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 .
Status of Claims
Claims 1, 12 and 23 are amended. Claims 2, 6-11, 13, 18 and 21-22 are cancelled. Claims 26-31 are new. Claims 1, 3-5, 12, 14-17, 19-20 and 23-31 are pending.
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.
Claims 1, 3-5, 23 and 25-31 are rejected under 35 U.S.C. 103 as being unpatentable over Makino (US 8,491,731), as evidenced by Uchikoshi (Metallurgical and Materials Transaction B, Vol 40B, 2009, Page 615-618).
Regarding claims 1, 3-5 and 25, Makino teaches a Fe-based alloy containing Fe85.3B8Si2P4Cu0.7 (Abstract; Table 2, Example 8), which meets the recited amount of Fe, Si, B, P and Cu in claims 1, 3-4 and 25. Makino discloses that 0-3 at% Fe may be replaced by Nb (Col 2, Ln 40-55), which overlaps the recited amount of Nb in claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the recited composition is a prima facie case of obviousness over Makino.
The Example 8 of Makino does not contain Ti. However, Ti is an unavoidable impurity in iron as evidenced by Uchikoshi. Uchikoshi discloses that pure iron contains 0.000008 wt% Ti (Table 1, Sample A), which converts to 0.00000933 at% Ti. The Fe85.3B8Si2P4Cu0.7 alloy disclosed by Makino contains 0.00000796 at% Ti (calculated by 0.00000933 at% x0.853), which meets the limitation 0<g<0.005 recited in claim 1. Makino discloses that the alloy has saturated magnetic flux density of 2.01 T (Table 9, Example 8), which meets the property limitation recited in claims 5 and 25.
Regarding claim 23, Makino discloses that the Si amount is 0-8 at% (Abstract), which overlaps the recited amount of Si in claim 23. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the recited Si amount is a prima facie case of obviousness over Makino.
Regarding claims 26-31, as evidenced by Uchikoshi, pure iron contains 33 ppm Co, 40 ppm Ni, 1.1 ppm Ga and 3.5 ppm Ge (Table 1, Sample A), which converts to 0.0033 wt.% Co, 0.0040 wt.% Ni, 0.00011 wt.% Ga and 0.00035 wt.% Ge. Thus, the Fe85.3B8Si2P4Cu0.7 alloy disclosed by Makino contains ~0.0028 at% Co and ~0.0034 at% Ni, which meets the amount of Ni and Co recited in claims 26-28. The impurity amount of Ga and Ge disclosed in Uchikoshi meets the limitation recited in claims 29-31.
Claims 12, 14-17 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Makino (US 8,491,731), as evidenced by Uchikoshi (Metallurgical and Materials Transaction B, Vol 40B, 2009, Page 615-618), and further in view of Urata (US 2010/0097171).
Regarding claims 12, 14-15, 17 and 24, Makino teaches a Fe-based alloy containing Fe85.3B8Si2P4Cu0.7 (Abstract; Table 2, Example 8), which meets the recited amount of Fe, Si, B, P and Cu in claims 12, 14-15 and 24. Makino discloses that 0-3 at% Fe may be replaced by Nb (Col 2, Ln 40-55), which overlaps the recited amount of Nb in claim 12. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the recited composition is a prima facie case of obviousness over Makino.
The Example 8 of Makino does not contain Ti. However, Ti is an unavoidable impurity in iron as evidenced by Uchikoshi. Uchikoshi discloses that pure iron contains 0.000008 wt% Ti (Table 1, Sample A), which converts to 0.00000933 at% Ti. The Fe85.3B8Si2P4Cu0.7 alloy disclosed by Makino contains 0.00000796 at% Ti (calculated by 0.00000933 at% x0.853), which meets the limitation 0<g<0.005 recited in claim 12. Makino discloses that the alloy has saturated magnetic flux density of 2.01 T (Table 9, Example 8), which meets the property limitation recited in claim 17.
Makino discloses that the alloy can be made into powder (Col 4, Ln 36-46). Makino discloses that the alloy can be used to make an inductor (Col 6, Ln 4-10). Makino does not teach the inductor comprises a coil, a body covering the coil and including an insulator as recited in claim 12. Urata teaches a soft magnetic alloy having composition overlapping the composition of Makino (Abstract). Urata discloses that an inductor comprises a magnetic body part made of the soft magnetic material and a resin, and a coil conductor embedded in the magnetic body part ([0114]). Urata discloses that the inductor has excellent properties ([0114]). Thus, it would be obvious to one of ordinary skill in the art to make an inductor comprising a magnetic body part made of the soft magnetic material and a resin, and a coil conductor embedded in the magnetic body part as taught by Urata using the soft magnetic alloy of Makino in order to make an inductor having excellent properties as disclosed by Urata.
Regarding claim 16, the recited particle size in making a coil component is well-known to one of ordinary skill in the art. Thus claim 16 is obvious over Makino in view of Urata.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Makino (US 8,491,731), as evidenced by Uchikoshi (Metallurgical and Materials Transaction B, Vol 40B, 2009, Page 615-618), and further in view of Urata (US 2010/0097171) and Yoon (US 2016/0163442).
Regarding claims 19-20, Makino in view of Urata does not teach that the inductor comprises a support substrate supporting the coil and the coil is a winding type coil. Yoon teaches an electronic component that is analogous to that of Urata. Yoon disclosed that that the inductor comprises a support substrate supporting the coil and the coil is a winding type coil (Abstract; [0019] to [0031]). Thus, it would be obvious to one of ordinary skill in the art to make an inductor comprising a support substrate supporting the coil and the coil is a winding type coil as taught by Yoon in the process of making the inductor of Makino in view of Urata would be able to make an inductor with success as disclosed by Yoon.
Response to Arguments
The applicant’s arguments dated 06/16/2026 have been considered but they are moot in view of the new rejection ground.
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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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