Table 1 from Kakuda in view of Susumu, however, Examiner notes instant claim 1 is rejected over Wada in view of Susumu where the example of Wada discloses Si and Bi within the instantly claimed range, which would inherently possess the claimed range as detailed by the rejection of claim 7 above.
As such, Applicant’s arguments are not convincing and claims 1-7 are rejected over Wada in view of Susumu as detailed above.
Conclusion
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731