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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-11 in the reply filed on 11/20/2025 is acknowledged.
Claims 12-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/20/2025.
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.
Claim 11 is 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.
Instant claim 11 recites the limitation “The magnetostrictive member according to claim 1, being a plurality of magnetostrictive members manufactured from the crystal that is one crystal.” This limitation is indefinite because it is unclear how a magnetostrictive member can simultaneously be a magnetostrictive member as well as be a plurality of magnetostrictive members manufactured from said magnetostrictive member. Additionally, it is unclear what is meant by “a variation in a parallel magnetostriction amount within 10%,” specifically whether that means variation between magnetostrictive members or variation over the structure of one magnetostrictive member
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 5 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/138730 to Hasegawa et al (cited by applicant in IDS, US 2020/0362442 A1 to Hasegawa et al, also cited by applicant in IDS, has been relied upon as an English language equivalent).
Regarding claim 1, Hasegawa discloses a soft magnetic alloy formed of Fe-based nanocrystals (i.e. a magnetostrictive member formed of a crystal of an iron-based alloy having magnetostrictive characteristics) and being a plate-like body having a long-side direction and a short-side direction, at least one of a front face and a back face of the plate-like body having a plurality of grooves extending in the long-side direction (Hasegawa, abstract, para [0075-0084], claims 1, 2, 10, figures 1 and 3).
Hasegawa anticipates claim 1 because Hasegawa discloses all of the limitations of instant claim 1.
Regarding claim 2, Hasegawa discloses polishing along the casting direction (Hasegawa, para [0079]) which would result in a surface roughness Ra in the casting direction (long-side direction) smaller than a surface roughness across the casting direction (short-side direction).
Regarding claim 5, the peeled surface of Hasegawa in contact with the cooling roll will be polished and thus also bears grooves (Hasegawa, para [0075-0084]).
Regarding claim 6, Hasegawa discloses grooves are formed in the casting direction on the free surface 24b (Hasegawa, para [0084]), i.e. within 30° with respect to the long-side direction.
Claim(s) 1, 5 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/148742 to Chu et al (cited by applicant in IDS, US 2020/0362433 A1 to Chu et al, also cited by applicant in IDS, has been relied upon as an English language equivalent).
Regarding claim 1, Chu discloses a soft magnetic alloy formed from grain-oriented silicon steel (i.e. a magnetostrictive member formed of a crystal of an iron-based alloy having magnetostrictive characteristics) and being a plate-like body having a long-side direction and a short-side direction, at least one of a front face and a back face of the plate-like body having a plurality of grooves parallel with each other in the rolling, i.e. long-side, direction (Chu, abstract, para [0017], claim 1).
Chu anticipates claim 1 because Chu discloses all of the limitations of instant claim 1.
Regarding claim 5, Chu discloses that grooves may be formed on both sides of the member of Chu (Chu, claim 1).
Regarding claim 6, Chu discloses grooves are formed in the rolling direction of the member (Chu, claim 1), i.e. within 30° with respect to the long-side direction.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 4 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2019/138730 to Hasegawa (cited by applicant in IDS, US 2020/0362442 A1 to Hasegawa, also cited by applicant in IDS, has been relied upon as an English language equivalent) as applied to claims 1, 2, 5 and 6 above.
Hasegawa discloses a magnetostrictive member as set forth above.
Regarding claim 4, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 [R-3].) In the instant case, the magnetostrictive member of Hasegawa would be expected to have the same or similar properties as the instantly claimed magnetostrictive because the magnetostrictive member has the same or substantially the same composition and structure. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Regarding claim 10, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113 [R-1]. In the instant case, the structure and composition of the grooves of Hasegawa appears to be either identical or substantially identical to the structure and composition of the instantly claimed grooves insofar as the instantly claimed product-by-process limitations (i.e. “wherein the grooves are formed by surface grinding”) do not appear to imply any structure that the grooves of Hasegawa do not possess. Therefore, a rejection based alternatively on either 35 U.S.C. 102(b) or 35 U.S.C. 103(a) is eminently fair and acceptable.
Claim(s) 4, 7 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2019/148742 to Chu et al (cited by applicant in IDS, US 2020/0362433 A1 to Chu et al, also cited by applicant in IDS, has been relied upon as an English language equivalent) as applied to claims 1, 5 and 6 above.
Chu discloses a magnetostrictive member as set forth above.
Regarding claim 4, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 [R-3].) In the instant case, the magnetostrictive member of Chu would be expected to have the same or similar properties as the instantly claimed magnetostrictive because the magnetostrictive member has the same or substantially the same composition and structure. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Regarding claim 7, Chu discloses the thickness of the member may be 0.26 mm (Chu, para [0046]). The broadest reasonable interpretation of the instantly claimed lower limit of “0.3 mm” would include values that round to 0.3 mm, including 0.26 mm, thus anticipating the instant claim. Alternatively, Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04 IV A). In the instant case a device having the claimed relative dimensions would not perform differently than the member of Chu, and as such the claimed member is not patentably distinct from the member of Chu.
Regarding claim 10, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113 [R-1]. In the instant case, the structure and composition of the grooves of Chu appears to be either identical or substantially identical to the structure and composition of the instantly claimed grooves insofar as the instantly claimed product-by-process limitations (i.e. “wherein the grooves are formed by surface grinding”) do not appear to imply any structure that the grooves of Chu do not possess. Therefore, a rejection based alternatively on either 35 U.S.C. 102(b) or 35 U.S.C. 103(a) is eminently fair and acceptable.
Claim Rejections - 35 USC § 103
Claim(s) 3 and 7 is/are rejected under 35 U.S.C. 103 as obvious over WO 2019/138730 to Hasegawa (cited by applicant in IDS, US 2020/0362442 A1 to Hasegawa, also cited by applicant in IDS, has been relied upon as an English language equivalent) as applied to claims 1, 2, 4-6 and 10 above.
Hasegawa discloses a magnetostrictive member as set forth above.
Regarding claim 3, Hasegawa discloses an average of maximum height roughness along a casting direction of the ribbon on the free surface is 0.43 μm or less (Hasegawa, claim 10), overlapping the instantly claimed range of 0.3 µm or more and 1.5 µm or less. Hasegawa discloses polishing along the casting direction (Hasegawa, para [0079]) which would result in a surface roughness Ra in the casting direction (long-side direction) smaller than a surface roughness across the casting direction (short-side direction). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 [R-5]. In the instant case, it would require little more than routine experimentation by one of ordinary skill in the art to determine the optimal or workable ranges of surface roughness for the member of Hasegawa.
Regarding claim and 7, Hasegawa discloses that the member of Hasegawa may have any size (Hasegawa, para [0035]). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04 IV A). In the instant case a device having the claimed relative dimensions would not perform differently than the member of Hasegawa, and as such the claimed member is not patentably distinct from the member of Hasegawa.
Claim(s) 1, 4 and 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP H10239177 to Nakazawa et al (cited by applicant in IDS, an English language machine translation has been relied upon for examination purposes) in view of US 2017/0317266 to Imai (cited by applicant in IDS).
Regarding claim 1, Nakazawa discloses a magnetostrictive member being a plate-like body having a long-side direction and a short-side direction, at least one of a front face and a back face of the plate-like body having a plurality of slits (i.e. grooves) formed in directions that make 45° and -45° with respect to the long-side direction (Nakazawa, abstract, para [0018], figures 1 and 3).
Nakazawa differs from instant claim 1 in that Nakazawa does not disclose the magnetostrictive member is formed of a crystal of an iron-based alloy having magnetostrictive characteristics.
Imai discloses a magnetostrictive member formed by cutting a single crystal of Fe-Ga alloy wherein the magnetostrictive member has high performance, high reliability and high versatility (Imai, abstract, para [0017-0022], claim 1).
Regarding claims 1, 8 and 9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the single crystal Fe-Ga alloy magnetostrictive material of Imai as the magnetostrictive member of Nakazawa. The motivation for doing so is that the magnetostrictive member of Imai has high performance, high reliability and high versatility (Imai, abstract, para [0017-0022], claim 1).
Regarding claim 4, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 [R-3].) In the instant case, the magnetostrictive member of Nakazawa in view of Imai would be expected to have the same or similar properties as the instantly claimed magnetostrictive because the magnetostrictive member has the same or substantially the same composition and structure.
Regarding claim 7, a thickness of the magnetostrictive member of Imai has a thickness of 0.5 mm (Imai, para [0041]), within the instantly claimed range of 0.3 mm or more and 2 mm or less.
Regarding claim 10, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113 [R-1]. In the instant case, the structure and composition of the grooves of Nakazawa in view of Imai appears to be either identical or substantially identical to the structure and composition of the instantly claimed grooves insofar as the instantly claimed product-by-process limitations (i.e. “wherein the grooves are formed by surface grinding”) do not appear to imply any structure that the grooves of Nakazawa in view of Imai do not possess.
Regarding claim 11, instant claim 11 is indefinite as set forth above. Regardless, Imai discloses that a plurality of magnetostrictive members may be manufactured from the single crystal of Imai (Imai, abstract, para [0017-0022], claim 1). Regarding the limitation “wherein the magnetostrictive members have a variation in a parallel magnetostriction amount within 10%, the parallel magnetostriction amount being a magnetostriction amount when a magnetic field parallel to the long-side direction is applied and a magnetostriction amount in the long-side direction is saturated,” this limitation is indefinite as set forth above. Regardless, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 [R-3].) In the instant case, the magnetostrictive member of Nakazawa in view of Imai would be expected to have the same or similar properties as the instantly claimed magnetostrictive because the magnetostrictive member has the same or substantially the same composition and structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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