DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/29/2026 has been entered.
Claims 1 and 7-15 are pending as amended on 1/29/2026. Claims 8-15 stand withdrawn from consideration.
Claim 1 has been amended to incorporate the range previously recited in claim 5 (and claim 5 is now cancelled). The rejection set forth in the previous action addressed claims 1 and 5 together. Because claims 1 and 7 stand rejected over Ueda and Maetani for the same grounds set forth in the action mailed on 10/30/2025, this action is properly made final even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b).
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of 1-10% by weight of a thermosetting resin. Claim 1 has been amended to recite the narrower statement of the range/limitation (2-5% by weight of thermosetting resin) which was previously recited in claim 5. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Applicant can overcome this rejection by simply replacing “1-10%” in line 4 of claim 1 with “2-5%” and then deleting the last line of the claim.
Claim Rejections - 35 USC § 103
Claim(s) 1 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueda et al (JP 2002217015A; included machine translation cited herein) in view of Maetani et al (US 2012/0048063).
As to claim 1, Ueda discloses an iron-based powder magnetic material for dust cores (abstract), [0013]. The surfaces of the iron-based powder particles are coated with an epoxy resin [0013], which meets the instant recitation that the iron powders are individually insulated by thermosetting resin (wherein the thermosetting resin is an epoxy resin).
Ueda teaches that the content of the epoxy resin is 0.1 to 5.0 mass% [0013], which overlaps the presently claimed “thermosetting resin” range of 2-5 wt%. Ueda teaches that if the epoxy resin content is too low, sufficient insulation cannot be obtained, and if too high, green density and magnetic permeability decreases [0050-51]. Additionally, Ueda exemplifies composition comprising epoxy resin contents within the claimed range (2.0 and 4.5% by mass epoxy resin; Examples 10 and 11), and teaches that these examples exhibit further improved resistivity, critical frequency and iron loss [0081]. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any epoxy resin content within Ueda’s disclosed range of 0.1 to 5.0% in order to achieve a desired balance between insulation and green density, including an epoxy content within the presently claimed range of 2-5%.
Ueda further teaches that a content of lubricant is 0.01 mass% or more in order to reduce ejection force, and does not exceed 2 mass% because it is not economical and reduces density of the molded body [0056]. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any appropriate lubricant content within Ueda’s disclosed range of 0.01 to 2 wt% in order to achieve a desired balance between reduction in ejection force, costs, and density, including an amount within the presently claimed range of 0.01-1.0 wt%. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
Ueda fails to teach the impurity contents of iron powders as recited in claim 1.
Maetani discloses iron powder for a dust core [0002]. Maetani teaches that in manufacturing parts having excellent magnetic characteristics or high strength, a green compact with higher density needs to be obtained after a pressure forming process at a determinate pressure [0005]. Maetani teaches that iron powder needs to be highly purified to obtain high compressibility iron powder [0022-23], and provides the following disclosure with regard to impurity contents (note that Mn: 0.63% contains a typo and should be Mn: 0.03%, as evidenced by the discussion in [0070]):
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The ranges disclosed by Maetani for each of the impurities either falls within or overlaps each of the corresponding ranges recited in claim 2. Maetani further teaches (in paragraphs [0067-76]) how increasing or decreasing the amounts of each of the impurities affects properties such as nozzle clogging and the compressibility and hardness of the iron powder. Therefore, when forming a magnetic material for a dust core utilizing iron powders as taught by Ueda, it would have been obvious to the person having ordinary skill in the art to have utilized iron powder having impurities in any appropriate contents within the ranges disclosed by Maetani in order to achieve a desired iron powder hardness and compressibility, including contents within the presently claimed ranges.
Ueda further fails to teach the average particle size of the iron powders.
However, Maetani teaches that it is better for the particle size distribution of the iron powder to be within that of generally used iron powder to achieve a low manufacturing cost due to manufacturing economies of scale [0038]. It is clear from Maetani’s particle size distribution shown in Table 1 that the average particle size of such commercially available iron powder must fall within the presently claimed range of 30-200 micron. (As shown in Maetani’s table 1, less than 5 wt% of the iron powder has a particle size greater than 180 micron, and only 15-30 wt% has a particle size below 45 microns; therefore, the average particle size must be some value between a range of 45-180 microns.) Therefore, when forming a magnetic material for a dust core utilizing iron powders as suggested by modified Ueda, it would have been obvious to the person having ordinary skill in the art to have utilized iron powder having a particle size distribution within that of generally used iron powder in order to decrease manufacturing costs, as disclosed by Maetani (thereby arriving at a material wherein the iron powders have an average particle size within the presently claimed ranges).
Ueda fails to teach that the magnetic material is “for a wireless charging system” as presently recited in the preamble of the claim.
However, if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Furthermore, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. (See MPEP 2111.02 regarding the effect of the preamble). While Ueda fails to expressly describe the magnetic material as being for a wireless charging system as is presently recited in the preamble of the claim, the magnetic material of modified Ueda has the same composition as is presently claimed, and must therefore possess the same physical properties as the presently claimed magnetic material. It is therefore evident that the magnetic material suggested by modified Ueda is inherently capable of being used as a magnetic material for a wireless charging system.
As to claim 7, modified Ueda suggests a material according to claim 1, as set forth above. Ueda names zinc stearate as a lubricant [0016].
Response to Arguments
Applicant's arguments filed 1/29/2026 have been fully considered.
Applicant argues (p 5) that Ueda is completely silent as to the narrower range of 2-5 wt% thermosetting resin as claimed, citing Ueda’s teaching of a content of epoxy resin from 0.1 to 5.0% by mass, and a more preferred range of 0.1 to 2.0% by mass. On p 6 of the remarks, Applicant argues that Ueda teaches away from the claimed material because Ueda teaches that increase in resin leads to decrease in permeability. However, given that Ueda teaches a broader range which encompasses the claimed range, Ueda cannot fairly be considered “completely silent” as to a range of 2-5%. Additionally, in [0051], Ueda teaches that magnetic permeability decreases if the epoxy resin content exceeds 5.0 mass%, which does not amount to teaching away from an epoxy resin content above 2.0 mass%. Applicant’s argument is unpersuasive for at least the reason that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123).
Applicant further argues (pp 5-6) that the claimed range is critical, citing figure 3 as showing that although breaking strength increases as resin content increases across Ueda’s entire disclosed range, the rate of increase in breaking strength levels off as the resin content reaches 2%. However, Ueda exemplifies compositions comprising 2.0 and 4.5% by mass epoxy resin (Examples 10 and 11), and, teaches that these examples having increased epoxy resin content exhibit further improved resistivity, critical frequency and iron loss [0081]. The instant comparative examples having a resin content below 2.0% are not representative of materials which are known/exemplified in Ueda (the closest prior art). Therefore, Applicant’s data and criticality argument fail to overcome the rejection of record for at least the reason that Applicant has not provided data which represents a comparison to the closest prior art.
Additionally, Applicant’s data in Fig 3 appears to show that, for the exemplified materials, the strength of a cured product increases as the content of polymer powder increases from 0 to 10 wt%. There is an apparent change in the rate at which breaking strength increases around 2 wt%, however, Applicant has not explained why this rate change amounts to an unexpected result that is different in kind, not just in degree, from the results of the prior art (an improvement over the prior art still may not be patentable if it was within the capabilities of one skilled in the art, unless there is an unexpected result that is different in kind, not just in degree, from the results of the prior art. In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996).). Additionally, Applicant has not established that the differences in results are of both statistical and practical significance (Evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP 716.02(b)(I).).
Applicant further argues (p 6) that figures 4 and 5 show that within the claimed range, the variation in permeability remains stable across a wide frequency range, while Ueda teaches that an increase in resin content leads to a decrease in permeability. This argument is not persuasive for at least the reason that Applicant has not established that the decrease in permeability taught by Ueda is meaningfully comparable to the “variation in permeability” shown in figures 4 and 5, or, that the prior art properties and instant properties are measured similarly. Note that instant figure 6 appears to show a decrease in %permeability as resin content increases. If the instant %permeability property is similar to Ueda’s permeability property, the results in instant figure 6 would be expected from the teachings in Ueda. Therefore, additional details/explanation regarding the how the data in instant figures 4-6 was obtained must be provided if Applicant wishes to rely on the data in these figures to establish unexpected results.
For the sake of compact prosecution, the examiner further notes that evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Therefore, if Applicant wishes to overcome the present rejection by showing unexpected results, Applicant must provide sufficient evidence to show that unexpected results would be obtained for all species encompassed by the present claims. The materials summarized in instant figure 3 are magnetic materials formed by combining a specific epoxy/polyester thermosetting resin (having a specific structure and specific molecular weight) with iron powders having a specific average particle size and a specific lubricant, and then pressing the mixture at a specific pressure to form a mold having a specific thickness, followed by curing at specific temperature for a specific duration. In contrast, present claim 1 is not limited to a pressed or cured product, not limited to any specific thermosetting acrylic, epoxy and/or polyester resin, not limited to any particular lubricant, not limited to any particular method of mixing resin with iron powder and not limited to the iron powder particle size of the instant examples. Therefore, because Applicant has not provided sufficient evidence to show that the results in the instant examples would be obtained for all species encompassed by the present claims, Applicant’s data is not sufficient to overcome the present rejection by showing unexpected results.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
